Sun Life Assurance Co. v. Sun Bancorp, Inc.

946 F. Supp. 2d 182, 2012 WL 4764588, 2012 U.S. Dist. LEXIS 144412
CourtDistrict Court, D. Massachusetts
DecidedOctober 4, 2012
DocketCivil Action No. 11-12013-FDS
StatusPublished
Cited by18 cases

This text of 946 F. Supp. 2d 182 (Sun Life Assurance Co. v. Sun Bancorp, Inc.) is published on Counsel Stack Legal Research, covering District Court, D. Massachusetts primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Sun Life Assurance Co. v. Sun Bancorp, Inc., 946 F. Supp. 2d 182, 2012 WL 4764588, 2012 U.S. Dist. LEXIS 144412 (D. Mass. 2012).

Opinion

MEMORANDUM AND ORDER ON DEFENDANTS’ SECOND MOTION TO DISMISS

SAYLOR, District Judge.

This is a trademark infringement action brought by plaintiffs Sun Life Assurance Company of Canada (“SLACC”) and its American affiliate (Sun Life Assurance Company of Canada (U.S.)) (“SLACCUS”) against a New Jersey bank holding company, Sun Bancorp, Inc. (“SBI”), and its affiliate, Sun Financial Services (“SFS”). SLACC and its affiliate own and use trademarks containing the term “Sun” in connection with financial and insurance services, and contend that defendants’ use of the mark “Sun Financial Services” infringes on their trademark rights. SLACC also opposes SBI’s application to trademark “Sun Wealth Management.”

SLACC filed this action on November 14, 2011. SBI and SFS have moved to dismiss the complaint for lack of personal jurisdiction, pursuant to Fed.R.Civ.P. [185]*18512(b)(2) and for improper venue pursuant to Fed.R.Civ.P. 12(b)(3). For the reasons stated below, the motion will be granted.

I. Background

A. Factual Background

The facts are stated as alleged in the amended complaint and as included in subsequent filings to the extent that they are uncontested.

Plaintiff SLACC is a Canadian corporation with a principal place of business in Toronto, Ontario. (Am. Compl. ¶ 1). SLACC has been licensed to do business in Massachusetts since 1926, and regularly conducts business in Massachusetts. (Am. Compl. ¶ 1). Plaintiff SLACC-US is a Delaware corporation with a principal place of business in Wellesley Hills, Massachusetts. (Am. Compl. ¶ 2).

Defendants are New Jersey corporations with principal places of business in Vineland, New Jersey. (Am. Compl. ¶ 3). SBI is a bank holding company, whose principal subsidiary is Sun National Bank. SFS is a limited liability company owned by Sun National Bank. 0See PI. Opp. 3). Sun National Bank has 65 locations in New Jersey and two offices in Pennsylvania; it has no offices in Massachusetts. (Def. Mot. 5). Neither SBI nor SFS are registered to do business in Massachusetts. (Def. Mot. 5).

SLACC maintains an insurance group sales office in Massachusetts. (Am. Compl. ¶ 11). SLACC-US employs more than 1500 people at its headquarters in Massachusetts. (Am. Compl. ¶ 11). Together with their affiliates, they have continuously used trademarks containing the term “Sun” in connection with financial and insurance services in the United States for more than 100 years. (Am. Compl. ¶ 10). Plaintiffs own the following United States trademarks in connection with financial services: “Sun Life”; “Sun Life Financial”; “Sun Life Financial Masters”; “Sun Income Riser”; “Sun Capital”; “Sun Accumulator”; “Sunadvisor”; “Sun Capital Advisers LLC”; “Sun Universal Protector”; “Sun Survivorship UL”; and “Sunexcel.” (Am. Compl. ¶¶ 15-16). According to the complaint, each of these marks is widely recognized by the general consuming public in the United States as a designation of the source of SLACC services. (Am. Compl. ¶ 19).

SBI and SFS offer financial services throughout the United States, including Massachusetts, under the trade names “Sun National Bank” and “Sun Bancorp.” (Am. Compl. ¶ 23). SBI and SFS use the internet to promote sales of services under the marks “Sun National Bank,” “Sun Financial Services,” and “Sun Home Loans,” through the website https://www.sunnbnj. eom/home/personal, which is available to consumers throughout the United States, including consumers in Massachusetts. (Am. Compl. ¶24). Sun National Bank, rather than SBI or SFS, owns and operates the website. (See PI. Opp. 3; Def. Rep. 1-2). The only specific reference to Massachusetts on the website occurs within a drop-down menu of all fifty states on a customer information form. (See PI. Opp. 8-9).

SBI and SFS have a contractual relationship with Computershare Investor Services, LLC (“Computershare”), which acts as a transfer agent. (Id. at 4). Computershare has an office in Massachusetts. (Id.).

SBI filed a federal trademark application for the mark “Sun Wealth Management” on February 5, 2009, in connection with the following services: “ ‘promotion of financial and insurance services of others in areas of life, health, disability, long-term care, property and casualty and business and income protection insurance; business [186]*186management and planning services; business services, namely, identification of lending sources and business succession planning services; tax planning services’ and for ‘financial services, namely, estate planning services, financial' planning services, retirement planning, investment consultation and investment of funds for others; administration of employee benefit plans concerning insurance and finance; valuation of businesses and real estate.’ ” (Am. Compl. ¶ 25). SLACC opposed the application. (Am. Compl. ¶ 25).

B. Procedural History

On November 14, 2011, plaintiffs filed this action alleging claims against SBI and SFS for (1) trademark infringement in violation of 15 U.S.C. § 1114 et seq.; (2) false designation of origin and unfair competition arising under the Lanham Act, 15 U.S.C. § 1125(a); (3) federal dilution arising under 15 U.S.C. § 1125(c); and (4) violation of trademark rights under the common law. (Compl. ¶ 4).

SBI and SFS have moved to dismiss the action for lack of personal jurisdiction and lack of venue pursuant to Fed.R.Civ.P. 12(b)(2) and (3). On April 11, plaintiffs filed an amended complaint. On April 25, defendants moved a second time to dismiss the action pursuant to Fed.R.Civ.P. 12(b)(2) and (3).1

II. Analysis

A. General Principles

The exercise of personal jurisdiction over a defendant must be both authorized by statute and consistent with the due process requirements of the United States Constitution. Nowak v. Tak How Invs., Ltd., 94 F.3d 708, 712 (1st Cir.1996); Intech, Inc. v. Triple “C” Marine Salvage, Inc., 444 Mass. 122, 125, 826 N.E.2d 194 (2005); Good Hope Indus., Inc. v. Ryder Scott, Co., 378 Mass. 1, 5-6, 389 N.E.2d 76 (1979). Furthermore,

A district court may exercise authority over a defendant by virtue of either general or specific jurisdiction. Specific jurisdiction exists when there is a demonstrable nexus between a plaintiffs claims and a defendant’s forum-based activities.

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946 F. Supp. 2d 182, 2012 WL 4764588, 2012 U.S. Dist. LEXIS 144412, Counsel Stack Legal Research, https://law.counselstack.com/opinion/sun-life-assurance-co-v-sun-bancorp-inc-mad-2012.