JCS INDUSTRIES LLC

v.

DESIGNSTEIN LLC

Before the Court is Defendants DesignStein LLC and Bryan Knowlton’s Motion to Dismiss for Lack of Personal Jurisdiction. (Doc. 14 (“Motion”).) Plaintiff JCS Industries LLC responded (Doc. 17), and Defendants replied (Doc. 24). On review, the Motion is denied.

I. BACKGROUND

This trademark dispute arises from Defendants’ alleged illegal ownership and use of a domain name to deceive and defraud Plaintiff’s existing and prospective customers. (Doc. 9, ¶ 1.) Plaintiff, a Florida limited liability company, advertises and sells water level regulators for swimming pools under the name STAYPOOLLIZER at www.staypoollizer.com (“Plaintiff’s Website”).¹ (Id. ¶¶ 2, 9–11, 15.) According to

Statutes §§ 501.201 et seq. (Id. ¶¶ 28–75.) Plaintiff seeks declaratory and injunctive relief, treble damages and profits, statutory and punitive damages, attorney’s fees, costs, and prejudgment interest. (See id. at 11–13.) Now Defendants move to dismiss the amended complaint for lack of personal jurisdiction. (Doc. 14.) Briefing complete (see Docs. 17, 24), the matter is ripe.

II. LEGAL STANDARDS

Federal Rule of Civil Procedure 12(b)(2) provides the mechanism for challenging a complaint for lack of personal jurisdiction. “The plaintiff has the burden of establishing a prima facie case of personal jurisdiction over a nonresident defendant.” Meier ex rel. Meier v. Sun Int’l Hotels, Ltd., 288 F. 3d 1264, 1268–69 (11th Cir. 2002) (citation omitted); Posner v. Essex Ins. Co., 178 F. 3d 1209, 1214 (11th Cir. 1999). If unrefuted, the Court accepts the wellpled facts as true. See Posner, 178 F. 3d at 1215. But if “the defendant submits affidavits to the contrary, the burden traditionally shifts back to the plaintiff to produce evidence supporting jurisdiction unless those affidavits contain only conclusory assertions that the defendant is not subject to jurisdiction.” Meier, 288 F. 3d at 1269 (citing Posner, 178 F. 3d at 1215). Should the plaintiff’s complaint and supporting evidence conflict with the defendant’s affidavits, a court “must construe all reasonable inferences in favor of the plaintiff.” Id. (citing Madara v. Hall, 916 F. 2d 1510, 1514 (11th Cir. 1990)).

III. ANALYSIS

At issue is whether the Court has personal jurisdiction over the nonresident Defendants. Plaintiff says yes because “each Defendant has: (a) committed intentional and tortious acts within the state of Florida; (b) conducted substantial business within this state related to the unlawful activity at issue in this Complaint; and (c) otherwise availed themselves of this forum.” (Doc. 9, ¶ 7; see also Doc. 17.) Defendants say no because the only alleged connection Defendants have to Florida is that they damaged Plaintiff, a Florida company, but Plaintiff cannot establish Defendants have any other meaningful connection with Florida so exercising personal jurisdiction over them here would comport with the Due Process Clause of the Fourteenth Amendment. (See Doc.

14.) On review, the Court may exercise personal jurisdiction over Defendants. “A federal district court . . . may exercise personal jurisdiction to the extent authorized by the law of the state in which it sits and to the extent allowed under the Constitution.” Meir, 288 F. 3d at 1269 (citations omitted). “The determination of personal jurisdiction over a nonresident defendant requires a two-part analysis.” Madara, 916 F. 2d at 1514 (citations omitted). First, there must be a basis for jurisdiction under Florida’s long-arm statute, which confers either general or specific personal jurisdiction over the nonresident. Id. at 1514, 1516 n.7 (citations omitted); see Fla. Stat. § 48.193. Second, exercising personal jurisdiction must comport with the Due Process Clause of the Fourteenth Amendment so “maintenance of the suit does not offend traditional notions of fair play and substantial justice.” Madara, 916 F. 2d at 1514 (quoting Int’l Shoe Co. v. State of Wash., Office of Unemployment Comp. & Placement, 326 U.S. 310, 316 (1945)).

A. Long-Arm Statute

Florida’s long-arm statute “provides for both specific and general jurisdiction.” Louis Vuitton Malletier, S.A. v. Mosseri, 736 F. 3d 1339, 1352 (11th Cir. 2013) (citing Fla. Stat. § 48.193(1)–(2)). “General personal jurisdiction exists when a defendant ‘is engaged in substantial and not isolated activity within this state . . . whether or not the claim arises from that activity.’” Id. (quoting Fla. Stat. § 48.193(2)). Specific jurisdiction “authorizes jurisdiction over causes of action arising from or related to the defendant’s actions within Florida and concerns a nonresident defendant’s contacts with Florida only as those contacts related to the plaintiff’s cause of action.” Id. (citation omitted). Plaintiff alleges jurisdiction is proper under the Florida long-arm statute on two bases: (1) Defendants’

“intentional and tortious acts within . . . Florida,” and (2) Defendants’ “substantial business [conducted] within . . . Florida related to the unlawful activity at issue.” (Doc. 17, pp. 1, 5–6; see also Doc. 9, ¶ 7.) The Court starts with Plaintiff’s assertion of specific jurisdiction based on Defendants’ alleged tortious acts within Florida. Florida’s long-arm statute authorizes the exercise of specific personal jurisdiction where a claim arises from a defendant’s commission of “a tortious act within [the] state.”

Fla. Stat. § 48.193(1)(a)(2). “[A] defendant’s physical presence is not necessary to commit a tortious act in Florida. Rather, ‘committing a tortious act in Florida . . . can occur through the nonresident defendant’s telephonic, electronic, or written communications into Florida.’” Internet Sols. Corp. v. Marshall, 39 So. 3d 1201, 1208 (Fla. 2010) (quoting Wendt v. Horowitz, 822 So. 2d 1252, 1260 (Fla. 2002)). “However, the cause of action must arise from the communications.” Id. (quoting Wendt, 822 So. 2d at 1260). Further, “[u]nder Florida law, a nonresident defendant commits ‘a tortious act within Florida’ when he commits an act outside the state that caused injury within Florida.” Louis Vuitton, 736 F. 3d at 1353 (citing Licciardello v. Lovelady, 544 F. 3d 1280, 1283 (11th Cir. 2008)); see also Posner v. Essex Ins. Co., 178 F. 3d 1209, 1216 (11th Cir. 1999).

Plaintiff has adequately alleged a trademark infringement claim based on Defendants’ willful registration of the domain name for Defendants’ Website, which is nearly identical to the domain name for Plaintiff’s Website, and redirection of that website to www.fill-o-matic.com, where Defendants sell competing water level regulators—all to capitalize on typographical errors made by Plaintiff’s existing and prospective customers.² (See Doc. 9, ¶¶ 18–26, 40–48.) Trademark infringement constitutes a tortious act under Florida’s long-arm statute, see, e.g., Louis Vuitton, 736 F. 3d at 1353, and “a trademark infringement on an Internet website causes injury and occurs in Florida ‘by virtue of the website’s accessibility in Florida.’” Id. at 1354 (quoting Licciardello, 544 F. 3d at 1283). Here, Plaintiff asserted, and Defendants have not refuted, that Defendants’ Website, with a domain name that allegedly infringes on Plaintiffs’ trademark, is accessible in Florida. (See Docs. 9, ¶ 22; Doc. 17, p. 5; Doc. 17-1, ¶ 4.) Thus,

the alleged infringement occurred in Florida based on the accessibility of Defendants’ Website in Florida. See Licciardello, 544 F. 3d at 1283–84; see also Louis Vuitton, 736 F. 3d at 1353–54; Xymogen, Inc. v. Digitalev, LLC, No. 6:17-cv-869-Orl-31KRS, 2018 WL 659723, at *2 (M.D. Fla. Feb.¹, 2018) (“[A]s long as a website is accessible in Florida, it has been held that trademark infringement on the website occurs in Florida if the victim company is headquartered here.”). So Plaintiff’s allegations invoke specific jurisdiction under

Internet Solutions, argue that it’s not enough that Defendants’ Website was accessible in Florida; instead, Plaintiff must establish Defendants’ Website was accessed in Florida. (Doc. 14, pp. 8–9.) Further still, Defendants contend Plaintiff’s allegation that one of its employees accessed Defendants’ Website falls short as Plaintiff hasn’t alleged a third party in Florida accessed it. (Id. at 9–10.) But this argument is unavailing for two reasons. To start, although some courts have applied Internet Solutions in trademark infringement cases, see, e.g., Volt, LLC v. Volt Lighting Grp., LLC, 369 F. Supp. 3d 1241 (M.D. Fla. 2019),3 Internet Solutions focuses on defamation cases. See 39 So. 3d at 1203. Considering the defamation claim there, the court noted that “the tort of libel is not completed until the statements are published” to a third party, which occurs for defamatory statements on the Internet when a third party accesses the website where the statements exist. Id. at

1214–15. From this, the court found that “material posted on the website about a Florida resident must not only be accessible in Florida, but also be accessed in Florida in order to

1, ¶¶ 4–5.) So even if access in Florida were required for trademark infringement to occur in Florida for Florida’s long-arm statute, Plaintiff has made that showing here. See, e.g., Mercury Enters., Inc. v. Vesta Mgmt. Grp., LLC, No. 8:12-cv-417-T-30MAP, 2012 WL 2087439, at *2 (M.D. Fla. June 8, 2012) (finding sufficient the allegation that a Florida resident accessed the website in Florida); see also Jackson-Bear Grp., 2011 WL 1232985, at

*6 (noting Florida’s long-arm statute wasn’t satisfied in part because “[t]here [was] no evidence that plaintiff, or any other Florida resident, accessed the website prior to the filing of the instant suit”); cf. 3Lions Publ’g, Inc., 389 F. Supp. 3d at 1038 (considering, in part, “that the webpage containing the blog post was accessed within Florida by at least one person or entity — [the plaintiff]”).

Defendants rely on Wigglebutt Inn to argue that access by a non-customer cannot satisfy Florida’s long-arm statute because “trademark infringement . . . requires the likelihood of confusion among . . . customers, who must necessarily see the alleged infringement.” (Doc. 14, p. 10 (citing 2012 WL 13098423, at *2).) The Court is not persuaded by Defendants’ unsupported bright-line rule given the circumstances in Wigglebutt Inn and those here. In Wigglebutt Inn, the plaintiff provided a declaration stating that the plaintiff’s Chief Executive Officer accessed the infringing website in Florida. See 2012 WL 13098423, at *2. The issue with that declaration, however, was that it didn’t reveal whether the website was accessed before the suit was filed. Id. The court also noted there was no evidence of access by other third parties in Florida, including current or prospective clients. Id. Yet even without that evidence, the court found Florida’s long-arm statute satisfied based on “[the defendant’s] tour of [the plaintiff’s] business combined with its website.”⁴ Id. So that Plaintiff has not alleged a third-party customer accessed Defendants’ Website in Florida does not destroy jurisdiction under Florida’s long-arm statute here, where Plaintiff alleges Defendants’ Website is accessible in Florida; its employee accessed Defendants’ Website;5 and Defendants bought Plaintiff’s water level regulator, started selling their own water level regulators, and then registered the allegedly infringing domain name for Defendants’ Website and redirected it to a website where customers could purchase Defendants’ water level regulators. (See Doc. 9,

another avenue for the satisfaction of Florida’s long-arm statute exists: Defendants’ conduct occurred within Florida for purposes of Florida’s long-arm statute because it caused injury in Florida. Although the Florida Supreme Court hasn’t resolved “the broader issue of whether injury alone satisfies” Florida’s long-arm statute, Internet Sols. Corp., 39 So. 3d at 1206 n.6, federal district courts in Florida have held that trademark infringement occurs in Florida for purposes of the long-arm statute when the trademark owner resides there. See, e.g., Nida Corp. v. Nida, 118 F. Supp. 2d 1223, 1228 (M.D. Fla. 2000); see also, e.g., Mighty Men of God, Inc. v. World Outreach Church of Murfreesboro Tenn., Inc., 102 F. Supp. 3d 1264, 1271 (M.D. Fla. 2015); Roca Labs, Inc, 2013 WL 2025806, at *5. Here, Plaintiff is a Florida limited liability company with its principal place of business in Saint Cloud, Florida and the owner of the trademark. (Doc. 9, ¶¶ 2, 10–14.) These allegations likewise establish that the trademark infringement occurred in Florida under Florida’s long-arm statute.7 See, e.g., Mighty Mend of God, Inc., 102 F. Supp. 3d at 1271 (“At

In sum, Florida’s long-arm statute is satisfied as to both Defendants because Plaintiff has sufficiently alleged tortious conduct within Florida satisfying Fla. Stat. § 48.193(1)(a)(2).8 As Plaintiff has satisfied Florida’s specific jurisdiction under the tortious act section of the long-arm statute, the Court need not address Plaintiff’s other basis for personal jurisdiction under Florida’s long-arm statute. See Roca Labs, Inc., 2013 WL 2025806, at *2 (“This Court limits its analysis to the long-arm statute’s tortious act provision because that provision is both ‘applicable and sufficient’ in the instant case.”

14, pp. 6–7; Doc. 14-1, ¶¶ 5–9, 16, 18.) But a “lack of business activity targeting Florida residents does not contradict allegations that it infringed [the plaintiff’s] trademark while conducting other business activity, which resulted in harm to [the plaintiff] in Florida.” See R&R Games, Inc. v. Fundex Games, Ltd., No. 8:12-CV-01957-T-27TBM, 2013 WL 784397, at *3 (M.D. Fla. Mar.¹, 2013). Also Defendants’ relevant period isn’t consistent with the allegations in the complaint, and Defendants do not deny making any sales or shipments to Florida during any other time period. Plaintiff also provided an affidavit from its private investigator stating that he bought one of Defendants’ water levelers, which was shipped to him in Florida. (Doc. 17-1, ¶ 4.) Considering Plaintiff’s evidence, Defendants have conducted at least some business in Florida related to the claims here. See Xymogen, Inc., 2018 WL 659723, at *2 (“When the plaintiff’s complaint and supporting evidence conflict with the defendant’s affidavits, a court must construe all reasonable inferences in favor of the plaintiff.” (citing Madara, 916 F. 2d at 1514)). 8 Defendant Knowlton’s argument that he is not subject to personal jurisdiction in Florida because his conduct related to Defendants’ Website occurred through Defendant DesignStein, LLC doesn’t preclude personal jurisdiction over him. (See Doc. 14, pp. 11 n.2, 16 n.3; Doc. 14-1, ¶¶ 18–19) Under Florida law, the “corporate shield” doctrine distinguishes “between a corporate officer acting on one’s own and a corporate officer acting on behalf of one’s corporation” to analyze personal jurisdiction. Doe v. Thompson, 620 So. 2d 1004, 1006 (Fla. 1993). But both the Florida Supreme Court and the Eleventh Circuit have acknowledged that this doctrine “is inapplicable where the corporate officer commits intentional torts.” Louis Vuitton, 736 F. 3d at 1355 (citing Thompson, 620 So. 2d at 1006 n.1). As Plaintiff’s allegations against Defendant Knowlton involve intentional torts, his corporate shield defense to personal jurisdiction fails. See id. (citations omitted)). With that, the Court turns to the due process requirement for personal jurisdiction. See Madara, 916 F. 2d at 1514.

B. Due Process Clause

“Even though a statute may permit a state to assert jurisdiction over a nonresident defendant, the due process clause of the United States Constitution protects an individual’s liberty interest in not being subject to the binding judgments of a forum with which he has established no meaningful ‘contacts, ties, or relations.’” Licciardello, 544 F. 3d at 1284 (quoting Int’l Shoe Co., 326 U.S. at 319). So for a court to exercise personal jurisdiction over a nonresident defendant, the defendant must “have certain minimum contacts with [the forum] such that the maintenance of the suit does not offend ‘traditional notions of fair play and substantial justice.’” Int’l Shoe Co., 326 U.S. at 316 (quoting Milliken v. Meyer, 311 U.S. 457, 463 (1940)). In making this determination, courts must consider whether there are “constitutionally significant contacts within the forum state” and “several other facts to determine whether its exercise would comport with ‘fair play and substantial justice.’” Licciardello, 544 F. 3d at 1284 (citing Int’l Shoe, 326 U.S. at 320). So the Court begins with Defendants’ contacts with Florida before turning to the factors for fair play and substantial justice.

1. Minimum Contacts

“[T]he constitutional litmus test for personal jurisdiction is whether the defendant ‘purposefully established “minimum contacts” in the forum State.’” Licciardello, 544 F. 3d at 1285 (quoting Burger King Corp. v. Rudzewicz, 471 U.S. 462, 473–74 (1985)). The defendant’s conduct must satisfy three criteria to constitute constitutionally sufficient minimum contacts: (1) “the contacts must be related to the plaintiff’s cause of action or have given rise to it”; (2) “the contacts must involve ‘some act by which the defendant purposefully avails itself of the privilege of conducting activities within the forum . . . thus invoking the benefits and protections of its laws’”; and (3) “the defendant’s contacts with the forum must be ‘such that [the defendant] should reasonably anticipate being haled into court there.’” Vermeulen v. Renault U.S.A., Inc., 985 F. 2d 1534, 1546 (11th Cir. 1993) (citations omitted). Relevant here, “[i]ntentional torts . . . may support the exercise of personal jurisdiction over the nonresident defendant who has no other contacts with the forum.” Licciardello, 544 F. 3d at 1285 (citing Calder v. Jones, 465 U.S. 783, 790 (1984)). In intentional tort cases, there are two applicable tests for evaluating whether exercising personal jurisdiction is constitutional: (1) the “effects” test in Calder; or (2) the traditional purposeful availment test. Louis Vuitton, 736 F. 3d at 1356. “Many courts have employed the Calder ‘effects’ test,” rather than the traditional test. Licciardello, 544 F. 3d at

1286. “Under the ‘effects test,’ a nonresident defendant’s single tortious act can establish purposeful availment, without regard to whether the defendant had any other contacts with the forum state.” Louis Vuitton, 736 F. 3d at 1356 (citation omitted). This happens when the tort is: “(1) intentional; (2) aimed at the forum state; and (3) caused harm that the defendant should have anticipated would be suffered in the forum state.” Licciardello,

544 F. 3d at 1286 (citing Ziegler v. Indian River Cty., 64 F. 3d 470, 474 (9th Cir. 1995)); see also Oldfield v. Pueblo De Bahia Lora, S.A., 558 F. 3d 1210, 1220 n.28 (11th Cir. 2009). Based on the alleged intentional tort here, the Court applies the effects test in assessing whether Defendants have constitutionally sufficient minimum contacts with Florida. See Roca Labs, Inc., 2013 WL 2025806, at *6 (“The Eleventh Circuit applies the ‘effects’ test for purposes of determining specific jurisdiction in intentional tort cases.” (citing Oldfield,

558 F. 3d at 1220 n.28)). On review, Plaintiff has satisfied the “effects” test here. To start, Plaintiff alleges Defendants trademark infringement was intentional—Defendants willfully registered the domain name for Defendants’ Website that is nearly identical to that of Plaintiff’s Website. (See Doc. 9, ¶¶ 23, 26, 40–48.) Plaintiff alleges this conduct was aimed at Florida based on the allegations that Defendants first bought one of Plaintiff’s pool water level regulators, started selling their own water levelers as a direct competitor of Plaintiff, and then registered the domain for Defendants’ Website and redirected that website to their other website where they sell (and customers in Florida can buy) their competing water levelers.⁹ (See Doc. 9, ¶¶ 18–22, 25; Doc. 9-2, p. 2.) Further, this aim is revealed by the accessibility of Defendants’ Website and the Fill-O-Matic website in Florida—

Defendants’ Website was discovered based on a simple typographical error made by one of Plaintiff’s employees in Florida. (See Doc. 9, ¶ 22; Doc. 17, p. 5; Doc. 17-1, ¶ 4.) And

2. Fair Play and Substantial Justice

With the constitutionally significant contacts established here, the Court must consider whether “the exercise of personal jurisdiction would violate traditional notions

IV. CONCLUSION

Accordingly, it is ORDERED AND ADJUDGED that Defendants DesignStein, LLC and Bryan Knowlton’s Motion to Dismiss for Lack of Personal Jurisdiction (Doc. 14) is DENIED. DONE AND ORDERED in Chambers in Orlando, Florida, on October 22, 2019.

Yj, ROY B. DALTON JR’ United States District Judge

Copies to: Counsel of Record