Professional Documents
Culture Documents
BACKGROUND
This is a suit under the Anticybersquatting Consumer Protection Act
(“ACPA”). 1 Plaintiff Bespoke LLC is a Louisiana limited liability corporation
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organized on January 28, 2013 that arranges and sells custom travel tours in
New Orleans and other locations. Plaintiff alleges that it began using the
service marks “bespoke” and “bespoke experiences” immediately upon its
formation for the marketing, identification, and sales of its services. Defendant
Garth Piesse is a resident of New Zealand who has never travelled to
Louisiana. Defendant registered the domain name “bespoke.com” on May 9,
2014, having purchased it at a public, online auction from the Colorado-based
DropCatch.com for $18,800. Records for the domain name registration indicate
that it was updated on August 14, 2016.
On October 12, 2014, Travis Simpson, a member of Plaintiff, performed
an internet search for “bespoke.com” and was taken to the website of
Uniregistry, a domain name registrar and independent domain name broker.
That website showed that the bespoke.com domain name was for sale. Using
the contact tools available on the website, Simpson submitted a message
saying, “Is bespoke.com for sale? Price?” 2 Simpson then placed a bid via
Uniregistry’s website for $100. The only response from the website was, “Made
low offer.” 3 Simpson submitted another message asking, “What is your asking
price?” Simpson placed additional bids for $500, $700, $1,000, and $1,200, all
of which received the same “low offer” response. Simpson then submitted
another message stating, “According to valuemydomain.name bespoke.com is
only worth $414.” 4 The next day, October 13, 2014, Simpson bid $5,000 and
received the same low offer response. Defendant then sent a message to
Simpson at travissi2000@gmail.com saying, “This domain is under dispute, we
2 Doc. 13-1 at 2.
3 Doc. 13-1 at 2.
4 Doc. 13-1 at 2.
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cannot comment at this time. Thank you.” 5 Simpson responded, “Thank you
for your reply and if it frees up, please let me know.” 6
On November 3rd and 10th of 2015, Plaintiff registered the terms
“bespoke experiences” and “bespoke,” respectively, as standard character
marks for travel-related services with the United States Patent and
Trademark Office. 7
On April 29, 2016 a representative of Uniregistry emailed Simpson
asking whether he was still interested in the bespoke.com domain name. 8
Simpson did not respond. Uniregistry emailed Simpson again on July 10, 2016.
In response, Simpson asked what the price was. Uniregistry hinted at a seven-
figure range, to which Simpson replied, “That’s exactly why it’s still for sale
. . . .” 9 Simpson and Uniregistry exchanged emails again on November 22nd
and 23rd, 2016. Uniregistry said that Defendant’s asking price was $8.5
million. Simpson counteroffered $1,000. At that point Simpson stopped
responding to Uniregistry’s emails. Uniregistry continued to solicit Simpson
via email on March 14, May 10, June 20, and July 11, 2017. All
communications took place using the travissi2000@gmail.com address.
Plaintiff asserts a claim under the ACPA, which gives the owner of a
distinctive mark a civil cause of action against a person who has bad faith
intent to profit from the mark and registers, traffics in, or uses a domain name
that is confusingly similar to it. Defendant now moves to dismiss Plaintiff’s
Complaint on three grounds: 1) pursuant to Rule 4(m) Plaintiff has failed to
5 Doc. 11-2 at 4.
6 Doc. 11-2 at 5.
7 Doc. 13-1 at 1
8 Because the Court finds that it does not have personal jurisdiction over Defendant even if
the actions of Uniregistry are attributable to Defendant, the Court declines to decide at
this time whether Uniregistry’s actions may properly be imputed to Defendant.
9 Doc. 13-1 at 3.
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LEGAL STANDARD
“Where a defendant challenges personal jurisdiction, the party seeking
to invoke the power of the court bears the burden of proving that jurisdiction
exists.” 10 When a court rules on a motion to dismiss for lack of personal
jurisdiction without holding an evidentiary hearing, as in this case, the
plaintiff need only make a prima facie showing of personal jurisdiction. 11 “The
allegations of the complaint, except insofar as controverted by opposing
affidavits, must be taken as true, and all conflicts in the facts must be resolved
in favor of the plaintiff[] for purposes of determining whether a prima facie
case for personal jurisdiction has been established.” 12 “In determining whether
personal jurisdiction exists, the trial court is not restricted to a review of the
plaintiff’s pleadings.” 13 The Court may consider matters outside the complaint,
including affidavits, interrogatories, depositions, or any combination of the
recognized methods of discovery. 14
Jurisdiction over a non-resident defendant is proper when (1) the
defendant is amenable to service of process under the long-arm statute of the
10 Luv N’care, Ltd. v. Insta–Mix, Inc., 438 F.3d 465, 469 (5th Cir. 2006) (citing Wyatt v.
Kaplan, 686 F.2d 276, 280 (5th Cir. 1982)).
11 Guidry v. U.S. Tobacco, Co., 188 F.3d 619, 625 (5th Cir. 1999).
12 Thompson v. Chrysler Motors Corp., 755 F.2d 1162, 1165 (5th Cir. 1985) (citing DeMelo v.
Toche Marine, Inc., 711 F.2d 1260, 1270 (5th Cir. 1983)).
13 Jobe v. ATR Mktg., Inc., 87 F.3d 751, 753 (5th Cir. 1996).
14 Id. (citing Colwell Realty Invs. v. Triple T. Inns of Ariz., 785 F.2d 1330 (5th Cir. 1986)).
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forum state and (2) the exercise of personal jurisdiction is consistent with the
Due Process Clause of the Fourteenth Amendment. 15 Here, “these two
inquiries merge into one because Louisiana’s long-arm statute permits service
of process coterminous with the scope of the due process clause.” 16 Due process
allows a court to exercise personal jurisdiction over a non-resident defendant
when (1) the defendant has purposefully availed himself of the benefits and
protections of the forum state by establishing “minimum contacts” with the
forum state and (2) exercising personal jurisdiction over the defendant does
not offend “traditional notions of fair play and substantial justice.” 17
“Minimum contacts” can be established through specific jurisdiction or
general jurisdiction. 18 General personal jurisdiction exists when the defendant
has engaged in continuous and systematic activities in the forum state,
regardless of whether such activity is related to the plaintiff’s cause of action. 19
Specific personal jurisdiction exists (1) when a defendant has purposely
directed its activities, or availed itself of the privileges of conducting its
activities, toward the forum state; (2) the controversy arises out of or is related
to those activities; and (3) the exercise of jurisdiction is fair, just, and
reasonable. 20 “The non-resident’s ‘purposeful availment’ must be such that the
defendant ‘should reasonably anticipate being haled into court’ in the forum
state.” 21 Further, “[t]he unilateral activity of [a plaintiff] who claim[s] some
15 Dalton v. R&W Marine, Inc., 897 F.2d 1359, 1361 (5th Cir. 1990).
16 Pervasive Software Inc. v. Lexware GMBH & Co. KG, 688 F.3d 214, 220 (5th Cir. 2012)
(quoting Int’l Shoe Co. v. Washington, 326 U.S. 310, 319 (1945)).
17 Latshaw v. Johnston, 167 F.3d 208, 211 (5th Cir. 1999) (quoting Int’l Shoe, 326 U.S. at
316).
18 Alpine View Co. Ltd. v. Atlas Copco AB, 205 F.3d 208, 215 (5th Cir. 2000).
19 Helicopteros Nacionales de Colombia, S.A. v. Hall, 466 U.S. 408, 415 (1984).
20 Burger King Corp. v. Rudzewicz, 471 U.S. 462, 472 (1985).
21 Ruston Gas Turbines Inc. v. Donaldson Co., 9 F.3d 415, 419 (5th Cir. 1993) (quoting World-
Wide Volkswagen Corp. v. Woodson, 444 U.S. 286, 297, 100 S. Ct. 559, 567 (1980)).
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22 Pervasive Software Inc., 688 F.3d at 222 (quoting Hanson v. Denckla, 357 U.S. 235, 253
(1958)).
23 Wilson v. Belin, 20 F.3d 644, 647 (5th Cir. 1994) (citing Asahi Metal Indus. Co. v. Superior
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26 Walden v. Fiore, 134 S. Ct. 1115, 1122 (2014) (quoting Burger King Corp. v. Rudzewicz,
471 U.S. 462, 475 (1985)).
27 Id.
28 Id.
29 721 Bourbon, Inc. v. House of Auth, LLC, 140 F. Supp. 3d 586, 595 (E.D. La. 2015).
30 See Calder v. Jones, 465 U.S. 783, 788 (1984).
31 Id. at 788–89.
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wherever the harm of his intentional tort is felt, but regardless, the Court has
since clarified that the crux of Calder rested on the unique way in which libel
involves reputational injury among the public. 32 Accordingly, the Court held
that, “The proper question is not where the plaintiff experienced a particular
injury or effect but whether the defendant’s conduct connects him to the forum
in a meaningful way.” 33
An action for cybersquatting under the ACPA does not inherently involve
the public at large in the same way as libel. Plaintiff does not allege or present
evidence that the Louisiana public has been confused by, or is even aware of,
Defendant’s registration of bespoke.com. Instead, Plaintiff’s harm in this
instance is that it is prevented from using a convenient domain name. This
harm has no connection to Louisiana other than that Plaintiff happens to live
there. Similarly, while Defendant’s email solicitations to a member of Plaintiff
may be evidence of Defendant’s bad faith intent to profit from his registration
of the domain name, they are not themselves the core of the tort and are
therefore not comparable to the acts constituting the elements of libel, which
in Calder actually took place in the forum state.
The lack of any elements of the alleged tort taking place in the forum
also distinguishes this case from Trois v. Apple Tree Auction Center, Inc. 34
There, the Fifth Circuit affirmed a Texas court’s finding of personal jurisdiction
32 See Walden, 134 S. Ct. at 1122. This limitation also renders Healix Infusion Therapy, Inc.
v. Helix Health, LLC, No. H-08-0337, 2008 WL 1883546, at *9 (S.D. Tex. Apr. 25, 2008), a
pre-Walden case on which Plaintiff relies, substantially less persuasive. Similarly, Bear
Stearns Companies Inc. v. Lavalle, No. 3:00-CV-1900-D, 2000 WL 34339773, at *3 (N.D.
Tex. Oct. 27, 2000), another case cited by Plaintiff, both precedes Walden and involves the
defendant’s active use the infringing domain names to send disparaging information about
plaintiff to forum residents.
33 Walden, 134 S. Ct. at 1125.
34 Trois v. Apple Tree Auction Ctr., Inc., No. 16-51414, 2018 WL 706517, at *4 (5th Cir. Feb.
5, 2018).
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35 See id.
36 Id. Therefore the stream of commerce or foreseeability tests advanced by Plaintiff are
inapplicable.
37 See Johnson v. World All. Fin. Corp., 830 F.3d 192, 198 (5th Cir. 2016).
38 See 15 U.S.C. § 1125(d).
39 The statute states that “‘traffics in’ refers to transactions that include, but are not limited
to, sales, purchases, loans, pledges, licenses, exchanges of currency, and any other transfer
for consideration or receipt in exchange for consideration.” 15 U.S.C. § 1125(D(1)(E).
Trafficking in a domain name therefore requires a transaction. Mere advertisement does
not establish a violation of the ACPA.
40 Plaintiff argues that Defendant’s email to Simpson in October of 2014 “establish[es
Defendant’s] personal knowledge of Bespoke’s existence and its interest in the domain
name.” Doc. 13 at 5. However, that email was sent to travissi2000@gmail.com, an
apparently personal address, and none of Simpson’s previous inquiries mentioned Bespoke
LLC.
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forum resident, but rather one of a forum resident happening to have a mark
similar to a foreign-owned domain name and seeking to take control of it.
Plaintiff has failed to make out a prima facie showing that Defendant’s
acts created a substantial connection to Louisiana, and therefore the Court
does not have specific personal jurisdiction over Defendant.
II. Personal Jurisdiction in the United States as a Whole Pursuant
to Rule 4(k)(2)
Plaintiff also argues that, in the absence of sufficient contacts with
Louisiana, Defendant has sufficient contacts with the United States as a whole
to establish jurisdiction pursuant to Federal Rule of Civil Procedure 4(k)(2).
That rule allows a court to exercise jurisdiction over a defendant that has been
served with process, is not subject to the jurisdiction of any individual state,
and over which the exercise of jurisdiction would comport with due process. 41
When a defendant does not concede jurisdiction in another state, a court need
not inquire into the defendant’s contacts with every other state before resorting
to 4(k)(2). 42 To determine whether jurisdiction exists under Rule 4(k)(2), a
court “must determine whether the defendant has sufficient ties to the United
States as a whole to satisfy constitutional due process concerns.” 43
In addition to the contacts discussed above, Plaintiff argues that
Defendant maintains two other contacts with the United States sufficient to
establish jurisdiction. 44 The first is Defendant’s purchase of the bespoke.com
domain name from a Colorado company. However, an isolated purchase from
a forum seller who is otherwise unrelated to the case at hand is insufficient to
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45 Plaintiff’s sole citation to the contrary is to a case interpreting the Louisiana long-arm
statute, not the bounds of Constitutional due process. See Stark v. Mobile Aerial Towers,
Inc., 374 F. Supp. 1046, 1051 (W.D. La. 1974).
46 Doc. 13 at 12.
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47 Monkton Ins. Servs., Ltd. v. Ritter, 768 F.3d 429, 434 (5th Cir. 2014) (quoting Davila v.
United States, 713 F.3d 248, 264 (5th Cir. 2013)).
48 Id. (quoting Freeman v. United States, 556 F.3d 326, 342 (5th Cir. 2009)).
49 Fielding v. Hubert Burda Media, Inc., 415 F.3d 419, 429 (5th Cir. 2005) (quoting Toys “R”
Us, Inc. v. Step Two, S.A., 318 F.3d 446, 456 (3d Cir. 2003)).
50 See Doc. 19-1.
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CONCLUSION
For the foregoing reasons, Defendant’s Motion to Dismiss for Lack of
Personal Jurisdiction is GRANTED. Plaintiff’s request for discovery and
transfer are DENIED. The case is DISMISSED.
____________________________________
JANE TRICHE MILAZZO
UNITED STATES DISTRICT JUDGE
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