United States District Court, N.D. California
ORDER RE: DKT. NOS. 30, 31, 32, 33, 37, 41, 42, 46,
47, 48, 51
PHYLLIS J. HAMILTON, UNITED STATES DISTRICT JUDGE
Usman Anis's and Silicon Valley Graphic, LLC's motion
to dismiss plaintiffs complaint in its entirety and strike
portions of the complaint; defendant Salman Ghaznavi's
motion to quash service and dismiss the complaint; plaintiff
GoDaddy's motion for a preliminary injunction; and the
parties' numerous requests for judicial notice and
evidentiary objections came on for hearing before this court
on February 14, 2018. Plaintiff appeared through its counsel,
Nathan Dooley. Defendants appeared through their counsel,
Brenda Prackup. Having read the papers filed by the parties
and carefully considered their arguments and the relevant
legal authority, and good cause appearing, the court hereby
rules as follows, for the reasons stated at the hearing and
for the following reasons.
Go Daddy Operating Company, LLC (“GoDaddy”)
brought this action against defendants Usman Ghaznavi a/k/a
Usman Anis (“Usman Anis”), Salman Ghaznavi a/k/a
Salman Anis (“Salman Ghaznavi”), Silicon Valley
Graphics (“SVG”), and a number of unidentified
“Doe” defendants for injunctive relief and
damages arising from alleged unauthorized use of
asserts violations of 15 U.S.C. § 1114 (trademark
infringement), § 1125(a) (false designation of origin,
unfair competition, false advertising), § 1125(c)
(trademark dilution), § 1125(d) (cybersquatting), as
well as state-law and common-law claims of unfair
competition, false advertising, trademark infringement, and
intentional interference with prospective economic advantage.
Plaintiff also seeks an accounting.
addition to acting as a domain name registrar, GoDaddy offers
more than 50 online products and services to the public,
including website design, logo design, and business design.
Compl. ¶¶ 2, 18-20. As set forth in the complaint,
GoDaddy owns certain trademarks and has developed significant
common law rights in the GoDaddy trade name. See id.
November 29, 2017, GoDaddy filed certificates of service
showing service of the summons and complaint on each of the
defendants at 45333 Fremont Blvd., Suite 5, in Fremont,
California (the “Fremont Address”). The proofs of
service show (1) personal service on Usman Anis on November
14, 2017; (2) substituted service on SVG on November 14,
2017, at the address of its registered agent, by leaving
papers with Usman Anis, described as “Employee/Owner,
” followed by service by mail; and (3) substituted
service on Salman Ghaznavi, by leaving papers with Lo Ann Do,
graphic designer, on November 17, 2017, following attempts on
three successive days to personally serve Salman Ghaznavi.
complaint arises primarily from defendants' alleged use
of GoDaddy's trademarks on a number of websites they
operate (the websites at issue are the “Infringing
Domains”). Defendants allegedly use the marks to
advertise logo design, business design, and website design
services. Compl. ¶ 3. Plaintiff further alleges that the
defendants contacted GoDaddy customers and non-customers,
falsely identified themselves as working with GoDaddy, and
solicited business based on those false representations.
Id ¶¶ 4, 39-50. GoDaddy alleges a spam
campaign and telephonic conversations between defendants'
employees and potential customers. Id ¶¶
40-47. Plaintiff alleges that defendants have orchestrated a
similar pattern and practice of offenses against others'
intellectual property, through a network of related corporate
entities, which are ultimately controlled by the named
defendants in this action. Id ¶¶ 6-7,
28-29, 37-38. GoDaddy alleges that defendants conduct their
network of operations from two addresses, called the
“Fremont Address” and the “Sunnyvale
Address” (440 North Wolfe Road, MS# 142, Sunnyvale,
alleges that the Infringing Domains utilize a “domain
name privacy service, ” and that prior to utilizing the
domain name privacy service, defendants registered domains
using alias names, including “Fedrick King.”
Id ¶¶ 24-25. GoDaddy claims that such
alleged acts make identifying the true owner of these domains
difficult when relying on public information, although
GoDaddy claims to have learned that some were registered by
defendants. Id ¶¶ 24-27. For example,
GoDaddy claims to have learned through WhoIsGuard that Salman
Ghaznavi is the registered owner of at least one of the
Infringing Domains. Id ¶ 26.
asserts that it discovered defendants' use of the
Infringing Domains in July 2017, when a customer brought it
to GoDaddy's attention. Id ¶¶ 30-31.
When GoDaddy investigated, it learned that the infringing
domain was registered using GoDaddy, on an account paid for
by Usman Anis using the Fremont Address. Id ¶
32. GoDaddy terminated that account based on violations of
GoDaddy's terms of service and discovered that the same
account had registered four additional Infringing Domains.
Id. GoDaddy then learned that defendants had a
second GoDaddy account, paid for by the same credit card
linked to Usman Anis, which listed the Sunnyvale Address as
the contact and billing address. Id ¶ 33.
asserts that its discovery of the Infringing Domains also
shed light on their relation to a spam campaign involving the
domain name route66d.com, which in the summer of
2016 was used to send spam text messages that appeared to be
from GoDaddy. Id ¶ 34. GoDaddy contends that
this spam campaign gave rise to a large number of customer
complaints and threats of litigation from customers who
believed they had received the messages from GoDaddy.
Id. ¶ 35. This spam campaign was nearly
identical to another spam campaign during the same time
period that also used GoDaddy marks and directed GoDaddy
customers to a website at theamericandesigns.com.
complaint goes on to explain how GoDaddy learned of other
domains or products that improperly used GoDaddy trademarks,
and/or which engaged in spam advertising that appeared to
come from GoDaddy, and which it alleges originated with
defendants. See id. ¶¶ 37-51.
filed its complaint on November 10, 2017. Dkt. 1. On December
14, 2017, GoDaddy moved the court for a temporary restraining
order (Dkt. 24), which was argued and denied on December 20,
2017 (Dkt. 27). In that order declining to issue a TRO, the
It is undisputed that GoDaddy has a protectable interest in
the GoDaddy Marks, and that unauthorized use of the Marks by
persons or entities other than GoDaddy would be likely to
cause consumer confusion. However, the court finds that
GoDaddy has failed to make a clear showing that it is
entitled to the extraordinary remedy of temporary injunctive
relief. Primarily, GoDaddy has not made a sufficient showing
that any particular defendant is responsible for the alleged
infringement in this case. . . . [T]he interests of justice
would be better served by a fully-briefed motion for
injunctive relief, rather than the present hastily-assembled
motion for a temporary restraining order, heard on shortened
Dkt. 27 at 3-4.
December 26, 2017, defendants Usman Anis and SVG filed a
motion to dismiss and strike portions of the complaint. Dkt.
30. On December 29, 2017, defendant Salman Ghaznavi moved to
quash service of the complaint and dismiss it for lack of
personal jurisdiction. Dkt. 32. On January 10, 2018, GoDaddy
filed a motion for a preliminary injunction against
defendants Usman Anis, Salman Ghaznavi, and SVG. Dkt. 37.
Motion to Quash
determine whether service of process is proper, courts look
to the requirements of Federal Rule of Civil Procedure 4,
which provides that service is proper if it is done
“following state law for serving a summons in an action
brought in courts of general jurisdiction in the state where
the district court is located or where service is
made[.]” Fed.R.Civ.P. 4(e)(1). California allows
substitute service at one's office, usual mailing
address, or usual place of business. Cal. Civ. Proc. Code
§ 415.20(a)-(b). Plaintiff successfully effected
substitute service on Salman Ghaznavi under California law by
leaving a copy of the summons and complaint at 45333 Fremont
Blvd., Suite 5, Fremont, CA 94538 in the presence of a person
apparently in charge and thereafter mailing a copy of the
summons and complaint by first-class mail. See Dkt.
18. Salman Ghaznavi contends that service was ineffective
because it did not comply with the additional requirements of
the Hague Convention. Dkt. 32 at 13-14; Dkt. 40 at 9. The
Hague Convention applies only when “a transmittal
abroad . . . is required as a necessary part of
service.” Volkswagenwerk Aktiengesellschaft v.
Schlunk, 486 U.S. 694, 707 (1988). Furthermore,
“the internal law of the forum is presumed to determine
whether there is occasion for service abroad.”
Id at 704. Because California law does not require
the mailing of documents abroad in order to effect service of
process in the technical sense, the Hague Convention does not
apply. Id at 707-08; Piatek v. Siudy, 351
F. App'x 232, 233 (9th Cir. 2009).
Salman Ghaznavi's motion to quash service is therefore
DENIED. Defendant's accompanying request for judicial
notice (Dkt. 33) is DENIED as moot.
Motion to Dismiss for Lack of Personal Jurisdiction
party seeking to invoke the federal court's jurisdiction
bears the burden of demonstrating jurisdiction. Picot v.
Weston, 780 F.3d 1206, 1211 (9th Cir. 2015). When
resolving a motion to dismiss under Rule 12(b)(2) on written
materials, the court accepts uncontroverted facts in the
complaint as true and resolves conflicts in affidavits in the
plaintiff's favor. Mavrix Photo, Inc. v. Brand
Techs., Inc., 647 F.3d 1218, 1223 (9th Cir. 2011).
Process Clause of the Fourteenth Amendment “limits the
power of a state's courts to exercise jurisdiction over
defendants who do not consent to jurisdiction.”
Martinez v. Aero Caribbean, 764 F.3d 1062, 1066 (9th
Cir. 2014). Due process requires that the defendant
“have certain minimum contacts with it such that the
maintenance of the suit does not offend traditional notions
of fair play and substantial justice.” Int'l
Shoe Co. v. Wash., 326 U.S. 310, 316 (1945) (internal
quotation marks omitted). Under the “minimum
contacts” analysis, a court can exercise either
“general or all-purpose jurisdiction, ” or
“specific or conduct-linked jurisdiction.”
Daimler AG v. Bauman, 134 S.Ct. 746, 751 (2014)
(citing Goodyear Dunlop Tires Operations, S.A. v.
Brown, 564 U.S. 915, 919 (2011)); see Int'l Shoe
Co., 326 U.S. at 316-20.
general jurisdiction, a nonresident defendant may be subject
to suit even on matters unrelated to his contacts with the
forum. Daimler, 134 S.Ct. at 754-58. To establish
general jurisdiction, the plaintiff must demonstrate that the
defendant has continuous and systematic contacts sufficient
to approximate physical presence in the state. In re W.
States Wholesale Natural Gas Antitrust Litig., 715 F.3d
716, 741 (9th Cir. 2013). “For an individual, the
paradigm forum for the exercise of general jurisdiction is
the individual's domicile[.]” Goodyear,
564 U.S. at 924; see generally Lockard v. Lockard,
15 F.3d 1086 (9th Cir. 1993). Being an officer or owner of a
California corporation is not alone sufficient to establish
general personal jurisdiction over an individual.
Ishiyama v. Glines, No. 216CV00222APGPAL, 2016 WL
5661991, at *2 (D. Nev. Sept. 29, 2016); j2 Glob.
Commc'ns, Inc. v. Blue Jay, Inc., No.
08-cv-4254-PJH, 2009 WL 29905, at *7 (N.D. Cal. Jan. 5,
2009); Swensen v. Murchison, 507 F.Supp. 509, 512
n.3 (N.D. Cal. 1981); see also Johnston Farms v.
Yusufov, No. 117CV00016LJOSKO, 2017 WL 6571527, at *5
n.3 (E.D. Cal. Dec. 26, 2017) (Oberto, Mag. J.); Logtale,
Ltd. v. IKOR, Inc., No. 11-cv-05452-EDL, 2014 WL
1478901, at *5 (N.D. Cal. Apr. 14, 2014) (Laporte, Mag. J.).
absence of general jurisdiction, a court may exercise
specific jurisdiction over a defendant if his
less-substantial contacts with the forum gave rise to the
claim or claims pending before the court-that is, if the
cause of action “arises out of or has a substantial
connection with that activity. Hanson v. Denckla,
357 U.S. 235, 250-53 (1958); see also Goodyear, 564
U.S. at 924-25. The inquiry into whether a forum state may
assert specific jurisdiction over a nonresident defendant
focuses on the relationship among the defendant, the forum,
and the litigation. Walden v. Fiore, 134 S.Ct. 1115,
jurisdiction is analyzed using a three-part test: First, the
nonresident defendant must have purposefully directed his
activities or consummated some transaction with the forum or
a forum resident, or performed some act by which he
purposefully availed himself of the privilege of conducting
activities in the forum, thereby invoking the benefits and
protections of its laws; second, the claim must be one which
arises out of or relates to the nonresident defendant's
forum-related activities; and third, the exercise of
jurisdiction must comport with fair play and substantial
justice, i.e., it must be reasonable. See Picot, 780
F.3d at 1211. If the plaintiff is successful at establishing
the first two prongs, the burden shifts to the defendant to
set forth a compelling case that the exercise of jurisdiction
would not be reasonable. Id at 1211-12.
regard to the first prong, the “purposeful
availment” standard and the “purposeful
direction” standard are two distinct concepts.
Washington Shoe Co. v. A-Z Sporting Goods Inc., 704
F.3d 668, 672 (9th Cir. 2012). For claims sounding in tort,
courts apply the “purposeful direction” test.
Schwarzenegger v. Fred Martin Motor Co., 374 F.3d
797, 802-03 (9th Cir. 2004). Because GoDaddy's claims are
based on trademark infringement, generally characterized as a
tort, personal jurisdiction may be found if Salman Ghaznavi
has purposefully directed his activities at the
forum. See Panavision Int'l, LP. v.
Toeppen, 141 F.3d 1316, 1321 (9th Cir. 1998),
modified on other grounds by Yahoo! Inc. v. La Ligue
Contre Le Racisme Et L'Antisemitisme, 433 F.3d 1199
(9th Cir. 2006). The plaintiff must allege that the defendant
“(1) committed an intentional act, (2) expressly aimed
at the forum state, (3) causing harm that the defendant knows
is likely to be suffered in the forum state.”
Yahoo! Inc., 433 F.3d at 1206.
as an employee or agent of a corporation does not shield one
from individual personal jurisdiction when one's own
actions within that corporation otherwise satisfy the
personal jurisdiction test. Eg., Davis v. Metro
Productions, Inc., 885 F.2d 515, 522 (9th Cir. 1989);
j2 Glob. Commc'ns, 2009 WL 29905, at *7
(“the fiduciary shield doctrine does not prevent this
court from exercising jurisdiction over Luxenberg [corporate
officer] merely because his acts in California were
undertaken in an official, business capacity. . . . The
conduct that may be considered in determining whether the
assertion of personal jurisdiction over Luxenberg is
appropriate are those acts which Luxenberg would be
personally liable for, i.e., tortious acts he authorized,
directed, or meaningfully participated in.”);
Johnston Farms, 2017 WL 6571527, at *5 n.3.
Federal Rule of Civil Procedure 4(k)(2), “a court may
exercise jurisdiction when three requirements are met. First,
the claim against the defendant must arise under federal law
. . . . Second, the defendant must not be subject to the
personal jurisdiction of any state court of general
jurisdiction. Third, the federal court's exercise of
personal jurisdiction must comport with due process.”
Holland Am. Line Inc. v. Wartsila N. Am., Inc., 485
F.3d 450, 461 (9th Cir. 2007) (citations omitted). “The
due process analysis is identical to the one discussed above
when the forum was California, except here the relevant forum
is the entire United States.” Pebble Beach Co. v.
Caddy, 453 F.3d 1151, 1159 (9th Cir. 2006);
Holland, 485 F.3d at 462 (“The due process
analysis under Rule 4(k)(2) is nearly identical to
traditional personal jurisdiction analysis with one
significant difference: rather than considering contacts
between the [defendants] and the forum state, we consider
contacts with the nation as a whole.”).
fails to allege sufficient facts to support the exercise of
general personal jurisdiction. Plaintiff alleges in its
complaint that Salman Ghaznavi is a California resident.
Compl. ¶ 11. However, a declaration from Salman Ghaznavi
states that he resides full time and is employed in Pakistan.
Dkt. 32-1 ¶¶ 2-9. Although the court must accept
uncontroverted allegations in plaintiff's favor,
plaintiff has not submitted a competing affidavit actually
disputing that controverted point. See Mavrix Photo,
Inc., 647 F.3d at 1223 (“We may not assume the
truth of allegations in a pleading which are contradicted by
affidavit, but we resolve factual disputes in the
plaintiff's favor.”) (citations and internal
quotation marks omitted). Plaintiff argues that this court
can exercise general personal jurisdiction over Salman
Ghaznavi due to his positions in and ownership of various
California corporations and similar entities. That is not
enough. Plaintiff has failed to allege that Salman Ghaznavi
has sufficiently continuous and systematic contacts with
California or the United States for this court to exercise
general personal jurisdiction over him.
has similarly failed to allege sufficient facts to support
the exercise of specific personal jurisdiction. For example,
plaintiff may have alleged that companies with which Salman
Ghaznavi is associated have committed intentional acts aimed
at California, but plaintiff has not alleged that Salman
Ghaznavi himself undertook such acts or directed or
meaningfully participated in such acts.
a more satisfactory showing of the facts is necessary to
determine whether the court has personal jurisdiction over
Salman Ghaznavi-including Salman Ghaznavi's place of
residence, the extent of his ownership of and control over
the various entities in plaintiff's complaint, and
whether he personally conducted or directed any of the
actions alleged in the complaint-jurisdictional discovery is
appropriate. Boschetto v. Hansing, 539 F.3d 1011,
1020 (9th Cir. 2008); America West Airlines, Inc. v. GPA
Group, Ltd., 877 F.2d 793, 801 (9th Cir. 1989)
(“where pertinent facts bearing on the question of
jurisdiction are in dispute, discovery should be
allowed”); Halo Elecs., Inc. v. Bel Fuse Inc.,
No. CIV. C-07-06222 RMW, 2010 WL 2605195, at *7 (N.D. Cal.
June 28, 2010). Discovery will allow plaintiff to determine
the level of control Salman Ghaznavi exercised over the
entities it alleges have violated its trademarks. Second, the
parties dispute material facts on the issue. For example,
plaintiff alleges Salman Ghaznavi is a California resident
(Compl. ¶ 11) and defendants disagree (Dkt. 32-1 ¶
2); plaintiff claims Salman Ghaznavi sent or directed the
sending of text messages, phone calls, and advertisements to
California citizens (Dkt. 38 at 12-13), and defendants claim
Salman Ghaznavi does not advertise in the U.S. at all (Dkt.
32-1 ¶ 8).
the court DEFERS JUDGMENT on defendant Salman Ghaznavi's
motion to dismiss for lack of personal jurisdiction. The
court GRANTS a 90-day period of jurisdictional discovery for
plaintiff, ending on May 15, 2018. Plaintiff may file a
supplemental brief concerning this court's personal
jurisdiction over Salman Ghaznavi on or before June 14, 2018;
defendant may respond on or before June 28, 2018; and
plaintiff may reply on or before July 5, 2018. The briefing
shall conform to Civil Local Rule 7, with respect to page
limits and otherwise. No. hearing shall be held on the
supplemental briefing. As discussed below, the briefing may
also address whether Salman Ghaznavi should be enjoined by
the preliminary injunction issued herein.
Motion to Dismiss for Failure to State A Claim
motion to dismiss under Rule 12(b)(6) tests for the legal
sufficiency of the claims alleged in the complaint. Ileto
v. Glock, 349 F.3d 1191, 1199-1200 (9th Cir. 2003).
Under Federal Rule of Civil Procedure 8, which requires that
a complaint include a “short and plain statement of the
claim showing that the pleader is entitled to relief, ”
(Fed. R. Civ. P. 8(a)(2)), a complaint may be dismissed under
Rule 12(b)(6) if the plaintiff fails to state a cognizable
legal theory or has not alleged sufficient facts to support a
cognizable legal theory. Somers v. Apple, Inc., 729
F.3d 953, 959 (9th Cir. 2013).
the court must accept factual allegations in the complaint,
legally conclusory statements not supported by actual factual
allegations need not be accepted. Ashcroft v. Iqbal,
556 U.S. 662, 678-79 (2009). The complaint must proffer
sufficient facts to state a claim for relief that is
plausible on its face. Bell Atlantic Corp. v.
Twombly, 550 U.S. 544, 555, 558-59 (2007) (citations and
internal quotation marks omitted).
claim has facial plausibility when the plaintiff pleads
factual content that allows the court to draw the reasonable
inference that the defendant is liable for the misconduct
alleged.” Iqbal, 556 U.S. at 678 (citation
omitted). “[W]here the well-pleaded facts do not permit
the court to infer more than the mere possibility of
misconduct, the complaint has alleged-but it has not
‘show[n]'-‘that the pleader is entitled to
relief.” Id at 679 (quoting Fed.R.Civ.P.
8(a)(2)). Where dismissal is warranted, it is generally
without prejudice, unless it is clear the complaint cannot be
saved by any amendment. Sparling v. Daou, 411 F.3d
1006, 1013 (9th Cir. 2005).
Trademark Infringement, 15 U.S.C. § 1114
prevail on a claim of trademark infringement under the Lanham
Act, 15 U.S.C. § 1114, a party ‘must prove: (1)
that it has a protectible ownership interest in the mark; and
(2) that the defendant's use of the mark is likely to
cause consumer confusion.'” Network Automation,
Inc. v. Advanced Sys. Concepts, Inc., 638 F.3d 1137,
1144 (9th Cir. 2011) (quoting Dep't of Parks &
Recreation v. Bazaar Del Mundo Inc., 448 F.3d 1118, 1124
(9th Cir. 2006)). The statute also requires plaintiff to show
defendant's use of the mark “in commerce.” 15
U.S.C. § 1114(1). The Lanham Act defines “use in
commerce” as “the bona fide use of a mark in the
ordinary course of trade.” 15 U.S.C. § 1127. The
Ninth Circuit has held that, for example, “the use of a
trademark as a search engine keyword that triggers the
display of a competitor's advertisement is a ‘use
in commerce' under the Lanham Act.” Network
Automation, 638 F.3d at 1144; see also Brookfield
Commc'ns, Inc. v. W. Coast Entm't Corp., 174
F.3d 1036, 1053 (9th Cir. 1999) (plaintiff was entitled to a
preliminary injunction with respect to infringing domain name
registration and purchasing search engine keywords because it
had shown the marks were protected and that there was a
likelihood of confusion, although the court did not directly
address the “use in commerce” requirement).
complaint contains deep factual detail, including specific
allegations that defendants have now and historically
undertaken efforts to disguise their identities when
registering domains. Compl. ¶¶ 6-7, 24-27, 36. The
complaint also details particular mechanisms defendants
allegedly employed to mask their identities, and
plaintiff's investigatory efforts to reveal the same.
Id. ¶¶ 24-27, 32-36. Given plaintiff's
well-pled, factual allegations tying Usman Anis to the
Fremont and Sunnyvale Addresses (id. ¶ 10),
tying SVG to the Fremont Address (id. ¶ 12),
tying a number of domains at issue to domain name privacy
services (id. ¶ 24), and tying at least one
domain using a privacy service to the Fremont Address
(id. ¶ 26), tying a domain registered to
Fredrick King to a GoDaddy account paid for by Usman Anis