The opinion of the court was delivered by: David O. Carter United States District Judge
(1)DENYING DEFENDANT MV MARKETING'S MOTION TO DISMISS FOR LACK OF SERVICE (DKT. 33)
(2)DENYING DEFENDANT MIKE VIETRO'S MOTION TO DISMISS FOR LACK OF SERVICE (DKT. 35)
(3)GRANTING PLAINTIFF'S MOTION FOR PRELIMINATION INJUNCTION (DKT. 6)
Before the Court are three motions: (1) a Motion to Dismiss for Lack of Service filed by Defendant MV Marketing Inc. ("Defendant MV Marketing") (Dkt. 33); (2) a Motion to Dismiss for Lack of Service filed by Defendant Mike Vietro ("Defendant Vietro) (Dkt. 35); and (3) Plaintiff's Motion for Preliminary Injunction (Dkt. 6).
The Court finds the first two Motions are appropriate for decision without oral argument and DENIES them. See Fed R. Civ. P. 78; Local R. 7-15.
After considering all the moving papers and oral argument regarding the Motion for Preliminary Injunction, the Court GRANTS the Motion.
The gravamen of Plaintiff's Complaint is that Defendants MV Marketing and Vietro (collectively "Corvette Mike") have and are continuing to use Plaintiff's trademark WEST COAST CORVETTES in the domain name WestCoastCorvette.com and divert traffic to that website to Corvette Mike's own website. Corvette Mike does not dispute the facts stated in Plaintiff's Motion for Preliminary Injunction, and thus the Court adopts them in their entirety for the purposes of this motion. Although Corvette Mike does dispute some of the facts regarding the adequacy of Plaintiff's service of process, the Court need not resolve this fact dispute because it relies on undisputed facts or Corvette Mike's own facts to reach the holdings on Corvette Mike's Motions.
a.West Coast continuously used the WEST COAST CORVETTES trademark since 1985 and invested several-million dollars in the Mark Plaintiff West Coast Corvettes was founded in 1985 to offer paint and body shop services for Corvettes under the trademark WEST COAST CORVETTES (the "Mark"). (Declaration of Craig Chapman ("Chapman Decl.") at ¶ 4). In 1995, Plaintiff started selling pre-owned Corvettes and mechanical services and, in 1997, began offering parts, wheels, covers, and other Corvette accessories. Id. at ¶ 6.
In 1998, Plaintiff registered the domain name WestCoastCorvette.com-its trademark without the "s" at the end-and built a website identified by the WEST COAST CORVETTES trademark. (Chapman Decl. at ¶¶ 9, 37, Exhibits N-1 through N-17 (screen captures of West Coast's website as it appears today), Exhibits N-18 through N-28 (screen captures of West Coast's website as it appeared at various points in the past)). Since then, Plaintiff has spent several-million dollars developing and advertising the website. (Declaration of Jason Geno at ¶ 4; Chapman Decl. at ¶¶ 10, 32, Exhibit I-1 (summary of some expenses related to website development), Exhibit I-2 through I-43 (representative examples of costs incurred in developing the website)). In the last two years there have been more than 2 millionvisits to the site and it has generated more than $25 million in revenue since itlaunched in 1998. Id. at ¶ 9.
Between 1997 and 2011, Plaintiff spent more than $2.6 million to advertise the Mark in media, including national Corvette-related publications. Id. at ¶¶ 7, 24-29, Exhibits A-1, B-1, D-1, E-1, F-1 (summaries of amounts spent), Exhibits A-2 through A-57, B-2 through B-30, D-2 through D-75, E-2 through E-67, F-2 through F-56 (representative catalogs and advertisements). Plaintiff sends a catalog to more than 60,000 customers each year, and more than 60,000 consumers subscribe to Plaintiff's e-mail list and receive frequent communications that prominently display the Mark in connection with West Coast's business. (Chapman Decl. at ¶¶ 8, 24, 33, Exhibit A-1 (amount spent on catalogs), Exhibits A-2 through A-57 (representative sample catalogs and expenses), Exhibits J-1 through J-5 (representative sample e-mails)). Plaintiff and its Mark have also earned valuable "free media"-both in terms of mainstream press and in positive mentions on specialized Internet forums dedicated to Corvette discussion. (Chapman Decl. at ¶¶ 11, 36 Exhibits M-1 through M-53 (representative samples of forum posts using the Mark to identify West Coast's business)). The Mark isparticularly well-known among Corvette consumers and enthusiasts. (ChapmanDecl. at ¶¶ 11-12, 36, Exhibits M-1 through M-53 (representative samples of forumposts using the Mark to identify West Coast's business); Declaration of JanetCurran at ¶¶ 3-5; Declaration of Jake Drennon at ¶¶ 3-6).
b.Corvette Mike previously sued Plaintiff after Plaintiff began selling the same goods and services Defendants MV Marketing and Mike Vietro (collectively "Corvette Mike") do business as "Corvette Mike." Like Plaintiff, Corvette Mike sells Corvette automobiles, parts, and accessories; and it offers Corvette repair, optimization, specialization, restoration, and modification services. (Chapman Decl. at ¶¶ 13, 39, Exhibit P-1 through P-6 (screen captures of Corvette Mike's current website)). Initially, Corvette Mike and West Coast enjoyed a mutually beneficial relationship. Corvette Mike referred customers to Plaintiff and hired it to perform body work on cars that Corvette Mike planned to resell. (Chapman Decl. at ¶ 14.) But when West Coast also began selling pre-owned Corvettes and offering mechanical services, Corvette Mike refused to do business with West Coast. Id. at ¶ 15. Corvette Mike subsequently sued Plaintiff; the parties settled several years ago and temporarily resumed a business relationship. Id. at ¶¶ 15, 40, Exhibit Q.
c.In 2002, Corvette Mike registered the Infringing Domain, offered to sell it to Plaintiff, and redirected visitors to the Infringing Domain to Corvette Mike's own website until Plaintiff complained
In 2002, Corvette Mike registered the domain name WestCoastCorvettes.com (the "Infringing Domain"). (Chapman Decl. at ¶¶ 16, 41, Exhibit R). Plaintiff's CEO, Mr. Chapman, contacted Corvette Mike's owner, Mike Vietro, and asked if there had been a mistake and to transfer control of the Infringing Domain to West Coast. (Chapman Decl. at ¶¶ 16, 42, Exhibits S-1, S-2 (copies of e-mails between Mr. Chapman and Mr. Vietro regarding the Infringing Domain)). Mr. Vietro responded by telling Mr. Chapman that there was no mistake and that if West Coast wanted its domain name that it should make an offer. Id. Mr. Chapman offered to pay Corvette Mike an amount greater than Corvette Mike spent to initially register the Infringing Domain. Corvette Mike refused. Id.
At some point, Corvette Mike configured the Infringing Domain to automatically redirect visitors to Corvette Mike's website located via the domain name CorvetteMike.com. Id. at ¶ 17. Consequently, consumers who searched for "West Coast Corvettes" were directed to Corvette Mike's competing website. Plaintiff learned of the redirection in late 2006 when a customer called Plaintiff to complain that she was unable to find her order on Plaintiff's website. Id. She had typed in the Infringing Domain and been redirected to Corvette Mike's site. Id.
Plaintiff's counsel contacted Corvette Mike regarding the matter, with a demand to cease and desist the trademark infringement and cybersquatting. Id. at ¶¶ 18, 43, Exhibits T-1 through T-3 (copies of the correspondence). Corvette Mike responded to Plaintiff's lawyer, claiming to have disabled the Infringing Domain. Id. In the same writing, Corvette Mike claimed the value of the domain name "to be in the five-figure range" and stated that he had recent conversations about selling the Infringing Domain to other potential buyers, some of which were foreign entities. Id. After confirming that Corvette Mike did in fact disable the domain name, Plaintiff did not to pursue the matter further. Id. at ¶¶ 19-20.
d.In 2011, Corvette Mike resumed redirecting visitors of the Infringing Domain to Corvette Mike's own website, resulting in confusion by at least one media outlet
In light of the dispute with Corvette Mike, Plaintiff decided to end its business relationship with Corvette Mike. (Chapman Decl. at ¶ 20). Plaintiff also monitored the Infringing Domain, routinely checking to see whether Corvette Mike reactivated it. Id. From 2007 until recently, visitors to the Infringing Domain ended up on a website called a "parking page" displaying links to other businesses and websites. (Chapman Decl. at ¶¶ 20, 38, Exhibits O-7 through O-9 (screen captures of the Infringing Domain as it appeared at various times in 2007-2011)
In 2011, Corvette Mike resumed redirecting the Infringing Domain to Corvette Mike's own competing website. (Chapman Decl. at ¶ 20). Plaintiff's counsel promptly sent another letter demanding that Corvette Mike cease and desist its trademark infringement and cybersquatting. Id. at ¶¶ 21, 44, Exhibits U-1 through U-2 (copies of correspondence). Corvette Mike refused to relinquish control of the Infringing Domain. Id.
In February of 2012, Cars On Line.com ("Cars On Line")-America's most popular classic cars website-mistakenly posted Corvette Mike's inventory in place of West Coast's inventory. (Declaration of Stephanie Oliver ("Oliver Decl.") at ¶ 4). Cars On Line traced its mistake to visiting the WestCoastCorvettes.com website and assuming it was related to West Coast's business. (Oliver Decl. at ¶ 5).
e.Plaintiff sued Corvette Mike
After confirming that the Infringing Domain was continuing to redirect consumers, Plaintiff initiated the present suit. (Chapman Decl. at ¶¶ 22-23, 38, Exhibit O-1 through O-2 (screen captures of the Infringing Domain as it appeared when this action was filed; see also Dkt. No. 1 (Complaint)).
f.Plaintiff attempted to serve Defendant Vietro
On March 3, Plaintiff's process server attempted to contact Mr. Vietro at his place of business and at his home in Carlsbad, California. (Declaration of Jason Sykes ("Sykes Decl.") (Dkt. 40) ¶ 3, Ex. A). During the course of four visits between March 3-5, the process serve spoke to Corvette Mike's business manager, Mike Vietro's neighbors and his wife. (Sykes Decl. ¶ 3, Ex. A). The wife and neighbors confirmed that Mr. Vietro lived at the Carlsbad address but said he was out of town on business. (Sykes Decl. ¶ 3, Ex. A). Troy Worrell, the manager at Corvette Mike also indicated Mr. Vietro was out of town. (Sykes Decl. ¶ 3, Ex. A). No one could offer a specific date when he might return or a specific location where he could currently be served. (Sykes Decl. ¶ 3, Ex. A). The process server returned to the Carlsbad residence hoping to find Mr. Vietro there or leave the papers with his wife. (Sykes Decl. ¶ 3, Ex. A). Although someone was clearly in the house, no one was willing to answer the door. (Sykes Decl. ¶ 3, Ex. A). On March 6, following a fifth service attempt, the process server left a copy of the summons and complaint, along with a copy of Plaintiff's motion for preliminary injunction and 2,800 pages of supporting documents with Troy Worrell at Mr. Vietro's usual place of business. (Sykes Decl. ¶ 3, Ex. A). A copy of the summons and complaint were mailed to Mr. Vietro at this address on that same day. (Sykes Decl. ¶ 3, Ex. A).
g.Plaintiff attempted to serve Defendant MV Marketing
On March 5, West Coast's process server delivered a copy of the summons and complaint along with a copy of Plaintiff's motion for preliminary injunction and 2,800 pages of supporting documents to Mr. Legate's office. (Sykes Decl. ¶ 3, Exhibits A-B). The parties agree that the process server left all the documents with Jan Lawyer, an employee of Mr. Legate. Compare Sykes Decl. ¶ 3, Exhibit A with Lawyer Decl. (Dkt. 33-2). Jan Lawyer stated "ok" when she was "informed by the process server that the documents were for Corvette Mike." See Lawyer Decl. (Dkt. 33-2). Afterwards, Plaintiff mailed a copy of the summons and complaint to the same address where a copy of the summons and complaint were left. Compare Sykes Decl. Ex. B (Dkt 41-1); compare id. Ex. B. (Certificate of Service listing office mailing address) with id. Ex. A (process server stating address of office where documents were left).
II.Plaintiff's Service On Defendants
Both Defendant MV Marketing and Defendant Vietro argue that certain aspects of service of process were improper. Because the Court rejects Defendants' arguments regarding these aspects ...