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Case 2:17-cv-02080-JTM-JVM Document 22 Filed 02/20/18 Page 1 of 14

UNITED STATES DISTRICT COURT


EASTERN DISTRICT OF LOUISIANA

BESPOKE, LLC CIVIL ACTION

VERSUS NO: 17-2080

GARTH PIESSE SECTION: “H”(1)

ORDER AND REASONS


Before the Court is Defendant Garth Piesse’s Motion to Dismiss (Doc.
11). For the following reasons, the Motion is GRANTED.

BACKGROUND
This is a suit under the Anticybersquatting Consumer Protection Act
(“ACPA”). 1 Plaintiff Bespoke LLC is a Louisiana limited liability corporation

1 See 15 U.S.C. § 1125(d).

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organized on January 28, 2013 that arranges and sells custom travel tours in
New Orleans and other locations. Plaintiff alleges that it began using the
service marks “bespoke” and “bespoke experiences” immediately upon its
formation for the marketing, identification, and sales of its services. Defendant
Garth Piesse is a resident of New Zealand who has never travelled to
Louisiana. Defendant registered the domain name “bespoke.com” on May 9,
2014, having purchased it at a public, online auction from the Colorado-based
DropCatch.com for $18,800. Records for the domain name registration indicate
that it was updated on August 14, 2016.
On October 12, 2014, Travis Simpson, a member of Plaintiff, performed
an internet search for “bespoke.com” and was taken to the website of
Uniregistry, a domain name registrar and independent domain name broker.
That website showed that the bespoke.com domain name was for sale. Using
the contact tools available on the website, Simpson submitted a message
saying, “Is bespoke.com for sale? Price?” 2 Simpson then placed a bid via
Uniregistry’s website for $100. The only response from the website was, “Made
low offer.” 3 Simpson submitted another message asking, “What is your asking
price?” Simpson placed additional bids for $500, $700, $1,000, and $1,200, all
of which received the same “low offer” response. Simpson then submitted
another message stating, “According to valuemydomain.name bespoke.com is
only worth $414.” 4 The next day, October 13, 2014, Simpson bid $5,000 and
received the same low offer response. Defendant then sent a message to
Simpson at travissi2000@gmail.com saying, “This domain is under dispute, we

2 Doc. 13-1 at 2.
3 Doc. 13-1 at 2.
4 Doc. 13-1 at 2.

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cannot comment at this time. Thank you.” 5 Simpson responded, “Thank you
for your reply and if it frees up, please let me know.” 6
On November 3rd and 10th of 2015, Plaintiff registered the terms
“bespoke experiences” and “bespoke,” respectively, as standard character
marks for travel-related services with the United States Patent and
Trademark Office. 7
On April 29, 2016 a representative of Uniregistry emailed Simpson
asking whether he was still interested in the bespoke.com domain name. 8
Simpson did not respond. Uniregistry emailed Simpson again on July 10, 2016.
In response, Simpson asked what the price was. Uniregistry hinted at a seven-
figure range, to which Simpson replied, “That’s exactly why it’s still for sale
. . . .” 9 Simpson and Uniregistry exchanged emails again on November 22nd
and 23rd, 2016. Uniregistry said that Defendant’s asking price was $8.5
million. Simpson counteroffered $1,000. At that point Simpson stopped
responding to Uniregistry’s emails. Uniregistry continued to solicit Simpson
via email on March 14, May 10, June 20, and July 11, 2017. All
communications took place using the travissi2000@gmail.com address.
Plaintiff asserts a claim under the ACPA, which gives the owner of a
distinctive mark a civil cause of action against a person who has bad faith
intent to profit from the mark and registers, traffics in, or uses a domain name
that is confusingly similar to it. Defendant now moves to dismiss Plaintiff’s
Complaint on three grounds: 1) pursuant to Rule 4(m) Plaintiff has failed to

5 Doc. 11-2 at 4.
6 Doc. 11-2 at 5.
7 Doc. 13-1 at 1
8 Because the Court finds that it does not have personal jurisdiction over Defendant even if
the actions of Uniregistry are attributable to Defendant, the Court declines to decide at
this time whether Uniregistry’s actions may properly be imputed to Defendant.
9 Doc. 13-1 at 3.

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properly effect service on Defendant, 2) pursuant to Rule 12(b)(2) this Court


lacks personal jurisdiction over Defendant, and 3) pursuant to Rule 12(b)(6)
Plaintiff has failed to state a claim on which relief may be granted. Because
the Court finds that it lacks personal jurisdiction over Defendant, the Court
does not reach Defendant’s other grounds for dismissal.

LEGAL STANDARD
“Where a defendant challenges personal jurisdiction, the party seeking
to invoke the power of the court bears the burden of proving that jurisdiction
exists.” 10 When a court rules on a motion to dismiss for lack of personal
jurisdiction without holding an evidentiary hearing, as in this case, the
plaintiff need only make a prima facie showing of personal jurisdiction. 11 “The
allegations of the complaint, except insofar as controverted by opposing
affidavits, must be taken as true, and all conflicts in the facts must be resolved
in favor of the plaintiff[] for purposes of determining whether a prima facie
case for personal jurisdiction has been established.” 12 “In determining whether
personal jurisdiction exists, the trial court is not restricted to a review of the
plaintiff’s pleadings.” 13 The Court may consider matters outside the complaint,
including affidavits, interrogatories, depositions, or any combination of the
recognized methods of discovery. 14
Jurisdiction over a non-resident defendant is proper when (1) the
defendant is amenable to service of process under the long-arm statute of the

10 Luv N’care, Ltd. v. Insta–Mix, Inc., 438 F.3d 465, 469 (5th Cir. 2006) (citing Wyatt v.
Kaplan, 686 F.2d 276, 280 (5th Cir. 1982)).
11 Guidry v. U.S. Tobacco, Co., 188 F.3d 619, 625 (5th Cir. 1999).
12 Thompson v. Chrysler Motors Corp., 755 F.2d 1162, 1165 (5th Cir. 1985) (citing DeMelo v.

Toche Marine, Inc., 711 F.2d 1260, 1270 (5th Cir. 1983)).
13 Jobe v. ATR Mktg., Inc., 87 F.3d 751, 753 (5th Cir. 1996).
14 Id. (citing Colwell Realty Invs. v. Triple T. Inns of Ariz., 785 F.2d 1330 (5th Cir. 1986)).

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forum state and (2) the exercise of personal jurisdiction is consistent with the
Due Process Clause of the Fourteenth Amendment. 15 Here, “these two
inquiries merge into one because Louisiana’s long-arm statute permits service
of process coterminous with the scope of the due process clause.” 16 Due process
allows a court to exercise personal jurisdiction over a non-resident defendant
when (1) the defendant has purposefully availed himself of the benefits and
protections of the forum state by establishing “minimum contacts” with the
forum state and (2) exercising personal jurisdiction over the defendant does
not offend “traditional notions of fair play and substantial justice.” 17
“Minimum contacts” can be established through specific jurisdiction or
general jurisdiction. 18 General personal jurisdiction exists when the defendant
has engaged in continuous and systematic activities in the forum state,
regardless of whether such activity is related to the plaintiff’s cause of action. 19
Specific personal jurisdiction exists (1) when a defendant has purposely
directed its activities, or availed itself of the privileges of conducting its
activities, toward the forum state; (2) the controversy arises out of or is related
to those activities; and (3) the exercise of jurisdiction is fair, just, and
reasonable. 20 “The non-resident’s ‘purposeful availment’ must be such that the
defendant ‘should reasonably anticipate being haled into court’ in the forum
state.” 21 Further, “[t]he unilateral activity of [a plaintiff] who claim[s] some

15 Dalton v. R&W Marine, Inc., 897 F.2d 1359, 1361 (5th Cir. 1990).
16 Pervasive Software Inc. v. Lexware GMBH & Co. KG, 688 F.3d 214, 220 (5th Cir. 2012)
(quoting Int’l Shoe Co. v. Washington, 326 U.S. 310, 319 (1945)).
17 Latshaw v. Johnston, 167 F.3d 208, 211 (5th Cir. 1999) (quoting Int’l Shoe, 326 U.S. at

316).
18 Alpine View Co. Ltd. v. Atlas Copco AB, 205 F.3d 208, 215 (5th Cir. 2000).
19 Helicopteros Nacionales de Colombia, S.A. v. Hall, 466 U.S. 408, 415 (1984).
20 Burger King Corp. v. Rudzewicz, 471 U.S. 462, 472 (1985).
21 Ruston Gas Turbines Inc. v. Donaldson Co., 9 F.3d 415, 419 (5th Cir. 1993) (quoting World-

Wide Volkswagen Corp. v. Woodson, 444 U.S. 286, 297, 100 S. Ct. 559, 567 (1980)).

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relationship with a nonresident defendant cannot satisfy the requirement of


contact with the forum State.” 22
“If a nonresident defendant has sufficient related or unrelated minimum
contacts with the forum, we must then consider whether the ‘fairness’ prong of
the jurisdictional inquiry is satisfied.” 23 The fairness inquiry is determined by
analyzing several factors: (1) the burden upon the nonresident defendant of
litigating in the forum state; (2) the interests of the forum state; (3) the
plaintiff’s interest in securing relief; (4) the judicial system’s interest in
obtaining an efficient resolution of controversies; and (5) the shared interest of
the states in furthering fundamental substantive social policies. 24

LAW AND ANALYSIS


I. Personal Jurisdiction in Louisiana
Plaintiff fails to allege or present evidence of the type of continuous and
systemic contacts with Louisiana that would render Defendant essentially at
home in the state, and therefore this Court does not have general personal
jurisdiction over Defendant. With respect to specific personal jurisdiction,
Plaintiff argues that registering the bespoke.com domain name and sending
Simpson, a Louisiana resident and member of Plaintiff, multiple emails
offering the domain for sale are sufficient contacts with Louisiana to show that
Defendant purposefully availed himself of the forum. 25

22 Pervasive Software Inc., 688 F.3d at 222 (quoting Hanson v. Denckla, 357 U.S. 235, 253
(1958)).
23 Wilson v. Belin, 20 F.3d 644, 647 (5th Cir. 1994) (citing Asahi Metal Indus. Co. v. Superior

Court, 480 U.S. 102, 105 (1987)).


24 Bullion v. Gillespie, 895 F.2d 213, 216 n.5 (5th Cir. 1990) (internal citations omitted).
25 Plaintiff does not argue that Defendant’s maintenance of the parking page for bespoke.com,

a website available in Louisiana, is sufficient to confer personal jurisdiction.

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The relationship required for specific personal jurisdiction “must arise


out of contacts that the ‘defendant himself’ creates with the forum State.” 26
Further, the “’minimum contacts’ analysis looks to the defendant’s contacts
with the forum State itself, not the defendant’s contacts with persons who
reside there.” 27 “[T]he plaintiff cannot be the only link between the defendant
and the forum. Rather, it is the defendant’s conduct that must form the
necessary connection with the forum State that is the basis for its jurisdiction
over him.” 28 Here, the only activity that Defendant directed toward Louisiana
are the solicitation emails, and those are only connected to the state because
Simpson, a member of Plaintiff, happens to reside there. Furthermore, it was
Simpson that initiated the contact, actively requesting that Defendant send
more information about the sale of the domain name. “[D]istrict courts within
the Fifth Circuit have concluded that it is improper to rely on a transaction—
for jurisdictional purposes—that was initiated by the plaintiff.” 29
Plaintiff also argues that, pursuant to Calder v. Jones, Defendant is
subject to this Court’s jurisdiction because the effects of his tortious acts are
felt here. 30 In Calder, the Supreme Court held that defendants who lived and
worked in Florida were subject to the jurisdiction of California courts when
they published an article based on California sources in a national publication
with a large circulation in California that impugned the reputation of a
California plaintiff among the California public. 31 It is doubtful that the case
ever stood for the general proposition that a defendant is subject to jurisdiction

26 Walden v. Fiore, 134 S. Ct. 1115, 1122 (2014) (quoting Burger King Corp. v. Rudzewicz,
471 U.S. 462, 475 (1985)).
27 Id.
28 Id.
29 721 Bourbon, Inc. v. House of Auth, LLC, 140 F. Supp. 3d 586, 595 (E.D. La. 2015).
30 See Calder v. Jones, 465 U.S. 783, 788 (1984).
31 Id. at 788–89.

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wherever the harm of his intentional tort is felt, but regardless, the Court has
since clarified that the crux of Calder rested on the unique way in which libel
involves reputational injury among the public. 32 Accordingly, the Court held
that, “The proper question is not where the plaintiff experienced a particular
injury or effect but whether the defendant’s conduct connects him to the forum
in a meaningful way.” 33
An action for cybersquatting under the ACPA does not inherently involve
the public at large in the same way as libel. Plaintiff does not allege or present
evidence that the Louisiana public has been confused by, or is even aware of,
Defendant’s registration of bespoke.com. Instead, Plaintiff’s harm in this
instance is that it is prevented from using a convenient domain name. This
harm has no connection to Louisiana other than that Plaintiff happens to live
there. Similarly, while Defendant’s email solicitations to a member of Plaintiff
may be evidence of Defendant’s bad faith intent to profit from his registration
of the domain name, they are not themselves the core of the tort and are
therefore not comparable to the acts constituting the elements of libel, which
in Calder actually took place in the forum state.
The lack of any elements of the alleged tort taking place in the forum
also distinguishes this case from Trois v. Apple Tree Auction Center, Inc. 34
There, the Fifth Circuit affirmed a Texas court’s finding of personal jurisdiction

32 See Walden, 134 S. Ct. at 1122. This limitation also renders Healix Infusion Therapy, Inc.
v. Helix Health, LLC, No. H-08-0337, 2008 WL 1883546, at *9 (S.D. Tex. Apr. 25, 2008), a
pre-Walden case on which Plaintiff relies, substantially less persuasive. Similarly, Bear
Stearns Companies Inc. v. Lavalle, No. 3:00-CV-1900-D, 2000 WL 34339773, at *3 (N.D.
Tex. Oct. 27, 2000), another case cited by Plaintiff, both precedes Walden and involves the
defendant’s active use the infringing domain names to send disparaging information about
plaintiff to forum residents.
33 Walden, 134 S. Ct. at 1125.
34 Trois v. Apple Tree Auction Ctr., Inc., No. 16-51414, 2018 WL 706517, at *4 (5th Cir. Feb.

5, 2018).

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over a nonresident business owner who made allegedly fraudulent statements


to a Texas plaintiff during a phone call. 35 The court reiterated that the inquiry
for finding personal jurisdiction in a tort case is whether the defendant’s
conduct connects him to the forum in a meaningful way, and reasoned that
when the defendant reached out to Texas to make the allegedly false
statements he should have reasonably anticipated being haled into court
there. 36 Under Texas law a false representation is an element of fraud, and
therefore the conduct that the defendant in Trois directed into Texas was at
the heart of the tort. 37 In contrast, the elements of a claim under the ACPA as
alleged here are that a defendant 1) registers, traffics in, or uses a domain
name that, 2) is either identical or confusingly similar to a mark, 3) the mark
was distinctive at the time of the registration of the domain name, and 4) the
defendant has a bad faith intent to profit from the mark. 38 None of these
elements are themselves acts that Defendant performed in or directed toward
Louisiana. 39 Furthermore, Plaintiff offers no evidence that Defendant knew of
its existence, as opposed to that of Simpson personally, or the existence of its
marks. 40 This is not a case of domain name extortion directed at a particular

35 See id.
36 Id. Therefore the stream of commerce or foreseeability tests advanced by Plaintiff are
inapplicable.
37 See Johnson v. World All. Fin. Corp., 830 F.3d 192, 198 (5th Cir. 2016).
38 See 15 U.S.C. § 1125(d).
39 The statute states that “‘traffics in’ refers to transactions that include, but are not limited

to, sales, purchases, loans, pledges, licenses, exchanges of currency, and any other transfer
for consideration or receipt in exchange for consideration.” 15 U.S.C. § 1125(D(1)(E).
Trafficking in a domain name therefore requires a transaction. Mere advertisement does
not establish a violation of the ACPA.
40 Plaintiff argues that Defendant’s email to Simpson in October of 2014 “establish[es

Defendant’s] personal knowledge of Bespoke’s existence and its interest in the domain
name.” Doc. 13 at 5. However, that email was sent to travissi2000@gmail.com, an
apparently personal address, and none of Simpson’s previous inquiries mentioned Bespoke
LLC.

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forum resident, but rather one of a forum resident happening to have a mark
similar to a foreign-owned domain name and seeking to take control of it.
Plaintiff has failed to make out a prima facie showing that Defendant’s
acts created a substantial connection to Louisiana, and therefore the Court
does not have specific personal jurisdiction over Defendant.
II. Personal Jurisdiction in the United States as a Whole Pursuant
to Rule 4(k)(2)
Plaintiff also argues that, in the absence of sufficient contacts with
Louisiana, Defendant has sufficient contacts with the United States as a whole
to establish jurisdiction pursuant to Federal Rule of Civil Procedure 4(k)(2).
That rule allows a court to exercise jurisdiction over a defendant that has been
served with process, is not subject to the jurisdiction of any individual state,
and over which the exercise of jurisdiction would comport with due process. 41
When a defendant does not concede jurisdiction in another state, a court need
not inquire into the defendant’s contacts with every other state before resorting
to 4(k)(2). 42 To determine whether jurisdiction exists under Rule 4(k)(2), a
court “must determine whether the defendant has sufficient ties to the United
States as a whole to satisfy constitutional due process concerns.” 43
In addition to the contacts discussed above, Plaintiff argues that
Defendant maintains two other contacts with the United States sufficient to
establish jurisdiction. 44 The first is Defendant’s purchase of the bespoke.com
domain name from a Colorado company. However, an isolated purchase from
a forum seller who is otherwise unrelated to the case at hand is insufficient to

41 Fed. R. Civ. P. 4(k)(2).


42 See Adams v. Unione Mediterranea Di Sicurta, 364 F.3d 646, 651 (5th Cir. 2004).
43 Id.
44 Doc. 13 at 12.

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confer specific personal jurisdiction. 45 The second is Defendant’s alleged


maintenance of websites and domain name registrations on servers based in
the United States. All but one of the sites named have nothing to do with the
case at hand and are therefore irrelevant to the issue of specific personal
jurisdiction. Nor does the registration of domains and hosting of websites in
the United States support general personal jurisdiction, as those acts do not,
even when considered with all of Defendant’s other contacts with the United
States, amount to continuous and systematic contacts.
Plaintiff does allege that Defendant maintains bespoke.com on a server
in the state of New York, which is relevant to specific personal jurisdiction. 46
However, Defendant submits an affidavit explaining that he has registered
bespoke.com with a foreign corporation, Uniregistry, and directed it to use
nameservers maintained by an another foreign corporation, Uniregistrar Corp.
Defendant states that he has never knowingly employed a nameserver in the
United States, and regardless, that he has no control over the particular
nameservers that either corporation employs. Furthermore, Defendant states
that he has never hosted actual content on a server based in the United States.
Defendant theorizes that bespoke.com appears to be registered in New York
because Uniregistrar uses a third-party service based in New York to prevent
denial of service attacks. The Court finds that there is no question of fact as to
whether Defendant maintains servers in the United States for the bespoke.com
domain name. The use of a third-party protection server based in New York,
even when added with all of Defendant’s other contacts with the United States,
does not show a substantial connection to the United States as a whole.

45 Plaintiff’s sole citation to the contrary is to a case interpreting the Louisiana long-arm
statute, not the bounds of Constitutional due process. See Stark v. Mobile Aerial Towers,
Inc., 374 F. Supp. 1046, 1051 (W.D. La. 1974).
46 Doc. 13 at 12.

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Accordingly, because Plaintiff has failed to make a prima facie showing


of personal jurisdiction in either Louisiana or the United States as a whole,
Defendant’s Motion to Dismiss is GRANTED.
III. Jurisdictional Discovery and Transfer
Plaintiff request leave from the Court to conduct jurisdictional discovery.
“As the party opposing dismissal and requesting discovery, the plaintiffs bear
the burden of demonstrating the necessity of discovery.” 47 “A plaintiff is not
entitled to jurisdictional discovery when ‘the record shows that the requested
discovery is not likely to produce the facts needed to withstand a Rule 12(b)(1)
motion.’” 48 Furthermore, a plaintiff must make a preliminary showing of
jurisdiction and present “factual allegations that suggest with reasonable
particularity the possible existence of the requisite contacts.” 49
Plaintiff makes several specific requests for discovery, but fails to meet
its burden with respect to any of them. Plaintiff’s requests one through four
propose to ask about the domain names and servers that Defendant maintains
in the United States. Defendant has already submitted an affidavit declaring
that he does not maintain any servers in the United States and that the specific
domain names that Plaintiff alleges that he has registered in the United States
are actually registered with a foreign corporation. 50 The record therefore shows
that those requests are unlikely to produce facts that change the Court’s
analysis. To the extent that the request relates to other, unnamed domains
that Defendant may maintain in the United States, Plaintiff has failed to
allege their existence with reasonable particularity.

47 Monkton Ins. Servs., Ltd. v. Ritter, 768 F.3d 429, 434 (5th Cir. 2014) (quoting Davila v.
United States, 713 F.3d 248, 264 (5th Cir. 2013)).
48 Id. (quoting Freeman v. United States, 556 F.3d 326, 342 (5th Cir. 2009)).
49 Fielding v. Hubert Burda Media, Inc., 415 F.3d 419, 429 (5th Cir. 2005) (quoting Toys “R”

Us, Inc. v. Step Two, S.A., 318 F.3d 446, 456 (3d Cir. 2003)).
50 See Doc. 19-1.

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Plaintiff’s requests seven and eight propose to ask about Defendant’s


relationship with Uniregistry or other marketers with respect to the marketing
of domain names in the United States. The Court has already assumed, to
Plaintiff’s benefit, that the acts of Uniregistry to market bespoke.com are
attributable to Defendant. Further discovery on that point would not help
overcome Defendant’s 12(b)(1) motion.
The remainder of Plaintiff’s requests, including numbers seven and eight
to the extent they ask about marketing for domains other than bespoke.com,
essentially ask Defendant to detail all of his contacts with the United States.
As these requests are not connected to Defendant’s actions with respect to
bespoke.com, they are not relevant to the issue of specific personal jurisdiction.
The requests for discovery are therefore only allowable if Plaintiff makes a
preliminary showing, including reasonably particular factual allegations, that
Defendant is subject to general jurisdiction in the United States as a whole
pursuant to Rule 4(k)(2). 51 Plaintiff offers nothing more than speculation that
discovery will reveal more contacts with the United States, let alone contacts
extensive enough to find Defendant essentially at home in the United States,
as would be required to exercise general jurisdiction. Accordingly, Plaintiff’s
request for jurisdictional discovery is denied.
Similarly, Plaintiff has not made a prima facie case that another
jurisdiction would have personal jurisdiction over defendant, and therefore
Plaintiff’s request to transfer venues pursuant to 28 U.S.C. § 1406(a) is also
denied.

51 See Fed. R. Civ. P. 4(k)(2).

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CONCLUSION
For the foregoing reasons, Defendant’s Motion to Dismiss for Lack of
Personal Jurisdiction is GRANTED. Plaintiff’s request for discovery and
transfer are DENIED. The case is DISMISSED.

New Orleans, Louisiana this 20th day of February, 2018.

____________________________________
JANE TRICHE MILAZZO
UNITED STATES DISTRICT JUDGE

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