Webroot Inc. v. Singh

          ORDER

          RAYMOND P. MOORE UNITED STATES DISTRICT JUDGE

         This matter is before the Court on the February 15, 2019 Recommendation of United States Magistrate Judge Scott T. Varholak (the “Recommendation”) (ECF No. 38) to grant in part and deny in part Plaintiff's Motion for Judgment by Default (the “Motion”) (ECF No. 35). The Recommendation is incorporated herein by reference. See 28 U.S.C. § 636(b)(1)(B); Fed.R.Civ.P. 72(b).

         The Recommendation advised the parties that specific written objections were due within fourteen days after being served with a copy of the Recommendation. (ECF No. 38 at pages 35-36.) Despite this advisement, no objections to the Recommendation have to date been filed by any party and the time to do so has expired. (See generally Dkt.)

         “When no timely objection is filed, the court need only satisfy itself that there is no clear error on the face of the record in order to accept the recommendation.” Fed.R.Civ.P. 72(b) advisory committee's note; see also Summers v. Utah, 927 F.2d 1165, 1167 (10th Cir. 1991) (“In the absence of timely objection, the district court may review a magistrate's report under any standard it deems appropriate.”). As shown below, the Court has conducted more than a clear error review of the matter. The Court does so in light of the fact that Defendants are citizens of India and alternate service was allowed. Upon such review, as set forth below, the Court accepts in part and rejects in part the Recommendation.^[1]

         I. THE RECOMMENDATION

         The Factual Background

         As the Magistrate Judge aptly stated, this trademark dispute arises from Defendants' alleged use of various domain names which Plaintiff alleged infringes on its WEBROOT trademark. There are seven domain names at issue: webrootcomsafe.org, installwebroot.org, web--root.org, webroot-support.org, webroot-com-safe.net, web-root.org, and webrootcom-safe.org. The domain name “webrootcom-safe.org” is identified in the Amended Complaint as the “Domain Name” and in the Recommendation as the “Remaining Domain.” For consistency, the Court will refer to webrootcom-safe.org as the Remaining Domain.

         Plaintiff contends Defendants have engaged in a pattern of registering domain names that include its WEBROOT marks^[2] and, through these websites, offered unauthorized customer support services in connection with the WEBROOT marks. Plaintiff further alleges Defendants misled consumers into believing that their services are authorized, sponsored, or endorsed by Plaintiff. In addition, Defendants allegedly collect product keys from unsuspecting customers who believe they are interacting with Plaintiff when, in fact, they are interacting with Defendants.

         Plaintiff filed two Uniform Dispute Resolution Procedure (“UDRP”) proceedings involving the domain names. The first UDRP proceeding was filed against Defendant Chandresh Singh (“Chandresh”) regarding domain name webrootcomsafe.org; the National Arbitration Forum (“NAF”) found in favor of Plaintiff and transferred that domain name to Plaintiff.

         The second UDRP was filed against Defendants Chitranshu Singh (“Chitranshu”) and Polishsys Technologies^[3] - not all Defendants - and addressed the remaining six domain names (hereafter “Six Domain Names”). The NAF found in favor of Plaintiff on five domain names and against Plaintiff on the sixth, the Remaining Domain. The NAF transferred those five domain names to Plaintiff. To the extent the Recommendation stated otherwise as to such findings, e.g., that the second UDRP was against all Defendants, it is rejected.

         The Procedural Background.

         Plaintiff was granted leave to serve Defendants via email and did so. After the Court's initial review of the Recommendation, it questioned whether the service afforded Defendants was sufficient and, ultimately, directed further service upon Defendants which Plaintiff effected. (ECF Nos. 40-44.) The Court finds the service, as supplemented, is sufficient.

         Personal Jurisdiction.

         The Court agrees with the Recommendation that personal jurisdiction may be had against those Defendants who registered the Remaining Domain with Name.com as the Domain Name Registration Agreement (“Agreement”) for Name.com requires registrants to submit to personal jurisdiction in Colorado federal courts. The question, however, is who registered the Remaining Domain, and is therefore is subject to personal jurisdiction in this court, as “[e]ach defendant's contacts with the forum State must be assessed individually.” Calder v. Jones, 465 U.S. 783, 790 (1984).

         The Motion asserts that “Defendants” registered the Remaining Domain (along with the five others in the second UDRP), referring the Court to paragraph 42 of the Amended Complaint. (Motion, p. 5.) Paragraph 42 of the Amended Complaint, however, alleges that “Plaintiff became aware of six additional domains associated with the Defendants.” (ECF No. 9, ¶ 42 (emphasis added)). Plaintiff, who bears the burden of showing personal jurisdiction may be had, fails to show that a person “associated” with a domain name that is registered on Name.com would subject that person to personal jurisdiction in Colorado.

         Plaintiff also asserts the Six Domain Names were registered by Polishsys and Chitranshu, referring the Court generally to ECF No. 9-10 which consists of Plaintiff's amended complaint with exhibits filed on May 24, 2018 in the second UDRP. The Court's review of these documents, however, shows that, as of May 2, 2018, the Remaining Domain was registered to Polishsys (ECF No. 9-10, p. 81) on GoDaddy.com. The Amended Complaint's allegations, however, show there were changes in the registration. In paragraph 1 of the Amended Complaint, Plaintiff alleges the Remaining Domain was registered by Chitranshu and was then “currently” registered on Name.com. Paragraphs 7 and 8 of the Amended Complaint alleges that on June 25, 2018, the date of the NAF's second decision, the registrant at that time was Polishsys but, at some point in time, the registrant was changed to Chitranshu. Regardless, the NAF's decision stated that Name.com confirmed the Remaining Domain was registered on Name.com. (ECF No. 9-12, p. 3.) Thus, although the dates are not entirely clear, what is alleged is that at some point in time, Chitranshu and Polishsys each registered the Remaining Domain on Name.com. Accordingly, the Court finds the Agreement for Name.com is sufficient to subject Chitranshu and Polishsys to the personal jurisdiction of this court. Chandresh, however, is another matter. To the extent the Recommendation found that personal jurisdiction may be exercised over Chandresh based on the registration of the Remaining Domain, such finding is rejected.

         As to Chandresh, Plaintiff presumably relies on its argument that “Defendants, by acting in concert on behalf of Defendant Polishsys Technologies, the original owner of the WEBROOTCOM-SAFE.ORG domain, agreed to personal jurisdiction in this Court by registering the domain names with Name.com.” (ECF No. 34, p. 8.) This argument is unclear, and unpersuasive. If Plaintiff is arguing that all Defendants registered the Remaining Domain with Name.com, the Court finds Plaintiff fails to meet its burden of showing Chandresh did so. If Plaintiff is arguing that Chandresh registered other domain names with Name.com and is, thereby, subject to personal jurisdiction here, Plaintiff fails to point to where in the record such registration may be found. Finally, if Plaintiff is asserting that Chandresh acted in concert with the other Defendants and, therefore, is somehow bound by the others' registration, this too is unavailing. Plaintiff fails to provide any facts, factual allegations, or legal authority to support this position. The Court's search shows “concert” or “participation” appears only once in the Amended Complaint - in its prayer for relief for preliminary and permanent injunction. (ECF No. 9, p. 26.) Thus, the Court examines whether Chandresh may be subject to personal jurisdiction on any of the other three bases Plaintiff raises.

         First, Plaintiff contends Defendants are also subject to personal jurisdiction based on their interactive websites and because they purposefully directed their actions against Plaintiff, a Colorado company. Citing to Soma Med. Int'l v. Standard Chartered Bank, 196 F.3d 1292, 1296-97 (10th Cir. 1999), Plaintiff alleges Defendants' interactive websites subject them to personal jurisdiction in Colorado. The Court examines this allegation as against Chandresh and finds otherwise.

         In Soma, the Tenth Circuit discussed general personal jurisdiction which requires a defendant to conduct “substantial and continuous local activity in the forum state.” 196 F.3d at 1295 (quotation marks and citation omitted). Soma argued that defendant's maintenance of a website, accessible from Utah, constitutes such local activity. In analyzing Soma's argument, the Tenth Circuit considered “three general categories along a sliding scale for evaluating jurisdiction.” Soma, 196 F.3d at 1296 (quotation marks and citation omitted). Those categories are 1) business websites: when the defendant does business over the Internet, “such as entering into contracts which require the ‘knowing and repeated transmission of computer files over the Internet.'” Id. (quoting Zippo Mfg. Co. v. Zippo Dot Com, Inc., 952 F.Supp. 1119, 1123-24 (W.D. Pa. ...