United States District Court, D. Massachusetts
MEMORANDUM AND ORDER
J. CASPER, UNITED STATES DISTRICT JUDGE
MorphoTrust USA, LLC (“MorphoTrust”) has brought
this action against Defendants IDentrix, LLC
(“IDentrix”), InfoZen, LLC and InfoZen, Inc.
(collectively, “Defendants”), alleging federal
trademark infringement under 15 U.S.C. § 1114(a) (Count
I), false designation of origin under 15 U.S.C. §
1125(a) (Count II), injury to reputation and dilution under
Mass. Gen. L. c. 110H, § 13 (Count IV), common law
trademark infringement (Count V), and unfair trade practices
under Mass. Gen. L. c. 93A, § 11 (Count
D. 1 ¶¶ 49-87. MorphoTrust specifically alleges
that, in 2013, Defendants began using an identity-based
software, IDENTRIX, that competes directly with and infringes
upon MorphoTrust’s thirty-year old trademark, IDENTIX.
D. 1 ¶¶ 23-28.
move to dismiss for lack of personal jurisdiction pursuant to
Fed.R.Civ.P. 12(b)(2). D. 8. Defendants also move to dismiss
the action for improper venue pursuant to Fed.R.Civ.P.
12(b)(3) or, alternatively, to transfer the action to the
United States District Court for the District of Maryland
pursuant to 28 U.S.C. § 1404(a). Id.
MorphoTrust opposes the motion to dismiss, D. 15, and,
alternatively, seeks jurisdictional discovery to the extent
necessary to support its contention that this Court has
personal jurisdiction over Defendants. D. 15 at 21-22. For
the reasons stated below, the Court DENIES Defendants’
motion and DENIES MorphoTrust’s request for
Standard of Review
motion to dismiss for lack of personal jurisdiction, the
burden to establish personal jurisdiction belongs to the
plaintiff. See Mass. Sch. of Law at Andover, Inc. v. Am.
Bar Ass’n, 142 F.3d 26, 34 (1st Cir. 1998). If a
defendant asserts that plaintiff has failed to make a
prima facie showing to support jurisdiction, the
Court must determine “whether the plaintiff has
proffered evidence that, if credited, is enough to support
findings of all facts essential to personal
jurisdiction.” Foster-Miller, Inc. v. Babcock &
Wilcox Canada, 46 F.3d 138, 145 (1st Cir. 1995)
(internal quotation marks omitted) (quoting Boit v.
Gar-Tec Prods., Inc., 967 F.2d 671, 675 (1st Cir.
1992)). The Court accepts “specific facts affirmatively
alleged by the plaintiff as true (whether or not disputed)
and construes them in the light most congenial to the
plaintiff’s jurisdictional claim” and then adds
“facts put forward by the defendants, to the extent
that they are uncontradicted.” Mass. Sch. of
Law, 142 F.3d at 34. The Court, however, will not
“credit conclusory allegations or draw farfetched
inferences.” Ticketmaster-N.Y., Inc. v.
Alioto, 26 F.3d 201, 203 (1st Cir. 1994). In conducting
this analysis, the Court considers the alleged facts and the
parties’ supplemental filings, including affidavits.
See Sawtelle v. Farrell, 70 F.3d 1381, 1385 (1st
Cir. 1995); Ticketmaster, 26 F.3d at 203.
motion to dismiss for improper venue, the Court is “not
required to determine the best venue, merely a proper
venue.” Astro-Med, Inc. v. Nihon Kohden Am.,
Inc., 591 F.3d 1, 12 (1st Cir. 2009). The plaintiff
bears the burden to establish that the venue he has selected
is proper. See, e.g., Sindi v.
El-Moslimany, No. 13-cv-10798-IT, 2014 WL 6893537, at
*11 (D. Mass. Dec. 5, 2014) (quoting TransAmerica Corp.
v. Trans-Am Leasing Corp., 670 F.Supp. 1089, 1090 (D.
Mass. 1987)); Cordis Corp. v. Cardiac Pacemakers,
599 F.2d 1085, 1086 (1st Cir. 1979). In assessing the
plaintiff’s showing, the Court may accept all
well-pleaded allegations as true, unless they are
contradicted by the defendant’s affidavits. See
Universal Trading & Inv. Co. v. Bureau for Representing
Ukrainian Interests in Int’l & Foreign Courts,
898 F.Supp.2d 301, 317 (D. Mass. 2012) (quoting Turnley
v. Banc of Am. Inv. Services, Inc., 576 F.Supp.2d 204,
211 (D. Mass. 2008)).
following relevant facts are alleged in MorphoTrust’s
complaint or the parties’ supplementary filings.
MorphoTrust is a Delaware limited liability company with its
principal place of business in Massachusetts. D. 1 ¶ 3.
MorphoTrust is headquartered in Billerica, Massachusetts.
Id. MorphoTrust offers personal identity
authentication products and services. Id. ¶ 11.
Inc. was a former Maryland limited liability company with a
principle place of business in Bethesda, Maryland. D. 1
¶ 4; D. 10 ¶ 4. InfoZen, Inc. was in the business
of information technology services. D. 10 ¶ 5. On
October 5, 2015, InfoZen, Inc. filed an Article of Conversion
in Maryland converting InfoZen, Inc. into InfoZen, LLC. D. 1
¶ 5; D. 10 ¶ 4. Prior to the conversion, InfoZen,
Inc.’s clients consisted solely of federal government
agencies. D. 10 ¶ 6. InfoZen, Inc. had no Massachusetts
customers. Id. ¶ 6. InfoZen, Inc. had no
employees in Massachusetts. Id. ¶ 7. No
InfoZen, Inc. employees traveled to Massachusetts in
connection with any services or goods offered by InfoZen,
Inc. Id. ¶ 8. InfoZen, Inc. did not own
property in Massachusetts, did not have an office in
Massachusetts and did not have a bank account in
Massachusetts. Id. ¶ 9. InfoZen, Inc. was not
registered to do business in Massachusetts. Id.
¶ 10. The InfoZen, Inc. website made no mention of
Massachusetts. Id. ¶ 12. The InfoZen, Inc.
website did not allow customers to transact business.
Id. ¶ 13. The InfoZen, Inc. website did not
specifically advertise for or solicit Massachusetts business.
Id. ¶ 14.
LLC is a Maryland corporation with a principal place of
business in Bethesda, Maryland. D. 10 ¶ 16. InfoZen, LLC
is in the business of information technology services.
Id. ¶ 17. InfoZen, LLC’s clients consist
solely of federal government agencies. Id. ¶
18. InfoZen, LLC contracts with its federal agency clients in
Maryland, Washington D.C. and Virginia. Id. ¶
19. The InfoZen, LLC website is available at
<www.infozen.com>. Id. ¶ 21.
InfoZen, LLC’s website describes its business and
provides a Maryland phone number, a Maryland fax number, a
Maryland mailing address and multiple e-mail addresses.
Id. ¶ 22. The website does not mention
Massachusetts or allow customers to transact business.
Id. ¶¶ 23-24. InfoZen, LLC has no
employees in Massachusetts and no employees have traveled to
Massachusetts in connection with services or goods offered by
InfoZen, LLC. Id. ¶¶ 25-26. InfoZen, LLC
does not own any property in Massachusetts, have a bank
account in Massachusetts, possess registration to do business
in Massachusetts or have any Massachusetts customers.
Id. ¶¶ 27-30.
is a Delaware limited liability company with a principal
place of business in Bethesda, Maryland. D. 10 ¶ 32. On
or about May 1, 2015, InfoZen, Inc. transferred certain
assets, including the IDENTRIX mark, to IDentrix.
Id. ¶ 34. IDentrix is in the business of
providing a subscription service to its cloud-based product
(IDentrix) which monitors risk alerts (e.g., criminal
records, licenses and bankruptcies) of employees on behalf of
private companies. Id. ¶ 36. On its website,
IDentrix describes its services and provides a Maryland phone
number, a Maryland mailing address, and an e-mail address.
Id. ¶ 37. The website does not mention
Massachusetts. Id. ¶ 38. IDentrix has no
employees in Massachusetts. Id. ¶ 40. No
IDentrix employee has traveled to Massachusetts in connection
with any services or goods offered by IDentrix. Id.
¶ 41. IDentrix does not own any property in
Massachusetts, have a bank account in Massachusetts or have
any customers in Massachusetts. Id. ¶¶
over thirty years, MorphoTrust has been using the term
IDENTIX, which it adopted as a trade name, trademark and
house mark in 1982. D. 1 ¶ 12. MorphoTrust owns two
federal trademark registrations for the IDENTIX trademark: 1)
federal trademark Registration No. 2, 425, 102 for the word
mark IDENTIX in connection with “computer hardware and
software used for biometric identification, verification and
security” in International Class 9, which registered on
January 30, 2001 and 2) federal trademark Registration No. 2,
513, 388 for a stylized version of the IDENTIX mark in
connection with “computer hardware and computer
software for use in checking or identifying persons in a
biometric verification, identification and security system
and electronic finger print readers” in International
Class 9, which registered on November 27, 2001. Id.
uses the trademark IDENTIX in interstate commerce in
connection with its computer software and related services.
Id. ¶ 13. MorphoTrust’s products use
identity- based characteristics such as biometrics,
authentication of documents and verification of other
identity-based data to establish and verify personal
identification. Id. With MorphoTrust’s IDENTIX
identity-based products, MorphoTrust’s clients can
confirm when an individual is making up an identity,
attempting to obtain multiple identities, stealing someone
else’s identity or wanted for a crime. Id.
¶ 15. Such identity-based verification is needed for,
inter alia, employment, program enrollment,
establishing online accounts, accessing applications or
benefits and investigating potential fraud. Id.
¶ 18. For three decades, MorphoTrust has advertised and
marketed its services under the IDENTIX name and mark to the
public, targeting commercial and government entities.
Id. ¶¶ 14, 22. As a result, the IDENTIX
trademark is well-known to the public as identifying
MorphoTrust as the source of all such IDENTIX products and
services. Id. ¶ 22.
October 21, 2013, InfoZen, Inc. filed a federal trademark
application on an intent-to-use basis (Ser. No. 86/096, 536)
to register the word mark IDENTRIX for “computer
software for providing rapid visibility of previously
undetected identity-based security and fraud risks, ”
and for “software development in the field of providing
rapid visibility of previously undetected identity based
security and fraud risk.” Id. ¶ 26. The
application matured to registration on June 30, 2015, was
issued Registration No. 4, 765, 207 and alleges October 10,
2013 as the date upon which InfoZen, Inc. first used IDENTRIX
in interstate commerce. Id. InfoZen, Inc. began use
of IDENTRIX in October 2013 with identity-based software and
development services for identity-based software.
Id. ¶ 27. In or around May 1, 2015, InfoZen,
Inc. assigned the IDENTRIX mark to IDentrix and recorded the
assignment with the United States Patent and Trademark Office
on August 11, 2015. D. 10 ¶ 15. On May 4, 2015, InfoZen,
Inc. and InfoZen, LLC announced the public launch of IDENTRIX,
which was described as a “patented software that
continuously evaluates personnel data and proactively alerts
organizations to potential risks such as insider
threats.” D. 1 ¶ 32. Those products and services
compete directly with the identity-based software and related
products and services sold by MorphoTrust under the IDENTIX
mark. Id. ¶ 27.
operate two websites through which Defendants use and display
the IDENTRIX mark in connection with identity-based software
and related services. Id. ¶ 33.
Defendants’ websites, <www.identrix.com>
and <www.infozen.com>, may be viewed from
anywhere in the United States and allow users, including
residents in Massachusetts, to send communications to
Defendants. Id. ¶ 34. Both websites include a
“Contact Us” link encouraging users to contact
Defendants via email, telephone, Twitter, and/or Linked In to
inquire about the services rendered by Defendants, including
the identity-based software and related services sold under
the IDENTRIX mark. Id. ¶ 34. The websites
invite users to request “a free live 30 minute
demo” of the IDENTRIX software. Id. ¶ 35.
To sign up for the demonstration, Defendants ask users to
submit their name, email address and phone number.
to filing the trademark application for IDENTRIX, InfoZen,
Inc. and InfoZen, LLC had actual knowledge of MorphoTrust and
its trademark. Id. ¶ 28. InfoZen, Inc. and
InfoZen, LLC discussed with MorphoTrust the possibility of
partnering on at least one project. Id. During that
time, InfoZen, Inc. and InfoZen, LLC engaged in negotiations
with MorphoTrust regarding a non-disclosure disagreement; the
agreement provided that the parties litigate all disputes in
Massachusetts, agree to exclusive jurisdiction of such courts
and waive all defenses of lack of personal jurisdiction.
Id. In addition, InfoZen, Inc. and InfoZen, LLC sent
a PowerPoint presentation to MorphoTrust employees, marketing
its products and services. Id.
learning of the IDENTRIX trademark application and InfoZen,
Inc. and InfoZen, LLC’s use of IDENTRIX, MorphoTrust,
through its counsel, sent InfoZen, Inc. and InfoZen, LLC a
letter on June 4, 2015 alleging trademark infringement and
demanding that InfoZen, Inc. and InfoZen, LLC cease use of
IDENTRIX. D. 1 ¶ 37. On July 15, 2015, after receipt of
the letter, InfoZen, Inc. and InfoZen, LLC formed the
separate company, IDentrix. Id. It was after this
letter was sent that InfoZen, Inc. and InfoZen, LLC assigned
the IDENTRIX trademark registration from InfoZen, LLC to
IDentrix. Id. MorphoTrust alleges that
Defendants’ registration, use and marketing of
IDENTRIX, given the similarities with MorphoTrust’s
IDENTIX, are likely to cause customer confusion as ...