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The relationship of a plaintiff’s cause of action to contacts the defendant made on its Web site “might be compelling” if there was evidence presented that anyone from Missouri had accessed the website, the U.S. District Court for the Eastern District of Missouri wrote April 13 in concluding that it lacked jurisdiction over the defendant and in transferring the action to the U.S. District Court for the Southern District of New York ( Uncle Sam’s Safari Outfitters Inc. v. Uncle Sam’s Army Navy Outfitters-Manhattan Inc., E.D. Mo., No. 4:99 CCV 1633 DDN, April 13, 2000, opinion avail. May 18, 2000). The plaintiff, Uncle Sam’s Safari Outfitters Inc., brought suit against defendants Uncle Sam’s Army Navy Outfitters-Manhattan Inc., Uncle Sam’s Army Navy Outfitters-Niagara Falls Inc., Richard Geist, and Robert Geist for trademark infringement under 15 U.S.C. �1114 and unfair competition under 15 U.S.C. �1125. The plaintiff asked for monetary and injunctive relief, while the defendants moved to dismiss for lack of personal jurisdiction, claiming that they lack the requisite minimum contacts with the state of Missouri. The plaintiff provisionally moved to transfer the action to the Southern District of New York. In examining whether personal jurisdiction existed under Missouri’s long-arm statute, Judge David D. Noce noted that the U.S. District Court for the Eastern District of Missouri held, in Maritz v. Cybergold Inc., 947 F. Supp. 1328, 1331 (E.D. Mo. 1996), that infringing upon a trademark is grounds for personal jurisdiction under “the commission of a tortious act” provision of Missouri’s long-arm statute. He added, however, that Missouri courts construe the Missouri long-arm statute to confer jurisdiction to the extent allowed by the due process clause. The Eighth Circuit, the court noted, set forth a five-factor test in Bell Paper Box Inc. v. U.S. Kids Inc., 22 F.3d 816, 819 (8th Cir. 1994), for determining whether there are sufficient minimum contacts: (1) the nature and quality of the contacts with the forum state; (2) the quantity of those contacts; (3) the relation of the cause of action to the contacts; (4) the interest of the forum state in providing a forum for its residents; and (5) the convenience of the parties. In support of their motion to dismiss, the defendants argued that they had not purposefully availed themselves of the benefits and protections of Missouri law; that their Internet Web site was under construction and was not taking any online orders; that as of the hearing date the only orders taken over the telephone had been from within the state of New York; and that they had added a disclaimer to the Web site that stated that their merchandise was not available for sale in the state of Missouri. The plaintiff argued that the defendants had sufficient contacts with Missouri to satisfy due process. It argued that, by virtue of their Internet Web site, the defendants sought customers from across the country and that in the future it would be possible to order items from the online catalogue and the displayed toll-free telephone number. CONTACTS MINIMAL The court stated that, although the Web site was under construction and no online orders had been taken, it had previously found personal jurisdiction in Maritz v. Cybergold Inc., 947 F. Supp. 1328 (E.D. Mo. 1996), where the respective Web site was not yet fully operational. “The fact remains that defendants’ ultimate goal is to operate a fully functioning web site with the capacity to take on-line orders,” the court wrote. Also, the court wrote, the “defendants’ argument that they placed a disclaimer on the web site regarding the sale of merchandise in Missouri and the Web site’s lack of affiliation with plaintiff Uncle Sam’s Safari Outfitters, Inc., gains them little in the legal analysis. This disclaimer came after the commencement of this suit. The circumstances at the time the action is commenced control the determination of personal jurisdiction.” However, although the defendants’ Web site is available to anyone with Internet access, the mere operation of a Web site, without “something more,” is clearly insufficient as a basis for exercising personal jurisdiction, the court wrote, citing Cybersell Inc. v. Cybersell Inc., 130 F.3d 414 (9th Cir. 1997). The court concluded that the case fell into the middle of spectrum of Zippo Mfg. Co. v. Zippo Dot Com Inc., 952 F. Supp. 1119 (W.D. Pa. 1997) in that the defendants were operating a potentially interactive Web site due to its future online ordering capabilities but were clearly not doing business over the Internet at the time. The court cited Millennium Enterprises Inc. v. Millennium Music LP, 33 F. Supp. 2d 907, 920 (D. Or. 1999), which noted that the defendants in that case had done nothing more than publish an interactive Web site and had not purposefully entered into contracts with state residents through the Internet. “The nature, quality, and quantity of the contacts generated by the Web site are minimal,” the court wrote. “Like the defendants in Millennium Enterprises, defendants in this case did nothing more than set up an interactive web site. There is no evidence that anyone from Missouri accessed the Web site, let alone attempted to purchase anything over the telephone using the toll-free number provided. This fact distinguishes the instant case from Maritz, in which there was evidence that defendants transmitted information into Missouri approximately 131 times.” The relationship of plaintiff’s cause of action to the contacts “might be compelling,” the court wrote, “if there was evidence that anyone from Missouri had accessed the Web site. Plaintiff is concerned that those who access the site might confuse defendants’ Uncle Sam’s Army Navy Outfitters with its own Uncle Sam’s Safari Outfitters. Therefore, if there were significant contacts with the State of Missouri, they would be related to the cause of action. However, no evidence of such contacts has been submitted by plaintiff.” The court noted that Missouri had an interest in resolving the case because a Missouri corporation’s trademark was allegedly being infringed and the plaintiff had an interest in adjudicating the action in Missouri because it was a Missouri corporation. “However, these factors of the test are considered less important by the Eighth Circuit,” the court wrote. The plaintiff also argued that the cease-and-desist letter sent to defendants on Aug. 26, 1999, gave the defendants fair warning of being haled into court in Missouri. But, the court responded, the letter did not specifically suggest that the suit would be brought in Missouri but only referenced the federal court system. “A reasonable inference could be made that plaintiff might bring the suit in Missouri or another state. A threat to sue in an unspecified federal court is not fair warning that defendants might be haled into court in Missouri,” the court wrote. The court concluded that it lacked personal jurisdiction over the defendants. However, since the plaintiff had provisionally moved to transfer the case to the U.S. District Court for the Southern District of New York under 28 U.S.C. �1406�which, the court wrote, is broad enough to authorize the transfer of cases, however wrong the plaintiff may have been in filing his case as to venue, whether the court in which it was filed had personal jurisdiction over the defendants or not�the court denied the defendants’ motion to dismiss and transferred the action to the Southern District of New York.

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