PC Connection v . Crabtree CV-10-348-LM 12/06/10 UNITED STATES DISTRICT COURT FOR THE PDISTRICT OF NEW HAMPSHIRE
PC Connection, Inc.
v. Civil N o . 10-cv-348-LM Opinion N o . 2010 DNH 206 P Dayton Crabtree
O R D E R
In this civil action, plaintiff, PC Connection, Inc.
(hereinafter “plaintiff” or “PC Connection”), sues the
defendant, Dayton Crabtree (hereinafter “defendant” or
“Crabtree”), alleging cyberpiracy, trademark infringement,
violations of state consumer protection law, and other federal
claims under the Lanham Act, 15 U.S.C. § 1051, et seq. Doc. N o .
6. PC Connection is an online retailer that markets and sells
computer products, electronics, and related goods and services
on both a national and international scale. Crabtree owns a
computer information technology company called Computer
Connections, of which he is the sole employee, that operates out
of Hedgesville, West Virginia.
On August 1 7 , 2010, plaintiff filed a motion seeking a
temporary restraining order (“TRO”) and preliminary injunction.
Doc. N o . 7 . In an order issued August 2 0 , 2010, the Court
granted the TRO and ordered Crabtree t o , among other things, disable the link to his website and stop using “in any way” a
domain name “confusingly similar” to plaintiff s registered
domain name. Doc. N o . 8 . On September 2 , 2010, Crabtree filed
a pleading in which he contested the court s personal
jurisdiction over him. Doc. N o . 1 1 . The court scheduled a
hearing on the plaintiff s motion for preliminary injunction and
allowed the parties, in advance of the hearing, to further brief
the issue of personal jurisdiction. Doc. N o . 1 3 . On October 5 ,
2010, this Court held a hearing on plaintiff s request for a
preliminary injunction. For the reasons set forth herein, I
decline to exercise personal jurisdiction over this defendant,
and transfer the case to the United States District Court for
the Northern District of West Virginia.
BACKGROUND
This case concerns a dispute about Crabtree s use of the
domain name “pc-connections.com” for his website, a name very
similar to plaintiff s registered trademarks and tradename, as
well as its registered internet domain name. Plaintiff is a
Delaware corporation with a principal place of business in
Merrimack, New Hampshire. For more than twenty years,
plaintiff, a computer services company operating on a global
scale, has owned the federal registration for the trademark “PC
Connection” and has used the trademark and tradename in its
2 business. Plaintiff is also the registered owner of the
internet domain name “pcconnection.com.”
Crabtree recently started a small business, Computer
Connections, to provide computer related services to individuals
within a twenty-five mile radius of his home in Hedgesville,
West Virginia. To further his business, he went to GoDaddy.com,
a well-known purveyor of internet domain names, and entered the
name of his business. The website generated a list of available
domain names relating to the business name Crabtree entered.
After considering a few alternatives, Crabtree purchased “pc-
connections.com” and set up a website using that domain name.
Crabtree s website was informational and advertised his
services. The only interactivity the website allowed was the
ability to contact Crabtree by email by clicking on a link on
the website s homepage. In addition to the domain name,
Crabtree used “@pc-connections.com” as his business email
extension.
Pamela Carter works in plaintiff s legal department. One
of her responsibilities includes the monitoring and management
of plaintiff s intellectual property. She is responsible for
preventing the infringement and dilution of plaintiff s
trademarks and domain names. According to the testimony she
gave at the hearing, on April 2 6 , 2010, Carter received a report
3 from Checkmark Network, a company plaintiff employs to monitor
and capture internet occurrences of words similar to plaintiff s
trademarks. That report indicated that, on April 7 , 2010,
Crabtree registered the domain name “pc-connections.com.” Ex.
6.
Carter stated that she accessed the homepage for Crabtree s
domain name and found defendant s website for “Computer
Connections.” Ex. 7 . The subtitle, “Information Technology
services with integrity, excellence & teamwork,” sat atop the
following four separate links: “Services,” “Solutions,”
“Support,” and “About.” Id. Visible on the upper right corner
of the homepage was the phrase “Serving Hagerstown[,]
Martinsburg and the surrounding areas.” At the bottom of the
homepage was a West Virginia telephone number and an active link
to an email address. Id. Carter testified that the products
and services offered by Computer Connections appeared “very
similar if not identical” to those offered by plaintiff.
Between the dates of April 2 7 , 2010, the day after
plaintiff discovered Crabtree s website, and August 1 0 , 2010,
when plaintiff filed the instant lawsuit, the parties engaged in
a series of communications via letter and email. As plaintiff
asserts that these communications provide evidence to support
4 this court s personal jurisdiction over Crabtree, they are
summarized below.
On April 2 7 , 2010, shortly after Carter discovered
Crabtree s website, PC Connection, through its attorney, Peter
Lando, sent Crabtree a “cease and desist” letter. That letter
explained that plaintiff was a New Hampshire corporation that
owned federal trademarks and registrations for the mark “PC
Connection” to use in connection with its computer sales
business. Ex. 8 . The letter also explained that plaintiff
owned the registration for the domain name and mark
“pcconnection.com” for “retail store services, offered via a
global computer network and web site featuring computers,
computer systems, peripherals and software.” Id. Lando
outlined the history of plaintiff s ownership of the
“pcconnections.com” domain name and its many years of marketing
through its website under that brand name. Lando ended his
letter with the following demand that Crabtree discontinue his
use of the domain name “pc-connections.com”:
Because you are using the domain name in connection with computer-related information technology services, our client has no choice but to take appropriate action to halt your activities. Customers or potential customers who see such services offered at the domain are bound to believe that your services emanate from, or are licensed, endorsed, or sponsored by, our client. Any dissatisfaction with your services will reflect upon and irreparably
5 damage our client's hard-earned reputation and goodwill, as embodied in its PC CONNECTION marks.
Therefore we strongly urge you to abandon all plans and activities involving use of the domain name . Our client is willing to reimburse you for the domain name registration fee, provided that you agree to transfer ownership of the domain name to PC Connection, Inc.
Our client believes that an amicable resolution of this matter, without further legal complications, is the best outcome for both parties.
We look forward to your response.
Id.
After receiving the April 27 letter, Crabtree, who
testified that he was unaware of PC Connection at the time,
investigated PC Connection and learned that it was a large,
publicly traded company in the business of online computer sales
and services. On April 29, 2010, Crabtree responded to Lando in
an email:
I can appreciate your client, PC Connection, Inc.'s concern; however, the timing may be detrimental to my business and livelihood. I do not enter into decisions lightly, research and a survey was completed in the selection of the domain name, pc-connections.com. At no time did PC Connection, Inc. factor into this decision, as pc-conenctions.com [] was readily available for purchase and the most closely aligned available domain name to the business name, Computer Connections. Other than a registration fee, I have invested time and money into the URL, pc-connections.com, and email addresses at pc-connections.com, for example: brochures, business cards, search engine submissions, business directories, networking events, distribution list mailings and emails, various other marketing methods,
6 and secure Internet services via pc-connections.com. Please contact me as soon as possible to attempt an amicable resolution of this matter.
Ex. 9.
Two months passed with no correspondence between the
parties. Then, in a letter to Crabtree dated June 3 0 , 2010,
Lando again offered to settle the dispute by paying Crabtree the
cost of his domain registration fee for his transferring
ownership of the domain name to plaintiff. Ex. 1 0 . Lando
wrote: “This is the final offer to settle this matter before we
seek to enforce our client s rights and pursue all available
remedies.” Id.
On August 1 0 , 2010, plaintiff filed a five-count complaint
against Crabtree seeking, among other things, injunctive relief
and damages for Crabtree s alleged trademark infringement and
dilution, cyberpiracy, unfair competition and unfair and
deceptive trade practices. Doc. N o . 1 . On that same date,
Steven Grill, litigation counsel for plaintiff, forwarded to
Crabtree, via email, a copy of the complaint, with a final offer
to settle the case. Plaintiff s final offer was that, at no
cost to plaintiff, Crabtree would transfer ownership of the
domain name to plaintiff and agree to stop using that name or
any other name “confusingly similar” to plaintiff s tradename.
Doc. N o . 12-3. Thereafter, on that date, Grill and Crabtree
7 exchanged a series of emails (doc. n o . 1 2 - 3 ) , the relevant
portions of which are set forth below:
Crabtree:
. . . I am not in competition with PC Connection, but am a local business in Hedgesville, West Virginia. I am not internet-based, have not done anywhere near $75,000 in business since being laid off from my full- time job last year, I have not resold any hardware or software, but am designated as an electronic data services provider. pc-connections.com was recommended to me through a Godaddy.com search according to my business name and there never was nor ever will be any intent to infringe upon PC Connection. I am a single father and Computer Connections is the livelihood of my family. What I have invested into my business has mainly been marketing using the url and email addresses associated with pc-connections.com; if I can procure a relevant [dot]com domain name and am compensated for previous marketing expenses, domain name costs, and equal future marketing of a different domain name, I am willing to work with PC Connection.
Grill:
Thank you for your prompt reply . . . I am sure there are other names out there that would suit your business purposes without creating a serious potential for confusing customers. I certainly encourage you to select such a name immediately, to stop doing business as “PC-Connections,” and to notify the hosting company and/or registrar immediately that you intend to transfer the pc-connections.com domain to PC Connection.
You are not entitled to any compensation from PC Connection and I note that PC Connection s voluntary offer to reimburse you for the domain name registration fee [has] expired . . . . I will check with my client to see if that reimbursement offer can be put back on the table, but my previous message still stands: you must confirm by the close of business Friday that the pc-connections name will be transferred to PC Connection, and you must agree not
8 to use any confusingly similar names in the future.
I look forward to your agreement on these points so that it will not be necessary to proceed with the litigation.
I do not agree, as I am not cybersquatting or doing business as PC-Connections, and the effects would be detrimental to my livelihood; however, I will be adding a “not affiliated with PC Connection, Inc.” to my website.
Unfortunately that approach will not be adequate, as consumers and potential consumers who surf the Web could still be misdirected to your website and PC Connection cannot allow this type of confusion to exist. If that is your final position then you leave me no choice but to proceed with litigation.
That's about all I can do at this point. I'm trying to keep up with the mortgage and put food on the table. If this large corporation wants to proceed with pursuing detrimental effects to my family's livelihood, then so be it . . . I've always been fond of David's willingness to stand up to Goliath for what is right. Most [dot]com addresses have been monopolized by corporations such as PC Connection, so there are not a lot of options available. Whether users are misdirected to my site or not, I am clearly not affiliated or in competition with PC Connection
Doc. N o . 12-3.
The following additional facts are uncontested and are
relevant to my consideration of the issues presented here:
9 Between April 7, 2010, and the date Crabtree disabled
his website (on or about August 28, 2010), Ex. 11, Crabtree s
website generated less than $3,000.00 in revenue for his
business.
Computer Connections is operated by a single employee,
Crabtree, in Hedgesville, West Virginia. Crabtree s website
offers local, on-site computer services within a twenty-five
mile radius of Crabtree s residence. Doc. No. 11. Crabtree
testified that the website was primarily informational, in that
it provided information about his business to potential
customers, and provided an avenue for a visitor to the website
to make contact with him by email via a direct link located on
the website s homepage. Ex. 7.
A consumer who located Crabtree s website online could
not order products through the website. The only active aspect
of the website was the email link, through which Crabtree could
make contact with customers in order to conduct business. Ex.
7. Although Crabtree has made sales through the use of his
website, he testified that he did “not do many sales on the
internet.”
The only contact outside of Crabtree s local area that
his website has generated is the contact with plaintiff related
to this lawsuit. Doc. No. 14.
10 • As recently as September 1 5 , 2010, in email
communications to Grill, Crabtree was still using an email
signature that contained the domain name, “pc-connections.com,”
and email address “dayton@pcconnections.com” Ex. 1 3 . Crabtree
testified, and no contrary evidence was offered, that he was
only using the email address in his communications with Grill
and certain existing customers, but that the website remained
disabled.
DISCUSSION
I. Standard of Review
“To hear a case, a court must have personal jurisdiction
over the parties, that i s , the power to require the parties to
obey its decrees.” Astro-Med, Inc. v . Nihon Kohden Am., Inc.,
591 F.3d 1 , 8 (1st Cir. 2009) (internal citation and quotations
omitted). When personal jurisdiction is contested, the burden
lies on plaintiff to establish that the Court has such
jurisdiction. See Hannon v . Beard, 524 F.3d 275, 279 (1st
C i r . ) , cert. denied, ___ U.S. ___, 129 S . C t . 726 (2008); GT
Solar Inc. v . Goi, Civ. N o . 08-cv-249-JL, 2009 WL 3417587, at *2
(D.N.H. 2009); ICP Solar Techs., Inc. v . TAB Consulting, Inc.,
413 F. Supp. 2d 1 2 , 14 (D.N.H. 2006). Allegations of
jurisdictional facts are construed in the plaintiff s favor.
ICP Solar, 413 F. Supp. 2d at 1 4 .
11 In this case, I apply the “most conventional” standard, the
prima facie standard. See Daynard v . Ness, Motley, Loadholt,
Richardson & Poole, P.A., 290 F.3d 42, 51 (1st Cir. 2002).
Under the prima facie standard, courts “take specific facts
affirmatively alleged by the plaintiff as true (whether or not
disputed) and construe them in the light most congenial to the
plaintiff s jurisdictional claim.” Mass. Sch. of Law at
Andover, Inc. v. Am. Bar Ass n, 142 F.3d 26, 34 (1st Cir. 1998).
To make a prima facie showing of this calibre, the plaintiff ordinarily cannot rest upon the pleadings, but is obliged to adduce evidence of specific facts . . . . [T]he district court acts not as a factfinder, but as a data collector. That is to say, the court, in a manner reminiscent of its role when a motion for summary judgment is on the table, . . . must accept the plaintiff s (properly Documented) evidentiary proffers as true for the purpose of determining the adequacy of the prima facie jurisdictional showing.
Foster-Miller, Inc. v. Babcock & Wilcox Can., 46 F.3d 138, 145
(1st Cir. 1995). Plaintiff is obliged to rely on specific facts
set forth in the record to defeat defendant s motion to dismiss
based on an alleged lack of personal jurisdiction. See ICP
Solar, 413 F. Supp. 2d at 1 4 . The Court may also consider
uncontested facts submitted by the defendant. See Mass. Sch. of
Law., 142 F.3d at 3 4 . The court does not assess credibility or
engage in other “differential factfinding.” Foster-Miller, 46
F.3d at 145. “Despite the liberality of this approach, the law
12 does not require [the court] . . . to credit conclusory
allegations or draw farfetched inferences.” Mass. Sch. of Law,
142 F.3d at 34 (internal quotations omitted).
II. Personal Jurisdiction
A. Source of Law
To make a determination as to whether or not an out-of-
state defendant should be subjected to this Court s
jurisdiction, the Court must examine “whether contacts between
the defendant and the forum are sufficient to satisfy the
state s long arm statute and comport with the Fourteenth
Amendment s Due Process clause.” GT Solar, 2009 WL 3417587, at
*6 (citing Sawtelle v . Farrell, 70 F.3d 1381, 1387 (1st Cir.
1995)). New Hampshire s long arm statute is coextensive with
federal constitutional limits on jurisdiction. See Phillips
Exeter Acad. v . Howard Phillips Fund, Inc., 196 F.3d 2 8 4 , 287
(1st Cir. 1999). Accordingly, the personal jurisdictional
inquiry becomes the single question of whether the
constitutional requirements of due process have been met. See
GT Solar, 2009 WL 3417587, at * 6 .
B. Test
The determination as to whether a forum court has
jurisdiction over an out-of-state defendant is grounded in
“traditional notions of „fair play and substantial justice
13 inherent in the due process clause.” GT Solar, 2009 WL 3417587,
at *6 (quoting Burger King Corp. v . Rudzewicz, 471 U.S. 4 6 2 , 464
(1985) (internal quotations and citations omitted)).
Jurisdiction may therefore only be asserted over an out-of-state
defendant where “the defendant s conduct and connection with the
forum State are such that he should reasonably anticipate being
haled into court there.” World-Wide Volkswagen Corp. v .
Woodson, 444 U.S. 286, 297 (1980).
The “constitutional touchstone” for personal jurisdiction
is “whether the defendant purposefully established minimum
contacts in the forum State.” Burger King, 471 U.S. at 474
(internal quotations omitted). The Court must make a fact-
specific inquiry into the “minimum contacts” present in a
particular case, “involving an individualized assessment and
factual analysis of the precise mix of contacts” in that case.
Pritzker v . Yari, 42 F.3d 5 3 , 60 (1st Cir. 1994). A court does
not properly assert jurisdiction over an out-of-state defendant
if that defendant s contacts with the forum state are merely
“random,” “fortuitous,” or “attenuated.” Burger King, 471 U.S.
at 475.
“Jurisdiction cannot be created by the unilateral activity
of a plaintiff; rather „it is essential in each case that there
be some act by which the defendant purposefully avails itself of
14 the privilege of conducting activities within the forum State,
thus invoking the benefits and protections of its laws. ” GT
Solar, 2009 WL 3417587, at *7 (quoting Hanson v . Denckla, 357
U.S. 235, 253 (1958)). In addition to minimum contacts with the
forum state, the exercise of jurisdiction over the defendant
must be reasonable, and the plaintiff s claims must “be related
to the defendant s contacts.” Cambridge Literary Props. v . W .
Goebel Porzellanfabrik G.m.b.H., 295 F.3d 5 9 , 63 (1st Cir. 2002)
(internal citation omitted).
There are two forms of personal jurisdiction: general
jurisdiction, where a defendant maintains “continuous and
systematic” contacts with the forum state, and specific
jurisdiction, where, in the absence of “continuous and
systematic” contacts, “the plaintiff s cause of action relates
sufficiently t o , or arises from, a significant subset of
contacts between the defendant and the forum.” GT Solar, 2009
WL 3417587, at *7 (internal quotations and citation omitted);
see Mass. Sch. of Law., 142 F.3d at 34 (to show specific
jurisdiction there must be “a demonstrable nexus between a
plaintiff s claims and a defendant s forum-based activities”);
United Elec. Workers, 960 F.2d at 1088-89. Here, plaintiff does
not claim that this Court can exercise general jurisdiction over
defendant. Accordingly, this analysis is limited to whether or
15 not the Court may properly exercise specific personal
jurisdiction over the defendant in this case.
The First Circuit has established a three-part test to
determine whether a district court might properly exercise
specific jurisdiction in a particular case. See Negron-Torres
v . Verizon Commc n s , Inc., 478 F.3d 1 9 , 24 (1st Cir. 2007);
Mass. Sch. of Law, 142 F.3d at 3 5 .
The plaintiff must demonstrate that: (1) the cause of action directly relates to or arises from the defendant s in-state activities (“relatedness”), (2) the defendant purposefully availed itself of the benefits and protections of New Hampshire s laws such that its presence in a New Hampshire court was voluntary and foreseeable (“purposeful availment”), and (3) that the exercise of personal jurisdiction is reasonable (“reasonableness”).1
GT Solar, 2009 WL 3417587, at *7 (citing Negron-Torres, 478 F.3d
at 2 4 , and Phillips Exeter Acad., 196 F.3d at 288) The Court
must find that each of these three factors is present to support
a finding of specific personal jurisdiction. See United States
v . Swiss Am. Bank, Ltd., 274 F.3d 6 1 0 , 625 (1st Cir. 2001);
Phillips Exeter Acad., 196 F.3d at 288. Further, specific
jurisdiction is claim-specific, which means a plaintiff “must
demonstrate that all three elements of specific jurisdiction are
satisfied with respect to each claim asserted.” GT Solar, 2009
WL 3417587, at *7 (internal citation omitted).
1 I will refer to this test as the “Negron-Torres test” and to the three prongs of the test as the “Negron-Torres factors.”
16 C. The Negron-Torres Factors
1. Relatedness
The relatedness requirement “focuses on the nexus between
[the] defendant's contacts and the plaintiff's cause of action.”
GT Solar, 2009 WL 3417587, at *7 (quoting Swiss Am. Bank, 274
F.3d at 621). To satisfy the relatedness prong of the three-
part test, “the defendant's in-state conduct must form an
important or [at least] material element of proof in the
plaintiff's case.” GT Solar, 2009 WL 3417587, at *8 (quoting
Harlow v. Children's Hosp., 432 F.3d 50, 61 (1st Cir. 2005)
(internal quotations and citations omitted)). “The court must
determine the 'focal point' of the plaintiff's claim, and
'assess the interactions between the defendant and the forum
state through that prism.'” GT Solar, 2009 WL 3417587, at *8
(quoting Phillips Exeter Acad., 196 F.3d at 290). Of course,
before the Court can conduct a “relatedness” inquiry, it must
identify the alleged contacts; if no contacts exist, the court
cannot find that the requisite nexus between those contacts and
plaintiff's cause of action exists. See GT Solar, 2009 WL
3417587, at *8. Once contacts are identified, the court must
then “look for a 'meaningful link' between the contact and the
harm” alleged. GT Solar, 2009 WL 3417587, at *7 (quoting Nowak
17 v . Tak How Invs., Ltd., 94 F.3d 7 0 8 , 716 (1st Cir. 1996); see
ICP Solar, 413 F. Supp. 2d at 1 9 .
After consideration of the record presently before the
Court, including the pleadings, testimony, and exhibits
submitted, I identify the following as the relevant contacts
between defendant and this forum for purposes of this personal
jurisdiction analysis:
1. The defendant utilized the domain name “pc-
connections.com” as a website for his computer business between
mid-April 2010 and approximately August 2 8 , 2010.
2. The defendant utilized the email extension “@pc-
connections.com” from mid-April 2010, until September 2010.
3. The defendant responded, by email, to a number of
emails and letters from PC Connections, a company located in New
Hampshire, between April 2 9 , 2010, and August 1 0 , 2010.
In order to satisfy the “relatedness” requirement for a
finding of personal jurisdiction, plaintiff must demonstrate
that these contacts are “an important or at least material
element of proof in the plaintiff s case.” Harlow, 432 F.3d at
61. Plaintiff has alleged trademark infringement and
cybersquatting. The use of an allegedly infringing domain name
is a material element of trademark infringement. See Venture
Tape Corp. v . McGills Glass Warehouse, 540 F.3d 5 6 , 60 (1st Cir.
18 2008), cert. denied, ___ U.S. ___, 129 S . C t . 1622 (2009)
(setting out elements of trademark infringement claim).
Accordingly, I find that the use of “pc-connections.com” and
“@pc-connections.com” are sufficiently related to the claim of
trademark infringement for purposes of the first Negron-Torres
factor.
As to the emails sent by defendant in response to letters
and emails sent to him by plaintiff, I find that no such
“relatedness” has been demonstrated. Plaintiff has asserted
that the emails constitute “extortion” and that the “demand[s]
for money” contained within the emails manifest a material
element of cyberpiracy or cybersquatting, pursuant to the Anti-
Cybersquatting Consumer Protection Act (“ACPA”), 15 U.S.C. §
1125(d).
The ACPA was passed “primarily in an effort to stop
cybersquatters who register numerous domain names containing
American trademarks or tradenames only to hold them ransom in
exchange for money.” Bay State Sav. Bank v . Baystate Fin.
Servs., LLC, 484 F. Supp. 2d 205, (D. Mass. 2007) (internal
quotations and citations omitted). To state a violation of the
ACPA, plaintiff must demonstrate that “(1) it has a valid
trademark entitled to protection; (2) its mark is distinctive or
famous; (3) the defendant s domain name is identical or
19 confusingly similar to, or in the famous marks, dilutive of, the
owner s mark; and (4) the defendant used, registered, or
trafficked in the domain name (5) with a bad faith intent to
profit.” Nationwide Payment Solutions, LLC v. Plunkett, 697 F.
Supp. 2d 165, 172 (D. Me. 2010).
The record before the Court easily establishes the first
four elements. The fifth element, possession by defendant of
“bad faith intent,” however, is where the plaintiff s
allegations falter. The ACPA sets out nine non-exhaustive
factors to evaluate in determining the existence of bad faith:
(I) the trademark or other intellectual property rights of the person, if any, in the domain name; (II) the extent to which the domain name consists of the legal name of the person or a name that is otherwise commonly used to identify that person; (III) the person s prior use, if any, of the domain name in connection with the bona fide offering of any goods or services; (IV) the person s bona fide noncommercial or fair use of the mark in a site accessible under the domain name; (V) the person s intent to divert consumers from the mark owner s online location to a site accessible under the domain name that could harm the goodwill represented by the mark, either for commercial gain or with the intent to tarnish or disparage the mark, by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the site; (VI) the person s offer to transfer, sell, or otherwise assign the domain name to the mark owner or any third party for financial gain without having used, or having an intent to use, the domain name in the bona fide offering of any goods or services, or the person s prior conduct indicating a pattern of such conduct; (VII) the person s provision of material and misleading
20 false contact information when applying for the registration of the domain name, the person s intentional failure to maintain accurate contact information, or the person s prior conduct indicating a pattern of such conduct; (VIII) the person s registration or acquisition of multiple domain names which the person knows are identical or confusingly similar to marks of others that are distinctive at the time of registration of such domain names, or dilutive of famous marks of others that are famous at the time of registration of such domain names, without regard to the goods or services of the parties; and (IX) the extent to which the mark incorporated in the person s domain name registration is or is not distinctive and famous within the meaning of subsection (c) of this section.
15 U.S.C. § 1125(d)(1)(B)(i)(I)-(IX). The statute continues:
“Bad faith intent . . . shall not be found in any case in which
the court determines that the person believed and had reasonable
grounds to believe that the use of the domain name was a fair
use or otherwise lawful.” 15 U.S.C. § 1125(d)(1)(B)(ii).
Upon consideration of these factors, I find that the
undisputed facts on this limited record do not support a finding
that the defendant here has likely violated the ACPA, as those
facts do not make out “bad faith intent” on the part of the
defendant. Here, although the domain name “pc-connections.com”
is arguably confusingly similar to plaintiff s registered marks,
defendant legally purchased the domain name through Godaddy.com
in order to use it for his own small business. Defendant then
actually used the domain name for his own bona fide business
21 purposes and transactions. Nothing in the record indicates that
defendant sought to capitalize on the goodwill of plaintiff or
to confuse consumers or divert consumers to his own website. To
the contrary, the undisputed evidence in the record is that
prior to receiving the “cease and desist” letter, defendant was
unaware the plaintiff existed. Further, when he was alerted to
the similarity between his domain name and plaintiff s mark,
defendant offered to place a non-affiliation statement on his
website without charge.
Defendant purchased only one domain name. Defendant did
not initiate any exchange with the plaintiff in an effort to
sell the domain name for profit. No evidence or allegation
before the Court suggests that defendant has ever engaged in any
pattern or past instance of purchasing and selling domain names
for profit, or has ever purchased a domain name that he did not
actually use. Further, the contact information on defendant s
website was for himself and for “Computer Connections,” not PC
Connection. Any offer the defendant did make to sell the domain
name to PC Connection occurred after defendant was using the
domain name in the bona fide offering of goods and services, and
after PC Connection initiated the conversation about money when
it offered to pay Crabtree for the domain name registration fee
and invited Crabtree to respond. Defendant s response to that
22 offer was not an extortionate demand, but was a legitimate and
reasoned response explaining why he was unable to accept the
plaintiff s offer.
Even construing the facts in plaintiff's favor, there is no
evidence before the Court that plaintiff acted with bad faith
intent. When defendant declined to promptly discontinue all use
of “pc-connections.com” for several days after the Court ordered
him to do s o , and failed to discontinue use of the “@pc-
connections.com” extension for an additional period of time,
those events occurred after the conclusion of the email
correspondence. Nothing on the record suggests that there were
any further negotiations between the parties, and in particular,
none initiated by Crabtree, after August 2010. 2 Accordingly, the
defendant s continued use of the marks does not, on this record,
appear to have anything to do with plaintiff s allegation of
cybersquatting.
Moreover, contrary to plaintiff s argument, the limited
record before the Court illustrates only that defendant wanted
sufficient money from plaintiff to cover his expenses.
Plaintiff points to defendant s request for both reimbursement
for past expenses and the cost of future marketing as evidence
2 Defendant s September 1 5 , 2010, email to Grill was a one-line request for Grill to email Crabtree a copy of Grill s most recent filing in the case. Ex. 1 3 .
23 that he was attempting to “extort” more money than he had
invested in the domain name. The request from defendant,
however, is more accurately interpreted as a request to cover
the cost to him, of both time and money, in making the switch to
a new domain name which might well cost more than what had been
invested in marketing with the “pc-connections.com” information.
For instance, in addition to replacing stationery and business
cards, and in addition to the cost of the new domain
registration name, all of which could be covered by
reimbursement for previous costs, the switch in domain names
could require additional marketing, such as mailings to notify
customers and potential customers of the change in information.
Even if Crabtree were requesting money in excess of his
expenses, such a request was made in the context and course of
negotiations initiated by the plaintiff. The request made does
not, on its face, appear to be an unreasonable negotiation
position.
I find that, on the present record, plaintiff has not made
out a prima facie case that defendant s request for
reimbursement of marketing expenses in exchange for the
relinquishment of defendant s legally obtained domain name
constituted any element of cybersquatting. Accordingly, the
24 email correspondence does not establish relatedness for the
purposes of the Negron-Torres test.
2. Purposeful Availment
The “purposeful availment” prong requires the Court to
inquire into whether the defendant s contacts with the forum
state constitute an intentional availment of the “privilege of
conducting activities in the forum state,” GT Solar, 2009 WL
3417587, at *8 (quoting Sawtelle, 70 F.3d at 1389), “thereby
invoking the benefits and protections” of our laws. ICP Solar,
413 F. Supp. 2d at 1 9 . To be considered “purposeful availment,”
contact with the forum state must be voluntary and must create a
foreseeable possibility that the defendant could be called to
answer in a court of the forum state.
Voluntariness requires that the defendant s contacts with the forum state proximately result from actions by the defendant himself. The contacts must be deliberate, and not based on the unilateral actions of another party. Foreseeability requires that the contacts also must be of a nature that the defendant could reasonably anticipate being haled into court there.
Phillips v . Prairie Eye Ctr., 530 F.3d 2 2 , 28 (1st Cir. 2008),
cert. denied, ___ U.S. ___, 129 S . C t . 999 (2009) (emphasis in
original) (quotations and citations omitted). The purposeful
availment prong is therefore satisfied only if the plaintiff can
demonstrate that a “defendant purposefully and voluntarily
25 directs his activities toward the forum so that he should
expect, by virtue of the benefit he receives, to be subject to
the court s jurisdiction based on these contacts.” GT Solar,
2009 WL 3417587, at *8 (internal quotation and citations
omitted). The purposeful availment requirement “ensures that a
defendant will not be haled into a jurisdiction solely as a
result of random, fortuitous, or attenuated contacts, or of the
unilateral activity of another party or a third person.” Burger
King, 471 U.S. at 475 (internal citations and quotations
omitted).
a. The Domain Name and Email Extension
Where purposeful availment is alleged to have taken place
only by virtue of an internet presence accessible in the forum
state, “[t]he likelihood that personal jurisdiction can be
constitutionally exercised is directly proportionate to the
nature and quality of commercial activity than an entity
conducts over the Internet.” Zippo Mfg. C o . v . Zippo Dot Com,
Inc., 952 F. Supp. 1119, 1124 (W.D. P a . 1997) (addressing
whether website activity supported claim of specific
jurisdiction). The oft-cited Zippo Mfg. opinion articulates a
“sliding scale” to evaluate the extent of a website s contacts
with a forum state:
26 At one end of the spectrum are situations where a defendant clearly does business over the Internet. If the defendant enters into contracts with residents of a foreign jurisdiction that involve the knowing and repeated transmission of computer files over the Internet, personal jurisdiction is proper. At the opposite end are situations where a defendant has simply posted information on an Internet Web site which is accessible to users in foreign jurisdictions. A passive Web site that does little more than make information available to those who are interested in it is not grounds for the exercise [of] personal jurisdiction. The middle ground is occupied by interactive Web sites where a user can exchange information with the host computer. In these cases, the exercise of jurisdiction is determined by examining the level of interactivity and commercial nature of the exchange of information that occurs on the Web site.
Zippo Mfg., 952 F. Supp. at 1124 (internal citations omitted).
“[T]he mere existence of a website that is visible in a forum
and that gives information about a company and its products is
not enough, by itself, to subject a defendant to personal
jurisdiction in that forum.” Cossaboon v . M e . Med. Ctr., 600
F.3d 2 5 , 35 (1st Cir. 2010) (internal quotation and citation
If a mere presence on the internet were enough to give rise
to personal jurisdiction anywhere the website could be viewed,
there would essentially be no limit on personal jurisdiction
over out-of-state defendants. See id. For website activity to
give rise to an exercise of personal jurisdiction over the
operator of the website, something more than mere presence is
27 necessary, “such as interactive features which allow the
successful online ordering of the defendant s products.” See
id. (internal quotation and citation omitted). The
availability, in a forum, of some interactive features that do
not specifically target business in that forum do not alone
render a website sufficient to create a contact in that forum.
See id. (mere fact of hospital website s accessibility in New
Hampshire, where website was not purely informational, and where
visitors could donate money, pre-register patients, register for
classes, find a doctor, or apply for employment, “does not
indicate that [hospital] purposefully availed itself of the
opportunity to do business in New Hampshire”).
There is no question that defendant used the domain name
“pc-connections.com” and the email extension “@pc-
connections.com” for his business. Further, there is no
question that his website was accessible in New Hampshire.
Under the Zippo Mfg. framework, the question becomes, therefore,
into what category of interactivity the defendant s website
falls. The evidence before the Court is that defendant s
customers could not purchase products or services directly from
the website, and that, with the exception of the email link, the
website was only informational, not interactive. Defendant
concedes that he did obtain some business through email
28 communication that had been initiated by clicking on the email
link on the website.
However, to the extent that such minimal interactivity as
providing a link to email would qualify as “middle ground” for
purposes of the Zippo analysis, the court must inquire “into the
level of the interactivity between [defendant] and residents of
New Hampshire and an examination of the commercial nature of
that interactivity.” ICP Solar, 413 F. Supp. 2d at 1 9 . The
Fourth Circuit has found that personal jurisdiction over an out-
of-state defendant may be exercised, when the jurisdiction is
based on an electronic internet presence in the forum state,
“when that person (1) directs electronic activity into the
State, (2) with the manifested intent of engaging in business or
other interactions within the State, and (3) that activity
creates, in a person within the State, a potential cause of
action cognizable in the State s courts.” ALS Scan, Inc. v .
Digital Serv. Consultants, Inc., 293 F.3d 7 0 7 , 714 (4th Cir.
2002). The Sixth Circuit has held that purposeful availment
exists where “the [website] is interactive to a degree that
reveals specifically intended interaction with the residents of
the state.” Neogen Corp. v . Neo Gen Screening, Inc., 282 F.3d
883,890 (6th Cir. 2002).
29 Here, aside from his correspondence with plaintiff, which
was not commercial in nature and was not initiated with the
purpose of “engaging in business or other interactions within
the State,” ALS Scan at 7 1 4 , neither defendant nor his website
had any interactions with anyone in the State of New Hampshire.
Although defendant s website could be accessed from New
Hampshire, “[a] passive website that does little more than make
information available to those who are interested in it is not
grounds for the exercise of personal jurisdiction.”
Toytrackerz, LLC v . Koehler, 2009 WL 1505705, *7 (D. Kan. 2009);
see Cossaboon, 600 F.3d at 3 5 . Further, the homepage of
Crabtree s website stated explicitly that it was a business
serving only a small area of West Virginia. No advertising or
any other commercial activity was ever directed at New Hampshire
or any New Hampshire resident. Defendant took no action to
intentionally seek the privileges or benefits of doing business
in New Hampshire. The mere existence of the website and email
extension is insufficient to constitute purposeful availment.
This does not end the inquiry. Plaintiff asserts that when
Crabtree received the April 2 7 , 2010, letter from Lando, he
became aware of the allegation that he was infringing on the
mark of a New Hampshire corporation, and therefore, the
continued use of the mark after that date constituted purposeful
30 availment. I do not find that continuing the use of the domain
name and email extension at that time, however, constitutes
purposeful availment. To the contrary, the evidence in the case
demonstrates that defendant voluntarily offered to add “not
affiliated with PC Connection” to his website upon learning of
the existence of that company, that his website specifically and
explicitly targeted only a small area in West Virginia, and that
he had never received an inquiry or any business from New
Hampshire, before or after receiving the letter.
The fact that plaintiff alerted defendant to its own
opinion that he was infringing on their marks does not render
defendant s continued use of that mark “purposeful availment.”
Here, defendant disagreed with plaintiff s opinion, voluntarily
offered to add “not affiliated with PC Connection” to his
website to avoid any potential confusion, and did nothing
affirmative to exploit any similarity between his domain name
and plaintiff s marks. Upon these facts, purposeful availment
was not created simply by Crabtree s receipt of a “cease and
desist” letter. To find otherwise would authorize personal
jurisdiction in this forum over any defendant who receives a New
Hampshire corporation s “cease and desist” letter and does not
immediately discontinue his use of the allegedly infringing
mark.
31 This analysis changes, however, at the point where the
Court issued a Temporary Restraining Order enjoining defendant s
use of “pc-connections.com” and the related email extension. At
that point, defendant was explicitly made aware of the Court s
finding that plaintiff was likely to succeed on its claims that
defendant s use of “pc-connections.com” and its email extension
constituted infringement on plaintiff s marks. Defendant,
however, did not immediately disable the website, but waited
several days to do s o . Additionally, defendant continued to use
the “@pc-connections.com” email extension until at least
September 2010, in violation of the Court s TRO.
Accordingly, to the extent that defendant maintained his
website at “pc-connections.com” after August 2 0 , 2010, or
continued to use the “@pc-connections.com” email extension after
that date, I find that defendant purposefully availed itself of
the benefits of using the infringing mark of a New Hampshire
corporation. Accordingly, as to Crabtree s limited use of “pc-
connections.com” in his email signature after August 2 0 , 2010,
and his use of “@pc-connections.com” in communications with an
existing client after August 2 0 , 2010, plaintiff has established
a prima facie case supporting a finding of “purposeful
availment” for purposes of the Negron-Torres test.
32 b. The Email Correspondence
All of the correspondence between the parties prior to
bringing this lawsuit was initiated by plaintiff. Plaintiff
also initiated settlement negotiations by stating first its
desire for an “amicable solution” and then by affirmatively
offering to pay defendant for relinquishing the domain name in
question. I cannot find that responding to these emails, albeit
in a manner not satisfying to plaintiff, and continuing a
negotiation initiated by plaintiff, constitute purposeful
availment of the privileges of doing business in New Hampshire.
See GT Solar, 2009 WL 3417587, at * 8 . I find, therefore, that
nothing in the fact or content of the email correspondence
between Crabtree and plaintiff constitutes purposeful availment.
3. Reasonableness
The third, and final, prong of the Negron-Torres test
“involves the reasonableness and essential fairness of asserting
jurisdiction over a foreign defendant.” GT Solar, 2009 WL
3417587, at * 8 . Reasonableness is evaluated by considering the
following five “gestalt factors”:
(1) the defendant s burden of appearing; (2) the forum state s interest in adjudicating the dispute; (3) the plaintiff s interest in obtaining convenient and effective relief; (4) the judicial system s interest in obtaining the most effective resolution of the controversy; and (5) the common interests of all sovereigns in promoting substantive social policies.
33 Sawtelle, 70 F.3d at 1394. This inquiry “is influenced by the
strength of the plaintiff s showing of relatedness and
purposeful availment . . . . The gestalt factors rarely
preclude jurisdiction where the first two prongs have been
established, but will often tip against exercising jurisdiction
when the other factors are weak.” GT Solar, 2009 WL 3417587, at
*9 (internal citations omitted). The appeals court has
described a sliding scale wherein the weaker the plaintiff s
demonstration of minimum contacts, the less a defendant need
show to establish that the exercise of jurisdiction over him is
unreasonable. See Ticketmaster-New York, Inc. v . Alioto, 26
F.3d 2 0 1 , 210 (1st Cir. 1994). Further, “[e]ven if the
defendant s actions create sufficient minimum contacts, the
court must still consider whether the exercise of personal
jurisdiction over the defendant would offend traditional notions
of fair play and substantial justice.” Toytrackerz, 2009 WL
1505705, at *5 (internal quotations and citations omitted).
a. Strength of First Two Negron-Torres Factors
As explained above, plaintiff showed a relationship between
the forum state and defendant s use on the internet of a domain
name and email extension similar to plaintiff s marks. These
contacts are only “related” to the claims before the Court for
34 purposes of satisfying the Negron-Torres test, in one respect:
plaintiff s claim that the defendant s internet presence
infringed plaintiff s trademarks as to any internet users in New
Hampshire.
Moving to “purposeful availment,” the only action on the
part of defendant that constituted “purposeful availment” was
the use of “pc-connections.com” in Crabtree s email signature,
and the use of the “@pc-connections.com” email extension in
communicating with an existing client after the August 2 0 , 2010,
issuance of the TRO. Such use was minimal, at best, and there
is no indication that any actual confusion of marks, or
financial gain at plaintiff s expense, resulted from that use.
For purposes of evaluating the “reasonableness” prong,
therefore, I begin with the premise that the plaintiff s showing
on the first two prongs is not overwhelming, given that the
defendant s internet presence was not directed toward New
Hampshire users in any particular manner, and was in fact
specifically directed at users near Hedgesville, West Virginia.
With that in mind, I will evaluate the gestalt factors to
determine whether or not exercising personal jurisdiction is
reasonable and fair, and thus satisfies due process.
35 b. Gestalt Factors
i. Burden on Defendant
Defendant is a single father and sole proprietor of a small
computer business proceeding pro se. Although answering this
matter in this forum would present some practical burden to
defendant, I cannot find that his circumstances are unique or
extraordinary. This factor, therefore, is neutral.
ii. Forum State's Interest
New Hampshire certainly has an interest in resolving
business disputes that concern New Hampshire corporations. The
Northern District of West Virginia, however, maintains a similar
interest in litigating matters concerning businesses located
there. This factor is therefore neutral and does not favor
either side.
iii. Plaintiff's Interest in Convenient and Effective Relief
Plaintiff has an interest in convenient relief in this
Court, as the company and presumably many of its witnesses live
in this jurisdiction. Plaintiff's interest in litigating this
matter locally, however, is tempered by the fact that PC
Connection conducts business nationwide. Accordingly, while the
facts relevant to this factor tend to favor exercising
36 jurisdiction, I do not accord this factor a great deal of weight
in my consideration.
iv. Judicial System s Interest
I find that the judicial system s interest in obtaining the
most effective resolution of this matter favors neither the
exercise nor refusal to exercise personal jurisdiction in this
matter. See GT Solar, 2009 WL 3417587, at *11 (finding that in
most cases, the judicial system s interest in a matter will not
favor either side of a personal jurisdiction dispute). In
either forum in question here, West Virginia or New Hampshire,
the judicial system is interested in promoting efficient and
convenient resolution of the issues presented by this case.
Further, litigation in either forum is likely to present
convenience and other issues for the court to resolve.
v. Public Policy Considerations
Several issues of substantive public policy are presented
in this matter. To exercise personal jurisdiction over
defendant here, the Court would be finding that simply by
discovering a legally obtained but potentially infringing mark
in use somewhere, sending a “cease and desist” letter, and then
initiating negotiations to resolve the matter, plaintiff, or a
like-situated company, could hale almost any defendant with a
web presence into court in its home forum. Here, there is no
37 allegation, and no evidence, that defendant intentionally
obtained a domain name similar to plaintiff s marks in an effort
to sell the domain name back to plaintiff for profit or to
somehow hold the domain name for ransom. There is no evidence
that even a single person was confused by defendant s use of the
domain name. There is no evidence that defendant ever intended
to do any business in New Hampshire or anywhere outside of a
twenty-five mile radius of Hedgesville, West Virginia. The
record before this Court reveals a small businessman trying to
start a business by legally purchasing a domain name suggested
by GoDaddy.com, with neither any knowledge of PC Connection nor
intent to injure PC Connection in any way.
The plaintiffs have demonstrated only very minimal contacts
made with New Hampshire by defendant, and of that contact, only
a small amount of post-TRO use of the potentially infringing
marks can constitute “purposeful availment” of the benefits of
doing business in this forum. With the exception of minimal
continued use of the domain name for approximately one week
post-TRO, and limited use of the email extension for
approximately one month post-TRO, there is no evidence of any
intent to infringe on PC Connection s marks, no intent to cause
confusion or to benefit from PC Connection s good will, and no
intent to extort money from PC Connection. On this record, with
38 such a minimal showing of relevant contacts, and strong public
policy favoring a refusal to exercise jurisdiction in this
matter, I find that exercising personal jurisdiction over
defendant, on this record, “would offend traditional notions of
fair play and substantial justice,” Toytrackerz, 2009 WL
1505705, at * 5 , and I decline to do s o .
III. Transfer
Under 28 U.S.C. § 1631, 3 a civil action that is filed in a
court without jurisdiction to consider the matter may be
transferred to a court where the action could have properly been
brought at the time it was filed. See Cimon v . Gaffney, 401
F.3d 1 , 7 n.21 (1st Cir. 2005) (supporting the view that § 1631
authorizes transfers to allay any jurisdictional defect,
including a personal jurisdiction defect, after collecting
3 28 U.S.C. § 1631 provides:
Whenever a civil action is filed in a court as defined in section 610 of this title or an appeal, including a petition for review of administrative action, is noticed for or filed with such a court and that court finds that there is a want of jurisdiction, the court shall, if it is in the interest of justice, transfer such action or appeal to any other such court in which the action or appeal could have been brought at the time it was filed or noticed and the action or appeal shall proceed as if it had been filed in or noticed for the court to which it is transferred on the date upon which it was actually filed in or noticed for the court from which it is transferred.
39 conflicting authorities on the question of whether § 1631
authorizes transfers to cure a want of personal jurisdiction).
I find that this matter could properly have been filed in the
United States District Court for the Northern District of West
Virginia, which possesses personal jurisdiction over the
defendant, at the time it was filed here. Further, plaintiff
concedes that it does business in West Virginia, so it appears
the Northern District of West Virginia likely has personal
jurisdiction over PC Connection.
CONCLUSION
Plaintiff has failed to satisfy the Negron-Torres test for
personal jurisdiction. Accordingly, I decline to exercise
personal jurisdiction over defendant. The motion for
preliminary injunction is denied. I direct that this case be
transferred to the United States District Court for the Northern
District of West Virginia for consideration.
SO ORDERED. ^^^f I
/^ y / ^ Landya B. ^c/fferty United S t a t ^ Magistrate Judge
Date: December 6, 2010
cc: Steven E. Grill, Esq. Anne E. Trevethick, Esq. Dayton Crabtree, pro se