United States District Court, N.D. California, San Jose Division
ORDER GRANTING MOTION TO DISMISS FOR LACK OF PERSONAL
JURISDICTION WITH LEAVE TO AMEND RE: DKT. NO. 18
H. KOH, United States District Judge.
RAPC Worldwide, P.C. (“Plaintiff”) sued eighteen
defendants, including Worldwide Mail Solutions, Inc.
(“Defendant”), for alleged violations of the
Lanham Act, California's False Advertising Law, and
California's Unfair Competition Law, as well as a claim
for intentional interference with prospective economic
advantage. ECF No. 1. Before the Court is Defendant's
motion to dismiss for lack of personal
jurisdiction. ECF No. 18. Having considered the
submissions of the parties, the relevant law, and the record
in this case, the Court GRANTS Defendant's motion to
dismiss with leave to amend.
is a California professional corporation that “offers
services including trademark preparation and prosecution,
patent preparation and prosecution, copyright registration
and counseling, international trademark and patent filings,
and corporate formation and stock and equity
structuring.” ECF No. 1 at ¶¶ 18, 41
(“Compl.”). Plaintiff alleges that companies,
termed “Mailer Defendants, ” “use publicly
available trademark filer information to send targeted
‘solicitations' to . . . trademark
applicants.” Id. ¶¶ 2, 43. The
“‘solicitations' are constructed to
[deceptively] make the trademark applicant believe that an
official U.S. government agency or the [United States Patent
& Trademark Office (USPTO)] itself is sending a letter to
them, raising fear among the unsuspecting public that they
must pay large amounts of money or forfeit trademark
rights.” Id. ¶ 2. These “Mailer
Defendants” provide no real services and “result
in no value to trademark owners.” Id.
result of the Mailer Defendants' actions, Plaintiff
asserts that “significant business” was
deceptively diverted to Mailer Defendants. Id.
¶ 198. Plaintiff also alleges that Plaintiff
“received inquiries from its clients confused about the
unsolicited actions by the Mailer Defendants and worried that
[Plaintiff's] services to the clients were somehow
deficient.” Id. ¶ 199. Plaintiff claims
that it spent “valuable time and expenses to
investigate the facts to appropriately advise its
clients.” Id. ¶ 200.
alleges that Mailer Defendants “appear to originate . .
. [in] countries outside the United States (most frequently
from eastern Europe).” Id. ¶ 3. As
relevant to the instant motion to dismiss, Plaintiff asserts
that “GLOTRADE” is one such “Mailer
Defendant, ” operates out of the Czech Republic, and
sends advertisements or mailers that falsely state that
GLOTRADE protects a trademark from copyright infringement
when GLOTRADE in fact provides no such services. Id.
¶¶ 78, 83-91. According to Plaintiff,
GLOTRADE-because it operates out of the Czech Republic-must
obtain a domestic U.S. mailing address in order to appear as
a legitimate organization and to receive payments from its
allegedly false advertisements. Id. ¶ 78-79.
GLOTRADE relies on Defendant, who is in the business of
“provid[ing] a U.S. street address to customers and
allow[ing] them to receive mail at a U.S. address that can
then be forwarded internationally.” Id. ¶
80. Plaintiff alleges that Defendant, by allowing GLOTRADE to
obtain a U.S. mailing address, helps GLOTRADE “mask
its true identity from people sending the checks.”
Id. ¶ 81. On this basis, Plaintiff claims that
Defendant is liable as a “logistics enabler” of
GLOTRADE. Id. ¶ 1.
Plaintiff alleges that Defendant advertises its mail services
to business owners in California. ECF No. 24-2, Exs. 4-5.
According to Plaintiff, Defendant has multiple California
customers who use Defendant's mailing services.
Id. Defendant, however, is not a California
corporation and has no employees in California. ECF No. 18-2
¶ 11. Defendant is a corporation duly formed under the
laws of the State of Texas with a principal place of business
in Houston, Texas. Id. ¶¶ 4-5. Defendant
has never owned, leased, possessed, or maintained any real or
personal property in California, nor has Defendant maintained
any bank, savings, or loan accounts in California.
Id. ¶¶ 9-10. Finally, Defendant
acknowledges that it provided GLOTRADE with a mailing address
in Houston, Texas, but notes that Defendant never sent any
mail to Plaintiff. Id. ¶¶ 13, 17.
March 25, 2019, Plaintiff sued eighteen defendants and
alleged the following causes of action: (1) violations of the
Lanham Act, 15 U.S.C. § 1125(a); (2) violations of
California's False Advertising Law, Cal. Bus. & Prof.
Code § 17500; (3) violations of California's Unfair
Competition Law, Cal. Bus. & Prof. Code § 17200; and
(4) intentional interference with prospective economic
advantage. Compl. ¶¶ 203-61. The eighteen
defendants fell into two categories: “Mailer
Defendants, ” which are entities that directly engaged
in the allegedly false advertising; and “Logistics
Enablers, ” which are companies that provided mailing
addresses that facilitated the allegedly fraudulent conduct.
Id. ¶ 1; see generally Id.
date, Plaintiff has voluntarily dismissed six of the seven
“Logistics Enablers” and three of the eleven
“Mailer Defendants.” ECF Nos. 16, 25, 28, 33, 42,
48, and 72. Six of the “Mailer Defendants” were
served but did not appear, and the Clerk entered default
against them. See ECF Nos. 47, 64, and 66. Of the
two other Mailer Defendants, one filed a motion to dismiss,
and another filed an answer. ECF Nos. 51 and 78.
pertaining to the instant Order, on May 8, 2019, Defendant,
who is the sole remaining “Logistics Enabler”
Defendant, filed a motion to dismiss for lack of personal
jurisdiction. ECF No. 18 (“Mot.”). Plaintiff
filed an opposition on May 22, 2019, ECF No. 24
(“Opp.”), and Defendant filed a reply on May 28,
2019, ECF No. 26 (“Reply”). The motion to dismiss
is now fully briefed and ripe for adjudication.
Motion to Dismiss ...