United States District Court, D. Idaho
MEMORANDUM DECISION AND ORDER
J. LODGE, UNITED STATES DISTRICT JUDGE
before the Court is Defendants The RV Factory, LLC and Claude
Donati's Motion to Dismiss. (Dkt. 15.) The parties filed
responsive briefing and the motion is now ripe. Having fully
reviewed the record herein, the Court finds that the facts
and legal arguments are adequately presented in the briefs
and record. Accordingly, in the interest of avoiding further
delay, and because the Court conclusively finds that the
decisional process would not be significantly aided by oral
argument, the Motion shall be decided on the record before
this Court without oral argument. The Court denies
Defendants' Motion to Dismiss and grants Defendants'
Motion to Transfer.
AND PROCEDURAL BACKGROUND
Omega RV, LLC, (“Omega”) is an Idaho limited
liability company with its principal place of business in
Idaho. (Dkt. 7.) Omega manufactures and sells RVs on a
statewide and national level. (Dkt. 18.) Defendant The RV
Factory, LLC (“The RV Factory”) is an Indiana
limited liability company with its principal place of
business in Indiana. (Dkt. 15.) The RV Factory manufactures
its RVs at its production facility in Wakarusa, Indiana where
it also has a showroom where its RVs are displayed and
available for sale. (Dkt. 15.) Defendant Claude Donati
(“Donati”) is an individual and resident of
Indiana and owner of the RV Factory. (Dkt. 15.) The parties
both sell RVs and toy hauler trailers bearing the
“Weekend Warrior” mark and dispute who has the
right to use the mark. (Dkt. 15, 18.)
Complaint alleges that the “Weekend Warrior” name
has been used by Mark Warmoth (“Warmoth”) who has
sold RVs bearing the mark since 1988. (Dkt. 18.) Warmoth has
sold approximately 30, 000 RVs under the “Weekend
Warrior” name from 1988 to 2008. (Dkt. 18.) In 2010,
Warmoth partnered with another individual, Don Day, to form
Extreme Warrior RV, LLC, which in 2011, began constructing,
marketing, and selling its line of “Weekend
Warrior” trailers. (Dkt. 7.) In 2012, Extreme Warrior,
LLC encountered financial difficulties and sought funding
from others in the RV industry, including from Defendants.
(Dkt. 7, 18.) Defendants rejected the funding requests and
instead, on April 16, 2013, Donati filed a trademark
application for the “Weekend Warrior” mark. (Dkt.
7, 18.) Defendants began using the “Weekend
Warrior” mark on its RVs and trailers in 2013. (Dkt.
7.) Warmoth ultimately assigned the “Weekend
Warrior” mark to Omega, who then began constructing,
manufacturing, and selling RVs bearing the “Weekend
Warrior” mark. (Dkt. 18.) On May 4, 2016, Defendants
sent a cease and desis letter to Omega demanding that it stop
using the “Weekend Warrior” mark on its RVs.
(Dkt. 7, Ex. A.)
response, Omega filed suit against Defendants seeking a
declaratory judgment invalidating Defendants' trademark,
alleging trademark infringement, unfair competition, and
tortious interference with a contract. (Dkt.
Omega claims it has the right to use the mark because it was
assigned the mark from Warmoth. The RV Factory counters that
it owns the trademark to the “Weekend Warrior”
mark since approximately 2013, and, therefore, has the right
to use the mark on its RVs. Omega maintains that
Warmoth's rights to the “Weekend Warrior”
trademark have priority over Defendants' rights because
Warmoth used the trademark in commercial business for 25
years before Donati applied for the trademark.
filed a Motion to Dismiss under Rule 12(b)(2) and 12(b)(3).
(Dkt. 15.) Omega filed its Response and Defendants filed
their Reply. (Dkt. 18, 23.) The Court now takes up
Defendants' Motion to Dismiss.
to dismiss made pursuant to Federal Rule of Civil Procedure
12(b)(2) “are speaking motions and it is appropriate to
look beyond the pleadings to affidavits and other evidence
when considering them.” National Union Fire Ins.
Co. of Pittsburgh v. Aerohawk Aviation, Inc., 259
F.Supp.2d 1096, 1101 (D. Idaho 2003) (citing Data Disc
Inc. v. Systems Technology Assocs., Inc., 557 F.2d 1280
(9th Cir. 1977)). “Where a defendant moves to dismiss a
complaint for lack of personal jurisdiction, the plaintiff
bears the burden of demonstrating that jurisdiction is
appropriate.” Schwarzenegger v. Fred Martin Motor
Co., 374 F.3d 797, 800 (9th Cir. 2004) (citing Sher
v. Johnson, 911 F.2d 1357, 1361 (9th Cir. 1990)). Where
“the [defendant's] motion is based on written
materials rather than an evidentiary hearing, ‘the
plaintiff need only make a prima facie showing of
jurisdictional facts.'” Id. The Court
looks to the pleadings and affidavits to determine whether
the plaintiff has made a prima facie showing of personal
jurisdiction. Id. “Although the plaintiff
cannot ‘simply rest on the bare allegations of its
complaint, ' uncontroverted allegations in the complaint
must be taken as true.” Dole Food Co., Inc. v.
Watts, 303 F.3d 1104, 1108 (9th Cir. 2002) (quoting
Amba Marketing Systems, Inc. v. Jobar Int'l,
Inc., 551 F.2d 784, 787 (9th Cir. 1977)).
“Conflicts between parties over statements contained in
affidavits must be resolved in the plaintiff's
favor.” Schwarzenegger, 374 F.3d at 800
(citing AT&T v. Compagnie Bruxelles Lambert, 94
F.3d 586, 588 (9th Cir. 1996)).
as here, there is no applicable federal statute governing
personal jurisdiction, the district court applies the law of
that state in which the district court sits.”
Yahoo! Inc. v. La Ligue Contre Le Racisme Et
L'Antisemitisme, 433 F.3d 1199, 1205 (9th Cir. 2006)
(citing Fed.R.Civ.P. 4(k)(1)(A)). “In order for an
Idaho court to exert jurisdiction over an out-of-state
defendant, two criteria must be met; the act giving rise to
the cause of action must fall within the scope of our
long-arm statute and the constitutional standards of due
process must be met.” Saint Alphonsus Regional
Medical Center v. State of Wash., 852 P.2d 491, 494
(Idaho 1992). Idaho Code § 5-514 confers personal
jurisdiction over any “cause of action arising from . .
. [t]he commission of a tortious act within [Idaho].”
See Idaho Code § 5-514(b). Under this standard,
the negligent act need not take place in Idaho; all that is
required is that the injury is alleged to have occurred in
Idaho. National Union Fire Ins. Co., 259 F.Supp.2d
claims it is rightfully using the “Weekend
Warrior” trademark and its business is suffering as a
result of Defendants' infringement because it confuses
Idaho consumers who are targeted via Defendants' website.
Under the long arm statute, the alleged injury to Omega is
occurring in Idaho.
Idaho's long-arm statute, codified in Idaho Code §
5-514, allows a broader application of personal jurisdiction
than the Due Process Clause, the Court need look only to the
Due Process Clause to determine personal jurisdiction.”
Thus, under Idaho law, the jurisdictional and federal due
process analyses are the same.”
process requires that a nonresident defendant have sufficient
“minimum contacts” with the forum state such that
the exercise of jurisdiction “does not offend
traditional notions of fair play and substantial
justice.” Int'l Shoe Co. v. Washington,
326 U.S. 310, 316 (1945) (internal quotations and citation
omitted). “[T]he constitutional touchstone of the
determination whether an exercise of personal jurisdiction
comports with due process remains whether the defendant
purposefully established minimum contacts in the forum
State.” Asahi Metal Indus. Co. v. Superior Court of
California, Solano Cty., 480 U.S. 102, 108-109 (1987)
(internal quotations and citations omitted).
“Jurisdiction is proper . . . where the contacts
proximately result from actions by the defendant himself that
create a substantial connection with the forum State.”
Id. at 109 (internal quotations and citations
omitted) (emphasis in original).
jurisdiction can be general or specific. Lake v.
Lake, 817 F.2d 1416, 1420 (9th Cir. 1987). A court may
assert general personal jurisdiction over foreign
corporations “when their affiliations with the State
are so ‘continuous and systematic' as to render
them essentially at home in the forum State.”
Goodyear Dunlop Tires Operations, S.A. v. Brown, 564
U.S. 915, 919 (2011) (citing Int'l Shoe Co., 326
U.S. at 317). In contrast, specific personal jurisdiction is
exercised when a state asserts personal jurisdiction over a
defendant in a lawsuit arising out of or related to the
defendant's contacts with the forum state.
Helicoptores Nacionales de Columbia, S.A. v. Hall,
466 U.S. 408, 414 n.8 (1984). Specific jurisdiction depends
on the quality and nature of the defendant's contacts
with the forum state in relation to the cause of action.
Lake, 817 F.2d at 1421.
seems to concede the Court does not have general jurisdiction
over the Defendants. Instead, Omega contends the Court has
specific jurisdiction over the Defendants because Omega was
harmed by the conduct that Defendants purposefully directed
towards Idaho. Therefore, the Court will only address
Specific Personal Jurisdiction over Defendants
jurisdiction may be exercised over a nonresident defendant
when the cause of action arises out of its contact with, or
activities in, the forum state. SRE-Cheaptrips,
Inc. v. Media Synergy Group, LLC, 2010 WL 1913589,
at *3 (D. Idaho May, 2010) (citing Resnick v. Rowe,
283 F.Supp.2d 1128, 1135 (D. Hawaii 2003)). The Ninth Circuit
has established a three-part test to determine whether a
court may exercise specific personal jurisdiction over a
(1) the nonresident defendant must purposefully direct his
activities or consummate some transaction with the forum or
residents thereof; or perform some act by which he
purposefully avails himself of the privilege of conducting
activities in the forum, thereby invoking the benefits and
protections of its laws; (2) the claim must be one which
arises out of or results from the defendant's
forum-related activities; and (3) exercise of jurisdiction
must be reasonable.
Lake, 817 F.2d at 1421; see also Ballard v.
Savage, 65 F.3d 1495 (9th Cir. 1995). Omega bears the
burden of satisfying the first two factors. If Omega meets
its burden, the burden then shifts to Defendants to
demonstrate unreasonableness. Lake, 817 F.2d at
1421; Bosc ...