Case 1:12-cv-00852-GBL-JFA Document 62 Filed 12/18/12 Page 1 of 12 PageID# 704 UNITED STATES DISTRICT COURT FORFOR THE EASTERN DISTRICT OF VIRGINIA AlexandriaAlexandria Division )) GRAHAM SCHREIBER, )) )) Plaintiff, )) )) VSvs. )) CaseCase No. lzl2 1:12 CY CV 00852 (GBL/JT'A) (GBL/JFA) )) LORRAINE LESLEY LESLEY DUNABIN, DUNABIN, et al al.) )) DefendantsDefendants. )) )) DEFENDANT ENOM.INC.'S ENOM, INC.'S REPLY MEMORANDUM MEMORANDUM IN SUPPORT OF ITS MOTION TO DISMISS PLAINTIFF'S COMPLAINT GREENBERG TRAURIG, LLP 17501750 Tysons Blvd., Suite 1200 Mclean,McLean, Virginia Virginia 22102 Telephone: (703)749-1300 (703) 749-1300 Facsimile: (703)749-1301 (703) 749-1301 Attorneys for Defendant eNom, Inc. Case 1:12-cv-00852-GBL-JFA Document 62 Filed 12/18/12 Page 2 of 12 PageID# 705 Defendant eNom, Inc. ("eNom"), ("eNom"), through undersigned undersigned counsel, respectfully respectfully submits submits this replyreply memorandum of law law in in support of its its motion to dismiss the the Complaint ("eNom's Motion") filedfiled by Graham Schreiber ("Mr. Schreiber") pursuant to to Fed. R. Civ. P. 12(bX1) 12(b)(1) for for lack of subjectsubject matter jurisdiction, Fed. R. Civ. P. P. 12(bX5) 12(b)(5) for for insufficient service of process, process, and and Fed. R. Civ. P. 12(bX6) 12(b)(6) for failure to state a claim. I.I. INTRODUCTION Mr. Schreiber's Opposition Brief to Defendants' Motion to Dismiss ("Opposition Brief') (Dkt. 55), misstates the the law law and fails fails to to rebut rebut any of salient facts facts meriting dismissal including including the the most poignant: aatrademark trademark dispute between a Canadian citizen and a U.K. resident over trademarktrademark use in in the the U.K. with alleged damages occurring in in the the U.K. and Canada does not not belong in a United States court, because there is no extraterritorial application of the Lanham Act. Mr. Schreiber does not have worldwide trademark rights, or any trademark rights in the United States, to the alleged "Landcruise" mark based on his use in Canada, an application to registerregister the the alleged mark on the the principal principal trademark trademark register register in in the the United States, or or a domain name registration. Mr.Mr. Schreiber Schreiber likewise likewise fails to allege critical elements of his other claims. He admits that that his mark is not famous, famous, a necessary necessary element for for his dilution claim. claim. And, And, Mr. Schreiber's Opposition does not dispute that eNom is a registrar, and and therefore therefore is protected protected under the the Safe HarborHarbor provision of the Lanham Act. Moreover, as a registrar, eNom lacks the degree of control overover Dunabin Dunabin that would would be be necessary necessary to to impose impose liability liability for for contributory infringement. Finally, to to the the extent that Mr. Schreiber is arguing that his Complaint contains a contract or fraud fraud claims, those those claims also must must be be dismissed dismissed because because Mr. Schreiber is not not a third party party I1 Case 1:12-cv-00852-GBL-JFA Document 62 Filed 12/18/12 Page 3 of 12 PageID# 706 beneficiary to any contract at issue and does not have standing to bring a breach ofcontract of contract claim, and because because any any alleged fraud fraud claim must be be pled pled with with particularity. For the the foregoing reasons, Mr. Schreiber's claims against eNom fail and his his Complaint Complaint shouldshould be be dismissed with with prejudice. II.II. ARGUMENT ARGUMENT A. The Court Does Not Have Subject Matter Matter Jurisdiction Over Over a Trademark Dispute That Does Not Concern A U.S. Trademark InIn his Opposition Brief, Mr. Schreib Schreiber, er, a Canadian citizen, admits that that his his claims claims are based on Lorraine Lorraine Dunabin's Dunabin's registration of the alleged trademark Landcruise in the U.K., the ownership rights to the alleged alleged trademark trademark Landcruise Landcruise in the the U.K., and Ms. Ms. Dunabin's registration registration of the domain name, www.landcruise.uk.com. Opposition Brief at 3; seesee also Complaint at 3-5.. 3-5 .. None of this use is alleged to have occurred in the United States. In addition, Mr. Schreiber seeks relief relief that is is unrelated to trademark use in the United States. Specifrcally, Specifically, Mr. Schreiber has asked the Court to order Ms. Dunabin to release both the U.K. trademark and domain name, and award damages for "TWO (2) YEARS of lost lost access to to the the United Kingdom, for for marketing at travel travel and RV related shows" and "missing "missing the the ultimate ultimate branding opportunity, of touring a 'Landcruise''Landcruise' Branded RV or RV's around London, during the the Summer Olympics of of2012.,,1 20I2."r (Opposition(Opposition Brief at 3,21). t 1Mr.Mr. Schteiber's Schreiber's other alleged damage of 18 months of mental health stress is similarly not recoverablerecoverable under under the the Lanham Lanham Act. See Roth v. Naturally Vitamin Supplements, 1nc.,2007 Inc., 2007 WL 2020114, atat*3 *3 (D. Ariz. July 6, 2007) (finding that the elements of damages under the Lanham Act do not include emotional distress); distress); Condit v. Star Editorial, lnc.,259 Inc., 259 F. Supp. Supp. 2d 1046,1052 1046, 1052 (E.D.(E.D. Cal. 2003) (private (private person asserting asserting an an emotional distress injury injury is is not not protected by the the Lanham Act). )2 Case 1:12-cv-00852-GBL-JFA Document 62 Filed 12/18/12 Page 4 of 12 PageID# 707 As set forth forth in IN eNom and AND CentralNic's Motions, the general rule is that Lanham Act does not apply extraterritorially. See eNom's Motion (Dkt. 46-1) at 5, CentralNic's Motion (Dkt. 9) at 8-18-11. 1. The Lanham Act only applies to foreign conduct when they have a A significant effect on ON United States commerce. Tire Eng'g & Distribution, LLC v. ShandongShandong Lìnglong Linglong Rubber Co., Co., Ltd.,682F.3d292,310Ltd., 682 F.3d 292,310 (4th Cir.Cir.2012) 2012) (citing Nintendo of Am., Inc. v.v. Aeropower Co., Ltd.,34 Ltd., 34 F.3d246,250F.3d 246,250 (4thCir. (4th Cir. ß9$); 1994)); see also ACG Products, Ltd. v. Gu,2011Gu, 2011 V/L WL 7748354,at*5 7748354, at *5 (V/.D.(W.D. V/is. Wis. Nov. 4,2011) (dismissing (dismissing plaintiff plaintiffs s trademark trademark infringement infringement claim CLAIM for for failure failure to to allegeALLEGE conduct having having an AN effect on ON U.S. U.S. commerce, commerce, thereby depriving the the court ofjurisdiction OF jurisdiction underunder the Lanham Act). Act). A court court must must consider "the citizenship citizenship of OF the defendant, and AND the possibility of OF conflict with trademark trademark rights rights under the the relevant foreign law" since the the general injury contemplated by thethe Act is is harm harm to to a A plaintiff plaintiffs s "trade "trade reputation reputation in IN United United States States markets." NintendoNintendo of Am., Am., Inc.Inc. v. AeropowerAeropower Co., Ltd.,34 Ltd., 34 F.3d F.3d 246,250 246, 250 (4th (4th Cir. Cir. 1994). Although Although courts may may apply the the LanhamLanham Act extraterritorially extraterritorially when when "sales to foreign consumers would jeopardize the income INCOME of OF anAN American American company," company," even even if IF there there is a A failure failure to to cause cause confusion among AMONG U.S. U.S. consumerc, consumers, Tire Eng'g & Disnibution,Distribution, LLC,682 LLC, 682 F.3d at 3 310-11, 10- I l, that is not the case here. InIn this this case, there there is is no NO allegation allegation that that any of OF the the alleged ALLEGED conduct has has any effect on ON U.S. U.S. commerce, let let alone ALONE a A significant effect. Indeed, Indeed, all ALL of ofMr. Mr. Schreiber's allegations focus on ON conductconduct that that occurs occurs outside of OF (and affects affects commerce outside outside of) the United States. Similarly,Similarly, Mr. Mr. Schreiber Schreiber has has not alleged ALLEGED the the possibility ofjeopardizingthe OF jeopardizing the income INCOME of OF a A U.S. company, since since his company company is Canadian. (Complaint (Complaint at Cover Page), or a A U.S. trademark' trademark. AsAs set forth forth below in IN Section B, B, Mr. Schreiber has not alleged ALLEGED any use in IN commerce in IN the UnitedUnited States of OF his alleged ALLEGED Landcruise mark. Accordingly and AND because because the Lanham Act may J^3 Case 1:12-cv-00852-GBL-JFA Document 62 Filed 12/18/12 Page 5 of 12 PageID# 708 not be applied applied extraterritorially, the Complaint should be dismissed for lack of subject matter jurisdiction.jurisdiction. B. Mr. Schreiber Fails to State a Claim For Trademark Infringement Or Dilution Under the the Lanham Lanham Act Act or Common Law "Although district courts have a duty to to construepro construe pro se pleadingspleadings liberally, liberally, a a court is is not obliged to ferret ferret through a complaint, complaint, searching searching for for viable viable claims." claims." Jackson v. Michalski,20lIMichalski, 2011 WL3679143,WL 3679143, at *5 (W.D.Va. (W.D. Va. Aug. Aug. 22,2011) 22, 2011) (dismissingpro (dismissing pro se se Lanham Act claims among others). A pro se se plaintiff must allege allege facts facts that that state a cause of action with with enough enough detail detail to illuminateilluminate the the nature nature of the the claim, and courts do not have "to conjure up questions never squarely presented to them." Id.Id.