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                            DISTRICT OF NEBRASKA



v.                                                  8:98CV464

US WEB CORPORATION and                               ORDER



 This matter is before me pursuant to 28 U.S.C. ' 636 and the general order of referral
on defendants' motion for change of venue pursuant to 28 U.S.C. ' 1404(a) (#31).
Having carefully considered the briefs and the evidentiary materials filed by both parties,
the court finds that defendants' motion should be denied.

                                NATURE OF THE CASE

Plaintiff's amended complaint (#6) alleges that plaintiff is a Delaware corporation doing
business in the State of Nebraska; defendant US Web Corporation ("USWeb") is a
Delaware corporation with its principal executive offices located in Santa Clara,
California; and defendant Midland Computers, Inc. ("Midland") is a Nebraska
corporation with a place of business located in Omaha, Nebraska. Midland operates
under the name US WEB OMAHA, is the owner of a Nebraska trade name for US WEB
OMAHA and is affiliated with and directed by USWeb. USWeb and Midland do business
in the State of Nebraska.

USWeb is in the business of providing integrated services "by blending together
expertise in strategy, marketing communications and Internet technology with industry-
specific knowledge, in order to help clients define strategies and implement innovative
ways to build their business." (#33, Ex. 1C, & 1). The U.S. Patent and Trademark Office
"has approved for publication USWeb's application to register USWEB" for a number of
services. Id. at & 9. Midland is a licensee of the USWeb trade name and service mark.
Id. at & 2. USWeb adopted the trade name "USWeb" in December 1995 and has used
the service mark USWEB in interstate commerce continuously since that time. (#33, Ex.
1C, & 8). Midland has been doing business under the USWeb name, and used the
USWEB service mark, since December 1996. Midland filed the trade name "US Web
Omaha" in Nebraska on November 18, 1996. Id. at & 10.

The amended complaint, && 8-13, describes plaintiff's past and continuing efforts to
promote its trademark, "U S WEST." As the result of these efforts, the U S WEST
trademark has become famous and the public has come to distinctly associate the U S
WEST mark solely with plaintiff as a source of high quality services and goods. && 13-
14. Plaintiff alleges that defendants are using trademarks containing the term "US WEB"
in connection with providing products and services similar to those offered by plaintiff.
See #33, Exs. 1A & 1B.

Based on the similarity between the "U S WEST" and "US WEB" trademarks, plaintiff
alleges that defendants have:

(1)   infringed plaintiff's federally registered trademark in violation of the Lanham Act,
15 U.S.C. ' 1114(1);

(2)  diluted the distinctive quality of plaintiff's trademark in violation of the Federal
Trademark Dilution Act of 1995, 15 U.S.C. ' 1125(c);

(3)    engaged in unfair competition in violation of the Lanham Act, 15 U.S.C. ' 1125(a);

(4)    engaged in trademark infringement in violation of Neb. Rev. Stat. ' 87-121;

(5)    engaged in trademark dilution in violation of Neb. Rev. Stat. ' 87-122; and

(6)  engaged in unfair competition under the common law of Nebraska; the
Consumer Protection Act, Neb. Rev. Stat. '' 59-1601 through 59-1622; and the Uniform
Deceptive Trade Practices Act, Neb. Rev. Stat. '' 87-301 through 87-306.

U S West's principal place of business is located in Denver, Colorado. It is the largest
local telephone service provider in Nebraska and has 2,881 employees in Nebraska,
1,311 of whom hold management positions. (#33, Ex. 2). U S West has specifically
named four of its Nebraska employees it intends to call as witnesses in this case. U S
West does not own, maintain or operate any telephone lines within the State of
California and is not incorporated in the State of California. (#33, Ex. 4). From
December 1995 to the present time, U S West did not have a registered agent in
California, was not licensed to do business in California, did not maintain an office or
other property in California, was not listed in any California telephone directory, did not
maintain any bank accounts or corporate records in California, did not employ any sales
agents or personnel in California, and did not advertise in the State of California. Id.

USWeb's corporate documents are kept at its corporate headquarters in Santa Clara,
California. It has approximately 152 employees in Santa Clara and another 810
employees in corporate facilities across California. USWeb has no employees working
in the State of Nebraska. (#32, Ex. 2).

Midland has been in the computer business since 1979. It was originally engaged in
retail sales doing business under the name "Computerland." Although the company still
does business as "Computerland," it is now a corporate reseller and is no longer a retail
operation. In late 1996, Midland became a franchisee of USWeb and is authorized by
USWeb to use the US WEB trademark in conjunction with the design and hosting of
websites. The USWeb franchise constitutes "only a tiny portion" of Midland's business.
In 1998, Midland's Computerland portion generated almost $43 million, while the
USWeb portion generated less than $300,000. Of Midland's 15 salespeople, only one
engages in sales for USWeb. None of Midland's employees are employees of USWeb.
Midland had no input into, and no knowledge of, USWeb's choice or adoption of the US
WEB trademark, USWeb's marketing or promotion of the trademark, or USWeb's
corporate or marketing strategy. Midland has advertised in the Omaha yellow pages (as
required by USWeb). All promotional materials (except for a sign Midland posted in the
Omaha airport) used by Midland have been designed and developed by USWeb in

                                    ISSUE PRESENTED

Defendants argue that this case should be transferred to the Northern District of
California pursuant to 28 U.S.C. ' 1404(a), which provides: "For the convenience of
parties and witnesses, in the interest of justice, a district court may transfer any civil
action to any other district or division where it might have been brought."

                                     LEGAL ANALYSIS

In general, the party seeking transfer bears the burden of establishing that the transfer
should be granted under ' 1404(a). Terra Int'l, 119 F.3d at 695; Nelson v. Bekins Van
Lines Co., 747 F. Supp. 532, 535 (D. Minn. 1990). The plaintiff's choice of forum is
given great weight and should not be disturbed unless the movant makes a clear
showing that the balance of interest weighs in favor of the movant. General Comm. of
Adjustment v. Burlington N. R.R., 895 F. Supp. 249, 252 (E.D. Mo. 1995); BASF Corp.
v. Symington, 50 F.3d 555, 557 (8th Cir. 1994). A transfer should not be granted if the
effect is to merely shift the inconvenience from one party to the other. Nelson, 747 F.
Supp. at 535 (citing Van Dusen v. Barrack, 376 U.S. 612, 646 (1964)); General Comm.
of Adjustment, 895 F. Supp. at 252; see generally Ferens v. John Deere Co., 494 U.S.
516, 522-23 (1990). In order to prevail, defendants must show that their inconvenience
strongly outweighs the inconvenience plaintiff would suffer if venue were in the Northern
District of California. Nelson, 747 F. Supp. at 535.

In its brief and reply brief, defendants contend that venue in the Northern District of
California would be more convenient for the parties because all of USWeb's corporate
records, employees, and potential witnesses are located in California. USWeb conducts
almost all its business outside of Nebraska. While its franchisee, Midland, is located in
Nebraska, only a small portion of Midland's business is devoted to the USWeb
franchise. Citing individual business transactions between U S West and other
companies (Check Point Software Technologies, Ltd.; The National Dispatch Center,
Inc.; and Netscape Communications), USWeb argues that U S West has numerous
contacts with California. Finally, U S West's choice of forum should be given little
deference because Colorado, not Nebraska, is U S West's "home" forum. Defendants
have not specified any of the witnesses they intend to call, but represent that the vast
majority of their witnesses will come from California.

In its brief, plaintiff explains that it chose to file this action in Nebraska because it is one
of the few jurisdictions in which both U S West and the defendants conduct business.
The defendants do not appear to do business in U S West's home state, Colorado.
Instead, the defendants have published advertisements, maintained an office, and
marketed their services at trade shows in Nebraska. Defendants' actions in Nebraska
are the basis for U S West's claims.

Neither the Lanham Act nor the Federal Trademark Dilution Act of 1995 has a special
venue provision; thus, the general venue statute, 28 U.S.C. ' 1391, applies in this case.
Section 1391(b)(2) provides that a federal-question case may be filed in a "judicial
district in which a substantial part of the events or omissions giving rise to the claim
occurred." 28 U.S.C. ' 1391(b)(2). The place where the alleged statutory violations
occurred provides an "obviously correct venue" under ' 1391(b)(2). See Woodke v.
Dahm, 70 F.3d 983, 985 (8th Cir. 1995) (alleging Lanham Act violations).

Section 1404(a) reveals three general categories of factors that courts must consider
when deciding a motion to transfer: (1) the convenience of the parties, (2) the
convenience of the witnesses, and (3) the interests of justice. Terra Int'l, Inc. v.
Mississippi Chem. Corp., 119 F.3d 688, 691 (8th Cir.), cert. denied, 118 S. Ct. 629
(1997). The court's review is not limited to these factors; instead, the court may evaluate
the particular circumstances of the case and consider all relevant factors. Id.

Assuming, without deciding, that this action "might have been brought" in the Northern
District of California, see ' 1404(a), I find that defendants have not shown that this case
should be transferred to California. While defendants' presence in Nebraska is small
when compared to USWeb's presence in California, the injury complained of occurred in
Nebraska. It is difficult for the court to evaluate the convenience of forum with respect to
potential witnesses, because defendants have not named any of the witnesses they
intend to call (although they reportedly intend to call "many" witnesses from California)
and plaintiff can identify only four corporate witnesses at this stage of the proceeding. I
conclude from the evidence presented that Nebraska is a rather inconvenient forum for
the defendants and California would be a rather inconvenient forum for the plaintiff in
this instance.

"Although a change in venue is well within the trial court's discretion, it should not be
freely granted.... After weighing the relevant factors, unless the balance is strongly in
favor of defendant, the plaintiff's choice of forum should be left undisturbed." General
Comm. of Adjustment v. Burlington N. R.R., 895 F. Supp. at 252. Here, the balance of
interest does not weigh strongly in favor of the defendants. Accordingly, I find that the
motion for change of venue should be denied.

IT THEREFORE IS ORDERED that defendants' motion for change of venue pursuant to
28 U.S.C. ' 1404(a) (#31) is denied.
Pursuant to NELR 72.3 any appeal of this order shall be filed with the Clerk of the Court
within ten (10) days after being served with a copy of this order. Failure to timely appeal
may constitute a waiver of any such objection. The brief in support of any appeal shall
be delivered to Chief Judge William G. Cambridge at the time of filing such appeal.
Failure to submit a brief in support of any appeal may be deemed an abandonment of
the appeal.

DATED this _____ day of July, 1999.



Kathleen A. Jaudzemis

United States Magistrate Judge

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