Pandaw Am., Inc. v. Pandaw Cruises India PVT. Ltd.

842 F.Supp.2d 1303

PANDAW AMERICA, INC., and Paul G. Strachan, Plaintiffs,

v.PANDAW CRUISES INDIA PVT. LTD., Exotic Journeys Pvt. Ltd., conspirator participant entity, Exotic Hospitality Pvt. Ltd., conspirator participant entity, Gajraj Wildlife Resorts Pvt., Ltd., conspirator participant entity, Heritage River Cruises, conspirator participant entity, Raj Singh, conspirator participant individual, Attar Singh, conspirator participant individual, Gajendra Singh, conspirator participant individual, Vishnu Singh Sinsinwar, conspirator participant individual, Ashrafi Devi, conspirator participant individual, Sanjay Sahay, conspirator participant individual, Atul Bhatt, conspirator participant individual, Various Pandaw Internet Domain Properties, in rem, www. bengalpandaw. com, www. pandaw. in, www. pandaw cruisesindia. com, and John Doe(s), individuals, entities, and properties inclusively, Defendants.

Civil Action No. 10–cv–02593–WJM–KLM.

United States District Court, D. Colorado.

Feb. 6, 2012.

David Stevens Kerr, Luke Robert Santangelo, Santangelo Law Offices, P.C., Fort Collins, CO, for Plaintiffs.

Alexander Anolik, Alexander Anolik, APLC, Tiburon, CA, for Defendants.

ORDER DENYING IN PART AND GRANTING IN PART MOTION TO DISMISS

WILLIAM J. MARTÍNEZ, District Judge.

Plaintiffs Pandaw America, Inc. and Paul Strachan (jointly “Plaintiffs”) bring claims against the above-listed Defendants for trademark infringement, unfair competition, misappropriation, and cyberpiracy. (Complaint (ECF No. 1) at 20–36.) Before the Court is Defendants' Joint Motion to Dismiss for Lack of Personal Jurisdiction pursuant to Federal Rule of Civil Procedure 12(b)(2) ( “Motion”). (ECF No. 39.) For the reasons set forth below, the Motion is granted in part and denied in part.

I. LEGAL STANDARD

The purpose of a motion to dismiss pursuant to Rule 12(b)(2) is to test whether the Court has personal jurisdiction over the named parties. Plaintiffs bear the burden of establishing personal jurisdiction over all of the Defendants. Behagen v. Amateur Basketball Ass'n, 744 F.2d 731, 733 (10th Cir.1984). If the presence or absence of personal jurisdiction can be established by reference to the complaint, the Court need not look further. The Court will accept the well-pled allegations (namely the plausible, nonconclusory, and nonspeculative facts) of the complaint as true to determine whether Plaintiffs have made a prima facie showing that personal jurisdiction exists. Dudnikov v. Chalk & Vermilion Fine Arts, Inc., 514 F.3d 1063, 1070 (10th Cir.2008). Any factual conflicts must be resolved in the plaintiff's favor. Wenz v. Memery Crystal, 55 F.3d 1503, 1505 (10th Cir.1995). To defeat the plaintiff's prima facie case, a defendant “must present a compelling case demonstrating ‘that the presence of some other considerations would render jurisdiction unreasonable.’ ” OMI Holdings v. Royal Ins. Co. of Can., 149 F.3d 1086, 1091 (10th Cir.1998) (quoting Burger King Corp. v. Rudzewicz, 471 U.S. 462, 477, 105 S.Ct. 2174, 85 L.Ed.2d 528 (1985)).

II. FACTUAL BACKGROUND

Plaintiff Pandaw America is a corporation based in Colorado that is the United States arm of the larger multi-national Pandaw organization. (ECF No. 1 ¶ 2.) The larger Pandaw organization operates river cruises in various countries throughout the world. (Id. ¶ 15.) Plaintiff Paul Strachan is the president and owner of the larger Pandaw organization. (Id. ¶ 3.) The Court will refer to these entities collectively as Pandaw.

Pandaw owns United States Trademark registration 3,021,969 (“Pandaw Mark”). (Id. ¶ 17.) The Pandaw Mark was registered in 2005 in connection with travel agency services. (Id. ¶¶ 17–18.) Pandaw is also the owner of the website http:// www. pandaw. com. (Id. ¶ 20.)

Defendant Pandaw Cruises India Pvt. Ltd. (“Pandaw India”) is an Indian corporation that was formed in 2004 and began operating cruises on the Ganges River in 2009. (ECF No. 40 ¶¶ 2, 6.) From 2004 until 2009, Defendants Exotic Journeys Pvt. Ltd. And Exotic Hospitalities Pvt. Ltd. were the shareholders of Pandaw India. (Id. ¶¶ 2, 5.) In 2009, all shares of Pandaw India were transferred to Defendant Gajraj Wildlife Resorts Pvt. Ltd. and an entity not involved in this action, Pandaw Cruises PTE, Ltd.¹ (ECF No. 40–2 at 4.) The Complaint also names various individuals, whose roles in the above-listed corporate entities are discussed in greater detail in the analysis section below.

Pandaw India registered three domain names to promote their Ganges River cruises: (1) bengalpandaw.com; (2) pandaw.in; and (3) pandaw cruises.com. ² (ECF No. 1 ¶ 29; ECF Nos. 1–5, 1–6, 1–7.) These websites prominently displayed the Pandaw Mark and emphasized the Pandaw name in marketing the cruises. (ECF No. 1–4.) Pandaw India also used the Pandaw Mark in its advertisement and marketing materials. (ECF Nos. 1–8–1–11.) Plaintiffs allege that Pandaw India's use of the Pandaw Mark caused consumer confusion and resulted in Plaintiffs receiving numerous inquiries about Pandaw India's Ganges River cruises. (ECF No. 1 ¶¶ 37–39.)

On August 16, 2010, Plaintiffs sent Defendant Raj Singh, Pandaw India's director, a cease-and-desist letter demanding that Pandaw India stop using the Pandaw Mark. (ECF No. 1 ¶ 41, ECF No. 40–3.) In response, Pandaw India changed its name to Heritage River Cruises, Pvt. Ltd. (“Heritage”). (ECF No. 40 ¶ 13.) Defendant Heritage then registered the following websites: (1) www. theganges cruise. com; and (2) www. theganges cruise- us. com. (ECF No. 1–4 at 42.) These websites promoted Pandaw India/Heritage's Ganges River cruises.

Based on these facts, Plaintiffs bring claims of statutory and common law trademark infringement, statutory and common law unfair competition, common law misappropriation, and cyberpiracy. (ECF No. 1.) Defendants have collectively moved to dismiss the Complaint and assert that the Court does not have personal jurisdiction over them. (ECF No. 39.)

III. ANALYSIS

The Tenth Circuit has established a two-part test for personal jurisdiction: “First, we ask whether any applicable statute authorizes service of process on defendants. Second, we examine whether the exercise of statutory jurisdiction comports with constitutional due process demands.” Dudnikov v. Chalk & Vermilion Fine Arts, Inc., 514 F.3d 1063, 1070 (10th Cir.2008). Plaintiffs assert that there are two statutes that authorize service of process on Defendants: (1) the Colorado long-arm statute—Colo. Rev. Stat. § 13–1–124; and (2) Federal Rule of Civil Procedure 4(k)(2). The Court will examine each in turn below.

A. Colorado's Long–Arm Statute

In Colorado, the state's long arm statute—Colo. Rev. Stat. § 13–1–124—“confers the maximum jurisdiction permissible consistent with the Due Process Clause.” Archangel Diamond Corp. v. Lukoil, 123 P.3d 1187, 1193 (Colo.2005). Thus, the Court need only address the constitutional question of whether the exercise of personal jurisdiction over Defendants comports with due process. Dudnikov, 514 F.3d at 1070 (10th Cir.2008) (noting that the inquiry into whether any statute authorizes service of process “effectively collapses into the second, constitutional, analysis” in Colorado).

To determine whether personal jurisdiction is proper under the Constitution, a court first looks to find minimum contacts within the forum state. See Int'l Shoe Co. v. State of Washington, 326 U.S. 310, 316, 66 S.Ct. 154, 90 L.Ed. 95 (1945). The focus is on protecting one's liberty interest in not being subject to “the binding judgments of a forum with which [the defendant] has established no meaningful contacts, ties, or relations.” Burger King v. Rudzewicz, 471 U.S. 462, 472, 105 S.Ct. 2174, 85 L.Ed.2d 528 (1985) (quotations and citation omitted). If minimum contacts are established, the court then determines whether exercise of personal jurisdiction would be reasonable. Int'l Shoe Co., 326 U.S. at 316, 66 S.Ct. 154. The standard of reasonableness is measured by whether an exercise of jurisdiction would offend “traditional notions of fair play and substantial justice.” Id.

“[T]he question of whether a non-resident defendant has the requisite minimum contacts with the forum state to establish in personam jurisdiction must be decided on the particular facts of each case.” Benton v. Cameco Corp., 375 F.3d 1070, 1076 (10th Cir.2004) (internal quotation marks omitted). “[T]he individual nature of the [personal jurisdiction] determination makes it extremely difficult to compare precisely the unique circumstances and outcomes of different cases.” Keefe v. Kirschenbaum & Kirschenbaum, P.C., 40 P.3d 1267, 1273 (Colo.2002).

The minimum contacts analysis differs depending on whether it arises from specific or general jurisdiction. OMI Holdings, 149 F.3d at 1090–91. A court may assert specific jurisdiction “if the defendant has ‘purposefully directed’ his activities at residents of the forum, and the litigation results from alleged injuries that ‘arise out of or relate to’ those activities.” Burger King, 471 U.S. at 472, 105 S.Ct. 2174 (internal citations and quotations omitted). General jurisdiction, on the other hand, “arises when a defendant maintains continuous and systematic contacts with the forum state even when the cause of action has no relation to those contacts.” Helicopteros Nacionales de Colombia, S.A. v. Hall, 466 U.S. 408, 416, 104 S.Ct. 1868, 80 L.Ed.2d 404 (1984). Plaintiffs' Complaint alleges that the Court has both general and specific jurisdiction over Defendants. (Compl. ¶ 12.) However, in their opposition to the instant Motion, Plaintiffs abandon their general jurisdiction claim. (ECF No. 41 at 8 n. 2.) Thus, the Court will examine only whether Defendants had sufficient contacts with Colorado so as to invoke specific personal jurisdiction.

A court may exercise specific jurisdiction when the defendant has purposefully directed its activities to the forum state and where the underlying alleged injury arises out of or...