Hub Grp. v. Go Hub Grp. Holdings, Corp.

HUB GROUP, INC., Plaintiff, v. GO HUB GROUP HOLDINGS, CORP., ASSETCO FREIGHT BROKERS, INC., FREIGHT HUB CORP., TEAM DGD, INC., LTL HUB CORP., WHSE HUB, INC., HAZMAT HUB, INC., LOGISTICS HUB GROUP, INC., TRUCK HUB LLC, Defendants.

No. 19-cv-7648

United States District Court, N.D. Illinois, Eastern Division

September 20, 2021

MEMORANDUM OPINION AND ORDER

John J. Tharp, Jr. United States District Judge.

In this dispute between supply chain companies that offer similar services and use near-identical marks, Plaintiff Hub Group Inc. sued Go Hub Group Holdings, Corp., and its eight subsidiaries, AssetCo Freight Brokers, Inc., Freight Hub Corp., Team DGD, Inc., LTL Hub Corp., WHSE Hub Inc., Hazmat Hub, Inc., Logistics Hub Group Inc., and Truck Hub LLC, for trademark infringement. Hub Group maintains that Go Hub used a similar set of trademarks to market and sell its trucking-related services through its eight subsidiaries, in violation of the Lanham Act as well as the Illinois Deceptive Trade Practices Act. Go Hub has moved to dismiss for lack of personal jurisdiction or, in the alternative, to transfer venue to the Southern District of Florida. Because specific personal jurisdiction is appropriate in this district and venue transfer would not be in the interest of justice, Go Hub's motions are denied.

BACKGROUND

Hub Group is an Illinois-based supply chain solutions provider that offers services across the country, including trucking and logistics management. Compl. ¶¶ 1, 57, ECF No 39.^[1] Over the past fifty years, it has become one of the largest transportation management companies in the United States. Id. ¶ 62. Since early 1986, Hub Group has used variations of the trademark “HUB, ” for its commercial activities, including intermodal, truck brokerage dedicated trucking, managed transportation, freight consolidation, warehousing, international transportation, and logistics services. Id. ¶ 67. The Hub marks are known for their distinctive use of the word “HUB” and include, among others, Hub Group, Hub Group Dedicated Hub Group Dedicated Services, Hub Group Trucking, HubPro, and Hub Group Capacity Solutions. Id. ¶ 68. Hub Group has acquired common law rights to these marks and owns a number of registrations for them. Id. ¶¶ 69-70. The registrations grant Hub Group exclusive rights to its marks for specified services. Id. ¶¶ 71-79. Hub Group has also invested substantially in marketing and promoting its transportation management services through these marks and has established goodwill for its services sold under their names. Id. ¶ 85. According to Hub Group, its customers and the public at large have come to recognize Hub Group's HUB marks and associate them with its services. Id. ¶ 82.

This case stems from Go Hub's entrée into the trucking services field and its use of similar marks, beginning in November 2017. Id. ¶¶ 31, 101 Go Hub, a Florida-based company, also provides nationwide transport services and develops and sells transportation-related services. Id. ¶¶ 2, 89. To promote and sell these services, Go Hub markets itself as the “Hub” family, runs the “Freight Hub Group” website, and oversees eight subsidiary entities that provide distinct services. Id. ¶¶ 90-93. Go Hub and its subsidiaries collectively refer to themselves as “Freight Hub Group, ” but they operate in different capacities and engage in distinct services. Id. ¶ 95. The organizational breakdown is as follows: AssetCo is the main operating company and holds freight brokerage authority from the United States Department of Transportation. Compl. ¶ 124. Freight Hub, d/b/a “Dray Hub, ” Team DGD, d/b/a “FTL Hub, ” and LTL Hub are Freight Hub Group's three distinct motor carrier operations. MTD at 4, ECF No. 54. Dray Hub and LTL Hub offer drayage and local delivery services, respectively, in South Florida, while FTL Hub engages in transport services departing from the Miami area. Id. WHSE Hub provides warehouse services in South Florida. Id. at 3-4. Hazmat Hub is a hazardous material declaration operation, and Logistics Hubs is an equipment holding company for the subsidiaries. Id. at 4. And finally, Truck Hub is the holding company for Freight Hub Group's proprietary transportation management software, which is used exclusively by its motor carriers. Id. Go Hub has applied with the U.S. Patent and Trademark Office (USPTO) for registration of several of its marks. Eight of its applications have been denied, in part because of the “overall similarity of the marks and relatedness of the services” to Hub Group. Compl. ¶¶ 146, 148.

In response to Go Hub's use of the marks, on November 5, 2019, Hub Group sent a demand letter to Go Hub's registered trademark counsel. Id. ¶ 151. On February 21, 2020, upon receipt of a Letter of Protest from Hub Group, the USPTO suspended applications for FTL Hub, LTL Hub, Hazmat Hub, and Dray Hub. Id. ¶ 149. Further, Hub Group has initiated an opposition to Go Hub's applications to register Truck Hub and WHSE Hub. Id. ¶ 150.

Hub Group filed suit against Go Hub and its subsidiaries on November 19, 2019. ECF No. 1. Go Hub now moves to dismiss the complaint against it in its entirety, or in the alternative, transfer this case to the Southern District of Florida. ECF No. 54.

DISCUSSION

Go Hub argues that this Court may not exercise personal jurisdiction over it and should dismiss this action pursuant to Rule 12(b)(2), or alternatively transfer this case to the Southern District of Florida. While the plaintiff need not allege facts establishing personal jurisdiction in the complaint “a plaintiff bears the burden of establishing that the Court may exercise personal jurisdiction over the defendants once defendants move to dismiss for lack of personal jurisdiction.” Steel Warehouse of Wisconsin, Inc. v. Leach, 154 F.3d 712, 715 (7th Cir. 1998). Although the Court is typically constrained to the pleadings at this stage, it may consider written materials outside of the pleadings on a Rule 12(b)(2) motion to dismiss. Purdue Research Foundation v. Sanofi-Synthelabo, S.A., 338 F.3d 773, 782 (7th Cir. 2003). If the Court rules on such a motion without the need for an evidentiary hearing, as is the case here, the plaintiff must only plead a prima facie case of personal jurisdiction. Id. at 782-83. Further, all factual disputes will be resolved in the plaintiff's favor. Id.

I. Personal Jurisdiction

Personal jurisdiction typically takes two forms: general or “all-purpose” jurisdiction and specific or “conduct-linked” jurisdiction. Daimler AG v. Bauman, 571 U.S. 117, 122 (2014). A defendant may also consent to jurisdiction in a forum; because personal jurisdiction is a “waivable right, there are a variety of legal arrangements by which a litigant may give express or implied consent to the personal jurisdiction of the court.” Burger King Corp. v. Rudzewicz, 471 U.S. 462, 472 n.14 (internal quotations omitted). Hub Group argues that personal jurisdiction is appropriate over Go Hub because under all of these jurisdictional theories. The Court addresses each in turn.

A. Consent to Jurisdiction

Under the Federal Motor Carrier Act (“FMCA”), a motor carrier is required to designate an agent to receive service of process in any state in which it operates. See 49 U.S.C. § 13304(a). Hub Group contends that Go Hub has consented to jurisdiction in Illinois by designating an agent for service of process under the FMCA in the state. Consent to such jurisdiction would render Go Hub's contacts with Illinois irrelevant to establishing personal jurisdiction. Yet, whether designating an agent for service of process under the FMCA can sustain personal jurisdiction remains an open question in the Seventh Circuit. Arguing that it can, Hub Group relies heavily on R.R. Donnelly & Sons Company v. Jet Messenger Services, in which the court found that a defendant who designated an agent under the FMCA in Illinois had consented to personal jurisdiction in the state. No. 03 C 7823, 2004 WL 1375402, at *3-4 (N.D. Ill. May 25, 2004). But that decision pre-dated Daimler, which distilled the general jurisdiction analysis down to whether a corporation is “at home” in a forum state, either by being incorporated or operating its principal places of business there.

In Daimler's wake, district courts have rejected the proposition that registering an agent under the FMCA in a certain state renders a corporation “at home” there. See Carson v. Western Express, 19 Civ. 2227 (ER), 2019 WL 6050730, at *3 (S.D.N.Y. Nov. 14, 2019) (finding post-Daimler that “designation of an agent for service alone cannot provide this Court with general personal jurisdiction over Defendants”); Hegemann v. M&M American, No. 2:18-cv-00064, 2018 WL 4502181, at *6 (D. Vt. Sept. 20, 2018) (finding that defendant's registration of an agent under the FMCA in Vermont did not constitute consent to be sued there); Western Express, Inc. v. Villanueva, No. 3:17-cv-01006, 2017 WL 4785831, at *6 (M.D. Tenn. Oct. 24, 2017) (same). But see Grubb v. Day to Day Logistics, No. 2:14-CV-01587, 2015 WL 4068742, at *4 (S.D. Ohio July 2, 2015) (following Eighth Circuit precedent in finding FMCA subjected defendant to personal jurisdiction in forum state, even post-Daimler).

This Court agrees with the myriad other courts that have found designating an agent under the FMCA insufficient to sustaining general personal jurisdiction over a defendant. The Daimler court rejected the proposition that “the commission of some single or occasional acts of the corporate agent in a state may sometimes be enough to subject the corporation to” general jurisdiction in that state. 571 U.S. at 126-27 (quoting International Shoe v. State of Washington, Office of Unemployment Compensation & Placement, 326 U.S. 310, 318 (1945)). It follows...