Case 2:06-cv-01909-JFB-ARL Document 47 Filed 03/26/07 Page 1 of 18 PageID #: <pageID> UNITED STATES DISTRICT COURT EASTERN DISTRICT OF NEW YORK _____________________ No 06-CV-1909 (JFB) (ARL) _____________________ ROBERT NOVAK D/B/A PETSWAREHOUSE.COM, Plaintiff, VERSUS TUCOWS, INC., OPENSRS AND NITIN NETWORKS, INC., Defendants. ___________________ MEMORANDUM AND ORDER March 26, 2007 ___________________ JOSEPH F. BIANCO, District Judge: 1125(c). Plaintiff also brings pendent state claims, including: conversion, negligence, Pro se plaintiff Robert Novak (“Novak”) bailee breach of duty, bailee breach of trust, brings the present action against defendants negligent misrepresentation, breach of Tucows, Inc. and its subsidiary, OpenSRS1 contract, tortious interference and intentional (collectively, “Tucows”) and Nitin Networks, infliction of emotional distress. Inc. (“Nitin”) (collectively, “defendants”), alleging that defendants’ transfer of his Presently before the court are defendants’ internet domain name, “petswarehouse.com,” motions to dismiss the complaint pursuant to constituted trademark infringement and Fed. R. Civ. P. 12(b)(3), on the basis of trademark dilution in violation of the Lanham improper venue, or, in the alternative, under Act, 15 U.S.C. § 1114, 1117, 1125(a) & Fed. R. Civ. P. 12(b)(6) and 12(b)(1), on the grounds that plaintiff fails to state a federal claim upon which relief may be granted and, 1 Tucows, Inc. does business under the name absent any federal question, this Court lacks OpenSRS; however, there is no legal entity by the jurisdiction due to an absence of complete name of OpenSRS that is connected with Tucows. diversity between the parties. Plaintiff cross- (Lazare Decl., ¶ 3; Tucows’ Br., at 6 n.6.) moves to strike certain of both defendants’ Therefore, this Court shall consider Tucows, Inc. declarations and exhibits, and defendant and OpenSRS as a single entity. Case 2:06-cv-01909-JFB-ARL Document 47 Filed 03/26/07 Page 2 of 18 PageID #: <pageID> Tucows moves to strike certain of plaintiff’s On March 21, 2003, Novak contacted Nitin by exhibits. telephone in order to initiate the transfer of his domain name. (Id. ¶ 39.) A little over one For the reasons that follow, plaintiff’s month later, on May 1, 2003, Benn applied for motion to strike is granted in part and denied a writ of execution to obtain Novak’s domain in part. Defendant Tucows’ motion to strike name “petswarehouse.com” in an effort to is granted, and both defendants’ motions to enforce the default judgment that he had been dismiss are granted on the basis of improper awarded against Novak. (Id. ¶ 41.) Novak venue. asserts that it was only as a result of the May 1, 2003 writ of execution that he became I. BACKGROUND aware that his domain name was actually being held by Tucows, a Canadian registration A. The Facts company, rather than the New York-based Nitin. (Id. ¶ 42.) Novak contacted Nitin on The following facts are taken from the May 2, 2003, and demanded that Nitin amended complaint. transfer registration of “petswarehouse.com” from Tucows back to Nitin. (Id.) Novak was In approximately November 1997, Novak told by Nitin that such a transfer was not registered for and obtained the Internet possible. (Id.) domain name “petswarehouse.com” through “Bulkregister.com,” an internet domain name The Alabama trial court’s May 1, 2003 registration company. (Am. Compl. ¶¶ 36, writ of execution required Tucows to suspend 38.) He then commenced selling pet supplies domain name hosting of “petswarehouse.com” and livestock via his website. (Id. ¶ 124.) and to turn over the domain name to the According to Novak, his website was the Colbert County Sheriff’s Department for fourth most-visited pet-supply-related site in public auction. (Id. ¶ 45; Ex. C.) On May 23, the United States during 1999. (Id. ¶ 5.) On 2003, Tucows transferred control over the July 30, 2001, Novak trademarked the domain domain name to the Alabama court pursuant name “petswarehouse.com” and was awarded to the court’s order, and access to Novak’s trademark number 2,600,670. (Id. ¶ 36.) servers through the “petswarehouse.com” web address was suspended. (Id. ¶ 47, 124; Ex. On February 11, 2003, in the Circuit Court D.) Internet users accessing of Colbert County, Alabama, an individual “petswarehouse.com” were directed to a web named John Benn obtained a default judgment page providing notice of the Colbert County against Novak in the amount of $50,000. (Id. Sheriff’s Sale of the domain name pursuant to ¶ 37.) Faced with the prospect of litigation in the Alabama trial court’s writ of execution. Alabama, Novak, a New York resident, opted (Id. ¶ 68; Ex. E.) On July 28, 2003, Benn to transfer the domain name purchased “petswarehouse.com” in a public “petswarehouse.com” from auction held by the Colbert County Sheriff, in “Bulkregister.com,” which was based in which Benn was the only bidder. (Id. ¶ 54.) Maryland, to another company, Nitin, which On September 16, 2003, Tucows transferred was located in New York. (Id. ¶¶ 38-39.) the domain name to Benn pursuant to the Alabama trial court’s order. (Id. ¶ 55.) 2 Case 2:06-cv-01909-JFB-ARL Document 47 Filed 03/26/07 Page 3 of 18 PageID #: <pageID> Novak challenged the Alabama trial on the basis of improper venue. Upon court’s decision, and on April 2, 2004, the learning of defendants’ proposed motion to Alabama Court of Civil Appeals reversed dismiss, plaintiff modified his claims, adding Benn’s default judgment and writ of execution Nitin as a defendant, and filed an amended against Novak on the basis that the judgment complaint on May 16, 2006. On July 10, had been entered without personal jurisdiction 2006, defendants Nitin and Tucows moved to over Novak. (Id. ¶ 71.) Armed with the state dismiss the complaint on the basis of improper appellate court decision, Novak demanded venue, or, in the alternative, failure to state a that Tucows return control of claim and lack of subject-matter jurisdiction. “petswarehouse.com” to him. (Id. ¶ 72.) On Plaintiff cross-moved to strike the October 1, 2004, after Benn was denied re- declarations and exhibits submitted by hearing by the Alabama Court of Civil defendants in support of their motions to Appeals and the Alabama Supreme Court, dismiss, and defendants moved to strike Tucows returned the domain name to Novak. certain of plaintiff’s exhibits. Oral argument (Id. ¶ 72-73.) and an evidentiary hearing were held on December 22, 2006, January 25, 2007 and Plaintiff alleges that the transfer of his February 9, 2007. domain name out of his control between May 1, 2003 and October 1, 2004 destroyed his II. EVIDENTIARY OBJECTIONS pet-supply business. Prior to May 23, 2003, Novak had received approximately 12,000 A. Plaintiff’s Motion to Strike daily visitors to “petswarehouse.com.” (Id. ¶ 134.) Following transfer of the domain name, 1. General Objections to Admissibility of visitors to the website were directed to the Foreign Declarations sheriff’s notice of sale, and Novak was unable to process any pet-supply orders. (Id.) According to Novak, the declarations of According to Novak, Tucows and Nitin’s two of defendant Tucows’ employees in transfer of the domain name out of his control Canada are inadmissible under Fed. R. Evid. diluted the “petswarehouse.com” trademark in 902(12). Rule 902(12) permits foreign violation of the Lanham Act, 15 U.S.C. § documents to be submitted into evidence as 1125(c). Novak also asserts that the transfer self-authenticating business records if deceptively and misleadingly represented accompanied by a declaration signed “in a Tucows and Nitin’s association with manner that, if falsely made, would subject “petswarehouse.com,” and constituted unfair the maker to criminal penalty under the laws competition and cyberpiracy under 15 U.S.C. of the country where the declaration is §§ 1114, 1117 & 1125(a). signed.” Fed. R. Evid. 902(12). Novak argues that, in order to meet this requirement, B. Procedural History a “jurat including penalty of perjury” under Canadian law should have been provided by On April 25, 2006, Novak, proceeding pro defendants with regard to the declarations se, filed the instant complaint against submitted by Brenda Lazare (“Lazare”), defendants Tucows, Inc. and OpenSRS. By Tucows’ Secretary and General Counsel, and letter dated May 11, 2006, defendant Tucows Evgeniy Pirogov (“Pirogov”), Team Leader of indicated its intention to move for dismissal the OpenSRS Development Team. (Pl.’s Br., 3 Case 2:06-cv-01909-JFB-ARL Document 47 Filed 03/26/07 Page 4 of 18 PageID #: <pageID> at 25-26.) However, where a matter must be Verisign and Nitin, and clearly sets forth how supported by a sworn declaration, a the related exhibits were created and declaration written outside of the United maintained in the course of “regularly States may be supported “with like force and conducted business activity,” pursuant to Fed. effect” by a statement in writing that “I R. Evid. 803(6). Therefore, the Court finds declare (or certify, verify, or state) under that Exhibits J-L are properly authenticated by penalty of perjury under the laws of the the Lazare declaration and, moreover, are United States of America, that the foregoing admissible as business records. is true and correct. Executed on (date).” 28 U.S.C. § 1746. In this instance, both the Plaintiff further asserts that the Lazare Lazare and Pirogov declarations contain the Declaration should be held inadmissible on requisite statement, and are therefore the basis that it contains legal argument. The admissible. (See Lazare Decl., at 9; Pirogov Court finds that the first 26 paragraphs of the Decl., at 6.) declaration contain factual descriptions of the domain name registration and transfer 2.