memorandum and order
1. INTRODUCTION
Naeem Ahmed (“Ahmed”) brings two separate, but similar, suits against Hosting.com (“Hosting”), Facebook, Inc. (“Fa-cebook”), and four unnamed John Doe defendants (collectively, “John Does”) (with Hosting and Facebook, the “Defendants”) for trademark infringement. Ahmed alleges that Hosting and Facebook are responsible for the infringing activities of the John Does, including the use of the trademarks “The News International,”
Hosting and Facebook have both moved to dismiss Ahmed’s complaints. They contend that this Court lacks subject matter jurisdiction and that Ahmed has failed sufficiently to allege a trademark infringement claim against any defendant.
A. Procedural Posture
1. Hosting
Ahmed filed a complaint with this Court on December 9, 2013. Compl. (“The Hosting Compl.”), ECF No. 1. On January 29, 2014, Hosting moved to dismiss Ahmed’s complaint pursuant to Federal Rules of Civil Procedure (“Rule”) 12(b)(1), 12(b)(2), and 12(b)(6) for lack of standing, lack of personal jurisdiction, and failure to state a claim upon which relief can be granted.
On February 4, 2014, Ahmed opposed Hosting’s motion. Mem. Law Opp’n Def. No. l’s Mot. Dismiss (“Opp’n to Hosting”), ECF No. 20. Hosting replied to Ahmed’s opposition on February 24, 2014. Def.’s Reply Br. Supp. Rule 12(b)(1), 12(b)(2) & 12(b)(6) Mot. Dismiss PL’s Compl., ECF No. 23. On March 21, 2014, Hosting filed a request for judicial notice of certain United States Patent аnd Trademark Office (“USPTO”) materials, Req. Judicial Notice Supp. Mot. Dismiss, ECF No. 26, to which Ahmed responded on April 3, 2014, Resp. Hosting.com’s Req. Judicial Notice Supp. Mot. Dismiss, ECF No. 27.
2. Facebook
Ahmed filed a complaint with this Court on January 7, 2014. Compl. (“The Face-book Compl.”), ECF No. 1. On February 27, 2014, Facebook filed a motion to dismiss Ahmed’s complaint pursuant to Rules 12(b)(1) and 12(b)(6) or, alternatively, to have Ahmed file a more definite statement under Rule 12(e). Def. Facebook, Inc.’s Mot. Dismiss Compl. or, Alternative, More Definite Statement, ECF No. 13. On the same day, Facebook filed a memorаndum and a declaration of its counsel in support of its motion. Mem. Supp. Facebook., Inc.’s Mot. Dismiss Compl. or, Alternative, More Definite Statement (“Facebook’s Mem.”), ECF No. 14; Decl. Patrick J. O’Toole, Jr. Supp. Facebook, Ine.’s Mot. Dismiss Compl. or, Alternative, More Definite Statement (“Deck O’Toole”), ECF No. 15. On March 6, 2014, Ahmed opposed Facebook’s motion. Mem. Law Opp’n Def. No. l’s Mot. Dismiss or More Definite Statement (“Opp’n to Facebook”), ECF No. 18. On March. 18, 2014, Facebook replied to the opposition. Reply Mem. Law Furthеr Supp. Facebook, Inc.’s Mot. Dismiss Compl. or, Alternative, More Definite Statement, ECF No. 21. On March 25, 2014, Facebook filed a request for judicial notice of two USPTO Office Actions, Req. Judicial ' Notice Supp. Facebook, Inc.’s Mot. Dismiss or, Alternative, More Definite Statement (“Req. Judicial Notice”), ECF No. 22, to which Ahmed responded on April 3, 2014, Resp. Face-book’s Req. Judicial Notice Supp. Mot. Dismiss or, Alternative, More Definite Statement, ECF No. 23.
B. Facts Alleged
The underlying facts alleged in both cases are strikingly similar, revolving around Ahmed’s rights to the purported Marks, аnd the Defendants’ alleged infringement thereof. Hosting is a “cloud computing company that builds and operates high-performance websites for companies.” Hosting’s Mem. 3. Among the sites Hosting administers and operates is the webpage www.thenews.com.pk, which it operates for Jang, “the largest media company in Pakistan.” Id. Jang owns a Pakistani trademark for one of the Marks, which it registered in 1995 and has used on its site since at least January 1998. Id. Jang’s contact information is displayed on its webpage. Id. at 4.
Facebook is a social networking company that allows users to communicate by сreating Facebook “[plages.” Facebook’s Mem. 5. Several of those Facebook pages, run by three John Does, allegedly use the Marks in which Ahmed claims a proprietary interest. The Facebook Compl. ¶ 1.
The purported “common law and statutory licensee” interest in the Marks which Ahmed referenced in his cease and desist letter allegedly comes from “trademark numberfs]” 86/123,789 (for “The News International” mark) and 86/123,767 (for “the Jang” mark). The Facebook Compk ¶ 15. Although Ahmed labels these as trademarks, actually he is referencing two United States trademark applications, filed by a company named Axact (Pvt) Limited of Pakistan (“Axact”). See Hosting’s Mem. 3-4; Deck O’Toole, Ex. 1, The Jang Mark Appl., ECF No. 15-1; id., Ex. 2, The News International Mark Appl., ECF No. 15-2. Ahmed, however, has аlleged no connection between Axact and himself.
After learning of Axact’s application, Jang filed suit against Axact in Pakistan, before the High Court of Sindh at Karachi. See Deck Feinman, Ex. 10, Suit Deck, Permanent Inj., Damages & Rendition Accounts Against Infringement Trademark & Copyrights, ECF No. 17-10. The High Court issued an injunction ordering Axact to refrain from trying' to undermine Jang’s trademarks. Id., Ex. 11, Order Sheet High Ct. Sindh, Karachi, ECF No. 17-11. On December 27, 2013, News Publication (Pvt) Limited, part of the Jang Group, filed its ,own trademark applications in the United States for “The News International.” Id., Ex. 12, Trademark/Service Mark Appl. 86153145, ECF No. 17-12; id., Ex. 13, Trademark/Service Mark Appl. 86153210, ECF No. 17-13.
On January 15/2014, Axact assigned to Ahmed thе two applications it had filed. The Jang Mark Appl. 2; The News International Mark Appl. 2. On March 13, 2014, the USPTO denied registration for both trademark-applications and invited a response. Req. Judicial Notice, Ex. A, United States Patent Trademark Office (USPTO) Office Action (Official Letter) Applicant’s Trademark Appl. No. 86123767 (“USPTO Refusal ‘The Jang’ Mark”), ECF No. 22-1; id., Ex. B, United States Patent Trademark Office (USPTO) Office Action (Official Letter) Applicant’s Trademark Appl. No. 86123789 (“USPTO Refusal ‘The News International’ Mark”), ECF No. 22-2.
II. ANALYSIS
A. Standing/Subject Matter Jurisdiction
1. Standard of Review
In order for a court to have jurisdiction to hear the mеrits of a case, the
2. Ahmed Does Not Have Standing to Sue
Although he does not explicitly reference the statute giving rise to his claims, Ahmed’s trademark infringement suit under the Lanham Act can be brought either under 15 U.S.C. section 1114 (“section 1114”) for registered marks or 15 U.S.C. section 1125(a) (“section 1125(a)”) for unregistered marks. See 15 U.S.C. §§ 1114(1), 1125(a); Unleashed Doggie Day Care,
a. Standing Under Section 1114
Under section 1114, the allegedly infringed mark must be registered in the USPTO. 15 U.S.C. § 1114 (describing the liability for infringing a “registered mark”). Because the USPTO refused to register the Marks at issue in the present action, they are not “registered” as defined in the Lanham Act. See 15 U.S.C. § 1127 (defining “registered mark” as “a mark registered in the United States Patent and Trademark Office”); see also USPTO Refusal “The Jang” Mark; USPTO Refusal “The News International” Mark. Moreover, the civil remedy in section 1114 is available to the registrant. 15 U.S.C.
In his original complaints, Ahmed did not allege.he was either the owner or exclusive licensee of the Marks.
Ahmed fails to describe any relationship whatsoever between himself and Axact, the entity responsible for the filing of the applications. Indeed, in his opposition to Facebook’s motion to dismiss, Ahmed specifically claims to have “no such connection with any such Pakistani company.” Opp’n to Facebook 4. Not only does Ahmed fail to describe the relationship between Axact and himself, but also he has not alleged any facts to support a contention that he was the owner of any of the Marks at the time the lawsuit was filed, that he has used any of the Marks in the United States, or that he has licensed the Marks.
On January 15, 2014, however, Ahmed became the assignee of “the entire interest and the goodwill” in the Marks. Decl. O’Toole, Ex. 4, Trademark Assignment 1, ECF No. 15-4; The Jang Mark Application 3; The News International Mark Appl. 3. The purported assignment, however, was for an interest in applications that were subsequently refused registration, as explained above. See USPTO Refusal “The Jang” Mark; USPTO Refusal “The News International” Mark. Moreover, the purported assignment was filed after the initiation of suits against both Hosting and Facebook, and thus it cannot serve as the basis of jurisdiction. See Newman-Green, Inc. v. Alfonzo-Larrain,
Without substantiating factual allegations, Ahmed’s mere conclusory, and contradictory, statements that he is the owner or exclusive licensee of the Marks are not enough. See AVX Corp.,
b. Standing Under Section 1125(a)
i. Reasonable Interest Test
The First Circuit has interpreted section 1125(a) to require that the plaintiff have a “reasonable interest” to be protected and demonstrate a “sufficient nexus between [herself] and the alleged conduct.” Quabaug Rubber,
Ahmed fails to establish standing under this standard. Even assuming Hosting’s use of the mark on the internet establishes use in interstate commerce, Ahmed’s interest in the mark is less clear. Ahmed claims that Hosting’s alleged infringement has caused “irreparable loss and damages to his business and goodwill gained thereby,” Compl. ¶ 25, but he fails to assert specific facts that establish any causal link between Hosting’s use of the mark and the alleged injury. Ahmed does not provide information as to the type of business in which he is engaged, the products and services he offers, and how such business, products, and services are adversely affected by defendants’ use of the trademark. See id.; see also id. ¶ 14. Furthermore, in order to have a “reasonable interest” the plaintiff must use the infringed-upon mark in commerce in some way. See Ahmed v. Twitter, Inc., Civ. No. 14-10025-RGS, Mem. & Order Twitter’ Mot. Dismiss (“The Twitter Order”),
ii. The Lexmark Test
The Supreme Court may have supplanted the reasonable interest test when it recently adoрted a framework within which to analyze standing under section 1125(a). Lexmark Int’l, Inc. v. Static Control Components, Inc., — U.S. -,
Under Lexmark, standing is determined by a two-step process: a zone of interests inquiry and a proximate cause analysis. Id. at 1391. First, analysis of the zone of interests under section 1125(a) requires the court to employ the “traditional tools of statutory interpretation.” Id. at 1387. As the Supreme Court explained in Lexmark, the zone of interests is created by the statute and informed by the Lanham Act’s statement of purpose, which is codified at 15 U.S.C. § 1127. See id. at 1388-89. If the plaintiffs interests fit within that statement, then she has standing under section 1125(a). See id. at 1389-90. As the Supreme Court noted, the Lanham Act’s thorough statement of purpose leaves little question as to the protected interests under the statute:
The intent of this chapter is to regulate сommerce within the control of Con*91 gress by making actionable the deceptive and misleading use of marks in such commerce; to protect registered marks used in such commerce from interference by State, or territorial legislation; to protect persons engaged in such commerce against unfair competition; to prevent fraud and deception in such commerce by the use of reproductions, copies, counterfeits, or colorable imitations of registered marks; and to provide rights аnd remedies stipulated by treaties and conventions respecting trademarks, trade names, and unfair competition entered into between the United States and foreign nations.
Id. at 1389 (quoting 15 U.S.C. § 1127). Thus, the Lanham Act creates a zone of interests encompassing those who “allege an injury to a commercial interest in reputation or sales.” Id. at 1390.
Second, the reviewing court must apply a proximate-cause analysis, as a plaintiff can only have standing under section 1125(a) if their “injuries are proximately caused by violations оf the statute.” Id. Such cognizable injuries are limited, and the Supreme Court recognized that “the Lanham Act authorizes suit only for commercial injuries,” and that plaintiffs must demonstrate “economic or reputational injury.” Id. at 1390-91. Proximate cause requires that the “alleged harm ... is [not] ‘too remote’ from the defendant’s unlawful conduct,” and that the “harm alleged has a sufficiently close connection to the conduct the statute prohibits.” Id. at 1390.
Under Lexmark analysis, Ahmed does not have standing under section 1125(a). Ahmed’s assertion of damage to his business may hint at a commercial interest within section 1125(a)’s zone of interests, however, his claims lack any facts which, taken as true, would substantiate his assertions. As under the First Circuit analysis, Ahmed asserts the legal conclusion of injury, but states no facts establishing either a commercial interest in the mark or a commercial injury caused by the alleged infringement. “[I]n judging the adequacy of a plaintiffs allegations, ‘bald assertions, periphrastic circumlocutions, unsubstantiated conclusions, [and] outright vituperation’ carry no weight.” Berner v. Delahanty,
3. There is Incomplete Diversity of Citizenship
In addition to alleging that this Court has subject matter jurisdiction because of the trademark nature of the claim, Ahmed insists further that there is subject matter jurisdiction under 28 U.S.C. section 1332 because there is complete diversity of citizenship. The Hosting Compl. ¶ 8; The Fa-cebook Compl. ¶ 9. In order for Ahmed to establish diversity subject matter jurisdiction, he must affirmatively allege facts concerning the citizenship of every defendant. See Bank One, Tex., N.A. v. Mantle,
Ahmed has failed to carry this burden. As an initial matter, in both suits against Hosting and Facebook, Ahmed alleges claims against four separate John Doe defendants, but fails to bring any information about such defendants. See The Hosting Compl.; The Facebook Compl. Thus, Ahmed has failed sufficiently to allege facts concerning the citizenship of every defendant, a prerequisite for invoking diversity subject matter jurisdiction. See One Commc’ns Corp. v. Sprint Nextel Corp.,
Bringing suit against a John Doe, or unnamed party, is permissible “where a good-faith investigation has failed to reveal the identity of the relevant defendant.” Martinez-Rivera v. Sanchez Ramos,
Furthermore, the contact information indicates that the entities running the Facebook pages and the website hosted by Hosting are located in Pakistan. See Fa-cebook Pages; Contact Us Page. The United States Supreme Court has ruled that when both a plaintiff and a defendant are foreign citizens, complete diversity is absent. Ruhrgas AG v. Marathon Oil Co.,
Because Ahmed has not established that he has standing to bring the trademark infringement claims and because there is not complete diversity of citizenship to allow the Court to hear any state-law claims, this Court lacks subject matter jurisdiction and thus must dismiss Ahmed’s complaints.
For the foregoing reasons, this Court DISMISSES Ahmed’s cases against Hosting and Facebook.
SO ORDERED.
Notes
. While the pleadings sometimes refer to this mark just as "The News,” the relevant registration documents term it “The News International” and this Court will follow the latter nomenclature.
. In this section, the ECF numbers refer to Hosting’s case docket, 13-13117-WGY.
. In this section, the ECF numbers refer to Facebook’s case docket, 14-10026-WGY.
. Unless otherwise noted, Ahmed's allegations • and the defendants' replies or responses apply in both actions.
. The grоunds for. jurisdiction here are confusing, but appear to be at least in part based on a federal claim, more specifically on the Lanham Act, especially because Ahmed emphasizes federal registration of the Marks. He also argues, however, a diversity jurisdiction claim, presumably related to Massachusetts law, since no other state is implicated. Under Massachusetts law, however, trademark infringement suits can only lie if the mark is registered in the state, see Jenzabar, Inc. v. Long Bow Grp., Inc.,
. Rather, he terms himself, without elaboration, the “common law and statutory licensee.” See The Hosting Compl. ¶ 14; The Fa-cebook Compl. ¶ 15.
. Moreover, the simple assertion that he has used the mark "in cоnnection with news publication; broadcasting; telecommunications; news; entertainment; live shows; comedy,” Compl. ¶ 14, without any facts in support of such claims, is insufficient to demonstrate use. See The Twitter Order at *7.
. In addition to his failure to establish subject matter jurisdiction, Ahmed also seems to be collaterally estopped from arguing his claim against Hosting and Facebook before this Court. The collateral estoppel stems from Judge Stearns’s recent decision in Ahmed v. Twitter, Inc., Civ. No. 14-10025-RGS. See The Twitter Order.
Collateral estoppel depends on a showing that “(1) thе issue to be precluded is the same as that disputed in the prior proceeding; (2) the issue was actually litigated in the prior proceeding; (3) the issue was determined by a .valid and binding final judgment or order; and (4) the determination of the issue in the prior proceeding was essential or necessary to the final judgment or order." In re Relafen Antitrust Litig.,
Finally, the Court notes that .Hosting and Facebook also allege in their motions to dismiss that Ahmed has failed to state a plausible claim, Hosting’s Mem. 8; Facebook’s Mem. 8, and Hosting further contends that there is no personal jurisdiction over them in this Court, Hosting's Mem. 14. Because this Court does not have subject matter jurisdiction to render judgment, it is unnecessary to address these claims. See Ruhrgas AG,