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United States District Court, S.D. New York

January 18, 2005.

SBH, INC., Defendant.

The opinion of the court was delivered by: DEBORAH BATTS, District Judge


Plaintiff Foot Locker Retail, Inc. ("Foot Locker") commenced this action against Defendant SBH, Inc. ("SBH") alleging that SBH has violated federal and state trademark and unfair competition laws by interfering with Foot Locker's registration and use of the KINNEY family of trademarks, of which Foot Locker claims to be the rightful owner. SBH now moves to dismiss the Complaint for lack of personal jurisdiction pursuant to Federal Rule of Civil Procedure 12(b) (2), or, in the alternative, to transfer this case to the Eastern District of Missouri pursuant to 28 U.S.C. § 1404(a). For the following reasons, SBH's motion to dismiss or transfer venue is DENIED. I. BACKGROUND*fn1

Foot Locker is a corporation organized under the laws of New York and having a place of business at 112 West 34th Street, New York, New York. (Complaint ["Compl."] ¶ 4). A wholly-owned subsidiary of Foot Locker, Inc., Foot Locker is one of the world's leading footwear retailers, offering a wide variety of footwear products for sale in thousands of retail stores throughout the United States and the world. (Id. ¶ 6; Declaration of Gary Bahler ["Bahler Decl."] ¶ 1). Since 1894, Foot Locker and its predecessors in interest have used the marks "KINNEY," "KINNEY KIDS," and other marks containing the term "KINNEY" (collectively, the "KINNEY family of marks"), for footwear and retail services. (Compl. ¶ 7). Foot Locker is also the current owner of all statutory and common law rights in and to the KINNEY family of marks, and owns four United States trademark registrations containing the term KINNEY. (Id. ¶ 8).

  SBH is a corporation organized under the laws of Missouri, with its sole place of business at 677 North Ballas Road, St. Louis, Missouri, and it has only two employees, Steven Schuver, SBH's president, and his brother David Schuver, who is vice president. (Bahler Decl. ¶ 4; Declaration of Steven S. Schuver ["Schuver Decl."] ¶¶ 2-4). SBH is a trademark and patent holding company that gathers intellectual property, by purchase or aggression, and holds it with the goal of eventually licensing or selling the property to third parties. (Compl. ¶ 15). SBH has engaged in extensive activity in the footwear industry, regularly attending two large footwear shows held annually in Las Vegas and meeting with representatives from several major shoe companies. (Declaration of Michelle Mancino Marsh ["Marsh Decl."], Ex. A at 51). Through these outreach efforts, SBH has established business relationships with Nike, LA Gear, Payless Shoe Source, SG Footwear, Walmart and other shoe manufacturers and retailers around the country. (Id.)

  SBH has never maintained any bank accounts, security interests, real or personal property, or other assets in New York State, nor has it ever had any employees, agents, agents for service of process, shareholders or other representatives there. (Schuver Decl. ¶¶ 5, 8, 11). In addition, SBH has not made or entered into any contract in New York, nor does it derive any revenue from the State of New York or from residents of the State of New York (Id. ¶¶ 12-13). SBH does maintain a passive Internet website, accessible at the web address, which describes SBH's principal business services and other information relating to SBH but does not solicit customers from New York or any other locale and does not contain the word or mark KINNEY. (Id. ¶ 16). Visitors to the website cannot form contracts or transact any business with SBH via the website, but the website does contain email addresses by which website visitors may contact SBH to discuss its services. (Id.).

  In the fall of 2001, Steven Schuver placed a telephone call to Foot Locker's office in New York to ask whether it was in fact using the KINNEY registered trademarks and whether it would be interested in selling the trademarks to SBH. (Supplemental Declaration of Steven S. Schuver ["Schuver Supp. Decl."] ¶ 2; Marsh Decl., Ex. A at 27). Schuver received no response to the use question and was initially told that the trademarks were not for sale. (Marsh Decl., Ex. A at 27-28, Ex. B at 29). A series of phone calls between the two sides ensued at the conclusion of which Gary Bahler, Foot Locker, Inc.'s vice president and general counsel, informed Schuver that the price tag for the KINNEY trademarks was $50 million. (Marsh Decl., Ex. A. at 28, Ex. B at 30).

  Thereafter, in January 2002, SBH filed a Petition to Cancel Foot Locker's KINNEY trademark registrations with the United States Patent and Trademark Office's (PTO) Trademark Trial and Appeal Board ("the Cancellation Proceeding") and also filed three intent-to-use applications to register the KINNEY designation with the PTO. (Compl. ¶¶ 16-17; Bahler Decl. ¶ 3). Subsequently, in March 2003, in an effort to settle the Cancellation Proceeding, both Steven and David Schuver traveled to New York City for one day to meet with executives from Foot Locker, at which time "a possible business venture concerning the KINNEY marks" was discussed. (Bahler Decl. ¶ 4; Schuver Decl. ¶ 15).

  In June 2003, SBH discovered that Footstar, Inc., a New York-based competitor of Foot Locker's in the footwear and athletic apparel industry, had filed its own intent-to-use application in an attempt to register the KINNEY trademark. (Schuver Supp. Decl. ¶ 3; Marsh Decl., Ex. B at 14; Bahler Decl. ¶ 4). Steven Schuver then made a telephone call to Footstar from SBH's offices in Missouri to discuss SBH's licensing of its three intent-to-use applications for the KINNEY trademarks to Footstar; however, no agreement was made between the two companies. (Marsh Decl. ¶¶ 15-16; Schuver Supp. Decl. ¶ 3). In response to SBH's contact with Footstar and other alleged efforts by SBH "to collaborate with others to use and license KINNEY marks . . . and [to] represent? falsely that SBH is the owner of the marks," Foot Locker commenced the present action, alleging (1) false designation of origin and misrepresentation in commerce under 15 U.S.C. § 1125(a), (2) deceptive trade practices under N.Y. Gen. Bus. L. § 349, (3) common law unfair competition, misappropriation, and deceptive trade practices, and seeking a declaratory judgment as to Plaintiff's rights to the "KINNEY family of marks." (Compl. ¶¶ 19, 23, 31, 40, 45).

  SBH now moves to dismiss the present action under Federal Rule of Civil Procedure 12(b)(2) for lack of personal jurisdiction, arguing that it does not have the requisite contacts with the State of New York to satisfy either the New York long-arm statute or constitutional due process. (Memorandum in Support of Defendant SBH, Inc.'s Motion to Dismiss for Lack of Personal Jurisdiction ["Def. Mem."] at 1). In the alternative, SBH requests that the Court transfer venue to the District of Missouri, Eastern Division pursuant to 28 U.S.C. § 1404(a) because such transfer is warranted by the convenience of the parties and witnesses and the interests of justice. (Id.) II. DISCUSSION

  A. Personal Jurisdiction

  In the face of a challenge to personal jurisdiction under Rule 12(b)(2), the plaintiff has the burden of establishing in personam jurisdiction. See Robinson v. Overseas Military Sales Corp., 21 F.3d 502, 507 (2d Cir. 1994). "Eventually personal jurisdiction must be established by a preponderance of the evidence, either at an evidentiary hearing or at trial. But where the issue is addressed on affidavits, all allegations are construed in the light most favorable to the plaintiff and doubts are resolved in the plaintiff's favor." A.I. Trade Finance, Inc. v. Petra Bank, 989 F.2d 76, 79 (2d Cir. 1993).

  To determine whether personal jurisdiction is proper over a nonresident defendant in a diversity case, "the court must look first to the long-arm statute of the forum state. If the exercise of jurisdiction is appropriate under that statute, the court then must decide whether such exercise comports with the requisites of due process." Bensusan Restaurant Corp. v. King, 126 F.3d 25 (2d Cir. 1997) (citing PDK Labs, Inc. v. Friedlander, 103 F.3d 1105, 1108 (2d Cir. 1997)); Metropolitan Life Ins. Co. v. Robertson-Ceco Corp., 84 F.3d 560, 567 (2d Cir.), cert. denied, 519 U.S. 1006 (1996); Bank Brussels Lambert v. Fiddler Gonzalez & Rodriguez, 305 F.3d 120, 127 (2d Cir. 2002). 1. New York Long-Arm Statute

  New York's long-arm statute confers personal jurisdiction over any non-domiciliary who:

(1) transacts any business within the state or contracts anywhere to supply goods or services in the state; or
(2) commits a tortious act within the state . . ., or
(3) commits a tortious act without the state causing injury to person or property within the state . . . if he
(i) regularly does or solicits business, or engages in any other persistent course of conduct, or derives substantial revenue from goods used or consumed or services rendered, in the state, or
(ii) expects or should reasonably expect the act to have consequences in the state and derives substantial revenue from interstate or international commerce.
N.Y. CPLR § 302(a) (1) — (3).

  Plaintiff contends that the Court can exercise long-arm jurisdiction over Defendant under § 302(a)(3)(ii). (Plaintiff Footlocker's Memorandum in Opposition to Defendant's Motion to Dismiss ["Pl. Mem."] at 10).*fn2 Conferral of jurisdiction under this provision requires the satisfaction of five elements: (1) that defendant committed a tortious act outside of New York state, (2) that plaintiff's cause of action arises from that act, (3) that the act caused injury to a person or property within New York State, (4) that defendant expected or should reasonably have expected the act to have consequences in New York State, and (5) Defendant derived substantial revenue from interstate commerce. LaMarca v. Pak-Mor Manufacturing Co., 95 N.Y.2d 210, 215, 713 N.Y.S.2d 304, 307 (2000).

  a. Commission of Tortious Act Outside of New York Giving Rise to Present Causes of Action

  In the present case, Defendant allegedly contacted Footstar, Inc., a New-York based competitor of Plaintiff, by telephone from its offices in Missouri in June 2003 in an attempt to license to Footstar its three intent-to-use applications for the KINNEY trademarks that actually belonged to Plaintiff. (Marsh Decl., Ex. B at 14-16; Schuver Supp. Decl. ¶ 3). Such a communication on the part of Defendant, originating from outside New York State, contained false representations regarding Plaintiff's trademark rights and, together with other allegedly similar conduct by Defendant, forms the basis for Plaintiffs causes of action for federal, state and common law unfair competition and deceptive trade practices. (See Compl. ¶¶ 19-43). Thus, the first two elements of § 302(a)(3)(ii) jurisdiction are satisfied. b. Causing Injury Within New York

  As for the third element, it "has long been held that the residence or domicile of the injured party within [New York State] is not a sufficient predicate for jurisdiction, which must be based upon a more direct injury within the State." Fantis Foods, Inc. v. Standard Importing, Co., 49 N.Y.2d 317, 326, 425 N.Y.S.2d 783, 787 (1980); see also American Network, Inc. v. Access America/Connect Atlanta, Inc., 975 F.Supp. 494, 497 (S.D.N.Y. 1997) ("[I]t is not sufficient to satisfy section 302 (a)(3) that a plaintiff is located in New York and lost profits there.") (citing Fantis). Thus, the fact that Plaintiff is a New York Corporation with a place of business in New York City is not enough, by itself, to establish that Defendant's out-of-state tort caused injury within New York State.

  However, the in-state injury element is satisfied when the tort allegedly caused or threatens to cause harm to a business in the New York market through, for example, lost sales or lost customers. See, e.g., Sybron Corp. v. Wetzel, 46 N.Y.2d 197, 205-06, 413 N.Y.S.2d 127, 131-32 (1978) (in suit by New York corporation for theft of trade secrets, the threatened loss of plaintiff's customers and sales in New York constituted injury within the state); American Network, 975 F.Supp. at 497 ("the requirement of injury `within the state' is met by plaintiff's claims of harm and threatened harm in the New York market resulting from the confusion and deception of New York computer users" caused by defendant's use of an offending mark on its website). Similar to the trademark infringement in American Network, Defendant's licensing of the KINNEY marks to a New York competitor of Plaintiff's would likely harm Plaintiff in the New York market by confusing potential New York shoe consumers. Plaintiff has therefore also met the "in-state injury" requirement of § 302(a)(3)(ii).

  c. Foreseeability of Consequences in New York

  The reasonable expectation of New York consequences requirement "relates to forum consequences generally and not to the specific event which produced injury within the state." Fantis, 49 N.Y.2d at 326 n. 4, 425 N.Y.S.2d at 787 n. 4. When interpreting this requirement in the commercial tort context, "the New York courts have focused on whether there were concrete facts known to the nondomiciliary [defendant] that should have alerted it that its product would enter the New York market." American Network, 975 F.Supp. at 497 (citing cases); see also Martinez v. American Standard, 91 A.D.2d 652, 654, 457 N.Y.S.2d 97, 99 (N.Y.App. Div. 2d Dep't 1982), (refusing to exercise jurisdiction over out-of-state defendant under § 302(a)(3)(ii) where there were "no tangible manifestations in [the] record" indicating defendant "knew or should have known" that type of product which ultimately caused injury to plaintiff was destined for New York), aff'd 60 N.Y.2d 873, 470 N.Y.S.2d 367 (1982). Moreover, as is also required by federal due process, "it is not enough that a defendant foresaw the possibility that is product would find its way here; foreseeability must be coupled with evidence of a purposeful New York affiliation, for example, a discernible effort to directly or indirectly serve the New York market." Schaadt v. Kutter, 169 A.D.2d 969, 970, 564 N.Y.S.2d 865, 866 (N.Y.App. Div. 3d Dep't 1991) (citing Martinez, 91 A.D.2d at 653-54, 457 N.Y.S.2d at 99); see also Kernan v. Kurz-Hastings, Inc., 175 F.3d 236, 241 (2d Cir. 1999) (noting that New York courts analyzing the fourth element of § 302(a)(3)(ii) jurisdiction require "purposeful availment of the benefits of the laws of New York such that the defendant may reasonably anticipate being haled into court there.") (citing cases).

  In the present case, Defendant argues that Plaintiff "has not made a showing that Defendant made any effort to serve the New York market." (Def. Mem. at 7; Def. Reply at 6-7). However, in contacting Footstar in June 2003 in an attempt to license its intent to use applications for the KINNEY trademark, Defendant was clearly trying to sell its product, intellectual property, to a New York consumer. Moreover, Defendant knew or should have known that Footstar's acquisition of intent to use applications for the KINNEY mark would interfere with Plaintiff's trademark rights within New York since Footstar competed with Plaintiff's business specifically in New York. See Sybron, 46 N.Y.2d at 206, 413 N.Y.S.2d at 132 (foreseeable that defendant's hiring of New York-based plaintiff's former employee who possessed plaintiff's trade secrets would have consequences for plaintiff in New York). Thus, the fourth element of § 302(a)(3)(ii) jurisdiction is also satisfied.

  d. Substantial Revenue from Interstate Commerce

  Finally, the record currently before the Court also shows that Defendant derives substantial revenue from interstate commerce. Defendant acknowledges that its representatives travel twice a year to footwear industry shows in Nevada where they meet with various shoe companies to develop business relationships, and majority of the shoe companies that Defendant claims to do business with are located outside of Missouri, Defendant's principal place of business. (Marsh Decl., Ex. A at 51).

  Accordingly, all of the statutory requirements for the exercise of personal jurisdiction under CPLR § 302(a)(3)(ii) are satisfied. 2. Due Process

  The exercise of personal jurisdiction over a nonresident defendant comports with due process if the defendant has had "certain minimum contacts with [the forum state], such that the maintenance of the suit does not offend `traditional notions of fair play and substantial justice.'" See International Shoe v. Washington, 326 U.S. 310, 316 (1945) (quoting Milliken v. Meyer, 311 U.S. 457, 463-64 (1940)). Therefore, as the Second Circuit has noted, the due process test for personal jurisdiction has "two related components: the `minimum contacts' inquiry and the `reasonableness' inquiry." Metropolitan Life Ins. v. Robertson Ceco-Corp., 84 F.3d 560, 567 (2d Cir. 1996). The Court will address each component separately.

  a. Minimum Contacts

  The minimum contacts test rests on whether a defendant's "conduct and connection with the forum state" are such that "it should reasonably anticipate being haled into court there." World-Wide Volkswagen Corp. v. Woodson, 444 U.S. 286, 297, 100 S.Ct. 559, 567, 62 L.Ed.2d 490 (1980). A non-resident defendant has minimum contacts with the forum state if he commits "some act by which [he] purposely avails [himself] of the privilege of conducting activities within the forum state, thus invoking the benefits and protection of its laws." Hanson v. Denckla, 357 U.S. 235, 253, 78 S.Ct. 1228, 1239, 2 L.Ed.2d 1283 (1940). Moreover, a defendant's contacts with the forum must be "continuous or systematic," or the suit must arise out of or be related to those contacts. Helicopteros Nacionales de Colombia, S.A. v. Hall, 466 U.S. 413, 414-16, 104 S.Ct. 1868, 1872-73, 80 L.Ed.2d 404 (1984).

  As discussed above, Defendant purposely availed itself of the privilege of conducting activities in New York when it attempted to license its intent to use applications for the KINNEY marks to Footstar, a New York shoe company. See American Network, Inc., 975 F.Supp. at 499 (holding that defendant "availed itself of a commercial benefit" in New York through its contacts with its New York customers). Moreover, it was this contact with Footstar as well as similar contacts that Defendant made with other footwear companies that in part form the basis of Plaintiff's causes of action in the present case. (See Compl. ¶ 19). Finally, it was reasonable for Defendant to anticipate being brought into court in New York to defend against claims arising from such contacts because one such contact was made in New York. See American Network, 975 F.Supp. at 499 ("It was reasonable for defendant to anticipate being haled into New York to defend itself against claims arising from the use of its mark in selling its services because defendant sold its services there."). Thus, Defendant clearly has the requisite minimum contacts with New York to satisfy due process requirements.

  b. Reasonableness

  Beyond minimum contacts, the Court may consider additional factors to determine whether the exercise of personal jurisdiction "would comport with `fair play and substantial justice,'" including: (1) the burden on the defendant, (2) the forum state's interest in adjudicating the dispute, (3) the plaintiff's interesting obtaining convenient and effective relief, (4) the interstate judicial system's interest in obtaining the most efficient resolution of controversies, and (5) the shared interest of the several states in furthering substantive social policies. Burger King v. Rudzewicz, 471 U.S. 462, 476-77, 105 S.Ct. 2174, 2184, 85 L.Ed.2d 528 (1985) (citing World-Wide Volkswagen). Importantly, however, where, as here, it has already been determined that the defendant has minimum contacts with the forum state, the defendant "must present a compelling case that the presence of some other considerations would render jurisdiction unreasonable." Id. at 477.

  Defendant argues that defending this lawsuit in New York would impose "a substantial burden" on it by requiring its president, one of its two employees, to attend trial in New York and therefore be out of the office, and by forcing it to incur travel, lodging and meal expenses. (Def. Mem. at 9). However, while there are clearly many difficulties associated with requiring Defendant, a Missouri corporation with its principal place of business there, to defend this suit in New York, "the conveniences of modern communication and transportation ease what would have been a serious burden only a few decades ago." Metropolitan Ins., 84 F.3d at 574. Moreover, given Defendant's "self-proclaimed frequent and extensive business travel" and the fact that it can and does conduct much of its business by phone and/or over the Internet, the Court does not see how litigating this case in New York imposes any "special or unusual burden" on Defendant. Hasbro, Inc. v. Clue Computing, Inc., 994 F.Supp. 34, 45 (D. Mass. 1997) (finding Massachusetts court's exercise of personal jurisdiction by a over a Colorado defendant in trademark infringement action reasonable even when defendant's sole full-time employee and witness resides in Colorado). Thus, this "burden" factor, "taken alone, . . . falls short of overcoming ? [P]laintiff's threshold showing of minimum contacts." Metropolitan Ins., 84 F.3d at 574.

  Defendant also argues that the "forum interest" factor cuts against the Court's exercising personal jurisdiction over it, contending that "since this case involves federal trademark infringement under the Lanham Act, New York does not have a strong interest in applying its law to the controversy." (Def. Mem. at 9). However, Defendant overlooks that Plaintiff has also brought claims based on New York State law, specifically New York General Business Law § 349 (see Compl. Count II), and New York common law (see Compl. Count III), and New York's interest in resolving questions pertaining to its own law "weighs in favor of the reasonableness of the [C]ourt's exercise of jurisdiction over" Defendant in this case. Kernan, 175 F.3d at 244; see also Roberts-Gordon, LLC v. Superior Radiant Products, Ltd., 85 F.Supp.2d 202, 218 (W.D.N.Y. 2000) (holding that "forum interest" factor weighed in favor of exercising personal jurisdiction over foreign defendant where suit involved both federal Lanham Act and New York state and common law trademark and unfair competition claims) (citing Kernan). Moreover, New York "has an interest in preventing trademark infringement against those subject to the protections and requirements of its laws, which includes Plaintiff, a New York Corporation that does business in New York. Hasbro, Inc., 994 F.Supp. at 45; see also Photoactive Productions, Inc. v. Al-Or Int'l, Ltd., 99 F.Supp.2d 281, 290 (E.D.N.Y. 2000) ("New York has an undeniable interest in providing redress to its own citizens.").

  As for the remaining "reasonableness" factors, Plaintiff's interest in obtaining convenient and effective relief would certainly be furthered by litigating this case in New York, where Plaintiff is incorporated and has a place of business. See Bradley v. Staubach, No. 03 Civ. 4160, 2004 WL 830066, at *6 (S.D.N.Y. Apr. 13, 2004) ("[B]ecause [Plaintiff] is a New York resident, he has a strong interest in litigating this action in New York."); Afloat in France, Inc. v. Bancroft Cruises, Ltd., No. 03 Civ. 917, 2003 WL 22400213, at *8 (S.D.N.Y. Oct. 21, 2003) ("[B]ecause [Plaintiff] is a New York corporation with its principal place of business in New York, plaintiff has a strong interest in litigating this action in New York."). Meanwhile, the judicial efficiency factor, which primarily involves "where witnesses and evidence are likely to be located," Metropolitan Life Ins., 84 F.3d at 574, is at best a wash because, as the record makes clear, both some of the potential evidence and witnesses in this case will likely be located in New York, while the rest will not. See Bank Brussels Lambert v. Fiddler, Gonzalez & Rodriguez, 305 F.3d 120, 130 (2d Cir. 2002) (holding that judicial efficiency factor "both supports and undermines" defendant's argument against personal jurisdiction where "many of the witnesses and much of the evidence . . . will likely be located in Puerto Rico, others . . . likely be located in New York."). Finally, because neither party has "suggested or shown that any substantive social policies would be furthered or undermined by permitting the case against [Defendant] to go forward in New York," this factor "does not weigh in either party's favor." Kernan, 175 F.3d at 245.

  In sum, because the reasonableness factors do not present a "compelling case" that the Court's exercise of personal jurisdiction over Defendant in this case would be unreasonable, such exercise comports with the requirements of due process. Accordingly, since the requirements of both CPLR § 302(a)(3)(ii) and due process have been satisfied, the Court may properly exercise personal jurisdiction over Defendant in this case.

  B. Transfer of Venue Under 28 U.S.C. § 1404

  In the alternative, Defendant argues that the Court should transfer this case to the District of Missouri, Eastern Division pursuant to 28 U.S.C. § 1404(a). (Def Mem. at 10-11).

  Under 28 U.S.C. § 1404(a), "[f]or the convenience of the parties, 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." "[M]otions for transfer lie within the broad discretion of the district court and are determined upon notions of convenience and fairness on a case-by-case basis." In re Cuyahoga Equip. Corp., 980 F.2d 110, 117 (2d Cir. 1992). "The burden of demonstrating the desirability of transfer lies with the moving party, and in considering the motion for transfer, a court should not disturb a plaintiff's choice of forum unless the defendants make a clear and convincing showing that the balance of convenience favors defendants' choice." Orb Factory, Ltd. v. Design Science Toys, Ltd., 6 F.Supp.2d 203, 208 (S.D.N.Y. 1998) (internal quotations and citations omitted); In re Nematron Corp. Securities Litig., 30 F.Supp.2d 397, 400 (S.D.N.Y. 1998) (same).

  The inquiry on a motion to transfer is two-fold. First, the district court must determine whether the case could have been brought in the proposed transferee district. Herbert, Ltd. Partnership v. Electronic Arts, Inc., 325 F.Supp.2d 282, 285 (S.D.N.Y. 2004); In re Nematron, 30 F.Supp.2d at 400. If the answer to this question is "yes", then the court must determine whether, considering the convenience of the parties and witnesses and the interest of justice, a transfer is appropriate. In re Nematron, supra, at 400 (citation omitted); see also Orb Factory, 6 F.Supp.2d at 208 (same). In making this second determination, a district court will generally consider the following factors: (1) convenience of witnesses; (2) convenience of the parties; (3) location of relevant documents and the relative ease of access to sources of proof; 4) the locus of the operative facts; (5) the availability of process to compel the attendance of unwilling witnesses; (6) the relative means of the parties; (7) the comparative familiarity of each district with the governing law; (8) the weight accorded to plaintiff's choice of forum; and (9) judicial economy and the interests of justice. Johnson & Johnson Vision Care, Inc. v. CIBA Vision Corp., No. 04 Civ. 7369, 2004 WL 2314424, at *1 (S.D.N.Y. Oct. 13, 2004); Herbert, 325 F.Supp.2d at 285-86; Orb Factory, 6 F.Supp.2d at 208.

  Because, in the present case, neither party disputes that the Plaintiff's claims could have been brought in the District of Missouri, Eastern Division, the proposed transferee court, this Court will proceed to weighing of the convenience/fairness factors. Moreover, because the weight accorded Plaintiff's forum choice will affect the burden Defendant must meet on the remaining eight factors, the Court will consider this factor first.

  1. Weight Accorded Plaintiff's Forum Choice

  "A court generally accords significant weight to a plaintiff's forum choice." Herbert, 325 F.Supp.2d at 291 (citations omitted). "Where the factors are equally balanced, the plaintiff is entitled to its choice of forum." Orb Factory, 6 F.Supp.2d at 210 (citing Teachers Ins. and Annuity Ass'n of America v. Butler, 592 F.Supp. 1097, 1106 (S.D.N.Y. 1984)). "Further, the plaintiff's choice is generally accorded more deference where there is a material connection or significant contact between the forum state and the underlying events allegedly underlying the claim, . . . or where the plaintiff is a resident of the forum district." Id. at 210 (citations omitted); see also In re Nematron, 30 F.Supp.2d at 405 (same). "However, the emphasis placed by a court on this choice diminishes where `the operative facts upon which the litigation is based bear little connection to the chosen forum.'" Id. (quoting Nieves v. American Airlines, 700 F.Supp. 769, 772 (S.D.N.Y. 1988)).

  In the present case, Plaintiff's choice of the Southern District of New York as the forum in which to litigate its claims is clearly entitled to significant weight. Plaintiff is a New York corporation with a place of business in this judicial district. (See Compl. ¶ 4). Moreover, as discussed at length above, some of Defendant's alleged misconduct giving rise to Plaintiff's claims-namely, the communications with Footstar-were directed towards New York, and several communications between the parties regarding Plaintiff's trademark rights over the KINNEY marks, which are the focus of the present lawsuit, took place in New York. (See Schuver Supp. Decl. ¶ 2; Bahler Decl. ¶ 4). Thus Defendant must show that the remaining eight factors weigh heavily in favor of the District of Missouri, Eastern Division for the Court to grant the § 1404(a) transfer motion. 2. Convenience of Witnesses and Parties

  In the present case, likely witnesses will come from New York (Plaintiff's and Footstar's employees), Missouri (Defendant's officers and employees), and from neither state (employees of other companies to which Defendant allegedly tried to license intent to use rights for the KINNEY marks). Thus, this factor does not strongly favor transfer.

  As for convenience of the parties themselves, Defendant reiterates its argument that it will be inconvenienced by litigating this case in New York since doing so will cause its only two employees to be out of the office and will force it to incur travel, meal and lodging expenses. (Def. Mem. at 11). However, as Plaintiff points out, neither employee will have to travel anywhere until trial, as Plaintiff is willing to depose them at Defendant's offices in Missouri, and the trial itself will likely only take a few days so that Defendant will only have to incur a few nights of travel, meals and lodging expenses. (Pl. Mem. at 14). Moreover, as discussed above, Defendant has acknowledged that its officers/employees conduct much of their business outside of the office and by telephone and internet so that their absence from Defendant's offices is not likely to impose a significant burden on Defendant. Thus, overall, this factor at most only slightly favors Defendant, which is not enough to overcome Plaintiff's forum choice. 3. Location of Relevant Documents and Ease of Access to Sources of Proof

  As with potential witnesses, the potentially relevant documents and other sources of proof in this case are located both in New York, Missouri and other places. Thus, this factor is also a wash.

  4. Locus of Operative Facts

  Similarly, the operative facts in this case are by no means centered in Missouri, especially since Defendant's communications with Footstar and with Plaintiff regarding the KINNEY marks were directed at or actually took place in New York. Thus, this factor also does not sufficiently support transfer.

  5. Availability of Process to Compel Attendance of Unwilling Witnesses

  Defendant offers absolutely no evidence that any potential witnesses in this case might refuse to testify or otherwise appear in this case. Thus, Defendant has also failed to meet its substantial burden with respect to this factor. 6. Relative Means of the Parties

  "Although courts can consider the relative means of parties, this factor is not entitled to great weight where plaintiff and defendant are both corporations." Toy Biz, Inc. v. Centuri Corp., 990 F.Supp. 328, 331 (S.D.N.Y. 1998) (citation omitted); Student Advantage, Inc. v. Int'l Student Exchange Cards, Inc., No. 00 Civ. 1971, 2000 WL 1290585, at *8 (S.D.N.Y. Sep. 13, 2000) (same) (citing Toy Biz). Further, "any party arguing for a transfer on this basis must offer documentation showing that granting or denying the transfer would be unduly burdensome," id. (citation omitted), but, as discussed above, Defendant has failed to show that litigating the present case in New York would be unduly burdensome on it. Thus, this factor also does not merit transfer.

  7. Familiarity with the Governing Law

  The Court assumes that a federal court in Missouri has as much familiarity with federal trademark law as it does. However, having presided over many diversity cases involving New York law, this Court is undoubtedly more familiar with the law governing Plaintiff's state and common law claims than a Missouri federal court would be. Thus, this factor weighs strongly against transfer. 8. Judicial Economy and Interests of Justice

  Again, Defendant, having offered no evidence or argument with respect to this factor, has again clearly failed to make a strong showing in favor of transfer. See Student Advantage, Inc., 2000 WL 1290585, at * 8 (finding that where defendant failed to address efficiency/interests of justice factor, such factor did not favor transfer).

  Thus, overall, consideration of the convenience/fairness factors makes clear that Defendant has failed to meet its burden of clearly demonstrating that transfer to the District of Missouri, Eastern Division is warranted under 28 U.S.C. § 1404(a). III. CONCLUSION

  For the foregoing reasons, Defendant's motion to dismiss for lack of personal jurisdiction, in the alternative, to transfer venue pursuant to 28 U.S.C. § 1404(a) is DENIED.*fn3 Defendant shall answer the Complaint no later than twenty (20) days from the date of this Order.


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