now before the Court on Defendants' Motion to Dismiss for
Defendants, as the moving parties, bear the burden of proving
that venue is improper. See Myers v. American Dental Ass'n,
695 F.2d 716, 724 (3d Cir. 1982), cert. denied 462 U.S. 1106, 103
S.Ct. 2453, 77 L.Ed.2d 1333 (1983); Simon v. Ward, 80 F. Supp.2d 464,
468 (E.D.Pa. 2000); Superior Precast, Inc. v. Safeco Ins.
Co. of America, 71 F. Supp.2d 438, 442 (E.D.Pa. 1999).
In a civil action where jurisdiction is not based solely on
diversity of citizenship, such as the present case, suit must be
brought only in (1) the district where any defendant resides, if
all reside in the same state; (2) a judicial district in which a
substantial part of the events or omissions giving rise to the
claim occurred; or (3) a district where any defendant may be
found, if there is no district in which the action may otherwise
be brought. 28 U.S.C. § 1391(b).
VENUE UNDER 28 U.S.C. § 1391(b)(1)
Defendants contend that they do not reside in the Eastern
District of Pennsylvania, but have in fact resided in Pittsburgh,
in the Western District of Pennsylvania, for more than
twenty-five (25) years. See First Declaration of William P.
Plaintiffs argue that because of the manner in which the
Defendants conducted the business, it should be treated as a
corporation, in which case 28 U.S.C. § 1391(c) would control. The
relevant portion of that section states that a "corporation shall
be deemed to reside in any judicial district in which it is
subject to personal jurisdiction."
In Exhibit "A" to Defendants' Reply Brief, a Second Declaration
of William P. McCue ("Second Declaration") states, under penalty
of perjury, that Europa Publications and Extras Casting are names
under which he does business and he further states that they are
operated as sole proprietorships. In addition, it appears from
the First Declaration that McCue made all the decisions
associated with Europa Publications, registered the domain names
that are the subject of this litigation, and designed, developed
and operated the web site associated with those domain names.
Based upon the foregoing, I find that McCue operated the business
as a sole proprietorship with its residence in the city of
Pittsburgh in the Western District of Pennsylvania. Venue,
therefore, under 28 U.S.C. § 1391(b)(1) cannot be established in
the Eastern District of Pennsylvania.
VENUE UNDER 28 U.S.C. § 1391(b)(2)
Since this Court has already determined that Defendants do no
reside in this district and that there is another district in
which this case can be brought, namely the Western District of
Pennsylvania, the only other possible basis for venue in this
district would be that a substantial part of the events or
omissions giving rise to the claim occurred in this district.
28 U.S.C. § 1391(b)(2).
With respect to the cybersquatting claims*fn2, Defendants
registered each of the subject domain names with Network
Solutions, Inc. ("NSI"), which provides domain name registration
services in the state of Virginia. See First Declaration of
William P. McCue ¶¶ 3, 9. There is absolutely no connection
between this district and the cybersquatting claims. The only
possible relationship would be that this district is Plaintiffs's
office location. In a venue analysis, however, where the
or the alleged trademark reside is not relevant. See Cottman
Transmission Systems, Inc. v. Martino, 36 F.3d 291, 295 (3d Cir.
1994). I, therefore, find that venue does not lie in the Eastern
District of Pennsylvania on the cybersquatting claims.
Plaintiffs claim that they own the trademark EUROPA
PUBLICATIONS and that Defendants infringed and diluted that mark
by selling Plaintiffs' books through Defendants' website. It
appears that Defendants designed and developed their websites in
another district, operated their website in another district,
have their website hosted in another district, and shipped
Plaintiffs' books from another district. See First Declaration
of William P. McCue ¶¶ 4-6. Plaintiffs allege two specific
instances of contact with this district, but do not allege that
either of these contacts constituted the infringement or dilution
complained of. It appears that one of the contacts had absolutely
no bearing on this litigation. It appears that the second alleged
contact between the parties led to Plaintiffs extending a
business account to Defendants. This contact has no connection to
the claims asserted in this litigation. The only facts relevant
to a venue analysis are those facts that constitute a substantial
part of the events or omissions giving rise to the claim. In this
situation, therefore, only those events that relate to the
alleged infringement or dilution are relevant. Plaintiffs argue
that the "fact that Defendants accepted goods FOB Levittown, PA
is crucial to this venue analysis." Plaintiffs' Brief at 11. In a
trademark case, the claimed wrongs occur where the passing off
occurred. See Cottman Transmission Systems v. Martino,
36 F.3d 291, 294-95 (3d Cir. 1994). Passing off occurs where the deceived
customer buys defendant's product in the belief that he is buying
plaintiff's. Plaintiffs must show that Defendants passed off
Plaintiffs' books in this district since passing off occurs where
the deceived customer buys the defendant's product on the belief
that it is buying the plaintiff's. See Vanity Fair Mills Inc. v.
T. Eaton Co., 234 F.2d 633, 639 (2d Cir. 1956). Therefore, if
venue is to be established in this district, defendant must have
sold Plaintiffs' books in this district via its website.
According to the First Declaration of William P. McCue ¶ 8,
Defendants have not transacted or procured any sales of
Plaintiffs' books in this district via its website. The fact that
McCue may have taken title to the books FOB Levittown PA is of no
consequence. The buying of books by McCue is not a trademark
The fact that McCue may have had e-mail correspondence with a
Jim Cook of "Taylor-Francis", even if Cook was located in this
district, would not supply the substantial contacts necessary,
because the buying of Plaintiffs' books by Defendants is not a
trademark violation. For the foregoing reasons, I find that venue
has not been established in this district for the alleged
trademark violations of EUROPA PUBLICATIONS.
Plaintiffs also claim that they own the trademark World Of
Learning and that Defendants' website located at
<worldoflearning.com> infringes and dilutes their world of
learning mark. As with their EUROPA PUBLICATIONS claims, in
order to show that venue is proper in this district with respect
to World of Learning, a substantial part of the events giving
rise to the claim must have occurred in this district. It
appears that the Defendants designed and developed their website,
operated their website and had their website hosted in a district
other than the Eastern District of Pennsylvania. See
First Declaration of William P. McCue at ¶ 10-11. Defendants
have never sold or offered to sell any of Plaintiffs' books over
the World of Learning Website. See id. at ¶ 12. Plaintiffs must
show that Defendants engaged in some passing off in this
district. See Cottman, 36 F.3d at 294. Because Defendants did
not offer to sell any of Plaintiffs' books over the World of
Learning website in this district, I find that venue for this
claim is not in the Eastern District of Pennsylvania.
AND NOW, this 9th day of MAY, 2001, upon consideration of
Defendants' Motion to Dismiss for Improper Venue and Plaintiffs'
Response thereto, it is hereby
ORDERED that Defendants' Motion is GRANTED and the Complaint is
DISMISSED without prejudice.