Holding

In this case for intentional infringement and dilution of the “Pebble Beach” mark, the U.S. Court of Appeals for the Ninth Circuit dismissed the action for lack of personal jurisdiction. According to the Federal Circuit, defendant Michael Caddy’s passive website and domain name were not acts that were purposefully directed at the state of California, nor at the United States. Such acts, the court explained, were insufficient to subject an overseas-based defendant to personal jurisdiction under the federal long-arm rule in trademark infringement. Although defendant had previously lived in California and was familiar with plaintiff’s Pebble Beach golf resort, he was not a cyber-squatter trying to obtain money from plaintiff, and did not write a letter to force the resort operator to act. The Federal District thus affirmed the district court’s grant of defendant’s motion to dismiss, and its denial of plaintiff’s request for additional jurisdictional discovery.

Detailed Summary

This case is an action for intentional infringement and dilution of the “Pebble Beach” mark filed under the Lanham Act and the California Business and Professions Code. Pebble Beach is a well-known golf course and resort located in Monterey County, California. The golf resort has used “Pebble Beach” as its trade name for 50 years.  Plaintiff Pebble Beach claimed that its trade name has acquired secondary meaning in the United States and the United Kingdom. Pebble Beach operates a website located at www.pebblebeach.com.

On the other hand, defendant Michael Caddy, a dual citizen of the United States and the United Kingdom occupies and runs a three-room bed and breakfast, restaurant, and bar located in southern England. Caddy advertises his services, which do not include a golf course, at his website, www.pebblebeach-uk.com. Caddy’s website includes general information about the accommodations he provides, including lodging rates in pounds sterling, a menu, and a wine list. The website is not interactive. Visitors to the website who have questions about Caddy’s services may fill out an on-line inquiry form. However, the website does not have a reservation system, nor does it allow potential guests to book rooms or pay for services on-line.

Defendant filed a motion to dismiss on ground of lack of personal jurisdiction.  The district court granted such motion, and denied as well plaintiff’s request for additional jurisdictional discovery.  Plaintiff thus filed this appeal before the Ninth Circuit.

Given that Caddy’s contacts with the state of California or the United States were not continuous or substantial enough to establish general jurisdiction, the question posed in this appeal was whether Caddy’s contacts were sufficient to establish specific jurisdiction.

In resolving this issue, the Federal Circuit applied the general rule that personal jurisdiction over a defendant is proper if it is permitted by a long-arm statute and if the exercise of that jurisdiction does not violate federal due process. Fireman’s Fund Ins. Co. v. Nat. Bank of Coops., 103 F.3d 888, 893 (9th Cir.1996). Here, both the California long-arm statute and Rule 4(k)(2)—what is often referred to as the federal long-arm statute—require compliance with due process requirements. See Harris Rutsky & Co. Ins. Servs., Inc. v. Bell & Clements Ltd., 328 F.3d 1122, 1128-29 (9th Cir.2003) at 1129 (California long-arm statute); Doe v. Unocal, 248 F.3d 915, 922 (9th Cir.2001) (internal citations omitted).

According to the Federal Circuit, plaintiff Pebble Beach failed “to identify any conduct by Caddy that took place in California or in the United States that adequately supports the availment concept. Evidence of availment is typically action taking place in the forum that invokes the benefits and protections of the laws in the forum.” In this case however, Caddy’s actions were not expressly aimed at California. The only acts identified by Pebble Beach as being directed at California were the website and the use of the name “Pebble Beach” in the domain name. These acts were not aimed at California and, regardless of foreseeable effect, were insufficient to establish jurisdiction.

The court explained that although Caddy may have served vacationing Americans in his resort in England, there was not a scintilla of evidence indicating that this patronage was related to either Caddy’s choice of a domain name or the posting of a passive website.  Likewise, notwithstanding that defendant had previously lived in California and was familiar with plaintiff’s Pebble Beach golf resort, he was not a cyber-squatter trying to obtain money from plaintiff, and did not write a letter to force the resort operator to act.

The court further held that there was no need for an additional jurisdictional discovery given these circumstances.  The Ninth Circuit thus affirmed the trial court’s dismissal of the action for lack of personal jurisdiction, and its denial of plaintiff’s request for additional jurisdictional discovery.