United States District Court, C.D. California
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For Del Monte International GmbH, Plaintiff: Jason D Russell, Winston Ping Hsiao, LEAD ATTORNEYS, Skadden Arps Slate Meagher and Flom LLP, Los Angeles, CA; Anthony J Dreyer, Jamie Stockton, PRO HAC VICE, Skadden Arps Slate Meagher and Flom LLP, New York, NY.
For Del Monte Corporation, Defendant: Thomas Harold Zellerbach, Orrick Herrington and Sutcliffe LLP, Menlo Park, CA.
HONORABLE RONALD S.W. LEW, Senior United States District Judge.
Order re: Defendant's Motion to Dismiss Pursuant to Fed.R.Civ.P. 12(b)(1) and 12(b)(6) 
Currently before the Court is Defendant Del Monte Corporation's (" Defendant" ) Motion to Dismiss Pursuant to Fed.R.Civ.P. 12(b)(1) and 12(b)(6) . Plaintiff Del Monte International GmbH (" Plaintiff" ) filed its Opposition on November 6, 2013 . Defendant filed its Reply on November 20, 2013 . This matter was taken under submission on November 26, 2013 . Having reviewed all papers submitted pertaining to the Motion, and having considered all arguments presented to the Court, the Court NOW FINDS AND RULES AS FOLLOWS:
Defendant's Motion to Dismiss is hereby GRANTED.
Plaintiff is a limited liability company organized under the laws of Switzerland, with its principal place of business in Monaco. Compl. ¶ 2. Plaintiff is a wholly owned subsidiary of Fresh Del Monte Produce Inc. (" Fresh Del Monte" ), the holding company for the Del Monte Fresh Produce group of companies. Id. at ¶ 3. Defendant is a Delaware corporation with its principal executive offices in California. Id. at ¶ 4.
Before August 1989, Defendant was a wholly owned subsidiary of RJR Nabisco, Inc. and was divided into two major operations. Id. at ¶ 12. One operation was dedicated to selling canned fruits and vegetables and dried fruits; the other operation principally sold fresh fruits, fresh vegetables, fresh produce, and certain preserved products. Id. In late 1989, the second operation was sold to Polly Peck International and ultimately became part of Fresh Del Monte. Id.
Fresh Del Monte is a leading producer and seller of high-quality fresh fruit and vegetables, as well as a leading producer and distributor of prepared fruit and vegetables, juices, beverages, snacks, and desserts in Europe, the Middle East, Africa, and former Soviet Union countries. Id. at ¶ 13. Fresh Del Monte provides its services and products to customers in over 80 countries worldwide. Id. Fresh Del Monte has leading market positions in many product categories, all of which are sold under the DEL MONTE trademark. Id. at ¶ 14. Fresh Del Monte generated approximately $2,664,166,000 in net sales from its DEL MONTE branded products in fiscal year 2012. Id.
Plaintiff owns the trademark DEL MONTE in South Africa and has owned the Mark there since 1990. Id. at ¶ 16. Plaintiff also holds: (1) an exclusive, perpetual,
royalty-free worldwide license to use the DEL MONTE Mark on or in connection with the production, manufacture, sale, and distribution of fresh fruit, vegetables, and produce, and certain preserved fruit products; and (2) an exclusive, royalty-free license to use the DEL MONTE Mark on or in connection with production, manufacture, sale, and distribution of all food products in Europe, the Middle East, Africa, and former Soviet Union countries. Id. at ¶ 17.
Plaintiff and its affiliates have owned and operated over a dozen " delmonte" domain names for over a decade without seeking or receiving authorization from Defendant. Id. at ¶ 19. Defendant has never objected to any of these domain names. Id.
In June 2011, the Internet Corporation for Assigned Names and Numbers (" ICANN" ) introduced its New Generic Top Level Domain Program, which allows parties to apply for new generic top level domains (" gTLD" ), unique top level domains (" TLD" ), to be used in lieu of traditional TLDs, such as < .com> or < .net> . Id. at ¶ 20. The application window opened on January 12, 2012, and closed on May 30, 2012. Id. at ¶ 21.
ICANN also provided for a New gTLD Dispute Resolution Procedure and authority for administering this procedure was delegated to the World Intellectual Property Organization (" WIPO" ). Id. at ¶ 22. WIPO subsequently adopted the WIPO Rules for New gTLD Dispute Resolution for Legal Rights Objections. Id. Under these policies and rules, third parties were allowed to challenge a gTLD application by filing a Legal Rights Objection (" LRO" ) during a specified period. Id. at ¶ 23. The principal inquiries pertaining to applications for gTLDs that are also trademarks are (1) whether the applicant has bona fide rights in the trademark that corresponds to the applied-for gTLD and (2) whether registration of the gTLD by the applicant would create an impermissible likelihood of consumer confusion. Id. at ¶ 24.
Plaintiff submitted its Application for the gTLD < .delmonte> during the specified period. Id. at ¶ 25. On March 1, 2013, Defendant filed an LRO objecting to Plaintiff's Application. Id. at ¶ 31. On June 14, 2013, WIPO appointed a three-member panel to decide, based on its determination as to the principal inquiries pertaining to gTLDs, whether to uphold or reject Defendant's LRO. Id. at ¶ 35. On August 6, 2013, a majority of the WIPO panel decided in favor of sustaining Defendant's LRO. Id. at ¶ 36.
On August 13, 2013, Plaintiff filed this Action in this Court, requesting a declaration that: (1) Plaintiff has bona fide rights in the DEL MONTE Mark; (2) that Plaintiff is not in violation of the Anti-Cybersquatting Consumer Protection Act (" ACPA" ), 15 U.S.C. § 1125(d); and (3) Plaintiff's registration of the gTLD < .delmonte> will not create an impermissible likelihood of confusion. Plaintiff also requests that this Court order Defendant to withdraw its LRO. Id. at ¶ 42.
II. Legal Standard
A. Motion to Dismiss Pursuant to Rule ...