NUTRISYSTEM.COM, INC. v. EASTHAVEN, LTD., et al.

CIVIL ACTION NO. 00-4835

UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF PENNSYLVANIA

58 U.S.P.Q.2d (BNA) ¶ 1160, 2000 U.S. Dist. LEXIS 17528

November 16, 2000

DISPOSITION: Motion of defendant Easthaven, Ltd. to dismiss for lack of personal jurisdiction DENIED.

COUNSEL:

For NUTRISYSTEM.COM, INC., PLAINTIFF: FREDERICK A. TECCE, ANTHONY M. MIRABILE, JR., MCSHEA, TECCE, P.C., PHILADELPHIA, PA USA.

For EASTHAVEN, LTD., DEFENDANT: DAVID WARGA, WARGA LAW FIRM, TORONTO, CANADA CANADA.

FULLAM, Sr.J.

MEMORANDUM AND ORDER

NOVEMBER 16, 2000

Defendant Easthaven is a Barbados corporation which has owned the Internet domain name "sweetsuccess.com" since 1995. Plaintiff Nutrisystem.com is a provider of weight loss programs and products over the Internet, and purchased two "Sweet Success" trademarks for weight loss food products and candy (U.S. Trademark Nos. 1973830 and 1515638) from the Nestle companies in August of this year. Defendant ComNetwork, a Canadian company which plaintiff believes to be closely affiliated with Easthaven, operates a website that solicits interest in purchasing or "developing" domain names.¹ The evidence at hand reveals that Brian Haveson, the president of Nutrisystem.com, inquired of ComNetwork via e-mail concerning the availability of the sweetsuccess.com domain name. The next day, one Brian Kelley of ComNetwork sent an e-mail to Mr. Haveson in Pennsylvania, offering to sell the domain name to Nutrisystem.com for $146,250. This e-mail was followed by a telephone call from Mr. Kelley to Mr. Haveson. Plaintiff characterizes ComNetwork and Easthaven as "cyber pirates" who register well-known marks as domain names in order to sell them to trademark owners. Plaintiff has brought suit in this Court against various defendants pursuant to the Lanham Act, 15 U.S.C. §§ 1051 et seq., federal and state trademark and unfair competition laws, and the Anti-Cybersquatting Consumer Protection Act of 1999, 15 U.S.C. § 1125(d). Defendant Easthaven, through Canadian counsel, has moved to dismiss for lack of in personam jurisdiction.

¹ Easthaven contends that the domain name is "under development." It is worth noting that Easthaven has owned the domain name for five years, and has developed nothing to date.

I agree with plaintiff that the e-mail and telephone call directed to plaintiff in Pennsylvania by Easthaven's agent, ComNetwork, which included an offer to sell the "sweetsuccess.com" domain name, are sufficient to confer specific jurisdiction upon this Court pursuant Pennsylvania's long-arm statute. Defendants' conduct was expressly aimed at this jurisdiction. See IMO Indus., Inc. v. Kiekert AG, 155 F.3d 254 (3d Cir. 1998). Easthaven's sweetsuccess.com site was not merely passive; until this litigation, by typing "sweetsuccess.com" into a browser, a user would be led directly to ComNetwork's home page, where the domain name was offered for sale. Defendant's motion will be denied.

An Order follows.

ORDER

AND NOW, this 16th day of November, 2000, IT IS ORDERED:

1. The motion of defendant Easthaven, Ltd. to dismiss for lack of personal jurisdiction is DENIED.

2. Defendant is directed to retain local counsel to represent it in any further proceedings, as required by the Local Rules of Civil Procedure.

Fullam, Sr.J.