Searching over 5,500,000 cases.

Buy This Entire Record For $7.95

Download the entire decision to receive the complete text, official citation,
docket number, dissents and concurrences, and footnotes for this case.

Learn more about what you receive with purchase of this case.

Go Daddy Operating Company, LLC v. Ghaznavi

United States District Court, N.D. California

February 28, 2018

USMAN GHAZNAVI, et al., Defendants.

          ORDER RE: DKT. NOS. 30, 31, 32, 33, 37, 41, 42, 46, 47, 48, 51


         Defendants 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.


         Plaintiff 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 GoDaddy's trademarks.

         GoDaddy 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.

         In 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. ¶¶ 21-22.

         On 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. Dkts. 16-18.

         The 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, California 94085).

         GoDaddy 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.

         GoDaddy 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.

         GoDaddy asserts that its discovery of the Infringing Domains also shed light on their relation to a spam campaign involving the domain name, 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 Id.

         The 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.

         GoDaddy 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 court reasoned:

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 time.

Dkt. 27 at 3-4.

         On 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.


         A. Motion to Quash

         To 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).

         Defendant Salman Ghaznavi's motion to quash service is therefore DENIED. Defendant's accompanying request for judicial notice (Dkt. 33) is DENIED as moot.

         B. Motion to Dismiss for Lack of Personal Jurisdiction

         The 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).

         The Due 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.

         Under 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.).

         In the 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, 1121 (2014).

         Specific 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.

         With 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.[1] 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.

         Acting 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.

         Under 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.”).

         Plaintiff 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.

         Plaintiff 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.

         Because 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).

         Therefore, 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.

         C. Motion to Dismiss for Failure to State A Claim

         A 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).

         While 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).

         “A 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).

         1. Trademark Infringement, 15 U.S.C. § 1114

         “To 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).

         Plaintiff's 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 (id. ...

Buy This Entire Record For $7.95

Download the entire decision to receive the complete text, official citation,
docket number, dissents and concurrences, and footnotes for this case.

Learn more about what you receive with purchase of this case.