The opinion of the court was delivered by: SHIRA A. SCHEINDLIN
SHIRA A. SCHEINDLIN, U.S.D.J.
Plaintiff, Taurus International Incorporated ("Taurus"), seeks preliminary and permanent injunctive relief and damages against defendants Titan Wheel International Inc. ("Titan Wheel") and Titan Tire Corporation ("Titan Tire") (collectively "Defendants"). Plaintiff alleges infringement of the TAURUS bull logo trademark and TAURUS word trademark in violation of Sections 32 (infringement of a registered mark) and 43(a) (false designation of origin) of the Lanham Act (15 U.S.C. §§ 1114 and 1125(a)), and for common law unfair competition.
Defendants move to have this action dismissed pursuant to Fed. R. Civ. P. 12(b)(2) and (3) for lack of personal jurisdiction and improper venue or, in the alternative, to transfer venue to a proper or more convenient forum pursuant to 28 U.S.C. §§ 1404(a), 1406(a). Because Taurus has failed to establish by a preponderance of the evidence that the Court has jurisdiction over the defendants, the Motion to Dismiss for lack of personal jurisdiction is granted.
Taurus, a New Jersey corporation with its principal executive offices in Wayne, New Jersey, is primarily engaged in the distribution of truck and farm tires manufactured by its parent company, a Hungarian corporation. Taurus has prominently and extensively used two trademarks in advertising and promoting its products throughout the United States. These two trademarks consist of: (i) a logo depicting a charging bull, and (ii) the word trademark "TAURUS." Both the bull logo and the word trademark are registered with the United States Patent and Trademark Office.
Titan Wheel, which manufactures steel wheels and rims for the off-highway vehicle market, is an Illinois corporation with its principal place of business in Quincy, Illinois. Titan Tire, a wholly owned subsidiary of Titan Wheel, is an Illinois corporation with its principal place of business in Des Moines, Iowa. It manufactures tires for agricultural and industrial vehicles. Neither defendant conducts business or maintains an office in New York, and defendants have never consented to personal jurisdiction in this State. See Declaration of Maurice M. Taylor, President and Chief Executive Officer of Titan Wheel, dated February 8, 1995 ("Taylor Decl.") at P 16.
In or around August 1994, Titan Wheel purchased Titan Tire. In or around October 1994, Titan Wheel announced its plans to begin using a logo consisting of a charging bull in connection with its farm tire business. Despite Taurus' earlier protests of infringement, Taurus learned, in December 1994, that Titan Wheel had actually started to use a bull logo on its 1994 Third Quarter Report to its shareholders disseminated throughout the United States, including at least one shareholder in New York City.
In its Complaint filed on February 2, 1995, Taurus claims that defendants' use of a design of an alleged "bull" infringes its own registered trademarks "Taurus" and a design of a "charging bull." Taurus' sole allegation of personal jurisdiction over Defendants is based on a Dun & Bradstreet Report indicating that a company known as 399 Venture Partners Inc., located in New York, New York, owns 11% of Titan Wheel's stock.
"As a major shareholder, 399 Venture Partners would have received the Third Quarter Report -- bearing defendant's infringing logo -- in this district." Plaintiff's Memorandum in Opposition to Defendants' Motion to Dismiss and for a Transfer of Venue ("Pl.'s Mem.") at 5.
New York's long-arm statute provides for jurisdiction over a non-domiciliary defendant who commits a tortious act within the state. N.Y. Civ. Prac. L. & R. 302(a)(2) (McKinney 1994) ("CPLR"). In addition, the Supreme Court has held that due process requires that a defendant have minimum contacts with and avail itself of the benefits and protections of the state in order for the court to exercise jurisdiction over it. International Shoe Co. v. Washington, 326 U.S. 310, 90 L. Ed. 95, 66 S. Ct. 154 (1945). Plaintiff has the burden of establishing that this Court has jurisdiction over defendant by a preponderance of the evidence. Cutco Indus. v. Naughton, 806 F.2d 361, 365 (2d Cir. 1986).
In its Complaint, Taurus asserts personal jurisdiction over defendants solely under CPLR § 302(a)(2). See also Pl.'s Mem. at 2 passim. In the Complaint, Taurus claims that defendants, who are concededly non-domiciliaries, have committed a tortious act within New York by Titan Wheel's mailing of its Third Quarter Report, containing the alleged infringing logo, to a New York shareholder. Complaint at P 14.
Ordinarily, a single mailing into the state would be insufficient to support a finding of personal jurisdiction. In Fox v. Boucher, 794 F.2d 34, 37 (2d Cir. 1986), the defendant allegedly committed a prima facie tort during a telephone conversation from New Jersey into New York. The Second Circuit stated the following:
one single telephone call made to New York State is insufficient contact to support a suit initiated in that forum against an out-of-state resident under either the contract or tort provisions of CPLR 302. See Mayes v. Leipziger, 674 F.2d 178 (2d Cir. 1982); Sterling Nat. Bank v. Southern Scrap Export Co., 468 F. Supp. 1100 (S.D.N.Y. 1979). The mere ...