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FRENCH TRANSIT, LTD. v. MODERN COUPON SYS.

June 27, 1994

FRENCH TRANSIT, LTD., Plaintiff,
v.
MODERN COUPON SYSTEMS, INC., LEONARD FELDMAN, LARRY MORRIS individually and d/b/a J&L PRODUCTS and d/b/a DEODORANT STONES OF AMERICA, HARGEN DISTRIBUTING, INC. AND CHITTI KANG, Defendants.



The opinion of the court was delivered by: ALLEN G. SCHWARTZ

 ALLEN G. SCHWARTZ, DISTRICT JUDGE:

 Defendant, Larry Morris, moves pursuant to 28 U.S.C. § 1391(b) to dismiss the complaint for improper venue, or in the alternative, to sever the action and transfer the portion of the action relating to him to the District of Arizona, pursuant to 28 U.S.C. § 1406(a). For the reasons set forth below, defendant's motion is granted and this action is transferred to the District of Arizona.

 I. BACKGROUND

 Plaintiff's Complaint, filed on or about October 1, 1991 ("Complaint") alleges that Defendant Larry Morris' ("Defendant") sale of "Nature's Crystal" deodorant stones infringes on its registered trademark and trade dress for "Le Crystal Naturel". Complaint at P 14. Plaintiff alleges that because Plaintiff's and Defendant's trademarks and trade dress appear on virtually identical products and are sold in almost identical streams of commerce, there exists a likelihood of confusion among consumers. Complaint at P 15.

 Individual defendant Larry Morris ("Defendant") does business as J&L Products and Deodorant Stones of America. Complaint at P 5c. Defendant processes and distributes orders for his products, including Nature's Crystal, from Arizona, and he maintains his business offices and records in Arizona. Defendant presently has only three employees. These employees, as well as Defendant's past employees, all reside in Arizona. Defendant, himself, resides in Arizona, where he supports and cares for his minor daughter.

 Plaintiff makes specific allegations against Defendant for trademark and trade dress infringement and has submitted evidence in support of those allegations. First, Plaintiff alleges that Defendant has sold Nature's Crystal in this District. Although Plaintiff provides evidence that his agent obtained Nature's Crystal from retailers *fn1" in this District, *fn2" Defendant denies that he has sold Nature's Crystal in this District. No evidence (such as order forms and packing slips) suggests that Defendant directly shipped any Nature's Crystals to this District. Defendant testified at his deposition, and later submitted an affidavit, *fn3" to the effect that: (1) he has done business throughout the country, (2) he sells products to distributors and to mail order houses nationwide, (3) at least some of the distributors or mail order houses sell their merchandise throughout the country, (4) he does not have representatives or distributors in New York State; and (5) the retailers in this District from whom Nature's Crystals are available are not included on his customer list. Given Defendant's testimony regarding nationwide distributors and the purchase of Nature's Crystal in this District by Plaintiff's agent, we must infer that Plaintiff asks this Court to conclude either that Defendant has misrepresented the scope of his direct sales or that his distributors sell Nature's Crystal to retailers in the Southern District of New York.

 Second, Plaintiff alleges that Defendant solicited business for his product in this District. Plaintiff offers fifteen packing slips *fn4" relating to another of Defendant's products, Thai Deodorant Stones, that Defendant sent to addresses in this District. Plaintiff alleges that these packing slips contained a "solicitation" of future sales of Defendant's products, *fn5" including Nature's Crystal. Defendant points out that the packing slips in question merely contain a list at the bottom of the form of Defendant's products. He also testified that he has not placed any advertisements in local newspapers in this District.

 Lastly, Plaintiff also alleges that actual confusion of the two products has occurred because Defendant had filled orders from co-defendant, Modern Coupon Systems, which had requested a product identified as "Le Crystal". In response, Defendant contends that those orders were filled with Thai Deodorant Stones at a time when it did not sell Nature's Crystal.

 In his motion to dismiss, Defendant, alternatively, asks this Court to transfer this action to the District of Arizona. Defendant testifies that it would be "unduly burdensome" for him to defend this action in the Southern District of New York because "all operative facts and witnesses are located in Arizona", and because he cannot leave his minor daughter or his business unattended. See Exhibit D to Defendant's Reply Memorandum. Plaintiff responds that the witnesses and evidence in this action are located in a number of districts throughout the country, and the sole witness for the defense is Defendant, himself. Additionally, Plaintiff requests that this Court transfer the entire action for trial in accordance with 28 U.S.C. § 1406(a) in the event that this Court determines that venue is not proper in this District.

 II. DISCUSSION

 A. DISMISSAL OF COMPLAINT

 Defendant moves to dismiss the complaint for improper venue as to him. Venue in trademark and unfair competition cases is governed by the general federal venue statute, 28 U.S.C. § 1391(b). *fn6" Section 1391(b) provides, in pertinent part, that:

 
"(b) A civil action wherein jurisdiction is not founded solely on a diversity of citizenship may, except as otherwise provided by law, be brought only in . . . (2) a judicial district in which a substantial part of the events or omissions giving rise to the claim occurred . ...

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