Worldcare Ltd. Corp.. v. World Ins. Co.

767 F.Supp.2d 341

WORLDCARE LIMITED CORPORATION, Plaintiff,

v.WORLD INSURANCE COMPANY, Defendant.

No. 3:10–CV–1499(CSH).

United States District Court, D. Connecticut.

Feb. 28, 2011.

Dana A. Zakarian, Jack I. Siegal, Nystrom Beckman & Paris LLP, Boston, MA, Elizabeth Ann Alquist, Nicholas A. Pisarsky Day Pitney LLP, Hartford, CT, for Plaintiff.Christine Lebron–Dykeman, Jeffrey D. Harty, McKee, Voorhees & Sease, P.L.C., Des Moines, IA, James M. Andriola, Reed Smith LLP, New York, NY, for Defendant.

RULING ON DEFENDANT'S MOTION TO DISMISS COMPLAINT OR FOR TRANSFER OF ACTION

HAIGHT, Senior District Judge:

Plaintiff WorldCare Limited Corporation (herein “plaintiff” or “WorldCare”) brings the present action against World Insurance Company (herein “defendant” or “World”) for trademark infringement and unfair competition under the Lanham Act, 15 U.S.C. § 1051, et seq. Specifically, WorldCare seeks injunctive relief and damages against World due to its alleged infringement of WorldCare's federally registered trademark and name, “WORLDCARE.”

Pending before the Court is defendant's Motion to Dismiss for Lack of Personal Jurisdiction Or, in the Alternative, Transfer of Venue to the District of Nebraska (Doc. # 21). Defendant contends that its contacts with Connecticut are “attenuated at best” and therefore the exercise of personal jurisdiction over it “would offend traditional notions of fair play and substantial justice.” Doc. # 21, p. 1, para. 1. Alternatively, World requests transfer of the action to the United States District Court for the District of Nebraska in the interest of justice under 28 U.S.C. § 1404(a).

I. FACTS

Plaintiff WorldCare is a corporation incorporated under the laws of Bermuda with its principal place of business located at 7 Bulfinch Place, Boston, Massachusetts. Doc. # 1, p. 2 (¶ 5). During the last two decades WorldCare has been in the business of offering second opinion telemedicine services. Id., p. 1 (¶ 2). These services are offered “as part of a benefit under health insurance plans” and “allow patients to access second medical opinions from top hospitals and medical institutions in the United States.” ¹ WorldCare operates these services under two federally registered trademarks, “WORLDCARE” (Reg. Nos. 2118465 & 2220736), that it obtained from the U.S. Patent and Trademark Office (“PTO”) in 1996. Id., p. 4 (¶ 18). WorldCare contends that for almost two decades, it has “amassed significant goodwill and a strong reputation for quality in the health services market with its end user customers and strategic partners, including doctors, hospitals and insurance companies.” ² Id., p. 1–2 (¶ 2).

Defendant World is a Nebraska corporation with its principal place of business located at 11808 Grant Street, Omaha, Nebraska. Id., p. 2 (¶ 6); see also Doc. # 22, p. 1, para. 3. Since 1903, World has conducted its business of “providing customers with high quality health insurance products and services under its ‘World’ house mark,” including basic medical, major medical, comprehensive major medical, short-term major medical, and dental insurance.” Doc. # 22, p. 1, para. 3 to p. 2, para. 1; see also Declaration of Elizabeth Powell ³ (“Powell Dec.”)(Doc. # 23) ¶ 3. As early as February of 2003, World adopted the designation “WorldCARE” ⁴ as a brand name for use in connection with underwriting and administration of some of its health insurance, preferred provider plans and health savings accounts.⁵ Doc. # 22, p. 2, para. 1; Powell Dec. ¶ 4.

World is licensed to do business in the State of Connecticut, but does not market or sell insurance products in Connecticut. Powell Dec. ¶ 5. Accordingly it has no insurance agents in Connecticut. Id. World clarifies that it has never sold any insurance policies in Connecticut or appointed any agents in Connecticut to sell insurance. Id. Although World maintains a website on which prospective consumers may view various insurance plans (www. worldinsco. com), those plans are not available for purchase online.⁶ Id. ¶ 6. Rather, anyone interested in purchasing a policy must contact an agent in the state in which he resides. Id. Furthermore, the website specifies the states in which policies are sold and Connecticut is not listed. Id. The site further excludes Connecticut residents from viewing World's product information because all website visitors must identify their states of residence to gain access to policy information and there is no option to select “Connecticut.” Id. & Ex. A, B.

World claims that it has issued 56,369 policies to residents throughout the United States, inclusive of its 29,596 WorldCARE policies.⁷ Id. ¶¶ 7–8. Of the WorldCARE policies, only three are held by Connecticut residents and none of those policies was issued in Connecticut. Id. ¶ 7. Rather, each of the three policies is owned by a customer who moved to Connecticut after acquiring the policy.⁸ Id.

WorldCare alleges that in early summer of 2009 it learned that World was selling health insurance products and services under the name “WorldCARE,” thereby creating confusion in the marketplace. Specifically, WorldCare alleges that hospitals contacted WorldCare with questions about World's health plans, such as whether certain benefits were covered under the plans. Doc. # 1, p. 7 (¶ 30). On August 9, 2009, WorldCare demanded that World cease and desist using the WorldCARE name in commerce, but World refused. Doc. # 1, p. 7 (¶¶ 32, 35). World thus continues to use the name “WorldCARE” in connection with the sale of its goods and services. Id. (¶ 35).

II. JURISDICTION

This Court has “federal question” subject matter jurisdiction over plaintiff's trade infringement actions pursuant to 28 U.S.C. §§ 1331 ⁹ and 1338 ¹⁰ and 15 U.S.C. § 1121.¹¹ As WorldCare sets forth in its Complaint, these claims patently arise under federal statute, the Lanham Act, 15 U.S.C. § 1051 et seq.

In considering defendant's motion to dismiss or transfer, the Court will address the issue of whether it has personal jurisdiction over the defendant in detail below.¹² With respect to venue, under 28 U.S.C. § 1391, venue in a “federal question” case is appropriate in any judicial district in which any defendant may be found; and a “defendant that is a corporation shall be deemed to reside in any judicial district in which it is subject to personal jurisdiction at the time the action is commenced.” 28 U.S.C. § 1391(b), (c) (emphasis added).¹³ See Divicino v. Polaris Indus., 129 F.Supp.2d 425, 435 (D.Conn.2001) (“Essentially section 1391(c) equates jurisdiction with venue for corporate defendants.”). The Court must thus resolve the question of personal jurisdiction before addressing whether venue is proper in this District.

III. DISCUSSIONA. Personal Jurisdiction over Defendant World

Defendant World moves this Court to dismiss the present trademark action on the ground that this Court lacks personal jurisdiction over it pursuant to Rule 12(b)(2) of the Federal Rules of Civil Procedure. Specifically, World claims that the U.S. District Court for the District of Connecticut may not properly exercise personal jurisdiction over World under Connecticut's long-arm statute, Conn. Gen.Stat. § 33–929(a), because World lacks the requisite “minimum contacts” with the state of Connecticut, the locus of this District. World claims that this Court's exercise of jurisdiction over it would violate the Fourteenth Amendment's constitutional guarantee of due process, thereby offending the traditional notions of “fair play and substantial justice.” ¹⁴

Plaintiff WorldCare counters with the assertion that no exercise of long-arm jurisdiction is necessary where World consented to personal jurisdiction within Connecticut by obtaining a license to do business in the state and thus designating the Insurance Commissioner as its agent to receive service of process, pursuant to Conn. Gen.Stat. § 38a–25(b). WorldCare contends that, by serving the Insurance Commissioner, personal service was proper and no constitutional due process analysis is required.

Given the parties' divergent approaches, the Court will examine each argument in turn before applying the proper analysis to the present facts.

1. Rule 12(b)(2)—Standard of Review

Lack of personal jurisdiction is properly raised by a motion to dismiss. Fed.R.Civ.P. 12(b)(2).¹⁵ See Tomra of North America v. Environmental Products, 4 F.Supp.2d 90, 91 (D.Conn.1998); In re Perrier Bottled Water Litigation, 754 F.Supp. 264, 268 (D.Conn.1990). On a motion to dismiss for lack of personal jurisdiction, the plaintiff bears the burden of proving jurisdiction over the defendant. In re Magnetic Audiotape Antitrust Litigation, 334 F.3d 204, 206 (2d Cir.2003) (per curiam); Kernan v. Kurz–Hastings, Inc., 175 F.3d 236, 240 (2d Cir.1999); Metropolitan Life Insurance Co. v. Robertson–Ceco Corp., 84 F.3d 560, 566 (2d Cir.1996), cert. denied, 519 U.S. 1006, 117 S.Ct. 508, 136 L.Ed.2d 398 (1996); accord Solano v. Calegari, 108 Conn.App. 731, 737–38, 949 A.2d 1257 (Conn.App.Ct.2008), cert. denied, 289 Conn. 943, 959 A.2d 1010 (Conn.2008). Prior to discovery or an evidentiary hearing, plaintiff need only make a prima facie showing of jurisdiction through pleadings, affidavits, and supporting materials. DiStefano v. Carozzi N. Am. Inc., 286 F.3d 81, 84 (2d Cir.2001); Whitaker v. Am. Telecasting, Inc., 261 F.3d 196, 208 (2d Cir.2001); Jazini v. Nissan Motor Co., Ltd., 148 F.3d 181, 184 (2d Cir.1998).¹⁶

For purposes of a Rule 12(b)(2) motion, the Court must accept the well-pleaded factual allegations contained in plaintiffs complaint as true and resolve all factual disputes in plaintiff's favor. Thomas v. Ashcroft, 470 F.3d 491, 495 (2d Cir.2006). Specifically, all allegations are to be construed in a light most favorable to the plaintiff and all factual disputes resolved in plaintiff's favor, regardless of controverting evidence submitted by the defendant. A.I. Trade Finance, Inc. v. Petra Bank, 989 F.2d 76, 79–80 (2d...