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Wilens v. Automattic Inc.

United States District Court, N.D. California, San Francisco Division

February 5, 2015

JEFFREY WILENS, Plaintiff,
v.
AUTOMATTIC INC., et al., Defendants.

ORDER (1) GRANTING PLAINTIFF'S MOTION FOR LEAVE TO SERVE DOE 1 BY EMAIL [Re: ECF No. 45]

LAUREL BEELER, Magistrate Judge.

INTRODUCTION

On May 25, 2014, Plaintiff Jeffrey Wilens filed a complaint against Defendants Automattic, Inc., TLDS LLC, Google, Inc., and Does 1-100 for trademark infringement in violation of the Lanham Act, 15 U.S.C. § 1125(a)(1), and for violation of the Anticybersquatting Consumer Protection Act, 15 U.S.C. § 1125(d). (Original Complaint, ECF No. 1.[1]) Automattic, TLDS, and Google have been dismissed from this action, and now Mr. Wilens is attempting to identify and serve Doe 1. Mr. Wilens now moves for leave to serve Doe 1 by email or, alternatively, by publication. (Motion, ECF No. 45.) Pursuant to Civil Local Rule 7-1(b), the court finds this matter suitable for determination without oral argument and vacates the February 5, 2015 hearing date. Upon consideration of Mr. Wilens's motion, the declarations and evidence he filed in support of it, and the applicable authority, the court grants his motion and allows him to serve Doe 1 by email.[2]

STATEMENT

I. MR. WILENS'S ALLEGATIONS

Plaintiff Jeffrey Wilens is an attorney specializing in consumer and employment law. (First Amended Complaint ("FAC"), ECF No. 23 ¶¶ 1, 8, 11.) The name of his law firm is Lakeshore Law Center. ( Id. ¶¶ 10-11.) He is the only attorney in the United States with his and his law firm's name. ( Id. ¶ 11.) He maintains websites at www.lakeshorelaw.org and www.creditrepairdebt.org. ( Id. ¶ 10.) He holds trademark rights in the marks JEFFREY WILENS and LAKESHORE LAW CENTER and has spent tens of thousands of dollars advertising and promoting his personal and business name. ( Id. ¶¶ 9, 13.)

Mr. Wilens alleges that Doe 1 created, at Defendants' allowance, seven websites that violate his rights in the JEFFREY WILENS and LAKESHORE LAW CENTER marks and tarnish and disparage him and his law practice. ( See id. ¶¶ 14-20.) TLDS is the domain name registrar for one of those websites: www.jeffreywilens.com. ( Id. ¶¶ 16, 20.) Google hosts another one: jeffreywilens.blogspot.com. ( Id. ¶¶ 15, 19.) The other five websites- lakeshorelawcenter.wordpress.com; attorneyjeffreywilens.wordpress.com; jeffreywilenslawyer.wordpress.com; unitedvictimsofjeffreywilens.wordpress.com; and jeffreywilenslakeshorelaw.wordpress.com-are hosted by Automattic. ( Id. ¶¶ 14, 18.) Those websites criticize Mr. Wilens and his firm. ( See id. ¶¶ 33 (Doe 1 "stated that Jeffrey Wilens is engaging in the same activity that many lawyers, disbarred and/or jailed were engaging in.'"), 36 (Doe 1 "stated [that] JEFFREY WILENS IS USING SAME TACTICS [sic] AS ATTORNEY'S [sic] WHO HAVE BEEN JAILED AND DISBARRED. Many lawyers using the same unethical tactics as Jeffrey Wilens and [sic] have been disbarred and jailed. Jeffrey Wilens [sic] unethical moves will catch up to him and he will be next to be disbarred.'"), 38 (Doe 1 "stated [that] Jeffrey Wilens gets the millions while his clients the "victims" get nothing.'"), 39 (Doe 1 "stated [that] Jeffrey Wilens makes up victims for his baseless class action suit.'"), 40 (Doe 1 "created and published a false review from supposedly an actual client" of Mr. Wilens, and the review stated that Mr. Wilens "contacted me and asked me to be a victim in one of his frivolous litigation against a major corporation").) The websites also link to articles about "lawyers who have committed various crimes" or have been disbarred. ( Id. ¶¶ 34, 36.) Mr. Wilens alleges that all of Doe 1's statements are false and defamatory and that Doe 1's websites have "no legitimate purpose for using [Mr. Wilens's] personal or business name in" their domain names. ( See id. ¶¶ 21, 32, 35, 37-40.)

Mr. Wilens alleges that Doe 1 "admitted [that] his goal was to cause [Mr. Wilens] to suffer agony, '" and the statements were made intentionally and maliciously with the intent to cause pain and suffering and to "destroy [Mr. Wilens's] professional reputation and to cause him to lose clients." ( Id. ¶ 42.) Mr. Wilens also alleges that Doe 1 created the websites "for the purposes of diverting search engine traffic by clients and potential clients of [Mr. Wilens] from [Mr. Wilens's] websites controlled by" Doe 1, and that Doe 1 "did this for purposes of commercial gain and with intent to tarnish and disparage [Mr. Wilens's] marks by creating likelihood of confusion." ( Id. ¶ 17.) Mr. Wilens also alleges that Defendants were aware that their actions were and are contributing to Doe 1's trademark infringement because on March 3, 2014 he provided to them written notice with specific information describing the infringement and their role in perpetrating it. ( Id. ¶ 22.) Each Defendant responded in writing that it would not take any action absent an order from a court of competent jurisdiction. ( Id. ) Mr. Wilens also alleges that if Defendants had not allowed Doe 1 to use JEFFREY WILENS or LAKESHORE LAW CENTER in the domain names of the websites, search engines would have placed them so prominently upon a search of those terms. ( Id. ¶ 24.)

II. PROCEDURAL HISTORY

On May 25, 2014, Mr. Wilens filed his original complaint against Automattic, Google, and TLDS LLC for trademark infringement and cybersquatting. ( See Original Complaint, ECF No. 1.) In response to TLDS's motion to dismiss, and pursuant to Federal Rule of Civil Procedure 15(a)(1)(B), on July 1, 2014, Mr. Wilens filed a First Amended Complaint that dropped TLDS as a defendant to the action, realleged his claims for trademark infringement and cybersquatting against Automattic, Google, and Doe 1, and added a claim for defamation against Doe 1. ( See FAC, ECF No. 23; see also Schwarzer, Tashima & Wagstaffe, CALIFORNIA PRACTICE GUIDE: FEDERAL CIVIL PROCEDURE BEFORE TRIAL §§ 8:1386 (amendment under Rule 15 may be used to drop a party), 8:1551 (amended complaint that voluntarily drops a defendant named in the original complaint effectively dismisses that defendant from the action).) In light of the First Amended Complaint, the court denied as moot TLDS LLC's motion to dismiss. ( See Order, ECF No. 26.)

Then, on July 10, 2014, Automattic and Google jointly filed a motion to dismiss the First Amended Complaint. ( See Motion, ECF No. 28.) Mr. Wilens filed an opposition on July 24, 2014. ( See Opposition, ECF No. 30.) On July 31, 2014, Mr. Wilens and Google filed a stipulation dismissing with prejudice Mr. Wilens's claims against Google, and Automattic filed a reply. ( See Stipulation of Dismissal, ECF No. 31; Reply, ECF No. 32.) On September 10, 2014, Mr. Wilens's voluntarily dismissing without prejudice his claims against Automattic. (Voluntary Dismissal, ECF No. 35.) The court then dismissed the pending motion to dismiss as moot. (9/12/2014 Order, ECF No. 37.) Thus, only Doe 1 remains as a defendant to this action.

Since that time, Mr. Wilens has been diligently attempting to identify and locate Doe 1 so that he may serve him or her. In support of his motion for leave to serve Doe 1 by email or, alternatively, by publication, Mr. Wilens states (and provides evidence to show) that he has taken the following steps:

• Mr. Wilens served a subpoena on TLDS, the registrar listed for jeffreywilens.com. According to documents provided by TLDS, the website was registered on December 9, 2013, and the person listed as the registrant is Konstantin Petrov at address "Montazhnikov 24, Sankt-Peterburg, 190000, Russia, 9.XXX-XXX-XXXX." The registrant's listed email address is jeffypetrov@mail.ru. Mr. Wilens has never represented a client or sued a person or company with an officer or director named "Konstantin Petrov" or "Jeffy Petrov." Mr. Wilens determined that the address Montazhnikov 24 appears in a number of Russian cities but does not appear in Saint Petersburg, that the "postal code" 19000 is for Kaniv in the Ukraine, and is not in Saint Petersburg. (12/26/2014 Wilens Decl., ECF No. 45 at 24 ¶¶ 14-16; 2/3/2015 Wilens Decl., Ex. 1, ECF No. 52 at 6-9.)

• Mr. Wilens determined that the IP address hosting jeffreywilens.com is 217.112.35.87. An Internet search at w3bin.com, a tool that analyzes where websites are hosted, shows that the website is hosted in a server located in Russia and owned by Utransit ...


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