United States District Court, N.D. Mississippi, Aberdeen Division
SHARION AYCOCK, UNITED STATES DISTRICT JUDGE
matter arises from infringement claims under the Lanham Act.
Plaintiff Xpansion has filed a Motion to Dismiss for Lack of
Personal Jurisdiction, or to Transfer or, alternatively, Stay
. Defendants responded, noting the parallel case styled,
The Retail Coach, LLC v. Xpansion Holdings, LLC and r360,
LLC, Civil Action No. 1:16-CV-00032-SA-DAS, wherein
Jurisdictional Discovery had occurred. Further, Defendant
requested consolidation of the two actions.
and Procedural History
parallel case, Retail Coach alleges that r360, LLC's
marks are infringing on their own marks, and therefore filed
a Complaint in the Northern District of Mississippi.
Initially, the Complaint was filed against Retail360, LLC and
r360, LLC. Retail Coach later realized that Retail360, LLC
was the mere preformation name for r360, LLC. Therefore, they
amended their complaint to replace Retail360, LLC with
Xpansion Holdings, the intended related entity. Retail Coach
alleges that Xpansion Holdings is equally responsible for the
use of the infringing mark because it is essentially the same
entity as r360, or an alter ego.
before Retail Coach added Xpansion to the complaint, Xpansion
brought this suit against Retail Coach in the Northern
District of Alabama for trademark infringement and trademark
cancellation, or, in the alternative, a declaration of
non-infringement. Upon motion by Retail Coach, this suit was
transferred to the Northern District of Mississippi based on
the “first filed rule.” Xpansion motioned to
dismiss or transfer for lack of personal jurisdiction in both
cases, asserting that Mississippi lacks personal
jurisdiction. Therefore, as it stands, there are two parallel
cases in the Northern District of Mississippi, with similar
pending jurisdictional Motions. The first one, originally
filed in Mississippi, is styled as The Retail Coach, LLC
v. Xpansion Holdings, LLC and r360, LLC, Civil Action
No. 1:16-CV-00032-SA-DAS. The second case, transferred from
Alabama is styled as Xpansion Holdings, LLC v. The Retail
Coach, Civil Action No. 1:16-CV-00125-SA-DAS.
Holdings, doing business as Decision Data Resources, provides
web-based Geospatial Information Systems (“GIS”)
software solutions to economic and workforce development and
chamber organizations. Though Xpansion has no day to day
operations, it solicits customers by using mass emails to
encourage participation in webinars. Xpansion's CEO,
Charles Branch, is the sole member, manager and owner of
Xpansion. Branch, along with Amanda Beshears and Branch's
son are the sole members of r360. Unlike Xpansion, who merely
runs the website providing access to the software for both
r360 and Xpansion customers, r360 uses one database within
that software to do marketing analysis, consulting services,
and proactive retail recruitment for public sector clients,
who are primarily cities or municipalities.
entities share an office space and equipment, and Xpansion
has given r360 a substantial “loan” for which
payments have never been made. The Retail Coach alleges that
this is not a loan, but rather a commingling of funds.
Additionally, Xpansion paid for and administered all of
r360's start up procedures, including creating the name
Retail360, LLC. Xpansion has also provided an unwritten
license agreement to r360 to use the r360 mark, and Xpansion
does not charge for r360's use of the software or the
mark. Finally, the two entities use the same accountant,
though they maintain separate banking accounts.
alleges that even if there is personal jurisdiction over r360
in Mississippi, as a separate entity, Xpansion has no
physical presence in Mississippi, maintains no office or bank
accounts in Mississippi, has no property located in
Mississippi, and does not directly solicit business in
Mississippi. However, since 2003, Xpansion has maintained a
renewable contract with the Mississippi Development Authority
(“MDA”) wherein the MDA pays for access to
Xpansion's web-based services. Nevertheless, Xpansion
insists that there is no personal jurisdiction because the
website is maintained in Birmingham Alabama, and it is
situated on a computer located in Andover, Massachusetts.
Furthermore, Xpansion alleges that it has not used the r360
mark to market or solicit its services in Mississippi or to
the CEO of both companies, has sent mass emails soliciting
business on behalf of r360. The emails contain a copy of the
allegedly infringing r360 logo embedded in the signature line
of the email, as well as Xpansion's logo. After sending
these emails, Branch was able to develop a relationship
between r360 and Blackwater Resources in order to explore
providing consulting services for the building of a shopping
center in Clinton, Mississippi. In further communications
with Blackwater Resources, r360, via Branch, used
Xpansion's logo in their signature, as well as their own.
However, Branch alleges that r360 and Xpansion are entirely
separate entities. He argues that he was acting on behalf of
r360 only, and not Xpansion.
response to the pleadings regarding the Motion to Dismiss,
Retail Coach filed a Motion for Jurisdictional Discovery in
the Mississippi action, which was granted by the Court.
Retail Coach also requested consolidation of the two cases.
party who seeks to invoke the jurisdiction of the federal
court bears the burden of establishing the district
court's jurisdiction over the nonresident.”
D.J. Investments, Inc. v. Metzeler Motorcycle Tire Agent
Gregg, Inc., 754 F.2d 542, 545-46 (5th Cir. 1985).
“The plaintiff need not, however, establish
jurisdiction by a preponderance of the evidence; a prima
facie showing suffices.” Luv N' Care, Ltd.
v. Insta-Mix, Inc., 438 F.3d 465, 469 (5th Cir. 2006)
(quoting Wyatt v. Kaplan, 686 F.2d 276, 280 (5th
Cir. 1982)). When determining whether a prima facie
case for jurisdiction exists, “[t]he district court is
not obligated to consult only the assertions in the
plaintiff's complaint . . . [r]ather, the district court
may consider the contents of the record at the time of the
motion . . . .” Paz v. Brush Engineered Materials,
Inc., 445 F.3d 809, 812 (5th Cir. 2006). In this regard,
all “uncontroverted allegations in the plaintiff's
complaint must be taken as true, and conflicts between the
facts contained in the parties' affidavits must be
resolved in the plaintiff's favor.” Gatte v.
Dohm, 574 F. App'x 327, 330 (5th Cir. 2014) (quoting
D.J. Investments, 754 F.2d at 546).
a controlling federal statute regarding service of process,
[the district court must] first determine whether the long
arm statute of the forum state permits exercise of
jurisdiction. [The district court] then determine[s] whether
such exercise comports with due process.” Ham v. La
Cienega Music Co., 4 F.3d 413, 415 (5th Cir. 1993)
(citing Fed.R.Civ.P. 4(e); Aviles v. Kunkle, 978
F.2d 201 (5th Cir. 1992)). The Lanham Act does not authorize
nationwide service of ...