Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`
`ESTTA Tracking number:
`
`ESTTA961331
`
`Filing date:
`
`03/19/2019
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`92066147
`
`Party
`
`Correspondence
`Address
`
`Plaintiff
`SNAP Solutions LLC
`
`DAVID HASSAN
`SNAP SOLUTIONS LLC
`PO BOX 5076
`VERNON HILLS, IL 60061
`UNITED STATES
`ipdocket@clarkhill.com, david@events.org
`847-274-9594
`
`Submission
`
`Filer's Name
`
`Filer's email
`
`Signature
`
`Date
`
`Attachments
`
`Other Motions/Papers
`
`David Hassen
`
`david@events.org
`
`/David Hassen/
`
`03/19/2019
`
`Resumption of case 20190319.pdf(156949 bytes )
`Order Granting Motion to Dismiss.pdf(1173235 bytes )
`
`

`

`
`
`
`
`
`
`
`
`
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`TRADEMARK TRIAL AND APPEAL BOARD
`
`Snap Solutions LLC,
`
`Petitioner,
`
`v.
`
`Aaron Consulting Company LLC,
`
`Defendant.
`
`Cancellation No. 92066147
`
`PETITIONER MOTION TO SELF-REPRESENT
`
`Petitioner SNAP Solutions LLC hereby requests to self-represent in the remaining
`
`proceedings until further notice.
`
`Petitioner requests that the petition is resumed. Defendant lost their Civil Action case in
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`New York. (attached)
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`In addition, Petitioner requests to amend it’s pleading for Petition to Cancel. Petitioner
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`has recently discovered that the name iBid has been used by the State of Illinois for online
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`auctions since 2003. This prior date precedes both iBid.co and ibidmobile.net first use for same
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`category, online auctions.
`
` We request to amend our Prior Use claim and include the State of Illinois as an exhibit
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`of prior use of the trademark iBid. We requests that the Trail Board move to cancel the
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`trademark for ibidmobile.net based on prior use of trademark by the State of Illinois dating
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`almost 8 years prior to ibidmobile.net claim
`
`
`
`By: s/David Hassen
`
`Dated: March 19th, 2019
`
`SNAP Solutions LLC
`118 N Clinton St. Ste 301
`Chicago, Illinois 60661
`Tel (847) 274-9594
`
`

`

`CERTIFICATE OF SERVICE
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`
`
`
`
`I hereby certify that a true and complete copy of the foregoing Petitioner’s Motion to
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`Self-Represent has been served on Gregory O. Koerner by emailing said copy on March 19th,
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`2019, via email to: Gregory O. Koerner, Koerner & Associates LLC, 233 Broadway, Suite 2208
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`New York, NY 10279, gokoerner@gmail.com, gkoerner@koerner-associates.com.
`
`
`
`

`

`
`
`C
`
`i ht?ps‘.,’_i"|bid.l1ImOI5.gov,"ccntesnaphpisltcu.-=ai30u‘.us-
`
`t} u a
`
` id State ofIllinois Online Auction
`
`30“"
`
`3'31“" '10“
`
`”3""
`
`Smemm
`
`H“?
`
`CURRENT SYSTEM TIME: MAR 19. 2019 15:41:59
`
`Seam: l-
`
`ABOITT US
`
`i:
`
`3301‘ Adt‘anceéSearcb
`
`Browse:Eeleqyourgaleggryu
`
`Y _ Ed”
`
`State 0! Illinois welcomes the following local governments as authorized sellers of surplus government property:
`Dept of Correctionsllndustries, East Dundee Police, Fleet Operations, Illinois state Police, Village of Oak Brook,
`Village of Riverside, Village of Sugar Grove, Io'llater Reclamation District of Greater Chicago, Boone County, City of
`Geneva. Illinois Toll Highway Authority and now The City of Taylorwlle.
`Since Illinois began its innovative iBid. online auction in 2003. successful bidders have bought moretilan SID million of surplus Stale property.'[1:rough iBid. the public can use
`any computer “1th Lutemet access to bid on state surplus Items - and easilj: monitor them bids tiLroughout the duratlon ofthe neel-d)‘ auction.
`
`Items available for sale can include: cars tucks. boats. antiques, tools. computers and electronics. heavy equipment and. machinery medical supplies. office furniture. and
`my specialty items “first to see What's available right now? Check out the current auctions?
`Interested in bidding? Register non"
`CMS State Surplus Ofi'ice cm5.ibid@illinois.go\' 1924 S. [O l 2 St. Springfield. 1]. 62703 Phone: (2‘. T816903 Fax [21?) 524-881?
`
`
`Conn: HelpiA'bcut'L'
`'
`Pcn'a'ed 2a-
`
`
`CURRENT SYSTEL-I THEE: MAR 19.2019 15:41:59
`
`
`
`

`

`Case 1:16-cv-06775-NGG-VMS Document 26 Filed 09/24/18 Page 1 of 18 PageID #: 153
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`UNITED STATES DISTRICT COURT
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`EASTERN DISTRICT OF NEW YORK
`
`AARON CONSULTING CO., LLC d^/a
`
`Ibidmobile.net,
`
`Plaintiff,
`
`-against-
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`■X
`
`S NAP S OLUTIONS LLC d/b/a E vents.org, iBid,
`and ibid.com; and DAVID HAS S AN,
`
`-X
`NICHOLAS G. GAR AUFIS , United States District J udge.
`
`Defendants.
`
`ME MOR ANDUM & OR DE R
`
`16-CV-6775 (NGG) (VMS )
`
`Plaintiff Aaron Consulting Co., LLC brings this action under S ection 43 of the Lanham
`
`Act, 15 U.S .C. § 1125, alleging that Defendants S nap S olutions LLC ("S nap") and David Hassan
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`diluted and misappropriated Plaintiff's common-law rights in the "ibidmobile.net" trademark.
`
`(S ee Am. Compl. (Dkt. 13).) Defendants have moved to dismiss the amended complaint
`
`pursuant to Federal R ule of C ivil Procedure 12(b)(2) and (5) on the grounds that the court does
`
`not have personal jurisdiction over Defendants and that Plaintiff did not properly serve the
`
`amended complaint on Defendants. (S ee Defs. Mot. to Dismiss ("Mot.") (Dkt. 21-1); Defs.
`
`Mem. in S upp. of Mot. ("Mem.") (Dkt. 21).)
`
`For the following reasons. Defendants' motion to dismiss is GR ANTE D.
`
`I.
`
`BAC KGR OUND
`
`A.
`
`F acts
`
`The court takes the following statement of facts largely from Plaintiff's amended
`
`complaint, the well-pleaded allegations of which the court generally accepts as true for purposes
`
`of Defendants' motion to dismiss. N.Y . Pet Welfare Ass'n v. C ity of New Y ork. 850 F.3d 79, 86
`
`(2d Cir. 2017). "Additionally, because a motion to dismiss for lack of personal jurisdiction
`
`1
`
`

`

`Case 1:16-cv-06775-NGG-VMS Document 26 Filed 09/24/18 Page 2 of 18 PageID #: 154
`
`requires the resolution of factual issues outside the pleadings, the [c]ourt considers other relevant
`
`submissions from the parties at this stage." Cloplay Plastic Prods. Co. v. Excelsior Packaging
`
`Grp.. Inc..No. 12-CV-5262 (JPO), 2014 WL4473352, at *1 (S.D.N.Y. Sept. 11,2014);^
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`Dorchester Fin. Sec.. Inc. v. Banco BRJ. S.A.. 722 F.3d 81, 86 (2d Cir. 2013) (per curiam) ("[A]
`
`district court may [consider materials outside the pleadings] without converting a motion to
`
`dismiss for lack of personal jurisdiction into a motion for summary judgment."). Specifically,
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`the court considers the Declaration of David Hassan in support of Defendants' motion to dismiss
`
`(see Decl. of David Hassan ("Hassan Deck") (Dkt. 21-2)), as well as the exhibits attached to
`
`Plaintiff's amended complaint.
`
`1.
`
`The Parties
`
`Plaintiff is a New York corporation with its principal place of business in Brooklyn, New
`
`York. (Am. Compl. K 1.) Plaintiff owns and operates the website ibidmobile.net, "a long
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`standing, world renowned professional wireless auction company." (Id H 10.) Plaintiff
`
`registered the website's domain name on May 5, 2010. (Id f 11.) According to Plaintiff,
`
`"Ibidmobile.net has become a fixture of professional online and mobile auction management,
`
`providing charity auction technology and services for the business of raising fimds for
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`nonprofit[s]." (Id) Plaintifif s ibidmobile.net mark has been in continuous commercial use since
`
`April 10,2010, and was registered with the United States Patent and Trademark Office on July 3,
`
`2012. 04122.)
`
`Snap is a Delaware corporation with its principal place of business in Chicago, Illinois.
`
`(Id 112, 6.) Snap operates and maintains the website Events.org, which provides various
`
`services for nonprofit organizations. (Hassan Decl. 16; ^ Am. Compl. 12.) In addition,
`
`through the websites ibid.co and ibid.org. Snap "provid[es] online bidding software and services
`
`

`

`Case 1:16-cv-06775-NGG-VMS Document 26 Filed 09/24/18 Page 3 of 18 PageID #: 155
`
`on mobile devices to allow event participants to bid in live and silent auctions." (Hassan Decl.
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`K 8; ^ Am. Compl. 2.) Hassan is Snap's owner, as well as the owner of ibid.co, and resides in
`
`Chicago, Illinois. (Am. Compl. 3.) According to Hassan, "Snap has not done any business in
`
`New York relating to its mobile online bidding service," which is "targeted towards Chicago and
`
`the Midwestem United States." (Hassan Decl. 11,12.)
`
`Snap registered the domain name ibid.co on July 20, 2010, over two months after
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`Plaintiff registered ibidmobile.net. (Am. Compl. 14.) Plaintiff alleges that ibid.co uses the
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`term "iBid Mobile Bidding," which causes ibid.co "to be displayed near Plaintiffs website
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`'ibidmobile.net[.]'" (Id 13.) Plaintiff notes that, as of January 2011, Events.org "did not
`
`reference iBid in connection with [Defendants'] online auction services." (Id ^15.) Plaintiff
`
`alleges that Defendants have "consistently traded on the protected name and good will of
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`Plaintiff in the United States and around the world, creating consumer confusion and diluting
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`Plaintiffs reputation and the value of PlaintifPs name. (Id 12,16.)
`
`2.
`
`The Trademark Dispute
`
`On November 4,2016, Plaintiffs counsel sent a cease-and-desist letter to Defendants
`
`regarding their allegedly infringing behavior. (Id ^ 17; PI. Nov. 4,2016, Letter to Defs.
`
`(Dkt. 13-1).) On November 7, 2016, Hassan replied that Defendants had been "working under
`
`the iBid name since 2008 [, t]wo years prior to [Plaintiffs] claimed Trademark," and demanded
`
`that Plaintiff "stop using the iBid name asap." (Am. Compl. ^ 18.) Plaintiff's counsel requested
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`proof of Defendants' "claimed Trademark from 2008." (Id 19.) Hassan stated that Defendants
`
`had not applied for a trademark, "since there were other organizations that were using the iBid
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`name[,] including the State of Illinois," and again asked Plaintiff "to refrain from using the
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`name." (Id f 20.) Plaintiff alleges that, despite Plaintiff's request that Defendants "refrain from
`
`

`

`Case 1:16-cv-06775-NGG-VMS Document 26 Filed 09/24/18 Page 4 of 18 PageID #: 156
`
`using the iBid [n]ame, [Defendants] have continued the damaging and infringing behavior." (Id.
`
`1121.)
`
`B.
`
`Procedural History
`
`On December 7, 2016, Plaintiff filed a complaint in federal court making the above
`
`allegations against then-defendant Events.org. (See Compl. (Dkt. 1).) On January 23, 2017,
`
`Events.org executed a waiver of service. (Events.org Waiver of Service (Dkt. 7).) On March 21,
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`2017, Events.org requested a pre-motion conference in anticipation of its motion to dismiss the
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`complaintfor lack of personal jurisdiction. (Mar. 21,2017, Letter (Dkt. 8).) Subsequently,
`
`Plaintiff informed Events.org that it intended to file an amended complaint naming Snap and
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`Hassan as defendants. (June 5,2017, Defs. Letter (Dkt. 12).)
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`Following the submission of the amended complaint on June 6, 2017, the court granted
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`Defendants leave to move to dismiss the complaint without an additional pre-motion conference.
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`(Nov. 22, 2017, Order (Dkt. 17).) The motion was fully briefed on January 5,2018. (See Mot;
`
`Mem.; PI. Aff. in Opp'n to Mot. ("PI. Opp'n") (Dkt. 21-3); Defs. Reply Mem. in Supp. of Mot.
`
`("Defs. Reply") (Dkt. 21-4).)
`
`n. LEGAL STANDARD
`
`"Prior to discovery, a plaintiff challenged by a jurisdiction testing motion may defeat the
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`motion by pleading in good faith, legally sufficient allegations ofjurisdiction." Dorchester, 722
`
`F.3d at 84. "At that preliminary stage, the plaintiffs nrima facie showing may be established
`
`solely by allegations," id at 85, and "must include an averment of facts that, if credited by the
`
`ultimate trier of fact, would suffice to establish jurisdiction over the defendant," In re Terrorist
`
`Attacks on Sept. 11.2001. 714 F.3d 659, 673 (2d Cir. 2013) (quotation marks and citation
`
`omitted). In evaluating the sufficiency of the jurisdictional allegations, a court must "construe the
`
`

`

`Case 1:16-cv-06775-NGG-VMS Document 26 Filed 09/24/18 Page 5 of 18 PageID #: 157
`
`pleadings and affidavits in the light most favorable to the plaintiffs, resolving all doubts in their
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`favor." Dorchester, 722 F.3d at 85 (internal quotation marks and citation omitted). That said,
`
`the court "will not draw argumentative inferences in the plaintiff's favor" nor "accept as true a
`
`legal conclusion couched as a factual allegation." In re Terrorist Attacks on Sept. 11.2001. 714
`
`F.3d at 673 (quotation marks and citations omitted),
`
`in. DISCUSSION
`
`Defendants move to dismiss the complaint on two grounds: that the court does not have
`
`personal jurisdiction over either defendant; and that Plaintiff did not serve the amended
`
`complaint on Defendants within 90 days of filing the amended complaint, as required by Federal
`
`Rule of Civil Procedure 4(m). (Mem. at 1.)
`
`Fed. R. Civ. P. 12(b)(2), (5). "The [cjourt
`
`considers the jurisdictional issues first, because a dismissal for lack of jurisdiction renders all
`
`other claims moot." Darden v. DaimlerChrvsler N- Am. Holding Corp.. 191 F. Supp. 2d 382,
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`386 (S.D.N.Y. 2002) (citing, inter alia. Ruhrsas A.G. v. Marathon Oil Co.. 526 U.S. 574, 583
`
`ri999)k see Anders v. Verizon Commc'ns Inc.. No. 16-CV-5654 (VSB), 2018 WL 2727883,
`
`at *6 (S.D.N.Y. June 5, 2018).
`
`A.
`
`Personal Jurisdiction
`
`In deciding whether the court may exercise personal jurisdiction, the coirrt "look[s] to the
`
`law of the forum state to determine whether personal jurisdiction will lie." Licci ex rel. Licci v.
`
`Lebanese Canadian Bank. SAL (Licci IIP. 732 F.3d 161,168 (2d Cir. 2013). Additionally, the
`
`"exercise of personal jurisdiction over a foreign defendant [must] comport[] with due process
`
`protections established under the United States Constitution." IL; s^ IntT Shoe Co. v. Wash..
`
`326 U.S. 310, 316 (1945). "In a federal question case where a defendant resides outside the
`
`forum state, a federal court applies the forum state's personal jurisdiction rules 'if the federal
`
`

`

`Case 1:16-cv-06775-NGG-VMS Document 26 Filed 09/24/18 Page 6 of 18 PageID #: 158
`
`statute does not specifically provide for national service of process.'" PDK Labs, Inc. v.
`
`Friedlander. 103 F.3d 1105, 1108 (2d Cir. 1997) (quoting Mareno v. Rowe. 910 F.2d 1043,1046
`
`(2d Cir. 1990)). Because the Lanham Act does not provide for national service of process, the
`
`court apphes New York's jurisdictional statutes to deterniine whether it may exercise personal
`
`jurisdiction over Defendants.
`
`A.W.L.I. Grp.. Inc. v. Amber Freight Shipping Lines. 828 F.
`
`Supp. 2d 557, 563 (E.D.N.Y. 2011). "Pursuant to the New York long-arm statute, there are two
`
`ways that a New York court can exercise personal jurisdiction over a non-resident defendant:
`
`general jurisdiction pursuant to pST.Y. CPLR 301] ('Section 301') or specific jurisdiction
`
`pursuant to [N.Y. CPLR 302] ('Section 302')." Id. Because Plaintiff does not state on which
`
`basis it believes the court may assert personal jurisdiction over Defendants, the court examines
`
`the grounds for both general and specific jurisdiction. The court concludes that Plaintiff has not
`
`made out a prima facie showing that it would be proper for this court to exercise personal
`
`jurisdiction over either defendant.
`
`1.
`
`General Jurisdiction
`
`Under Section 301, "general jurisdiction is established if the defendant is shown to have
`
`'engaged in continuous, permanent, and substantial activity in New York.'" United Mobile
`
`Techs.. LLC v. Pegaso PCS. S.A. de C.V., 509 F. App'x 48, 50 (2d Cir. 2013) (sununary order)
`
`(quoting Wiwa v. Roval Dutch Petroleum Co.. 226 F.3d 88, 95 (2d Cir. 2000)). The defendant
`
`must have engaged in business in New York "not occasionally or casually, but with a fair
`
`measure of permanence and continuity." Wiwa. 226 F.3d at 95 (quotation marks and citation
`
`omitted). Courts haye noted "tension" between the due-process requirement that a defendant
`
`have "affiliations with the State [that] are so 'continuous and systematic' as to render [it]
`
`essentially at home in the forum State," PaiTnler AG v. Bauman. 571 U.S. 117, 127 (2014)
`
`

`

`Case 1:16-cv-06775-NGG-VMS Document 26 Filed 09/24/18 Page 7 of 18 PageID #: 159
`
`(quoting Goodvear Dunlop Tires Operations. S.A. v. Brown. 564 U.S. 915, 919 (2011)), and
`
`Section 301 's "agency-based theory of jurisdiction." Sonera Holding B.V. v. Cukurova Holding
`
`A.S.. 750 F.Sd 221,224-25 & n.2 (2d Cir. 2014). Nevertheless, because general jurisdiction over
`
`Defendants is clearly lacking, the court need not address any disparities between the New York
`
`and due-process jurisdictional standards.
`
`Defendants' activities in New York fall short of the level necessary to support general
`
`jurisdiction. Snap maintains that it "is not incorporated in New York, is not licensed to do
`
`business in New York, has no registered agent for service of process in New York, has no offices
`
`or employees in New York, owns no property in New York, and currently does no business and
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`derives no revenue from New York." (Defs. Reply at 1 (citing Mem. at 6).) While Defendants
`
`admit that Snap "conducted a very small amount of business in New York unrelated to mobile
`
`online bidding, specifically registration for events and management of donors," they note that
`
`this activity only occurred firom 2010 to 2015 and that the revenues Jfiom this activity were less
`
`than $1000, or less than one percent of Snap's total revenues during this period. (Hassan Decl.
`
`T114.) While the solicitation of "substantial and continuous" business, even without physical
`
`presence, may support the exercise of general jurisdiction. Snap's relatively insignificant amount
`
`of business does not suffice to subject it to jurisdiction in New York for all purposes. See
`
`Overseas Media, Inc. v. Skvortsov. 407 F. Supp. 2d 563, 569 (S.D.N.Y. 2006): cf. Zibiz Corp. v.
`
`FQSf Tech. Sol'ns. Ill F. Supp. 2d 408, 418 (E.D.N.Y. 2011); Unique Indus.. Inc. v. Sui & Sons
`
`Int'l Trading Com.. No. 05-CV-2744 (KMK), 2007 WL 3378256, at *3 n.4 (S.D.N.Y. Nov. 9,
`
`2007) ("When less than 5% of a company's revenue attributes to its business in the forum state,
`
`general jurisdiction is normally denied."). Given that Snap is not incorporated in New York and
`
`does not even have a physical presence in the state, as well as the fact that Snap does not have
`
`

`

`Case 1:16-cv-06775-NGG-VMS Document 26 Filed 09/24/18 Page 8 of 18 PageID #: 160
`
`additional pervasive contacts with New York, it would not comport with either New York law or
`
`traditional notions of due process to subject Snap to general jurisdiction here.
`
`Brown v.
`
`Lockheed Martin Corp.. 814 F.3d 619, 629 (2d Cir. 2016) ("[W]hen a corporation is neither
`
`incorporated nor maintains its principal place of business in a state, mere contacts, no matter how
`
`'systematic and continuous,' are extraordinarily unlikely to add up to an 'exceptional case.'"); cf.
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`Overseas Media. 407 F. Supp. 2d at 568.
`
`Finally, because Hassan is domiciled in Illinois and has not consented to jurisdiction in
`
`New York, it would not comport with due process to subject him to general jurisdiction in New
`
`York. See Reich v. Lopez. 38 F. Supp. 3d 436,455 (S.D.N.Y. 2014).
`
`2.
`
`Specific Jurisdiction
`
`Section 302, New York's long-arm statute, provides for the exercise of personal
`
`jurisdiction over any foreign defendant who:
`
`1. transacts any business within the state or contracts anjrwhere to
`supply goods or services in the state; or
`
`2. commits a tortious act within the state, except as to a cause of
`action for defamation of character arising from the act; or
`
`3. commits a tortious act without the state causing injury to person
`or property within the state, except as to a cause of action for
`defamation of character arising from the act, if he
`
`(i) regularly does or solicits business, or engages m any other
`persistent course of conduct, or derives substantial revenue from
`goods used or consumed or services rendered, in the state, or
`
`(ii) expects or should reasonably expect the act to have
`consequences in the state and derives substantial revenue from
`interstate or international commerce; or
`
`4. owns, uses or possesses any real property situated within the state.
`
`CPLR 302(a).
`
`

`

`Case 1:16-cv-06775-NGG-VMS Document 26 Filed 09/24/18 Page 9 of 18 PageID #: 161
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`The court again notes that Plaintiff does not refer to particular sections of the long-arm
`
`statute in claiming that Defendants are subject to personal jurisdiction in New York, but the court
`
`has nevertheless attempted to match up Plaintiffs various allegations and claims with the
`
`relevant sections of the law.
`
`a.
`
`Section 302(a)(1)
`
`Section 302(a)(l) confers jurisdiction in New York on a foreign defendant that "transacts
`
`any business within the state." "A defendant transacts business if he has 'purposely availed
`
`himself of the privilege of conducting activities within New York and thereby invoked the
`
`benefits and protections of its laws.'" Reich, 38 F. Supp, 3d at 457 (quoting D.H. Blair & Co. v.
`
`Gottdiener. 462 F.3d 95, 104 (2d Cir. 2006)); ^ A.W.L.I.. 828 F. Supp. 2d at 564 (citing Best
`
`Van Lines. Inc. v. Walker. 490 F.3d 239, 246-47 (2d Cir. 2007)) (stating that New York courts
`
`"rely on the constitutional standard set forth by the Supreme Court" when considering whether a
`
`defendant "transacted business"). "A single transaction may suffice for personal jurisdiction
`
`under [Section] 302(a)(1), and physical presence by the defendant in the forum state during the
`
`activity is not necessary." A.W.L.I.. 828 F. Supp. 2d at 565 (citing, inter alia. Bank Brussels
`
`Lambert v. Fiddler Gonzalez & Rodriguez, 171 F.3d 779, 787 (2d Cir. 1999)). A suit will be
`
`deemed to have arisen out of a defendant's activities within the state if there is "an 'articulable
`
`nexus' or 'substantial relationship' between the plaintiffs claim and the defendant's transaction
`
`in New York." Strauss v. Credit Lvonnais. S.A.. 175 F. Supp. 3d 3, 18-19 (E.D.N.Y. 2016)
`
`(quoting Best Van Lines. 490 F.3d at 246). "This inquiry is a fact-specific one, and the point at
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`which the connection between the parties' activities in New York and the plaintiffs' claim
`
`crosses the line from 'substantially related' to 'mere coincidence' is not always self-evident."
`
`

`

`Case 1:16-cv-06775-NGG-VMS Document 26 Filed 09/24/18 Page 10 of 18 PageID #: 162
`
`Licci ex rel. Licci v. Lebanese Canadian Bank. SAL rLicci D. 673 F.3d 60, 67 (2d Cir. 2012)
`
`(alterations adopted) (quotation marks and citation omitted).
`
`Plaintiff first points out that Snap has, in the past, conducted a "very small amount of
`
`business in New York." (PI. Opp'n H 13.) This piece of information could be relevant to the
`
`question of specific jurisdiction; here, however, there is no allegation that Snap's past
`
`connections to New York were substantially related to the subject matter of this lawsuit. (See
`
`Hassan Decl. UK 11,14.) As Hassan affirms, these business transactions related to "registration
`
`for events and management of donors," not mobile online bidding or the ibid.co website. (Id K
`
`14.) While the "substantial relationship" requirement is "relatively permissive," Strauss. 175 F.
`
`Supp. 3d at 19 (quoting Licci v. Lebanese Canadian Bank. SAL (Licci ID. 984 N.E.2d 893, 900
`
`(N.Y. 2012)), the court has no reason to suspect that Snap's transaction of business in New York
`
`fi-om 2010 to 2015 was in any way moored to its operation of ibid.co, thus making personal
`
`jurisdiction on this basis improper. See Licci HI. 732 F.3d at 168-69.
`
`Plaintiff next alleges that Snap uses ibid.co to "solicit[] customers in New York" and
`
`"directly advertiseQ New York[-]based events to New York customers." (PI. Opp'n K 15.)
`
`When personal jurisdiction under Section 302(a)(1) is asserted on the basis of the defendant's
`
`operation of a website, courts apply a "sliding scale" test based on the website's "interactivity."
`
`See, e.g. Franklin v. X Gear 101. LLC. No. 17-CV-6452 (GBD), 2018 WL 4103492, at *3
`
`(S.D.N.Y. Aug. 28,2018); Audiovox Com, v. South China Enter.. Inc.. No. 1 l-CV-5142 (JS),
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`2012 WL 3061518, at *3 (E.D.N.Y. July 26,20121: see Best Van Lines. 490 F.3d at 251 ("[T]he
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`likelihood that personal jurisdiction can be constitutionally exercised is directly proportionate to
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`the nature and quality of commercial activity that an entity conducts over the Internet... ."
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`(quoting Zinno Mfg. Co. v. Zippo Dot Com. Inc.. 952 F. Supp. 1119, 1124 (W.D. Pa. 1997))).
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`Case 1:16-cv-06775-NGG-VMS Document 26 Filed 09/24/18 Page 11 of 18 PageID #: 163
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`"A website that merely passively provides information that is accessed by individuals in New
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`York is not grounds for the exercise of personal jurisdiction." Audiovox. 2012 WL 30615168,
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`at *3. "However, if a website is interactive and allows a buyer in New York to submit an order
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`online, courts typically find that the website operator is 'transacting business' in New York and
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`is therefore subject to the court's jurisdiction." Id.
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`The facts asserted by Plaintiff, even if true, would not support the conclusion that Snap is
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`transacting business in New York through ibid.co. Plaintiff does not aver that Snap "offers
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`merchandise for sale to consumers in New York and shipment of such merchandise to there"
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`through ibid.co, nor does it claim that Snap derived any revenue from New York customers
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`through its operation of ibid.co. See Rovio Entm't. Ltd. v. Allstar Vending. Inc.. 97 F. Supp. 3d
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`536, 542 (S.D.N.Y. 2015) fciting Chloe v. Queen Bee of Beverlv Hills. LLC. 616 F.3d 158,170-
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`71 (2d Cir. 2010)); see also CES Indus.. Inc. v. Minn. Transition Charter Sch.. 287 F. Supp. 2d
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`162,166 (E.D.N.Y. 2003) ("It is well-established that solicitation of business alone will not
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`justify a finding of corporate presence in New York."); cf Novak v. Overture Servs.. Inc., 309
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`F. Supp. 2d 446,455 (E.D.N.Y. 2004). Plaintiff points to the fact that Events.org "continues to
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`advertise New York events and auction software" and that Events.org contains a "New York
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`Calendar," "which includes a current listing of New York events, including charity events that
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`hold silent auctions" (PI. Opp'n UK 18-19), but these allegations also fail to establish personal
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`jurisdiction under Section 302(a)(1). First, as Defendants point out, "neither the Events.org
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`website nor the event listing thereon gives rise to the claims in Plaintifr's" amended complaint.
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`•(Defs. Reply at 2-3.) Second, Snap does not organize the events it advertises on Events.org, nor
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`does it derive any revenue from these advertisements; rather, Events.org "allows nonprofits to
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`advertise events free of charge across the United States." (Id at 3.) This activity is typical of a
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`Case 1:16-cv-06775-NGG-VMS Document 26 Filed 09/24/18 Page 12 of 18 PageID #: 164
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`"passive" website and cannot support the exercise of jurisdiction under Section 302(a)(1). See
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`Royalty Network Inc. v. Dishant.com. LLC. 638 F. Supp. 2d 410, 418 (S.D.N.Y. 2009)
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`(analogizing "passive" websites "to an advertisement in a nationally-available magazine or
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`newspaper, [which] does not without more justify the exercise of jurisdiction over the defendant"
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`(quoting Citigroup Inc. v. City Holding Co.. 97 F. Supp. 549, 565 (S.D.N.Y. 2000))). As
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`Defendants correctly point out, "online advertising, even if directed at New York residents, is not
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`sufficient to support the exercise of personal jurisdiction over a defendant when it is not
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`supplemented by business transactions occurring in the state or accompanied by a fair measure of
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`the defendant's permanence and continuity in New York which establishes a New York
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`presence." (See Mem. at 7.) See A.W.L.I.. 828 F. Supp. 2d at 566 (alterations adopted) (citation
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`and internal quotation marks omitted).
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`Finally, because Snap did not transact business in New York for purposes of this lawsuit,
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`Section 302(a)(1) similarly does not support the exercise of personal jurisdiction over Hassan.
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`See Duravest Inc. v. Viscardi, A.G., 581 F. Supp. 2d 628, 635 (S.D.N.Y. 2008) (stating that an
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`individual defendant may be subject to personal jurisdiction on the basis of his relevant contacts
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`with the corporate defendant).
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`b.
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`Section 302(a) (2)
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`As set forth above, Section 302(a)(2) permits the court to exercise jurisdiction over a
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`defendant if the defendant has "comniit[ted] a tortious act within" New York. CPLR 302(a)(2)
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`(emphasis added). "Section 302(a)(2) has been narrowly construed to apply only when the
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`defendant was actually physically present in New York when he performed the allegedly tortious
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`act." Rescuecom Corp. v. Hvams. 477 F. Supp. 2d 522,531 (N.D.N.Y. 2006) (citing Bensusan
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`Rest. Corp. v. King. 126 F.3d 25,28-29 (2d Cir. 1997)). Where a foreign defendant allegedly
`
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`Case 1:16-cv-06775-NGG-VMS Document 26 Filed 09/24/18 Page 13 of 18 PageID #: 165
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`infringes an in-state plaintiffs trademark through the defendant's operation of a website,
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`physical presence is deemed to be "where the website is created and/or maintained." A.W.L.L.
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`828 F. Supp. 2d at 571.
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`Here, ibid.co, ibid.org, and Events.org were all created and maintained in Illinois, not
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`New York. (Mem. at 9 (citing Hassan Deck 7, 9).) Plaintiff does not claim otherwise. (See
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`PI. Opp'n.) Similarly, there are no allegations that Hassan committed any relevant tortious
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`actions that do not relate to his ownership of these websites. Accordingly, Section 302(a)(2)
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`jurisdiction over both defendants would be improper.
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`c.
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`Section 302(a)(3)
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`Section 302(a)(3) permits the court to exercise jurisdiction over a foreign defendant who
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`"commits a tortious act without the state causing injury to person or property within the state ...
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`if he (i) regularly does or solicits business, or engages in any other persistent course of conduct,
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`or derives substantial revenue from goods used or consumed or services rendered, in the state, or
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`(ii) expects or should reasonably expect the act to have consequences in the state and derives
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`substantial revenue from interstate or international commerce." CPLR 302(a)(3) (emphasis
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`added). In other words, in order to establish jurisdiction over Defendants pursuant to this
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`section. Plaintiff "must establish harm within New York State caused by [Defendants'] tortious
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`conduct and then satisfy the requirements set forth either in subsection (i) or subsection (ii)."
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`A.W.L.I.. 828 F. Supp. 2d at 571. It bears noting that "Section 302(a)(3) 'was not designed to go
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`to the full limits of permissible jurisdiction.'" Rlchtone Design Grp. L.L.C. v. Classical Pilates,
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`Inc.. No. 06-CV-547 (NRB), 2006 WL 2588135, at *2 (S.D.N.Y. Aug. 21, 2006) (quoting
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`Ingraham v. Carroll. 687 N.B.2d 1293, 1295 (N.Y. 1997)). "Rather, the limitations in
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`Case 1:16-cv-06775-NGG-VMS Document 26 Filed 09/24/18 Page 14 of 18 PageID #: 166
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`subparagraphs (i) and (ii) 'were deliberately inserted to keep the provision well within
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`constitutional bounds.'" Id (quoting Ingraham. 687 N.E.2d at 1295).
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`i.
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`Injury Within New York
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`"Trademark infringement can be a 'tort' for the purpose of determining long-arm
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`jurisdiction." Energy Brands Inc. v. Spiritual Br^ds. Inc.. 571 F. Supp. 2d 458, 470-71
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`(S.D.N.Y. 2008) (alteration adopted) (quotation marks and citation omitted). "Therefore, courts
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`have found that trademark infringement htigation may proceed even in the absence of [any]
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`product having been sold." PDK Labs. Inc. v. Proactive Labs. Inc.. 325 F. Supp. 2d 176,180
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`(E.D.N.Y. 2004). "[F]or purposes of determining jurisdiction under [Section] 302(a)(3), the
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`alleged injury stemming from infringement of a trademark in the form of damage to goodwill,
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`lost sales, or lost customers will occur where the trademark owner resides and conducts business
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`because this is where the first effects of trademark infringement or dilution are typically felt."
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`A.W.L.I.. 828 F. Supp. 2d at 572 (internal quotation marks and citation omitted).
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`Plaintiff has met the preliminary harm requirement of Section 302(a)(3): Plaintiff alleges
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`various Lanham Act harms, all of which are said to occur in New York because that is where
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`Plaintiff, a New York corporation, resides. Even so. Plaintiff cannot survive the motion to
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`dismiss if the complaint does not also meet one of the two jurisdictional bases in subsections (i)
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`or(ii).
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`ii.
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`Subsection lib Regular Solicitation of Business in New
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`York
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`As set forth above, Plaintiff has not alleged facts sufficient to show that Defendants
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`"transacted business" in New York under Section 302(a)(1); or that they "engaged in continuous,
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`permanent, and substantial activity in New York" from which they derived "substantial
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`revenue," as would support Section 301 jurisdiction. Accordingly, specific jurisdiction cannot
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`Case 1:16-cv-06775-NGG-VMS Document 26 Filed 09/24/18 Page 15 of 18 PageID #: 167
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`attach under Section 302(a)(3)(i).
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`Levans v. Delta Airlines, Inc., 988 F. Supp. 2d 330, 339
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`(E.D.N.Y. 2013).
`
`iii.
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`Subsection Cii"): Expectation of Consequences
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`Section 302(a)(3)(ii), meanwhile, "allows for