The opinion of the court was delivered by: Leslie G. Foschio United States Magistrate Judge
This case was referred to the undersigned by Honorable Richard J. Arcara on January 21, 2005, for all pretrial motions. The matter is presently before the court on Plaintiff's motion for leave to effect service on Defendants Escape Technologies and Jose Perez Parades by an alternative method (Doc. No. 19), filed November 5, 2005.
Plaintiff Dot Com Entertainment Group, Inc. ("Plaintiff" or "DCEG"), commenced this action on May 21, 2004, alleging causes of action under 35 U.S.C. § 1, et seq., for patent infringement, inducement of infringement, and contributory infringement against Defendants The Cyberbingo Corporation ("Cyberbingo"), Gonzalo Gomez ("Gomez"), Escape Technologies ("Escape"), and Jose Perez Parades ("Parades"). In particular, Plaintiff, who is the owner by assignment of United States Patent No. 6,585,590 ("the '590 Patent"), entitled "METHOD AND SYSTEM FOR OPERATING A BINGO GAME ON THE INTERNET," issued by the United States Patent and Trademark Office on July 1, 2003, maintains that until February 4, 2002, Cyberbingo licensed the use of the '590 Patent though a licensing arrangement with dot com (antigua) Ltd., a subsidiary of DCEG ("the Licensing Agreement"). Complaint ¶¶ 9, 16. Plaintiff further alleges that Cyberbingo and Escape infringed the '590 Patent by developing similar software technologies for an Internet bingo game, which were then promoted and offered for license by players who would have otherwise licensed the use of the '590 Patent. Complaint ¶¶ 15-16.
Defendants Cyberbingo and Gomez ("Served Defendants") were served with a summons and complaint in this action. However, Defendants Escape and Parades ("Unserved Defendants") have yet to be served despite Plaintiff's several attempts at service by different methods at different addresses. As such, on November 4, 2005, Plaintiff filed the instant motion seeking leave to serve the summons and Complaint on Defendants Escape and Parades by an alternative method, in particular, by substitute service on Michael Jason Lee, Esq. ("Lee"), who represents Served Defendants Cyberbingo and Gomez in this action. According to Plaintiff, Escape is an affiliate of Cyberbingo and has provided Cyberbingo with software which Cyberbingo used in the alleged infringing activities underlying this action. Complaint ¶ 12. Plaintiff thus maintains that given the apparent relationship between Cyberbingo and Escape, service on Lee would be sufficient to comply with the constitutional due process requirement that the service method selected by reasonably calculated to provide notice of the pending action and an opportunity to respond. The motion is supported the Declaration of Catherine Grantier Cooley, Esq. (Doc. No. 20) ("Cooley Declaration"), attached to which are Plaintiff's Exhibits A through G ("Plaintiff's Exh. __"), and the Memorandum of Law in Support of Plaintiff's Motion for Leave to Serve Process by an Alternate Method (Doc. No. 21) ("Plaintiff's Memorandum").
In opposition to the motion, Served Defendants Cyberbingo and Gomez filed on December 2, 2005, the Declaration of Michael Jason Lee, Esq. (Doc. No. 29) ("Lee Declaration"), attached to which are Defendants' Exhibits 1 through 3 ("Defendants' Exh. __"), and Defendants The Cyberbingo Corporation's and Gonzalo Gomez's Memorandum of Law in Opposition to Plaintiff's Motion for Leave to Serve Process by Alternate Method (Doc. No. 30) ("Served Defendants' Memorandum"). On December 9, 2005, Plaintiff filed in further support of the motion the Reply Memorandum in Further Support of Plaintiff's Motion for Leave to Serve Process by an Alternate Method (Doc. No. 33) ("Plaintiff's Reply Memorandum"), the Supplemental Declaration of Catherine Grantier Cooley, Esq. (Doc. No. 34) ("Supplemental Cooley Declaration"), attached to which are Plaintiff's Supplemental Exhibits A through C ("Plaintiff's Supplemental Exh. __"), and Process Server Michael Ross Lee Porubovic's Affidavit of Attempted Service (Doc. No. 35) ("Porubovic Affidavit"), with Exhibit A attached ("Porubovic Affidavit Exh. A"). Oral argument was deemed unnecessary.
Based on the following, Plaintiff's motion (Doc. No. 19) is GRANTED as to the request for leave to effect service on Defendants Escape Technologies and Jose Perez Parades by an alternative method, and is DENIED as to the request for an award of costs, including attorney fees, incurred by Plaintiff in connection with this motion.
DCEG is a domestic corporation organized under Florida law with its principal office located at 300 Delaware Avenue, Buffalo, New York. Both Defendants Cyberbingo and Escape are foreign corporations organized under the laws of Antigua with their principal offices located at Gambles Medical Centre, Unit # 8, Friars Hill Road, St. John's, Antigua. Cyberbingo's corporate purpose is "[t]o conduct the business of international betting and bookmaking permitted by the laws of Antigua and Bermuda." Cooley Declaration Exh. B. Escape's corporate purpose is "[t]o own software and to conduct any and all business activities permitted by the laws of the States of Antigua and Bermuda other than International Banking, Trust, Insurance, Betting or Bookmaking or any other activity which requires a license under the International Business Corporations Act." Cooley Declaration Exh. B. Defendant Gomez, who resides at Hodges Bay, St. John's, Antigua, is licensed pursuant to Regulation 74 of the Interactive Gaming and Interactive Wagering Regulations, to operate as Cyberbingo's Key Person and, as such, is authorized by the Financial Services Regulatory Commission of the Government of Antigua to direct and control Cyberbingo's activities. Defendant Parades, who maintains a residence at Jolly Harbour, St. Mary's, Antigua, and whose permanent address is in Spain, is Escape's sole director and, as such, directs and controls all of Escape's activities.
Although Cyberbingo and Gomez were served with a summons and the Complaint, Plaintiff has been unable to effect service on Defendants Escape and Parades. Plaintiff explains that on June 1, 2004, Plaintiff sent pursuant to Fed.R.Civ.P. 4(d), Notices of Lawsuit and Request for Waiver of Service of Summons to Parades at Jolly Harbor, St. Mary's, Antigua, and at Gambles Medical Center, Unit # 8, Friars Hill Road, St. John's, Antigua, and to Escape, to the attention of Parades, at Gambles Medical Center, Unit # 8, Friars Hill Road, St. John's, Antigua. Cooley Declaration ¶¶ 4-5. As of July 1, 2004, no responses to the notices had been received from either Parades or Escape. Id. ¶ 6. On July 30, 2004, Plaintiff, pursuant to Fed. R. Civ. P. 4(f)(1) and the Hague Convention, forwarded to the Registrar of the High Court of Antigua Requests for Service Abroad of Judicial or Extra-judicial Documents, seeking service of the summons and complaint on all four Defendants.
In November 2004, Cooley was contacted by Lee who advised he represented the Served Defendants in this action, but when Cooley asked whether he also represented the Unserved Defendants, Lee responded he did not believe Escape was a real entity or that Parades was a real person, but that he would look into the matter. Complaint ¶ 8. As of December 2004, the High Court of Antigua had not returned Plaintiff's service on any of the four Defendants, but DCEG had learned that Parades had a residence in Nepean, Ottawa, Canada and a Canadian process server was retained to attempt to effect service on Parades at 7 Winding Way, Nepean, Ottawa, Canada; the service attempt, however, was unsuccessful. On January 18, 2005, the Served Defendants appeared and filed an answer by their counsel, Lee.
Plaintiff subsequently learned that Parades, when traveling in the Ottawa, Canada area, usually resided with his father-in-law, Phillip Smith ("Smith"), at 83 Forest Creek Drive, Stittsville, Ontario. Porubovic Affidavit ¶ 2. Porubovic, a self-employed Canadian Process Server, was hired by Plaintiff to serve Parades with the Complaint at Smith's Stittsville, Ontario residence ("the Smith residence"). Id. ¶ 1-2. Porubovic's first attempt to serve Parades at the Smith residence was on March 12, 2005, at which time Porubovic spoke with Smith who acknowledged that "Jose Perez Parades" would return to the Smith residence at some unknown time, and also advised that Parades maintains residences in London, England, Madrid, Spain, and Antigua. Id. ¶ 4. Porubovic was further informed that Parades "traveled incessantly" and Porubovic was left to chance at finding Parades at the Smith residence. Id. ¶ 5. In total, Porubovic made 12 unsuccessful attempts to serve Parades at the Smith residence, including on March 12 and 19, 2005, April 4 and 18, 2005, June 18 and 19, 2005, July 5 and 14, 2005, August 10 and 11, 2005, September 23, 2005 and October 3, 2005, each time speaking with Smith, Smith's housekeeper, or Smith's wife's nurse, all of whom were unable to specify when Parades was likely to return to that address. Id. ¶¶ 5, 8.
Initial disclosures served, pursuant to Fed.R.Civ.P. 26(a)(1) ("Rule 26(a)(1)"), by the Served Defendants on June 10, 2005, the Served Defendants identify one "Jose Perez" as a potential witness who is "employed by or under the control of [Cyberbingo] and may be contacted through counsel." Cooley Declaration ¶ 12 (referencing Plaintiff's Exh. G, p. 2). In light of such disclosure, Cooley, by letter to Lee dated July 6, 2005 ("Cooley July 6, 2005 Letter") (Defendants' Exh. 1), inquired as to whether Parades could be contacted through Lee as counsel, requesting Lee advise as to whether he would accept service of process for Parades, both individually and as Escape's director. Cooley Declaration ¶ 13. Cooley further advised that if Lee did not respond to her request by July 16, 2005, Plainitff would move for an order permitting ...