Ahmed v. Hosting.Com
28 F. Supp. 3d 82
D. Mass.2014Background
- Plaintiff Naeem Ahmed sued Hosting.com and Facebook alleging trademark infringement of three marks (The News International, the Jang, Geo) purportedly subject to his ownership or exclusive license.
- Ahmed relied on two U.S. trademark applications originally filed by Axact; those applications were later assigned to Ahmed after suit was filed and were refused registration by the USPTO.
- Hosting hosts www.thenews.com.pk for Jang (a Pakistani media company) and declined a DMCA takedown because Ahmed’s notice asserted trademark—not copyright—claims; Facebook pages run by unnamed John Does allegedly used the Marks.
- Ahmed alleged irreparable business and goodwill injury but pleaded no concrete facts showing use of the marks in U.S. commerce, a commercial interest, or a causal link to specific defendants’ conduct.
- Defendants moved to dismiss for lack of subject‑matter jurisdiction (standing and diversity) and failure to state a claim; the court dismissed both suits for lack of subject‑matter jurisdiction.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Standing under 15 U.S.C. § 1114 (registered marks) | Ahmed asserted he was owner or exclusive licensee of the Marks based on trademark applications and a later assignment | Marks are not registered (USPTO refusals); applications/after‑filed assignment do not confer registrant standing at filing | No standing under § 1114 because marks were unregistered at filing and assignment post‑filing cannot confer jurisdiction |
| Standing under 15 U.S.C. § 1125(a) (unregistered marks) — reasonable interest test | Ahmed claims commercial injury and licensee status sufficient for Lanham Act protection | Ahmed pleaded only bare conclusions; no factual showing of use in commerce, commercial interest, or causal injury | No standing under § 1125(a); allegations insufficient to show reasonable interest or commercial injury |
| Standing under Lexmark (zone‑of‑interests and proximate cause) | Ahmed contends alleged business harm fits Lanham Act zone of interests | Ahmed failed to plead facts to show economic/reputational injury or proximate causation | No standing under Lexmark; bald assertions insufficient to meet zone or proximate‑cause requirements |
| Diversity jurisdiction (28 U.S.C. § 1332) | Ahmed alleged diversity jurisdiction against foreign John Does | Ahmed sued unnamed John Does without citizenship allegations; plaintiff and defendants appear foreign, defeating complete diversity | No diversity jurisdiction: failure to allege citizenship of all defendants and likely lack of complete diversity |
Key Cases Cited
- FW/PBS, Inc. v. City of Dallas, 493 U.S. 215 (1990) (standing requires personal injury traceable to defendant)
- United States v. AVX Corp., 962 F.2d 108 (1st Cir. 1992) (pleading standards for standing require affirmative factual support)
- Quabaug Rubber Co. v. Fabiano Shoe Co., 567 F.2d 154 (1st Cir. 1977) (standing for registered marks limited to registrants or exclusive licensees)
- Lexmark Int’l, Inc. v. Static Control Components, Inc., 134 S. Ct. 1377 (2014) (Lanham Act standing analyzed by zone‑of‑interests and proximate cause)
- Berner v. Delahanty, 129 F.3d 20 (1st Cir. 1997) (courts disregard bald assertions and unsubstantiated conclusions in pleadings)
- Ruhrgas AG v. Marathon Oil Co., 526 U.S. 574 (1999) (complete diversity required for federal diversity jurisdiction)