RULING ON DEFENDANT’S MOTION TO DISMISS COMPLAINT OR FOR TRANSFER OF ACTION
Plaintiff WorldCare Limited Corporation (herein “plaintiff’ or “WorldCare”) brings the present action against World Insurance Company (herein “defendant” or “World”) for trademark infringement and unfair competition under the Lanham Act, 15 U.S.C. § 1051, et seq. Specifically, WorldCare seeks injunctive relief and damages against World due to its alleged infringement of WorldCare’s federally registered trademark and name, “WORLD-CARE.”
Pending before the Court is defendant’s Motion to Dismiss for Lack of Personal Jurisdiction Or, in the Alternative, Transfer of Venue to the District of Nebraska
I. FACTS
Plaintiff WorldCare is a corporation incorporated under the laws of Bermuda with its principal place of business located at 7 Bulfinch Place, Boston, Massachusetts. Doc. # 1, p. 2 (¶ 5). During the last two decades WorldCare has been in the business of offering second opinion telemedicine services. Id., p. 1 (¶ 2). These services are offered “as part of a benefit under health insurance plans” and “allow patients to access second medical opinions from top hospitals and medical institutions in the United States.” 1 WorldCare operates these services under two federally registered trademarks, “WORLDCARE” (Reg. Nos. 2118465 & 2220736), that it obtained from the U.S. Patent and Trademark Office (“PTO”) in 1996. Id., p. 4 (¶ 18). WorldCare contends that for almost two decades, it has “amassed significant goodwill and a strong reputation for quality in the health services market with its end user customers and strategic partners, including doctors, hospitals and insurance companies.” 2 Id., p. 1-2 (¶2).
Defendant World is a Nebraska corporation with its principal place of business located at 11808 Grant Street, Omaha, Nebraska. Id., p. 2 (¶ 6); see also Doc. # 22, p. 1, para. 3. Since 1903, World has conducted its business of “providing customers with high quality health insurance products and services under its World’ house mark,” including basic medical, major medical, comprehensive major medical, short-term major medical, and dental insurance.” Doc. # 22, p. 1, para. 3 to p. 2, para. 1; see also Declaration of Elizabeth Powell 3 (“Powell Dec.”)(Doc. # 23) ¶ 3. As early as February of 2003, World adopted the designation “WorldCARE” 4 as a brand name for use in connection with underwriting and administration of some of its health insurance, preferred provider plans and health savings accounts. 5 Doc. # 22, p. 2, para. 1; Powell Dec. ¶ 4.
World claims that it has issued 56,369 policies to residents throughout the United States, inclusive of its 29,596 WorldCARE policies. 7 Id. ¶¶ 7-8. Of the WorldCARE policies, only three are held by Connecticut residents and none of those policies was issued in Connecticut. Id. ¶ 7. Rather, each of the three policies is owned by a customer who moved to Connecticut after acquiring the policy. 8 Id.
WorldCare alleges that in early summer of 2009 it learned that World was selling health insurance products and services under the name “WorldCARE,” thereby creating confusion in the marketplace. Specifically, WorldCare alleges that hospitals contacted WorldCare with questions about World’s health plans, such as whether certain benefits were covered under the plans. Doc. # 1, p. 7 (¶ 30). On August 9, 2009, WorldCare demanded that World cease and desist using the WorldCARE name in commerce, but World refused. Doc. # 1, p. 7 (¶¶ 32, 35). World thus continues to use the name “WorldCARE” in connection with the sale of its goods and services. Id. (¶ 35).
II. JURISDICTION
This Court has “federal question” subject matter jurisdiction over plaintiffs trade infringement actions pursuant to 28 U.S.C. §§ 1331
9
and 1338
10
and 15 U.S.C.
In considering defendant’s motion to dismiss or transfer, the Court mil address the issue of whether it has personal jurisdiction over the defendant in detail below.
12
With respect to venue, under 28 U.S.C. § 1391, venue in a “federal question” case is appropriate in any judicial district in which any defendant may be found; and a “defendant that is a corporation shall be deemed to reside in any judicial district in which it is
subject to personal jurisdiction
at the time the action is commenced.” 28 U.S.C. § 1391(b), (c) (emphasis added).
13
See Divicino v. Polaris Indus.,
III. DISCUSSION
A. Personal Jurisdiction over Defendant World
Defendant World moves this Court to dismiss the present trademark action on the ground that this Court lacks personal jurisdiction over it pursuant to Rule 12(b)(2) of the Federal Rules of Civil Procedure. Specifically, World claims that the U.S. District Court for the District of Connecticut may not properly exercise personal jurisdiction over World under Connecticut’s long-arm statute, Conn. Gen. Stat. § 33-929(a), because World lacks the requisite “minimum contacts” with the state of Connecticut, the locus of this District. World claims that this Court’s exercise of jurisdiction over it would violate the Fourteenth Amendment’s constitutional guarantee of due process, thereby offending the traditional notions of “fair play and substantial justice.” 14
Plaintiff WorldCare counters with the assertion that no exercise of long-arm ju
Given the parties’ divergent approaches, the Court will examine each argument in turn before applying the proper analysis to the present facts.
1. Rule 12(b)(2)—Standard of Review
Lack of personal jurisdiction is properly raised by a motion to dismiss. Fed.R.Civ.P. 12(b)(2).
15
See Tomra of North America v. Environmental Products,
For purposes of a Rule 12(b)(2) motion, the Court must accept the well-pleaded factual allegations contained in plaintiffs complaint as true and resolve all factual disputes in plaintiffs favor.
Thomas v. Ashcroft,
“In a federal question case where the defendant resides outside the forum state, a federal court applies the forum state’s personal jurisdiction rules.”
PDK Labs v. Friedlander,
2. Jurisdiction Under Connecticut Law
In order for this Court to exercise personal jurisdiction over defendant World, there must be an appropriate service of process, providing adequate notice of the claim, and an adequate basis for jurisdiction. In the present case, World does not contest that service was proper. Both parties agree that, on September 24, 2010, by delivering true and attested copies of the process (summons and complaint) to Thomas R. Sullivan, Insurance Commissioner of the State of Connecticut, World-Care effected proper service on World’s duly authorized agent to accept service. Doc. # 11 (Return of Service); see also Conn. Gen.Stat. §§ 33-929(a) (registered agent of foreign corporation is corporation’s agent for service of process), 38a-25(b), (d) (Insurance Commissioner is foreign insurer’s designated agent for receipt of service of process). The issue in this case is thus not the propriety of the service, but rather the effect of that service: i.e., whether receipt of service by a foreign insurance company is sufficient in and of itself to constitute consent to personal jurisdiction, thereby obviating the need for this Court to employ the constitutional test of due process. The Court examines the conflicting views of the two parties.
3. WorldCare’s jurisdictional allegations—World consented to personal jurisdiction so no due process analysis is required
WorldCare alleges that it has satisfied its burden to make a
prima facie
showing that this Court has personal jurisdiction over World based on the following facts. World is a foreign insurer licensed to do business in Connecticut. Pursuant to Conn. Gen.Stat. § 38a-25(b)
&
(d), World has irrevocably appointed the Connecticut Insurance Commissioner as its in-state
In support of its jurisdictional claims, WorldCare principally relies upon two cases,
Burnham v. Superior Court of California, County of Marin,
The second case relied upon by World-Care,
Talenti v. Morgan and Brother Manhattan Storage Company, Inc.,
is a Connecticut Appellate Court decision upholding personal jurisdiction over a foreign corporation on the basis of personal service on its in-state executives. Plaintiffs Mr. and Mrs. Talenti filed a six-count complaint in Connecticut Superior Court against Mr. Talenti’s former employer, Morgan and Brother Manhattan Storage Company (“Morgan”) for damages arising from his allegedly wrongful termination.
18
Defendant Morgan, a foreign corporation with its principal place of business in Connecticut, moved to dismiss for lack of personal jurisdiction on the ground that it was a foreign corporation and the Connecticut long-arm statute, Conn. Gen.Stat. 33-929(f),
19
did not properly apply to it because the plaintiffs were not residents of Connecticut or persons having a usual place of business in the state. Plaintiffs countered that they had obtained personal jurisdiction over Morgan by personally serving its vice president at his Connecticut home and its executive vice president at its corporate headquarters in Greenwich. Because they did not use the long-arm statute, they concluded that its residency requirements did not apply. The trial court granted the motion for defendant, holding that the long-arm statute did apply. Therefore, lacking residency in
On appeal, the Connecticut Appellate Court overturned the trial court’s dismissal, holding that there were two alternate bases for personal jurisdiction over World-Care.
20
First, most relevant to the plaintiff in the case at bar, “when a foreign corporation complies with the requisites of General Statutes § 33-920 by obtaining a certificate of authority and complies with the requisites of General Statutes § 33-926 by authorizing a public official to accept service of process, it has consented to the exercise of jurisdiction over it by the courts of this state.”
4. Analysis of WorldCare’s argument
a.
Burnham v. Superior Court of California, County of Marin,
The Court is unpersuaded that Bum-ham is controlling in the present case. Burnham, as plaintiff concedes, involved in-state personal service on an individual defendant. It did not address service upon a foreign corporation through service on a registered agent for service. Furthermore, there was no plurality opinion written in Burnham, suggesting that perhaps the holding should be limited to the particular facts set forth therein.
Specifically, the defendant in Burnham was a New Jersey resident who was visiting his children in California when he was personally served with his estranged wife’s divorce petition and court summons. Focusing on the fact that he was personally served within the forum state, the California courts rejected his argument that the Due Process clause of the Fourteenth Amendment prohibited them from asserting personal jurisdiction over him.
The United States Supreme Court unanimously affirmed, but wrote three separate opinions. Justice Scalia, with whom three Justices concurred, reasoned that jurisdiction based on physical presence alone accords with due process under a continuing tradition of this country’s legal system.
Where there was no majority opinion in
Burnham,
no complete consensus on the rationale behind upholding personal jurisdiction, and no foreign corporation involved, it would be remiss of this Court to rely on
Burnham
to cursorily discard “minimum contacts” due process analysis to evaluate personal jurisdiction over foreign corporations. The United States Supreme Court has not specifically addressed whether registration in a state alone is sufficient to confer general personal jurisdiction in light of its holding in
International Shoe Co. v. Washington,
For example, the Eight and Fifth Circuits, who have addressed the issue, are split, having come to opposite and truly conflicting conclusions.
See, e.g., Knowlton v. Allied Van Lines, Inc.,
Unless or until, the United States Supreme Court or the Second Circuit speaks directly to the issue, I concur with the Fifth Circuit’s well-reasoned opinion in Siemer v. Learjet Acquisition Corp. (herein “Learjet”), in which the Court surmised:
[N]othing in either plurality opinion [in Burnham, ] suggests that service on a corporation’s registered agent “automatically subjects the corporation to jurisdiction. Burnham, to the extent it provides any guidance, reinforces [the defendant’s] ... position. Justice SCALIA noted “the continuous and systematic contact rule applied only to corporations, which have never fitted comfortably in a jurisdictional regime based primarily upon de facto power over the defendant’s person.” The second plurality’s opinion reaffirms that all assertions of personal jurisdiction must satisfy the contacts and fairness requirements enunciated in International Shoe.
To assert, as plaintiffs do, that mere service on a corporate agent automatically confers general jurisdiction displays a fundamental misconception of corporate jurisdictional principles. This concept is directly contrary to the historical rationale of International Shoe and subsequent Supreme Court decisions.
The Fifth Circuit clarified in
Learjet
that it had not previously and would not then hold that in-state service on a designated corporate agent without more satisfies due process. Because plaintiffs’ cause of action did not arise out of Learjet’s contacts with the forum state of Texas, it was incumbent on plaintiffs to shown that Texas had acquired general jurisdiction over Learjet. Rightfully citing
Helicopteros Nacionales de Colombia, S.A. v. Hall,
As in the instant case, defendant Learjet was a foreign corporation licensed to do
b.
Talenti v. Morgan and Brother Manhattan Storage Company, Inc.,
The Court next examines
Talenti v. Morgan and Brother Manhattan Storage Company, Inc.,
Talenti
cites
Wallenta
but then summarily disposes of the due process analysis altogether in a footnote, pronouncing that service upon a foreign corporation’s registered agent in the state equates with consent to jurisdiction and thus the court “need not undertake an analysis of any constitutional due process issues.”
Talenti,
This Court, however, has doubts regarding the intended scope of such consent. As stated
supra,
given this country’s longstanding legal tradition of applying due process principles to evaluate personal jurisdiction over non-resident defendants, it seems unjust to expand consent to deem it binding where it would clearly violate due process. It is inherently unlikely that a foreign corporation transacting no busi
Consent, by its very nature, constitutes “approval” or “acceptance.” See, e.g., Black’s Law Dictionary (9th ed. 2009) (“Agreement, approval, or permission as to some act or purpose, esp. given voluntarily by a competent person; legally effective assent.”). “Consent” is meaningless unless its scope is defined. The law should sanction begging the core question: “Consent to or for what?” Granted, consent may be implied under certain circumstances, but the implication must be predictable to be fair. Expansive, non-explicit consent to being haled into court on any claim whatsoever in a state in which one lacks minimum contacts goes against the longstanding notion that personal jurisdiction is primarily concerned with fairness. 26
One may waive jurisdiction by not raising it or knowingly consenting to it, for example expressly by contract or implicitly in an agreement to arbitrate.
See, e.g., Insurance Corp. of Ireland, Ltd. v. Compagnie des Bauxites de Guinee,
The Connecticut Supreme Court has not squarely addressed the issue of whether personal jurisdiction arising from consent in these circumstances must comply with due process.
27
When, however, evaluating
Similarly, the Second Circuit and this District have adhered strictly to the standard of applying the “due process/minimum contacts” test as the second step whenever a foreign corporation has challenged personal jurisdiction.
See, e.g., Chloe v. Queen Bee of Beverly Hills, LLC,
In circumstances such as those present, in which the corporation had obtained a certificate of authority to transact business in Connecticut, this District has previously stated that Conn. Gen.Stat. § 33-929(a) is “merely a consent to service of process statute which is always subject to federal due process oversight.”
Mednet, MPC Corp. v. United Healthcare,
No. 3:95cv2723 (AHN), 1996 U.S. Dist. LEXIS, at *14 (D.Conn. Aug. 15, 1996) (“section 33-411(a) is a consent to service statute only” and “the assertion of jurisdiction over a foreign corporation which complies with Connecticut’s domestication statutes must ultimately comport with due process”);
accord Anderson v. Bedford Assoc., Inc.,
No. 3:97 CV 1018,
As one commentator noted:
[I]t seems counterintuitive to allow general jurisdiction to rest simply on mandatory registration requirements. Even if registering corporations are fully apprised of the jurisdictional implications of registration, and manifest express consent to general jurisdiction, it threatens to place them in the impossible position of virtually universal jurisdiction.
Lee Scott Taylor, Registration Statutes, Personal Jurisdiction, and The Problem of Predictability, 105 COL. L. REV. 1163, 1192 (June 2003). In the interest of fairness, a foreign corporation, or in this case alien insurer, that properly complies with the Connecticut registration statute should be deemed to have consented to personal jurisdiction only where such jurisdiction is otherwise constitutionally permissible. The court thus finds the well-reasoned opinions of this District (e.g., Mednet, Anderson, and USES) and the Fifth Circuit (Learjet) persuasive.
5. World’s two-tiered approach: application of Connecticut’s long arm statute and due process
In support of its motion to dismiss for lack of personal jurisdiction, World argues that in order for a court to determine whether it has personal jurisdiction over a foreign corporation, such as World, it must conduct a two-tiered inquiry: (1) does the Connecticut long-arm statute, Conn. Gen. Stat. § 33-929(a) (2010),
30
reach the foreign corporation; and if so, (2) does the statute’s jurisdictional reach as applied to that foreign corporation meet the “minimum contacts” requirement to satisfy constitutional due process, as set forth in
Int
World concedes in its brief that even if § 33-929(a), Connecticut’s long-arm statute, were to apply in this case, World is encompassed by it in that it is a company registered to do business in Connecticut and has a certifícate to do business. Doc. # 22, pp. 4-5 (citing
Wallenta v. Avis Rent A Car System,
World then focuses on the second test, the “minimum contacts” prong of
International Shoe,
World argues that, given the few contacts it has with Connecticut, this Court may not exercise general jurisdiction over it pursuant to the
Helicopteros
standard. Moreover, any such exercise of general jurisdiction would be contrary to the public policy of Connecticut. Doc. #33, p. 6, para 1 (citing
Mednet, MPC Corp. v. United Healthcare, Inc.,
No. 3:95cv2723(AHN),
Similarly, World contends that this Court may not exercise specific jurisdiction over World as a foreign defendant because the present trademark action does “not arise out of or relate to” any of World’s contacts with the forum.
33
Heli
Lastly, World applies the general “due process” test of determining whether the exercise of personal jurisdiction would comport with “fair play and substantial justice” and concludes that it would not.
See Asahi Metal Indus. Co. v. Superior Court,
6. Constitutional Requirement of Due Process
a. Minimum Contacts
I find that, in designating Connecticut’s Insurance Commissioner as its agent for service, World consented to receipt of service and jurisdiction over all matters which would not violate the Due Process clause of the Fourteenth Amendment. I thus agree with World that the application of due process analysis is justified.
Both parties agree that service was proper on World when WorldCare served the Insurance Commissioner. See Conn. Gen.Stat. §§ 38a-25(b), (d). The fact that service is proper does not, however, resolve the issue of whether plaintiff has established a sufficient basis for this court to exercise personal jurisdiction over World. “Whether jurisdiction in the sense of due process exists depends upon concepts of ‘fairness’ and ‘convenience’ and not upon mere compliance with procedural
As the Second Circuit recently held, two components to the due process analysis are undertaken to determine whether a foreign corporation is subject to the court’s jurisdiction for commercial activity involving the forum state: “(1) the minimum contacts inquiry and (2) the reasonableness inquiry.”
Chloe v. Queen Bee of Beverly Hills, LLC,
Under the principles set forth in International Shoe and its progeny, it is clear that World lacks sufficient contacts with Connecticut to satisfy due process requirements. As World asserted without contradiction in its memoranda and affidavits of Senior Vice President Powell, it has extremely attenuated contacts with this state. Although licensed to do business in Connecticut, World does not market or sell insurance products in Connecticut. Powell Dec. ¶ 5. It has no insurance agents in Connecticut; and, in fact, has never sold insurance policies in Connecticut. 35 Id. World’s website does not list Connecticut as a state where it does business or even allow access by Connecticut residents into the portion of the site that gives information about policies. 36 Id., Ex. B. (showing website’s drop-down menu of state options for access to policies, which excludes Connecticut).
Out of World’s 59,369 insurance policies outstanding in the United States, only three bearing the WorldCARE mark are outstanding in Connecticut. 37 Powell Dec. ¶¶ 7-8. None of the three policies was either sold or issued in Connecticut. Id. ¶ 7.
World’s most substantial connection with Connecticut is that it obtained a certificate of authority to sell insurance here. Powell Dec. ¶ 5. However, it has never exercised that privilege.
Id.
As the Fifth Circuit observed, while “being qualified to do business may on its face appear to be significant, it ‘is of no special weight’ in evaluating general personal jurisdiction.”
Learjet,
In sum, given World’s meager contacts with Connecticut, World lacks the requisite “minimum contacts” under International Shoe. These contacts thus provide neither general jurisdiction (i.e., there are no allegations or evidence of continuous or systematic business by World in the state); 38 nor specific jurisdiction (ie., there are no alleged actions or misconduct by World in Connecticut giving rise to WorldCare’s trademark claim). 39
b. Reasonableness Inquiry
Even had World possessed the requisite “minimum contacts” with Connecticut, personal jurisdiction over World would fail the “reasonableness test” because such jurisdiction does not comport with the “traditional notions of fair play and substantial justice” under
International Shoe,
Second, Connecticut has no notable interest in litigating this claim. This case does not concern matters of Connecticut law, but rather federal trademark infringement statutes. See Lanham Act, 15 U.S.C. § 1501, et seq. Furthermore, according to the record, the case involves insurance policies that were all marketed and issued outside the state’s borders. As previously noted, the only three World-CARE branded policies held by Connecticut residents were brought into the State after purchase. 41 Moreover, these three WorldCARE branded policies comprise an infinitesimal percentage (approximately .0101%) of the 29,569 WorldCARE branded policies issued by World throughout the United States. 42
Also of note is the fact that plaintiff is a foreign entity, a Bermuda corporation with its principal place of business located in Massachusetts. Connecticut therefore has no “manifest interest” in providing World-Care, a nonresident, with a convenient forum for relief from injuries caused by an out-of-state actor.
See Burger King Corp.,
Third, plaintiff WorldCare has established no significant convenience to itself in litigating in Connecticut. As stated
supra,
WorldCare is a Bermuda corporation with a principal place of business in Massachusetts. Granted, as WorldCare points out, Massachusetts is closer to Connecticut than it is to Nebraska. However, there are at least- a dozen states that are closer in proximity to Massachusetts than Nebraska in which World admittedly sells its insurance products.
43
See
Powell Dec. Ex. B (listing thirty-three states where World insurance policies are sold). It is likely that World actually marketed and/or sold the WorldCARE branded policies at issue
Fourth, the Court finds that the interstate judicial system’s interest in obtaining the most efficient resolution of the controversy is no better served in Connecticut than in another forum. In evaluating this factor, “courts generally consider where witnesses and evidence are likely to be located.”
Metropolitan Life Ins. Co.,
Lastly, examining the shared interest of the several States in furthering fundamental substantive policies, I find that Connecticut’s interest is no greater than that of another state in enforcing national trademark laws. Trademark infringement is of national concern, involving federal law, the Lanham Act, 15 U.S.C. § 1051 et seq. There is no particular reason that this trademark action would be more efficiently resolved in this District than in another. Rather, there are no known relevant witnesses or documents located in Connecticut; and none of the alleged misconduct giving rise to trade infringement appears to have occurred in Connecticut. 45 In sum, there is no controverted question which depends on an event that occurred within this state.
In sum, evaluating all reasonableness factors in this case, I find that it would not be reasonable to exercise personal jurisdiction. World’s paltry contacts with Connecticut, when coupled with the factors set forth in Asahi, combine to confirm that the exercise of personal jurisdiction in this State over World would not comport with the traditional notions of fair play and substantial justice. While there appears to be a somewhat surprising absence of appellate authority on the point, I conclude without difficulty that the procedural provisions of Connecticut’s authorized agent service statute cannot trump International Shoe’s substantive principles of fairness and justice, grounded as they are in the United States Constitution. It inexorably follows that this Court does not have jurisdiction over the person of Defendant World Insurance Company.
Lacking personal jurisdiction over defendant World, under most circumstances,
B. World’s Alternative Motion to Transfer
1. Transfer pursuant to § 1404(a)
Defendant has alternatively requested transfer of this action to the United States District Court for the District of Nebraska pursuant to 28 U.S.C. § 1404(a), in the interests of justice and for the convenience of the parties and witnesses. 46 Transfer under this section, however, assumes that venue is proper in the court where the action is initially filed and that the court has jurisdiction over the defendant. 28 U.S.C. § 1391(c) states that, for venue purposes, “a defendant that is a corporation shall be deemed to reside in any judicial district in which it is subject to personal jurisdiction at the time the action is commenced.” Having determined that this Court lacks personal jurisdiction over the defendant, World does not reside in Connecticut within the meaning of 28 U.S.C. § 1391(c) and thus venue in this District is improper. 47
Since the Court has held that World is not subject to personal jurisdiction in this District, venue does not lie here. However, cognizant of World’s desire to transfer the case to the District of Nebraska, the Court will construe its motion to transfer as one “in the interest of justice” pursuant to 28 U.S.C. § 1406(a) (allowing transfer “in the interest of justice” when venue is improper). 48
2. Transfer pursuant to § 1406(a)
Under 28 U.S.C. § 1406(a), a district court faced with an improperly filed case has the option of either dismissing the case or transferring it to “any district in which it could have been brought” if the transfer is “in the interest of justice.”
See, e.g., Carson Optical, Inc. v. Telebrands Corp.,
No. 3:06CV821(CFD),
The Supreme Court and Second Circuit have held that a district court has
“Whether dismissal or transfer is appropriate lies within the sound discretion of the district court.”
Minnette v. Time Warner,
In general, on a motion to transfer, the movant has the burden of justifying transfer of venue.
Paragon Realty Group LLC v. Lecates,
No. 3:06 CV 846(CFD),
Transfer is favored to remove procedural obstacles including the lack of personal jurisdiction.
Minnette,
The Court next turns to the factors to be weighed when deciding whether to transfer: (1) the plaintiffs choice of forum, (2) the convenience of witnesses, (3) the location of relevant documents and relative ease of access to sources of proof, (4) the convenience of parties, (5) the locus of operative facts, (6) the availability of process to compel the attendance of unwilling witnesses, [and] (7) the relative means of the parties.
49
D.H. Blair & Co., Inc. v. Gottdiener,
A review of the facts in this ease makes clear that transfer, rather than dismissal, would serve “the interest of justice.” First, plaintiffs choice of forum, although usually afforded significant deference, is “substantially diminished” where, as here, the corporate plaintiff did not file suit in its home base or state of incorporation.
Lever Brothers Co. v. Procter & Gamble Co.,
Second, the convenience of the known witnesses favors Nebraska.
See, e.g., Intria Corp. v. Intira Corp.,
No. 00 CIV. 7198(AGS),
Third, World asserts that all of its documents are either at its headquarters in Nebraska, or at those of its parent corporation in Iowa. Granted, in the age of computers and faxes, document location is seldom determinative.
Cody v. Ward,
Fourth, the overall convenience of the parties appears to favor Nebraska as the location of the witnesses, documents, and operative facts giving rise to the claim. Any particular inconvenience to World-Care by litigating in Nebraska has not been established.
Fifth, regarding the locus of operative facts, it does not appear that the actions constituting trademark infringement occurred in Connecticut.
See, e.g., MAK Marketing, Inc. v. Kalapos,
In sum, the overall balance of interests weighs in favor of transferring the case to the District of Nebraska. Personal jurisdiction over World exists in Nebraska; and venue is proper there. The case shall thus be transferred to the United States District Court for the District of Nebraska.
IV. CONCLUSION
I hold that on the basis of the record before this Court, WorldCare has failed to satisfy its burden to demonstrate that this Court may exercise personal jurisdiction over defendant World. Although World-Care’s service of process upon the Insurance Commissioner of Connecticut was proper service, World’s scant total contacts with the forum of Connecticut fail to satisfy the “minimum contacts” test of the due process clause. When combined with an analysis of the Supreme Court’s reasonableness factors in Asahi, the paucity of these contacts compels the conclusion that this Court’s exercise of personal jurisdiction over World would offend the “traditional notions of fair play and substantial justice” under International Shoe.
Rather than granting World’s Motion to Dismiss for Lack of Personal Jurisdiction (Doc. # 21), however, this Court concludes that, “in the interest of justice,” pursuant to 28 U.S.C. § 1406(a), the case should be transferred to the United States District Court for the District of Nebraska. In addition to curing the problem of personal jurisdiction, key factors such as convenience and availability of the known witnesses, location of the relevant documents, and locus of the operative facts warrant transfer to Nebraska, where venue is proper. Pursuant to 28 U.S.C. § 1406(a), the Court hereby DENIES World’s Motion to Dismiss (Doc. # 21) and GRANTS World’s alternative Motion to Transfer (Doc. #21). 53 Accordingly, the Clerk is instructed to transfer the case to the United States District Court for the District of Nebraska.
It is SO ORDERED.
Notes
. WorldCare asserts that "[sjecond opinions include a confirmation or modification of an original diagnosis and treatment recommendations, including alternative treatments and/or therapies based upon the latest cutting-edge research.” Doc. # 1, p. 3 (¶ 11).
. WorldCare includes among its strategic healthcare partners: "the Mayo Clinic, the Children’s Hospital Boston, Dana-Farber/Partners Cancer Care, Brigham and Women’s Hospital, Massachusetts General Hospital, U.C.L.A. Healthcare and Duke University Health System.” Doc. # 1, pp. 3-4 (¶ 12).
. According to her affidavits, Powell is the "Senior Vice President, Health Markets” for World. Doc. # 23, ¶ 1, Doc. # 35, ¶ 1.
. In 2005, World made an unsuccessful application to the U.S. Patent and Trademark Office ("PTO”) for a registered trademark in the product name “WorldCARE,” under which World planned to sell insurance products. Doc. # 1, p. 2 (¶ 3). The PTO refused the application on the basis that the trademark would likely cause confusion with the marks already registered to WorldCare (i.e., consumers would likely become confused as to the source of the parties’ respective products and services). Id.; see also Doc. # 1, Ex. D (copy of PTO’s refusal). World did not challenge the PTO’s refusal, but rather abandoned its application. Doc. # 1, Ex. E (Notice of Abandonment).
. Throughout its pleadings, World has described its brand name as "WORLDCARE”
(i.e.,
in all capital letters). Plaintiffs pleadings
. World describes the site as "passive,” as opposed to interactive, in that no purchases may be made online. Doc. # 22, p. 2, para 2 (citing Powell Dec. ¶ 6).
. According to WorldCare, World also markets insurance products and services under the names of "HealthEquity,” "World Insurance Company,” and "World Insurance.” Doc. # 1, p. 5 (¶ 22); see also Doc. # 1, Ex. B (excerpts from World Insurance website).
. World clarifies that it "maintains approximately 200 other insurance policies in Connecticut” but each such policy was acquired from a third party insurance company and none is a WorldCARE branded policy. Doc. # 22, p. 2, para. 3; Powell Dec. ¶ 8. World has issued 56,369 policies throughout the United States, inclusive of its WorldCARE branded policies. Doc. # 22, p. 3-4; Powell Dec. ¶ 8.
. 28 U.S.C. § 1331 confers "federal question” jurisdiction upon the district courts as follows:
The district courts shall have original jurisdiction of all civil actions arising under the Constitution, laws, or treaties of the United States.
. 28 U.S.C. § 1338 specifically confers original jurisdiction on the district courts in trademark cases such as the instant case:
(a) The district courts shall have original jurisdiction of any civil action arising underany Act of Congress relating to patents, plant variety protection, copyrights and trademarks. Such jurisdiction shall be exclusive of the courts of the states in patent, plant variety protection and copyright cases.
28 U.S.C. § 1338(a) (emphasis added).
. Section 1121, authorizing jurisdiction of federal courts in federal trademark actions, provides in relevant part:
(a) The district and territorial courts of the United States shall have original jurisdiction ... of all actions arising under this chapter [Chapter 22, entitled "Trademarks”], without regard to the amount in controversy or to diversity or lack of diversity of the citizenship of the parties.
15 U.S.C. § 1121(a).
. Plaintiff asserts that the Court has personal jurisdiction over World under Conn. Gen. Stat. § 52-5 9b because World conducts business in Connecticut and is licensed with the State of Connecticut's insurance commission. Doc. # 1, p. 3 (¶ 8).
. Because "[n]o specific statute governs venue of trademark infringement claims,” the provisions of the general venue statute [28 U.S.C. § 1391(b), (c)] are applicable. This means that matters of venue are determined with reference to where the claim arose, where the defendant resides, and, in the context of a motion for change of venue, the convenience of the parties and witnesses.” 32 Fed. Proc., L.Ed. § 74:483 (West 2010) (footnotes omitted).
. From the outset this Court notes that the parties take divergent approaches to determine whether personal jurisdiction exists. World uses the traditional two-tiered approach, applying Connecticut's long-arm statute and engaging in a constitutional due process analysis. WorldCare, on the other hand, looks to Conn. Gen.Stat. § 33-920 (regarding mandatory designation of the Insurance Commissioner as agent for service of process) to argue that World consented to jurisdiction within Connecticut, thereby rendering any due process analysis unnecessary and irrelevant.
. Rule 12(b)(2) instructs "How to Present Defenses”:
Every defense to a claim for relief in any pleading must be asserted in the responsive pleading if one is required. But a party may assert the following defenses by motion:
(2) lack of personal jurisdiction;....
.
See also A.I. Trade Finance, Inc. v. Petra Bank,
Although, in the absence of a hearing, a plaintiff need only make a
prima facie
showing that the court has personal jurisdiction over the defendant to defeat the motion, if challenged at trial, the plaintiff must eventually prove jurisdiction by a preponderance of the evidence.
United States v. Montreal Trust Co.,
. Rule 4(k)(l)(A) describes “Territorial Limits of Effective Service”:
(1) In General. Serving a summons or filing a waiver of service establishes personal jurisdiction over a defendant: (A) who is subject to the jurisdiction of a court of general jurisdiction in the state where the district court is located;____
Fed.R.Civ.P. 4(k)(l)(A).
. The Talentis' action alleged violations by Morgan of Conn. Gen.Stat. §§ 31-5lx and 51(u), setting terms under which (1) an employer may require an employee to submit to a urinalysis drug test and (2) the use of such a test to determine any personnel action; the prima facie tort of invasion of privacy; intentional infliction of emotional distress; and loss of consortium.
. Conn. Gen.Stat. § 33—929(f) provides, in relevant part:
Every foreign corporation shall be subject to suit in this state, by a resident of this state or by a person having a usual place of business in this state, whether or not such foreign corporation is transacting or has transacted business in this state and whether or not it is engaged exclusively in interstate or foreign commerce, on any cause of action arising as follows ...
(Emphasis added).
. The second basis proffered by the court for exercising personal jurisdiction in
Talenti
was Conn.Gen.Stat. § 52-57(c), “which provides that in an action against a foreign corporation, service of process may be made on its vice president.”
. For cases upholding the use of minimum contacts analysis, holding mere compliance with state statute regarding registration of corporation and service upon designated agent is not sufficient to confer in personam jurisdiction over foreign corporation,
see, e.g., Siemer v. Learjet Acquisition Corp.,
For cases dispensing with the use of minimum contacts,
cf. Knowlton v. Allied Van Lines, Inc.,
. The holding in
Knowlton
may not actually be as broad as it would appear at first glance. The Eighth Circuit focused on consent to hold that by appointing a Minnesota agent for service of process, a foreign corporation had consented to the jurisdiction of Minnesota courts for any cause of action, whether or not that action arose out of the corporation's activities within the state. However, as the Eighth Circuit itself recognized, the Minnesota statute at issue, Minn.Stat. § 303.13, "Subdivision 1(1), provides simply that '[a] foreign corporation shall be subject to service of process ... [b]y service on its registered agent.... ’ There are no words of limitation to indicate that this type of service is limited to claims arising out of activities within the state.”
. The Court notes that the Second Circuit has not squarely addressed this issue, but has continued to apply the traditional analysis of "minimum contacts” set forth in
International Shoe
when analyzing personal jurisdiction over foreign corporations.
See, e.g., Chloe v. Queen Bee of Beverly Hills, LLC,
. Describing the limited extent of Learjet’s contacts with the forum of Texas, the Fifth Circuit noted that the relevant plane was based and serviced in Greece and operated by a Greek company. It was neither designed nor manufactured in Texas and had never been owned by a Texas resident. Furthermore, Learjet had no employees, officers, directors, interests in real property, or offices located in Texas. It designed, manufactured, and sold its aircraft in Kansas, its principal place of business. All sales were made from products warehoused in Kansas and Arizona. Only one per cent of Leaijet’s sales, consisting of spare parts, went to buyers with Texas addresses.
. As the Fifth Circuit aptly distinguished in
Learjet,
"[a]pplying for the privilege of doing business is one thing, but the actual exercise of that privilege is quite another.”
Learjet,
. As the United States Supreme Court explained in
Insurance Corp. of Ireland, Ltd. v. Compagnie des Bauxites de Guinee,
The requirement that a court have personal jurisdiction flows not from Art. Ill, but from the Due Process Clause. The personal jurisdiction requirement recognizes and protects an individual liberty interest. It represents a restriction on judicial power not as a matter of sovereignty, but as a matter of individual liberty. Thus, the test for personal jurisdiction requires that “the maintenance of the suit ... not offend 'traditional notions of fair play and substantial justice.’ ” International Shoe Co. v. Washington,326 U.S. 310 , 316,66 S.Ct. 154 , 158,90 L.Ed. 95 (1945), quoting Milliken v. Meyer,311 U.S. 457 , 463,61 S.Ct. 339 , 342,85 L.Ed. 278 (1940).
(Emphasis added).
. The Connecticut Supreme Court denied
certiorari
for an appeal of
Talenti. See Talenti v. Morgan and Brother Manhattan Storage Co.,
.
See also Bogen v. Bonanno,
No. CV065001344S, 41 Conn.L.Rptr. 219,
. The defendant had voluntarily waived any due process analysis in
USES
in a hearing by teleconference. The Court thus found Conn. Gen.Stat. § 33-929(a) a statutory basis for personal jurisdiction over the defendant without having to perform a due process analysis.
. Conn. Gen.Stat. § 33-929(a), entitled, "Service of process on foreign corporation,” states:
(a) The registered agent of a foreign corporation authorized to transact business in this state is the corporation’s agent for service of process, notice or demand required or permitted by law to be served on the foreign corporation. When the registered agent is other than the Secretary of the State and his successors in office, service may be effected by any proper officer or other person lawfully empowered to make service by leaving a true and attested copy of the process, notice or demand with such agent or, in the case of an agent who is a natural person, by leaving it at such agent’s usual place of abode in this state.
Moreover, pursuant to Conn. Gen.Stat. § 33-920, "[n]o insurance, surety or indemnity company "shall transact business in this state until it has procured a license from the Insurance Commissioner.” See Conn. Gen. Stat. §§ 33-920, 38a-41. All "foreign and alien” insurers who apply for such a license are deemed to have appointed the Insurance Commissioner as agent for receipt of service of process. Id. § 38a-25(b).
.
See also Best Van Lines, Inc. v. Walker,
. General jurisdiction exists where the defendant is domiciled in the forum or engages in activities in the forum that are "substantia!' or "continuous and systematic.”
Helicopteros,
. The exercise of specific jurisdiction comports with due process when a defendant has undertaken activity in which it has purposefully availed itself of the privilege of conducting business in the forum state, thereby invoking the benefits and protections of its laws. If the plaintiff's claim arises out of forum-related activities, the exercise of jurisdiction is reasonable.
Burger King Corp. v. Rudzewicz,
. Such factors include: (1) the burden that the exercise of jurisdiction will impose on the defendant; (2) the interests of the forum state in adjudicating the case; (3) the plaintiff’s interest in obtaining convenient and effective relief; (4) the interstate judicial system’s interest in obtaining the most efficient resolution of the controversy; and (5) the shared interest of the states in furthering social substantive policies.
Asahi Metal Indus. Co.,
. There is also no evidence that World maintains an office, has any employees, or owns any real estate in Connecticut.
. On World’s website, WRW.worMiHsco.com, World provides prospective customers with information about various insurance plans it offers. The plans are not available for purchase on the website and must be purchased through an agent. Powell Dec. ¶ 6. Furthermore, World explicitly lists the 33 states where, as of July 1, 2009, World offers products. Id. Connecticut does not appear in that list. (World acknowledges that it is authorized, however, to do business in all states except Alaska, Massachusetts and New York.)
. World has clarified that it does have 200 policies that it manages in Connecticut. However, these policies were acquired from third party insurance companies and are not branded with the WorldCARE mark. See Powell Dec. ¶ 8.
. As the Second Circuit explained recently in
Chloe v. Queen Bee of Beverly Hills, LLC,
. The crux of WorldCare’s trademark infringement claims is that: (1) World “used and continues to use in commerce reproductions, copies and colorable imitations of the Marks in connection with its goods and services, which is likely to cause confusion, or to cause mistake, or to deceive, and comprises an infringement of the Marks;” and (2) World's "conduct constitutes a false designation of origin," which is likely to cause consumers to be confused that World’s services are affiliated with WorldCare. Doc. # 1 at ¶¶ 39, 43. World has not, however, sold any insurance policies in Connecticut or to Connecticut residents while they were resident in Connecticut. As World avers, the World-CARE "mark is only used in connection with the initial marketing and sale of any policy.” Supp. Powell Dec. at ¶ 3. Therefore, none of the alleged misconduct giving rise to World-Care’s claim occurred within Connecticut.
. Thus, even when the exercise of jurisdiction is favored because the plaintiff has made a threshold showing of minimum contacts at the first stage of the inquiry, jurisdiction may be defeated if the defendant presents "a compelling case that the presence of some other considerations would render jurisdiction unreasonable.”
Chloe,
. These three WorldCARE branded policies comprise an infinitesimal percentage (approximately .0101%) of the 29,569 WorldCARE branded policies that were issued by World throughout the United States.
. When minimum contacts have been established, the interests of the plaintiff and the forum will often justify even the most serious burdens placed on a foreign defendant. Asahi,
. These states include Delaware, Georgia, Illinois, Indiana, Iowa, Michigan, Missouri, North Carolina, Ohio, Pennsylvania, South Carolina, and Tennessee. Of these, Pennsylvania is closest to Massachusetts.
. WorldCare presupposes that personal jurisdiction over World is proper in Connecticut and merely argues that because World "may not be subject to personal jurisdiction in the District of Massachusetts,” it is "forced to file suit in Connecticut, the closest such district where "World Insurance resides.” Doc. # 29, p. 8, para. 2. WorldCare makes this argument in the context of opposing World’s alternative motion to transfer this action to the District of Nebraska pursuant to 28 U.S.C. § 1404(a). Aside from a general argument regarding "proximity,” it does not detail specifically how it would be inconvenienced by a transfer. The Court further notes that if the inconvenience relates primarily to World-Care’s Connecticut counsel, such a consideration is an inappropriate matter on a motion to transfer.
See, e.g., Solomon v. Continental American Life Ins. Co.,
. Although three WorldCARE policies remain outstanding in Connecticut, World’s counsel has clarified that the WorldCARE mark "is only used in connection with the initial marketing and sale of any policy.” Supp. Powell Dec. ¶ 3. Afterward, no communications with the Connecticut resident policyholders use the WorldCARE mark. Id.
. Section 1404(a), entitled "[c]hange of venue,” provides that “[flor the convenience of parties and witnesses, in the interest of justice, a district court may transfer any civil action to any other district or division where it might have been brought.” 28 U.S.C. § 1404(a).
. A court may transfer a case pursuant to § 1404(a) if it has subject matter jurisdiction and proper venue.
See, e.g., RMS Titanic, Inc,
v.
Geller,
No. 3:99-CV-2401(JCH),
. 28 U.S.C. § 1406(a) states:
(a) The district court of a district in which is filed a case laying venue in the wrong division or district shall dismiss, or if it be in the interest of justice, transfer such case to any district or division in which it could have been brought.
. The relative means of the parties have not been addressed or proven by either party, both corporations of considerable size. This appears to be a neutral factor. This Court's familiarity with governing law is also neutral, where the law to be applied is the uniform federal trademark infringement law.
.
See abo A Slice of Pie Productions, LLC v. Wayans Bros. Entertainment,
. WorldCare merely states that, if the case were transferred to Nebraska, its employees would be required to fly to Nebraska and that would be "more expensive” than driving to Connecticut. Doc. #29, p. 10, p. 2. The WorldCare witnesses’ identities and states of residence are unknown.
. With respect to the sixth factor, the availability of process to compel the attendance of unwilling witnesses, the Court notes that both World and WorldCare consider the issue to be neutral in that no non-party witnesses have been identified. Doc. # 22, p. 12, para. 2; Doc. # 29, p. 9, para. 2. The Court notes, however, that Nebraska is more than 100 miles away.
See
Fed.R.Civ.P. 45(b)(2)(B) (allowing service of a subpoena at any place outside the district of the issuing court “but within 100 miles of the place specified for the deposition, hearing, trial, production, or inspection”). Should there be a problem securing the attendance of a non-party Nebraska witness
(e.g.,
an insurance policyholder or ex-employee of World), the Court would not be able summon that witness to testify in Connecticut.
See Jones v. Walgreen Co.,
. Transfer is granted pursuant to 28 U.S.C. § 1406(a), as opposed to § 1404(a), because this Court lacks personal jurisdiction over World, rendering venue in this district improper.