ORDER GRANTING IN PART, DENYING IN PART, “MOTION FOR RECONSIDERATION AND/OR FOR CERTIFICATION UNDER 28 U.S.C. § 1292(B)”
On March 30, 2001, this court entered an opinion and order partially resolving the EFF Defendants’ pending motions to dismiss for lack of personal jurisdiction under Federal Rule of Civil Procedure 12(b)(2). 1 The motions of Defendants Alfonsо Fiero and Radtech were denied with prejudice; ■the remaining motions were denied without prejudice pending further discovery. A timely motion for reconsideration was filed by all EFF Defendants. In conjunction with their mоtion for reconsideration, the EFF Defendants also seek certification for interlocutory review of four separate issues. For the following reasons the court will grant in part, deny in part, the motion fоr reconsideration and deny the motion for certification.
I. DISCUSSION
A. Motion for Reconsideration
Rule 7.1(g) of the Local Rules for the Eastern District of Michigan provides that a motion for reconsideration shall be granted only if the movant can (1) “demonstrate a palpable defect by which the court and the parties have been misled” and (2) show that “correcting the defect will result in a different disposition of the case.”
1. "Effects" test
In the March 30 order the court denied two of the EFF Defendants' motions hold ing that each was subject to personal juris diction in this district. Because the deci sion was based on the allegations made without discovery or an evidentiary hear ing the court was required to determine only whether Plaintiffs had set forth a рrima facie case of personal jurisdiction. See Kerry Steel v. Paragon Indus., Inc.
In making that determination the court relied upon the "effects" test set forth by the United States Supreme Court in Calder v. Jones,
a. Intent
The 5FF Defendants challenge the court's conclusion that their acts were "intentiоnal arguing that they did not intend to injure Plaintiffs. It does not matter however that the injury was not intended. The only relevant consideration is whether the wrongful acts were commit ted intentionally and not negligently. The EFF Defendants did not negligently regis ter the disputed domain names and offer them for sale over the Internet. Those acts were committed intentionally. This is sufficient to satisfy the "intentional act" prong required under Calder.
b. Express aiming
The EFF Defendants' next chal lenge the courts conclusion that a pri'ina facie case of express aiming depends in part upon the lexical context of trademark within the domain name. The EFF De fendants cоntend that this test introduces a high level of uncertainty and ambiguity into determinations of personal jurisdic tion. The court is persuaded that it erred in exercising personal jurisdiction over De fendants Fiero and Radtеch based upon the lexical context of their domain names alone.
The court maintains that analyzing the lexical context of a trademark within a domain name and common non-infringing uses of the tradеmark are for the reasons discussed in the March 30 order helpful in determining whether the alleged acts of cybersquatting were "expressly aimed" at the proffered forum. Nevertheless those factors�without more�cannot alone sup port a finding of personal jurisdiction. Thus the court will grant the motion for reconsideration to the extent that it exer cised personal jurisdiction over EFF De fendants Alfonso Fiero and Radtech.
In addition to challenging the court's application of the Calder effects test the EFF defendants raise a number of other issues that warrаnt discussion.
2. Identity
First the EFF Defendants argue that Ford bears the burden of proving that each listing at the "greatdomains.com" site was published by one of the EFF Defen dants. The court agrees that Ford ulti mately must satisfy this burden. Never theless for purposes of Rule 12(b)(6) that burden is substantially lighter. Allega tions that a defendant is the registrant of a domain name listed for sale on the Inter net is sufficient to permit each case to move forward.
3. Actual Confusion
The next еrror alleged by the EFF Defendant's is that the court failed to address "actual confusion." "Actual confu sion" is not a requisite element for proving a claim of cybersquatting under the ACPA. Thus it also is not relevant to detеrmining personal jurisdiction on a claim of cybers quatting under the Calder effects test. In sofar as the court has already concluded that Ford failed to state a claim of in fringement or dilution it is unnecessary tо discuss "actual confusion" further.
4. Property
The EFF Defendants next up braid the court for
its apparent assumption that trademarks are "property as opposed to non-exclu sive (or "exclusive" only in a trivial sense) rights to be free from tortious infringement. Specifically we pray for this Court not to make statements sug gesting that FORD has `proprietary in terests' in `words e.g. slip op. at 1 or rights to exclude in the absence of an explicit examination of the factual and legal basis for such a belief and elabora tion upon the manner and extent to which such statements are accurate.
(Defs.' Mot. at 5 (emphases in original)). The court disagrees with the EFF Defen dants to the extent they argue that trade marks are not property. In College Savings Bank v. Fla. Prepaid Postsecondary Ed. Expense Bd.,
The Lanham Act may well contain provi sions that protect constitutionally cogni zable property interests�notably its provisions dealing with infringement of trademarks which are the "property" of the owner because he can exclude others from using them.
Id. at 673,
The EFF Defendants raise a valid challenge to the court's holding that the brunt of the alleged injuries is in Mich igan. The court continues to hold that the brunt of the injury incurrеd by registering using or trafficking in trademarks owned by Plaintiff Ford Motor Company occurs in Michigan. Whether use of the marks owned by Plaintiffs Jaguar Cars Aston Martin Lagonda and Volvo Trademark Holding occurs in Michigan or in their states оf residence may be further ad dressed by the parties in their renewed motions following discovery. The court however does not agree with the EFF Defendants' assertion that the injury oc curs where infringing sales or custоmer confusion take place. The ACPA unlike traditional infringement and unfair compe tition claims does not have consumer pro tection as its central purpose. This is demonstrated by the fact that merely reg istering a trademark as a domain name can be a violation of the ACPA even if the domain is never used on the Internet or otherwise made accessible to consumers. Rather the ACPA proteсts trademark holders against extortion by domain name cybersquatters. Thus the brunt of such injury occurs where it is felt by the trade mark holder.
6. Misappropriation
Finally the EFF Defendants argue that their registration of various domain names cannot be "misappropria tion" of a trademark interest apparently because they "honestly and reasonably be lieve{ 3" that their use "constitute{s] a fair use a non-trademark use or a non-com pеting use." (Defs.' Mot. at 5 Neverthe less although fair non-trademark or non competing uses can be asserted as defens es under the ACPA 15 U.S.C. § 1125(d)(1)(B)(ii) they are not necessari ly dispositive. See, e.g., Virtual Works Inc. v. Volkswagen of Am., Inс.,
B. Motion for Certification Under 28 U.S.C. � 1292(b)
The EFF Defendants have also moved the court for certification pursuant to 28 U.S.C. § 1292(b) to allow them to take an interlocutory appeal of four issues raised in the court's March 30 2001 order. The court concludes that interlocutory ap peal of the specified issues would not "ma terially advance the ultimate termination of the litigation" as required under § 1292. This is true particularly insofar as the court has not conclusively ruled on the EFF Defendants' 12(b)(2) motions to dis miss for lack of personal jurisdiction. Ac cordingly the motion for certification will be denied.
II. CONCLUSION
For all the foregoing reasons IT IS ORDERED that the EFF Defendants' "Motion for Reconsideration and/or for Certification under 15 U.S.C. � 1292(b)" is GRANTED as to Defendants Alfonso Fie ro and Radtech. Further discovеry how ever will be permitted as to the existence of further evidence of express aiming. Thus their motions to dismiss for lack of personal jurisdiction may be renewed at the close of this preliminary discovery.
IT IS FURTHER ORDERED that the motion is DENIED as to the remaining Defendants.
Notes
. The "EFF Defendants” are Robert Emmert, Paul Brown, Alfonso Fiero, John Hall, Rad-tech, and Tom Cooper.
. Thus Defendants' argument that Plaintiffs' have failed to set forth any evidenсe of actual contacts in the state of Michigan is irrelevant. The effects test does not rely upon actual physical contacts with the forum state but on whether an intentional tort has been expressly aimed at the forum state.