The opinion of the court was delivered by: Hayes, Judge:
The matter before the Court is the Motion to Dismiss and in the Alternative to Transfer Venue ("Motion to Dismiss") filed by Defendant Guava Kids, LLC. (ECF No. 5)
On September 13, 2012, Plaintiff Guava Family, Inc. initiated this action by filing a Complaint against Defendant Guava Kids, LLC. (ECF No. 1).
On November 7, 2012, Defendant filed the Motion to Dismiss on the grounds that (1) the Court lacks personal jurisdiction over Defendant; (2) venue is improper in this district; and (3) the case should be transferred to the District of Oregon pursuant to 28 U.S.C. § 1404 and the doctrine of forum non conveniens. (ECF No. 5). On November 26, 2012, Plaintiff filed an opposition. (ECF No. 8). On December 3, 2012, Defendant filed a reply. (ECF No. 9).
II. Allegations of the Complaint
Plaintiff Guava Family is a California corporation, having a principal place of business in San Diego, California.
On information and belief Defendant Guava Kids LLC ('Guava Kids') is an Oregon company with its principal place of business in Beaverton, Oregon. Jurisdiction is vested in this Court by virtue of 28 U.S.C. §§1331, 1338, and 1367. This action arises under the Lanham Act, Title 15, United States Code, Sections 1051--1127.
Venue is proper under 28 U.S.C. §§1391(b).
Guava Kids sells, offers to sell, distributes, and advertises its products using the infringing trademark throughout the State of California, including the Southern District of California, and is subject to personal jurisdiction in this Court.
Guava Family has continuously advertised and promoted its GoCrib children's travel crib product for sale under the Guava Family trademark since no later than September 13, 2009.
Guava Family is the owner of U.S. Trademark Registration No. 3,846,252 for the trademark 'Guava Family' for cribs in International Class 20, which registered based on an application originally filed on the basis of intent to use on June 19, 2009.
Guava Family owns the registration for the internet domain www.guavafamily.com, which it registered on August 14, 2008. Guava Family has used the www.guavafamily.com domain for the promotion of products under the Guava Family trademark continuously since at least September of 2009.
On December 8, 2009, Guava Kids filed an application to register the trademark Guava Kids based on intent to use for 'Baby layettes for clothing; Booties; Children's and infant's apparel, namely, jumpers, overall sleepwear, pajamas, rompers and one-piece garments; Children's and infants' cloth bibs; Children's cloth eating bibs; Children's headwear; Hats for infants, babies, toddlers and children; Infant and toddler one piece clothing; Mittens; Shirts for infants, babies, toddlers and children; Swaddling clothes' in International Class 25.
Guava Kids first used the Guava Kids trademark in commerce on March 5, 2012.
On July 17, 2012, U.S. Trademark Registration No. 4,176,029 issued to Guava Kids for the trademark Guava Kids for mittens and swaddling clothes in International Class 25.
Guava Kids uses the trademark Guava Kids in connection with the sale of its only product, children's mittens which it calls 'guavamitts.'
Guava Kids has never sold swaddling clothes.
Guava Kids has never sold baby layettes for clothing; booties; children's and infant's apparel, namely, jumpers, overall sleepwear, pajamas, rompers and one-piece garments; children's and infants' cloth bibs; children's cloth eating bibs; children's headwear; hats for infants, babies, toddlers and children; infant and toddler one piece clothing; or shirts for infants, babies, toddlers and children. (ECF No. 1 at 1-3). The Complaint alleges that Defendant sells "guavamitts" and uses the name "Guava Kids," which allegedly infringe upon Plaintiff's registered trademark, "Guava Family." The Complaint purports to assert the following claims for relief: (1) trademark infringement in violation of 15 U.S.C. § 1114; (2) false designation of origin in violation of 15 U.S.C. § 1125; and (3) unfair competition in ...