Schreiber v. Dunabin

• Citation: 938 F.Supp.2d 587
• Decision Date: 29 March 2013
• Docket Number: Case No. 1:12–cv–852 (GBL–JFA).
• Parties: Graham SCHREIBER, Plaintiff, v. Lorraine Lesley DUNABIN, et al., Defendants.
• Court: U.S. District Court — Eastern District of Virginia

938 F.Supp.2d 587

Graham SCHREIBER, Plaintiff,

v.Lorraine Lesley DUNABIN, et al., Defendants.

Case No. 1:12–cv–852 (GBL–JFA).

United States District Court,

E.D. Virginia,

Alexandria Division.

March 29, 2013.

Graham Schreiber, pro se.

Lorraine Lesley Dunabin, pro se.

Jeremy David Engle, Steptoe & Johnson, LLP, Timothy Brooks Hyland, David Brian Deitch, Ifrah, PLLC, Walter DeKalb Kelley, Jr., Tara Lynn Renee Zurawski, Jones Day, Washington, DC, David Glenn Barger, Greenberg Traurig, LLP, McLean, VA, for Defendants.

MEMORANDUM OPINION AND ORDER

GERALD BRUCE LEE, District Judge.

THIS MATTER is before the Court on Defendants' Motions to Dismiss Plaintiff's Complaint for lack of subject matter jurisdiction and for failure to state a claim. (Dkt. Nos. 6, 8, 17, 46, 57.) This case concerns Plaintiffs claim that Defendants are infringing his Canadian trademark Landcruise, Ltd. (“ Landcruise ”) used in connection with Plaintiff's motor home rental business. Defendants' Motions present three issues before the Court.

The first issue is whether the Court has subject matter jurisdiction over Plaintiff's claims of trademark infringement against Defendant Dunabin when the alleged infringing acts occurred outside of the United States and concern marks that have not been used or registered in the United States. The Court grants Defendants' Motions to Dismiss Plaintiff's Complaint for lack of subject matter jurisdiction against Defendant Dunabin because the Lanham Act cannot be applied extraterritorially in this case.

The second issue is whether Plaintiff fails to state a claim for direct trademark infringement and contributory trademark infringement when Plaintiff does not assert (1) trademark rights in the United States, and (2) effect on United States commerce. The Court grants Defendants' Motions to Dismiss Plaintiff's Complaint for failure to state a claim as to all Defendants because Plaintiff fails to plead facts that plausibly establish he has recognized trademark rights in the United States that can be infringed, either directly or contributorily. Further, the Court finds the Lanham Act's Safe Harbor Provision protects Defendant Registrars from liability.

The third issue is whether the Court should exercise supplemental jurisdiction over Plaintiff's remaining state law claims where all the federal law claims have been dismissed and where the parties would not be burdened if jurisdiction is not retained. The Court declines to exercise supplemental jurisdiction because (1) the Court has dismissed all of Plaintiff's claims arising under the Lanham Act, and (2) the Court finds no persuasive reason to retain Plaintiff's state law claims. For these reasons, Plaintiff's Complaint is dismissed with prejudice as to all Defendants.

I. BACKGROUND

This case concerns Plaintiff Graham Schreiber's claim that Defendants are infringing his Canadian trademark Landcruise. Plaintiff is a Canadian citizen and owner of Landcruise, a Canadian-based corporation that rents motor homes in Canada. (Pl.'s Ex. at 6, Dkt. No. 47.) Plaintiff has operated his business for the past fourteen years and has filed a pending trademark application for the Landcruise mark with the United States Patent and Trademark Office. (Compl. at 14.)

Plaintiff brings this action against Defendant Lorraine Dunabin (“Dunabin”) alleging that her company is infringing on his trademark. Defendant Dunabin is a resident and citizen of the United Kingdom and owner of Alco Leisure Ltd. (“Alco”). ( Id. at 4.) Dunabin uses the Landcruise mark in connection with her motor home rental business in the United Kingdom. Dunabin registered the domain name Landcruise.uk.com through the domain name registrar eNOM. (Compl. at 5.) Plaintiff asserts he has been harmed by Dunabin because she owns the trademark Landcruise in the United Kingdom, and consequently he is “blocked” from using his Canadian trademark in the United Kingdom. ( Id.)

Plaintiff brings this action against five additional defendants: CentralNic, Network Solutions, VeriSign, ICANN, and eNom, all of whom have some role in the registration or maintenance of the Landcruise.uk.com domain name. Plaintiff alleges that these defendants are contributorily liable for trademark infringement by registering and maintaining the Landcruise.uk.com domain name owned by Dunabin.

Defendant CentralNic is an accredited ICANN domain name registrar and acts as a domain name registry operator of third-level domains, such as domains that end in “uk.com.” (Def. CentralNic Br. at 5–6, Dkt. No. 9.) A domain name registrar is an organization or commercial entity that manages the reservation of Internet domain names. ( Id. at 6.) A domain name registry is a database of all the domain names registered in a top-level domain. ( Id.) The domain registrar is the service that takes a consumer's registration information and reserves the domain from the main registry. ( Id.) The registrar will then submit the technical information to the registry operator. ( Id.) The registry operator maintains the database and provides the technical information to locate the domain name and accompanying website. ( Id.) In connection with the domains offered under the second-level domain “uk.com,” CentralNic acts as the registry operator and contracts with other accredited registrars to distribute and offer the domain names to the consuming public. ( Id.)

Like CentralNic, Defendant Network Solutions is an accredited domain name registrar. (Def. Network Solutions's Br. at 5, Dkt. No. 7.) Since 1993, Network Solutions has registered over three million domain names. ( Id.) In 1998, Plaintiff registered the domain name Landcruise.com using Network Solutions as the domain name registrar. (Compl. at 13; see also Def. Network Solutions's Br. at 4.) Plaintiff claims that Landcruise.com has been conducting business on the Internet since 2006 with its webhosting and email service managed by Network Solutions. (Compl. at 4, 12; see also Def. Network Solutions's Br. at 5.)

Defendant VeriSign, Inc. (named in the Complaint as VeriSign Global Registry Services) (“VeriSign”) operates the registry for the top-level domain “.com.” (Def. VeriSign's Br. at 5, Dkt. No. 59.) Plaintiff contends VeriSign is liable for “[a]ccomodating Dilution & Contributory Infringement” for the “.com” Registry. (Compl. at 3–4.)

Defendant ICANN is a California not-for-profit public benefit corporation. (Def. ICANN's Br. at 2, Dkt. No. 18.) ICANN does not engage in commercial business but rather administers the Internet's Domain Name System (“DNS”) on behalf of the Internet community pursuant to a series of agreements with the United States Department of Commerce. ( Id.) The Internet DNS translates unique sets of numbers that computers associate with websites into commonly known domain names, allowing users to easily find specific locations on the Internet. ( Id.) ICANN enters into contracts, referred to as “Registry Agreements,” with each “Registry Operator,” a company that manages the Internet's generic top-level domains (“gTLDs”). such as “.com,” “.net,” and “.org.” ( Id. at 3.) Additionally, ICANN accredits and monitors the companies that act as “Registrars.” As part of this accreditation process, ICANN enters into a standard Registrar Accreditation Agreement (“RAA”) with each Registrar. ( Id.) Pursuant to its mission, ICANN entered into a Registry Agreement with Defendant VeriSign, a company that operates the “.com” gTLD. ( Id.) ICANN also entered into a standard RAA with Defendant Network Solutions, a gTLD domain name registrar. ( Id.)

Defendant eNom is an ICANN accredited registrar. (Def. eNOM's Br. at 4, Dkt. No. 46.) Plaintiff alleges that eNom sold the domain name Landcruise.uk.com to Dunabin. ( Id.; see also Compl. at 3). Plaintiff brings this claim against eNom under contributory infringement, stating, “eNom knew then, very clearly, the precious distinctions between ‘TLD's' and ‘Domain Names' and they were selling ‘infringement’ naturally equaling ‘Contributory Infringement.’ ” (Pl.'s Opp'n Br. at 5, 26, 32; Dkt. No. 55.)

On July 31, 2012, Plaintiff, proceeding pro se, filed his Complaint in this Court. Plaintiff alleges federal trademark infringement under the Lanham Act and trademark infringement and dilution under Virginia law. (Compl. at 3.) Specifically, Plaintiff alleges direct infringement by Dunabin and contributory infringement as to all other Defendants. Before the Court are Defendants' Motions to Dismiss Plaintiff's Complaint for lack of subject matter jurisdiction and failure to state a claim upon which relief can be granted. ( See Dkt. Nos. 6, 8, 17, 46, 57.) Also before the Court is Plaintiff's Motion for Summary Judgment. (Dkt. No. 72.)

II. STANDARD OF REVIEW

These Motions are brought under Federal Rule of Civil Procedure 12(b)(1) for lack of subject matter jurisdiction and under 12(b)(6) for failure to state a claim. In considering a 12(b)(1) motion to dismiss, the burden is on the plaintiff to prove that federal subject matter jurisdiction is proper. See United States v. Hays, 515 U.S. 737, 743, 115 S.Ct. 2431, 132 L.Ed.2d 635 (1995). A defendant bringing a 12(b)(1) motion may contend that the complaint simply “fails to allege facts upon which subject matter jurisdiction is based.” Adams v. Bain, 697 F.2d 1213, 1219 (4th Cir.1982). In that case, “all the facts alleged in the complaint are assumed to be true and the plaintiff is afforded the same procedural protection as he would receive under a Rule 12(b)(6) consideration.” Id. Thus, the standard to determine a motion to dismiss pursuant to Federal Rule 12(b)(1) and 12(b)(6) is the same.

A motion to dismiss under 12(b)(6) should be granted unless an adequately stated claim is “supported by showing any set of facts consistent with the allegations in the complaint.” Bell Atl. Corp. v. Twombly, 550 U.S. 544, 563, 127 S.Ct. 1955, 167 L.Ed.2d 929 (2007) (internal citations omitted); seeFed.R.Civ.P. 12(b)(6). “A pleading that...