United States District Court, D. Colorado
RAYMOND P. MOORE UNITED STATES DISTRICT JUDGE
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.
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.)
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
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.
contends Defendants have engaged in a pattern of registering
domain names that include its WEBROOT marks 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.
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.
second UDRP was filed against Defendants Chitranshu Singh
(“Chitranshu”) and Polishsys
Technologies - 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.
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.
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).
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.
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.
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
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
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. ...