Opinion
Civil Action No. SA-05-CA-1169-XR.
April 13, 2006
ORDER
On this date, the Court considered Defendant George Zoes' motion to dismiss for improper venue, or alternatively, transfer the above styled and numbered cause to the United States District Court for the Southern District of Texas. Defendant alleges venue in the Western District of Texas is improper because he is a resident of Houston, Texas, a substantial part of Plaintiff's claims did not occur in this district, and the majority, if not all, of Defendant's business is conducted in Houston, Texas. Plaintiff Brush Creek Trading Company alleges that a substantial part of its claims did occur in this district, thus venue is proper. After careful consideration, Defendant's motion is DENIED (docket no. 5).
The Court notes that Defendant's motion is not supported by any affidavits or exhibits.
Factual Background
Plaintiff Brush Creek Trading Company brought this action asserting claims against Defendant George Zoes for violations of the Anticybersquatting Consumer Protection Act (ACPA), 15 U.S.C. § 1125(d), federal statutory unfair competition, and common law unfair competition. Plaintiff, a New Braunfels, Texas sole proprietorship with its principal place of business in Comal County, Texas, sells western and outdoors decorative items and accessories for homes and businesses. Plaintiff has been selling these goods since 1993 and allegedly has a registered trademark for "Brush Creek Trading." Although Plaintiff sells its products to retailers throughout the country, a significant amount of its customers reside in the Western District of Texas.
In the mid-1990s, Defendant allegedly began operating a business, Twelve Gauge Home Accents, in Houston, Texas. The goods Defendant sells are allegedly "knock-off" items to those products created by Plaintiff. Plaintiff alleges that Defendant has continually sold these knock-off items for over ten years. In response to Defendant's alleged knock-off products, Plaintiff initially quit selling the appropriated products and created new products. Plaintiff alleges that this product replacement practice provided only short-term relief as, invariably, Defendant would begin selling knock-offs of the newly created items.
Neither party provided the Court with the name of Defendant's business. Defendant's website, www.twelvegauge.com, appears to brand the products as "Twelve Gauge Home Accents."
In December 2004, Defendant allegedly appropriated Plaintiff's trademark, "Brush Creek Trading" and registered the domain namewww.brushcreektrading.com. Plaintiff alleges that Defendant used www.brushcreektrading.com as a vehicle for re-directing customers to Defendant's own website,www.twelvegauge.com, where the alleged knock-off products could be purchased. Plaintiff alleges that Defendant's registration of Plaintiff's trademark as a domain name has created confusion among customers searching for Plaintiff's products on the Internet. Defendants advertises and sells his products in the Western District of Texas.
In his Original Answer, Defendant admits registering the domain name www.brushcreektrading.com. Answer, at ¶ 8.
The Court has visited www.brushcreektrading.com and found the website lacked any content and did not redirect towww.twelvegauge.com. Neither party has informed the Court as to when www.brushcreektrading.com ceased being an active website.
Analysis
The Lanham Act does not have a venue provision, thus, the general federal venue statute, 28 U.S.C. § 1391, applies. See Woodke v. Dahm, 70 F.3d 983, 985 (8th Cir. 1995). Because this Court maintains federal question subject-matter jurisdiction over this case, section 1391(b) is the controlling venue provision. Section 1391(b) provides:
A civil action wherein jurisdiction is not founded solely on diversity of citizenship may, except as otherwise provided by law, be brought only in (1) a judicial district where any defendant resides, if all defendants reside in the same State, (2) a judicial district in which a substantial part of the events or omissions giving rise to the claim occurred, . . . or (3) a judicial district in which any defendant may be found, if there is no district in which the action may otherwise be brought.28 U.S.C. § 1391(b). It is undisputed that (b)(1) and (b)(3) are inapplicable because Defendant does not reside in this district and this action could have been brought in the Southern District of Texas where Defendant resides.
Plaintiff's chosen venue is only proper if a "substantial part of the events or omissions giving rise to the claim occurred" in this district. 28 U.S.C. § 1391(b)(2). "[T]here may be more than one district in which a substantial part of the events giving rise to the claim occurred, and . . . venue would be proper in each such district." Advanced Psychometrics, Inc. v. Geolearning, Inc., 1998 WL 1784218, at *5 (W.D. Tex. June 3, 1998) (quoting Sidco Indus. Inc. v. Wimar Tahoe Corp., 768 F.Supp. 1343, 1346 (D. Or. 1991)). The venue determination focuses on the relevant activities of the Defendant, not of the Plaintiff. Woodke, 70 F.3d at 985.
Plaintiff's Complaint primarily complains of the customer confusion Defendant has allegedly caused through this conduct. Customer confusion is one of the hallmarks of cybersquatting claims. See TMI, Inc. v. Maxwell, 368 F.3d 433, 439 n. 8 (5th Cir. 2004) (noting that the ACPA's Senate Report described cybersquatters as those who "register well-known marks to prey on consumer confusion by misusing the domain name to divert customers from the mark owner's site to the cybersquatter's own site"). Similar to a trademark infringement cause of action, the district in which a "deceived customer buys defendant's product in the belief that he is buying plaintiff's" provides a proper venue. Taylor Francis Group, PLC v. McCue, 145 F.Supp. 2d 627, 630 (E.D. Pa. 2001) ("Plaintiffs must show that Defendants passed off Plaintiffs' books in this district since passing off occurs where the deceived customer buys the defendant's product on the belief that it is buying the plaintiff's."); see also Woodke, 70 F.3d at 985. Here, a substantial part of the events giving rise to Plaintiff's claim occurred in this district. Defendant admittedly markets, advertises, and sells his allegedly knock-off products in this district. Defendant's interactive website was accessible in the Western District of Texas. Plaintiff's customers in the Western District of Texas have attempted to reach its website only to be redirected to Defendant's website. Plaintiff alleges that customers in this district have purchased Defendant's products under the mistaken belief that they were purchasing Plaintiff's products. Plaintiff's chosen venue, the Western District of Texas, is proper.
Conclusion
Defendant requests that the Court dismiss Plaintiff's case pursuant to Federal Rule of Civil Procedure 12(b)(3) for improper venue, or alternatively, transfer the case to the Southern District of Texas, where Defendant resides, and venue is proper. Because Defendant's alleged cybersquatting and unfair competition have created confusion in this district among Plaintiff's customers as to the source of the products and Defendant admittedly sells his products to customers in this district, venue is proper in the Western District of Texas. Defendant's motion (docket no. 5) is DENIED.