Groma, LLC v. BuildRE, LLC

668 F.Supp.3d 40

GROMA, LLC, Plaintiff, v. BUILDRE, LLC, Groma GPS Software and Machinery Automation System,and Groma GPS Yazilim Ve Makine Otomasyon Sistemleri Anonim Şirketi a/k/a Groma GPS & Machine Automation, Defendants.

Civil Action No. 22-CV-11708-AK

United States District Court, D. Massachusetts

Signed April 3, 2023

Susan G.L. Glovsky, Hamilton Brook Smith Reynolds, Boston, MA, Samuel J. Sussman, Hamilton, Brook, Smith & Reynolds, P.C., Boston, MA, for Plaintiff.

Devanshi Somaya, Pro Hac Vice, Irving, TX, Shannon Melissa Zmud Teicher, Pro Hac Vice, Jackson Walker, LLP, Dallas, TX, Thomas C. Frongillo, Emily D. Amrhein, Campbell Conroy & O'Neil, P.C., Boston, MA, for Defendants.

MEMORANDUM AND ORDER ON DEFENDANTS' MOTION TO DISMISS AND PLAINTIFF'S MOTION FOR A PRELIMINARY INJUNCTION

A. KELLEY, District Judge

Plaintiff Groma, LLC ("Groma-Massachusetts"), brings this action against Defendants BuildRE, LLC ("BuildRE"), Groma GPS Software and Machinery Automation System ("Groma GPS-Texas"), and Groma GPS Yazilim Ve Makine Otomasyon Sistemleri Anonim Şirketi ("Groma GPS-Turkey") for trademark and service mark infringement under the Lanham Act and at common law. [Dkt. 1 ("Compl.") at ¶ 1]. Plaintiff has filed a motion for a preliminary injunction [Dkt. 13], which Defendants oppose [Dkt. 34]. Defendants have filed a joint motion to dismiss for lack of personal jurisdiction [Dkt. 25], which Plaintiff opposes [Dkt. 38]. For the following reasons, Defendants' joint motion to dismiss [Dkt. 25] is GRANTED, and Plaintiff's motion for a preliminary injunction [Dkt. 13] is DENIED AS MOOT.

I. BACKGROUND

The Court draws the facts from the complaint and undisputed evidentiary proffers submitted by both parties in support of their jurisdictional arguments. Plaintiff Groma-Massachusetts is a Massachusetts-based company with a place of business in Boston, Massachusetts. [Compl. at ¶ 5]. Groma-Massachusetts is a real estate and technology firm which provides real estate investment, development, and management services, as well as technology to tenants, developers, investors, property managers, and communities. [Id. at ¶ 12]. Groma-Massachusetts is the owner of U.S. Trademark Registration No. 6,244,525 for "GROMA" within Class 36 and Class 37, which encompass trademark uses in various real estate fields. [Id. at ¶ 33].

Defendant BuildRE is a Texas-based company with a place of business in Frisco, Texas. [Id. at ¶ 6; Dkt. 28 at ¶ 4]. Defendant Groma GPS-Texas is a Texas-based corporation located at the same address in Frisco, Texas, as BuildRE. [Compl. at ¶ 7; Dkt. 30 at ¶ 4]. Defendant Groma GPS-Turkey is a Turkey-based corporation with a place of business in Gebze, Kocaeli, Turkey. [Compl. at ¶ 8; Dkt. 29 at ¶¶ 4-5]. Patrick Joseph Morgan is chief executive officer of each of the Defendant-corporations. [Compl. at ¶ 9; Dkt. 28 at ¶ 2; Dkt. 29 at ¶ 2; Dkt. 30 at ¶ 2]. Groma GPS-Texas and Groma GPS-Turkey are wholly owned subsidiaries of BuildRE. [Compl. at ¶ 10]. All three companies are technology companies. [Id. at ¶¶ 37, 48, 67]. Groma GPS-Turkey designs and creates GPS and vehicle automation software and hardware using artificial intelligence ("AI"), such as software to operate machines that drive piles into soil to build solar panels using AI and GPS technology. [Dkt. 29 at ¶¶ 5-6]. BuildRE distributes products related to pile drivers for photovoltaic solar projects. [Dkt. 28 at ¶ 12]. BuildRE distributes software products designed by Groma GPS-Turkey among other products for other companies. [Id. at ¶ 13]. To put it simply, BuildRE is a parent company that distributes the software products of its subsidiary, Groma GPS-Turkey. Groma GPS-Texas has not yet conducted any business and does not have any customers, sales, revenue, or a website. [Dkt. 30 at ¶ 6].

Plaintiff does not dispute the following facts asserted by Defendants. First, none of the Defendants is listed with the Massachusetts Secretary of the Commonwealth, nor do they pay any taxes in Massachusetts. [Dkt. 28 at ¶¶ 5, 18; Dkt. 29 at ¶¶ 9, 20; Dkt. 30 at ¶¶ 5, 15]. Second, none of the Defendants has a physical presence in Massachusetts, such as offices, manufacturing, or distribution facilities, nor do they have any employees in Massachusetts. [Dkt. 28 at ¶¶ 6-7, 10-11; Dkt. 29 at ¶¶ 10-11, 16-17; Dkt. 30 at ¶¶ 7-8, 11-12]. Third, none of the Defendants has any customers in Massachusetts, nor do they derive any income from operations in Massachusetts, and there are no records of any sales or shipments to Massachusetts from any of the Defendants. [Dkt. 28 at ¶¶ 15, 17, 19; Dkt. 29 at ¶¶ 18-19, 21; Dkt. 30 at ¶¶ 13-14, 16].

Groma-Massachusetts filed the complaint in this action seeking damages and a preliminary and permanent injunction. [Compl. at ¶ 1]. Groma-Massachusetts filed a motion for a preliminary injunction shortly thereafter. [Dkt. 13]. Defendants then jointly moved to dismiss for lack of personal jurisdiction. [Dkt. 25]. The Court stayed consideration of Plaintiff's request for a preliminary injunction until it could resolve the Defendants' motion to dismiss for lack of personal jurisdiction. [See Dkt. 33].

II. LEGAL STANDARD

When "confronted with a motion to dismiss for want of in personam jurisdiction," the plaintiff bears the burden of proving that the court may exercise personal jurisdiction over the defendant. Motus, LLC v. CarData Consultants, Inc., 23 F.4th 115, 121 (1st Cir. 2022) (citations omitted); see A Corp. v. All Am. Plumbing, Inc., 812 F.3d 54, 58 (1st Cir. 2016) ("[The plaintiff] must put forward 'evidence of specific facts' to demonstrate that jurisdiction exists."). When a motion to dismiss for lack of personal jurisdiction "is made at the inception of the case and the issue of jurisdiction is not intertwined with the merits, the prima facie approach controls." Motus, 23 F.4th at 121. Under this standard, the court should "consider only whether the plaintiff has proffered evidence that, if credited, is enough to support findings of all facts essential to personal jurisdiction." Boit v. Gar-Tec Prods., Inc., 967 F.2d 671, 675 (1st Cir. 1992).

The court may consider "the facts from the pleadings and whatever supplemental filings (such as affidavits) are contained in the record," including a defendant's offerings. Baskin-Robbins Franchising LLC v. Alpenrose Dairy, Inc., 825 F.3d 28, 34 (1st Cir. 2016). While a plaintiff's "unsupported allegations in [its] pleadings" are not sufficient, Boit, 967 F.2d at 680, the court "must accept the plaintiff's (properly documented) evidentiary proffers as true . . . irrespective of whether the defendant disputes them" for the purposes of the motion, Adelson v. Hananel, 510 F.3d 43, 48 (1st Cir. 2007) (internal citation and quotation marks omitted). The court is to view these facts in the light most favorable to the plaintiff's jurisdictional claim. Mass. Sch. of Law v. ABA, 142 F.3d 26, 34 (1st Cir. 1998). While a defendant may also offer evidence, the defendant's evidentiary proffers only "become part of the mix . . . to the extent that they are uncontradicted." Adelson, 510 F.3d at 48 (citing Mass. Sch. of Law, 142 F.3d at 34); see Baskin-Robbins, 825 F.3d at 34 ("We may, of course, take into account undisputed facts put forth by the defendant."). Facts asserted in a defendant's affidavits are not deemed disputed "merely because [the party opposing the dismissal], in an unsworn brief or in argument before a court, challenges them." Chen v. U.S. Sports Acad., Inc., 956 F.3d 45, 56 (1st Cir. 2020).

III. DISCUSSION

For a court to exercise personal jurisdiction over a defendant, the court must find "sufficient contacts between the defendant and the forum to satisfy both that state's long-arm statute and the Fourteenth [or Fifth] Amendment's Due Process clause." Sawtelle v. Farrell, 70 F.3d 1381, 1387 (1st Cir. 1995). Defendants do not dispute the application of Massachusetts' long-arm statute and instead rest their challenge to personal jurisdiction on constitutional grounds. Therefore, the focus of the Court's inquiry is whether the exercise of personal jurisdiction over Defendants here would be consistent with due process.¹

Due process requires that a defendant have "minimum contacts" in the forum "such that maintenance of the suit does not offend the traditional notions of fair play and substantial justice." Int'l Shoe Co. v. Washington, 326 U.S. 310, 316, 66 S.Ct. 154, 90 L.Ed. 95 (1945). The Supreme Court has recognized two categories of personal jurisdiction under the Constitution: general and specific. General jurisdiction allows a court to exercise personal jurisdiction over a defendant in that forum irrespective of the forum's relation to the cause of action. General jurisdiction reaches "causes of action arising from dealings entirely distinct from" a defendant's in-state contacts, id. at 318, 66 S.Ct. 154, only when the defendant is "essentially at home" in the forum state, Ford Motor Co. v. Mont. Eighth Judicial Dist. Ct., 592 U.S. 351, 141 S. Ct. 1017, 1024, 209 L.Ed.2d 225 (2021). Specific jurisdiction "allows a court to hear a particular case as long as 'that case relates sufficiently to, or arises from, a significant subset of contacts between the defendant and the forum.' " Baskin-Robbins, 825 F.3d at 35 (quoting Phillips Exeter Acad. v. Howard Phillips Fund, Inc., 196 F.3d 284, 288 (1st Cir. 1999)). Plaintiff here advances personal jurisdiction arguments only with respect to specific jurisdiction. The Court limits its analysis accordingly.

In order for a court to exercise specific jurisdiction over a defendant, (1) the claim must "relate[ ] to or arise[ ] out of defendant's contacts with the forum"; (2) the contacts must "constitute purposeful availment of the benefits and protections afforded by the forum's laws"; and (3) the exercise of jurisdiction must be reasonable. Phillips Exeter Acad., 196 F.3d at 288. "Failure to make any one of these showings dooms any effort to establish...