MCCORMICK BARSTOW ATTORNEYS VICTORIOUS IN TRADEMARK INFRINGEMENT AND CYBERSQUATTING SUIT
Thursday, July 30, 2015
McCormick Barstow attorneys Jared P. Green and Daniel I. Aquino successfully obtained a complete dismissal of trademark infringement and cybersquatting claims against their corporate client in Nevada federal court. The firm’s client was a business entity operating a southern California car wash entitled “Bellagio Car Wash”, approximately 250 miles away from the nearest Nevada border. Plaintiff Bellagio, LLC (owner of the Bellagio Hotel and Casino in Las Vegas) brought suit alleging that the car wash’s use of the name “Bellagio” was dilutive of their trademark, and that operation of a website of the same name violated the federal cyber-squatting statute, 15 U.S.C. § 1125(d).
Mr. Green and Mr. Aquino filed a Motion to Dismiss Bellagio LLC’s lawsuit on the grounds that the Nevada court had no personal jurisdiction over a local car wash operating entirely within California. Applicable Ninth Circuit law provides that in order for a court to have jurisdiction over a tort defendant, the defendant allegedly must have (1) committed an intentional act; (2) expressly aimed at the forum state; (3) causing harm that the defendant knows is likely to be suffered in the forum state. Defendant’s Motion to Dismiss argued that the operation of a local car wash in California did not qualify as an act expressly aimed at Nevada. Plaintiff Bellagio argued that several factors constituted express aiming, including that Defendant’s website that could be viewed in Nevada, that Defendant had received cease-and-desist letters from Bellagio, LLC but continued to operate, and that some Nevada residents may have used the car wash.
Pursuant to the law and argument cited in Defendant’s Motion to Dismiss, the United States District Court for the District of Nevada found that the operation of a passive website did not establish express aiming. Similarly, continued usage of the name “Bellagio” in spite of the cease-and-desist letters did not establish jurisdiction, as “it is the defendant who must create contacts with the forum state, not the plaintiff or plaintiff’s contact with the defendant.” Finally, the Court noted that “any Nevada residents that defendants served would be entirely fortuitous and not appropriate for establishing minimum contacts.” The Court accordingly granted Defendant’s Motion and dismissed the case for lack of personal jurisdiction. Bellagio, LLC v. Bellagio Car Wash & Express Lube et. al., No. 2:14-CV-1362 JCM-PAL.
Mr. Green and Mr. Aquino are part of the litigation practice group in the firm’s Las Vegas office.