The opinion of the court was delivered by: ROBERT SWEET, Senior District Judge
Defendant Gary A. Giddings ("Giddings") has moved to dismiss or
transfer the action by plaintiff Mattel, Inc. ("Mattel"). Mattel, in
turn, has moved for summary judgment on its claims against defendants
Procount Business Services, 877 NetMall, Inc. ("877NetMall") and Giddings
(collectively, "Defendants") under the Anticybersquatting Consumer
Protection Act of 1999, 15 U.S.C. § 1125(d). For the reasons set forth
below, Giddings' motion is denied in part and granted in part, and
Defendants' motion is denied. Defendants Procount Business Services and
877NetMall are ordered to seek counsel, and this action will be
transferred to the Southern District of Texas.
Mattel commenced this action against Defendants on September 16, 2003.
The instant motions were marked fully submitted on November 19, 2003.
Mattel is a corporation organized and existing under the laws of the
State of Delaware with its principal place of business in El Segundo,
Procount Business Services is a sole proprietorship owned by Giddings.
It is in the business of selling toys and has its place of business in
877NetMall is a corporation organized and existing under the laws of
the State of Texas with its principal place of business in Houston,
Texas. 877NetMall is owned by Giddings.*fn1
Giddings is an individual residing in Houston, Texas.
The facts are set forth based upon the parties' pleadings and
Mattel is the world's largest manufacturer of toys, games, and
playthings. In 1959, Mattel co-founder, Ruth Handler, created the Barbie
doll. Mattel has caused certain trademarks to be registered in the United
States Patent and Trademark Office on the Principal Register.
MetalToys.com is an Internet only specialty toy store.*fn2
It features vintage toy reproductions primarily constructed of metal, but
in June 2002, the product line was expanded to include all types of
toys, including 10 licensed "Barbie Classic" items. On June 20, 2002,
Giddings purchased the virtual domain,*fn3 BarbieToy.com, and pointed it
to www.metaltoys.com/Barbie.htm. In May 2003, Giddings added 13 Mattel
licensed "Barbie Retro" items, purchased the virtual domain,
BarbieRetro.com, and pointed it to
http://www.metaltoys.com/BarbieRetro.htm. Procount Business Services owns
the domain name, MetalToys.com and the virtual domains, BarbieToy.com and
BarbieRetro.com. Mattel makes money when its licensed products are sold
From the MetalToys.com site, Mattel's investigator, Michael Falson
("Falson"), purchased a Barbie Tea Set and a Barbie Magic Paper Doll,
which Defendants shipped into the Southern District of New York.
Mattel seeks a transfer of the domain names, an injunction, statutory
damages, and attorneys' fees.
I. Defendants Procount Business Services and 877NetMall Need to Seek
Defendants Procount Business Services and 877NetMall must seek counsel
to represent them in this action. "[I]t is well established that neither
corporations nor partnerships may appear in federal courts except by duly
licensed attorneys." Kruman v. Christie's Int'l PLC, No. 00 Civ. 6322,
2003 WL 21277116, at *1 (S.D.N.Y. June 2, 2003); see also Rowland v.
California Men's Colony, 506 U.S. 194, 201-02 (1993) (explaining that "
[i]t has been the law for the better part of two centuries . . . that a
corporation may appear in the federal courts only through licensed
counsel," and 28 U.S.C. § 1654 "does not allow corporations,
partnerships, or associations to appear in federal court otherwise than
through a licensed attorney"); ...