Plaintiff alleged that in 2008 Van Rental, an agent of Image Rent A Car, registered the domain name bandago.net. Plaintiff contended that the defendant used the website to redirect visitors to its primary website, Imagerentacar.com, as a tactic to divert plaintiff’s business.
Defendants contended that the Northern District of California
lacked jurisdiction, because they have no rental offices in California, they
never conducted business in the state, they never entered into a contract with
any entity in that state, they have no employees in that state, and they do not
advertise in that state. Defendant also
argued that while they operated bandago.net, it was never targeted to
(1) The nonresident defendant must do some act or consummate some transaction with the forum or perform some act by which he purposefully avails himself of the privilege of conducting activities in the forum, thereby invoking the benefits and protections of its laws; (2) the claim must be one which arises out of or results from the defendant’s forum-related activities; and (3) the exercise of jurisdiction must be reasonable. Panavision v. Toeppen, 141 F.3d 1316, 1320 (9th Cir. 1998).
To satisfy the first prong, the defendant must purposefully
avail himself of the forum or purposefully direct activities toward the
forum. The purposeful direction standard
usually applies to cases sounding in tort.
Schwarzennegger v. Fred Martin
Motor Co., 374 F.3d 797, 802-03 (9th Cir. 2004). In the instant case, the purposeful direction
standard applies, because plaintiff alleged cybersquatting and trademark
infringement, which are generally classified as torts. See Panavision,
141 F.3d at 1322. As such, the Calder effects test applies to determine
whether (1) the defendant committed an intentional act, (2) expressly aimed at
the forum state, (3) which causes harm that the defendant knows is likely to be
suffered in the forum state. Calder v. Jones, 465
An act is “intentional” if it was committed by the defendant with the “intent to perform an actual, physical act in the real world, rather than … intent to accomplish a result or consequence of the act.” Brayton Purcell LLP v. Recordon & Recordon, 606 F.3d 1124, 1128 (9th Cir. 2010) (See also "Law Firm that 'Cut and Paste' Section from Competing Firm's Website Properly Sued in Forum" for a case summary of Brayton Purcell). In this case, the court found that defendant committed an intentional act when they used bandago.net to divert users to Imagerentacar.com.
The second prong requires that the defendant’s conduct be
expressly aimed at the forum, which means that a passive website without “something
more” is insufficient to establish personal jurisdiction. Merely registering a domain name and linking
it to a website without more fails to
satisfy this prong. Panavision, 141 F.3d at 1321. Plaintiff claims that defendants website is
highly interactive, which provides the “something more” to establish personal
jurisdiction. As evidence, the
plaintiffs presented nineteen web pages from the defendants’ website, with
However, the court rejected that evidence, because the web pages proffered contained a great deal of text, which was meant to optimize search engine results through “keyword stuffing.” See Eric Goldman, Deregulating Relevancy in Internet Trademark Law, 54 Emory L.J. 507, 531 n. 69 (Winter 2005)(describing “keyword stuffing” as a process in which web developers add repeated text with no relevance to the content they are publishing to websites in an attempt to improve search engine result rankings and thus increase web traffic). As a result the website pages, without “something more” failed to satisfy the express aiming prong.
The court held, however, that the defendants’ use of the bandago.net website to directly compete with plaintiff satisfies the “express aiming” prong. While the defendant does not compete with plaintiff’s customers in California, the court reads Brayton Purcell to hold that the location of customers is irrelevant, as long as the plaintiff and defendant are in direct competition, the defendant’s alleged tort was in furtherance of this competition, the defendant knew the plaintiff resided in the forum state, and the defendant knew the harm would be felt in the forum state. 606 F.3d at 1130-31.
The third element requires the defendant have knowledge that his intentional act has “foreseeable effects” in the forum. The court held this prong satisfied because it was foreseeable that harm would be caused by diverting web traffic away from plaintiff with use of bandago.net and that those effects would be felt in plaintiff’s principal place of business. As a result, the court finds the defendant’s activity showed purposeful direction.
The court also concluded that the second and third prongs of specific jurisdiction were satisfied, because the infringement of plaintiff’s mark arose out of defendants’ forum related activities and the exercise of jurisdiction is reasonable, because defendants failed to address this prong in their Motion. For the foregoing reasons, the court finds that jurisdiction over the defendants is proper.