The opinion of the court was delivered by: Deborah A. Batts, United States District Judge.
Plaintiff Albert Fürst von Thurn und Taxis has filed the above-captioned case against Defendants Karl Prince von Thurn und Taxis, Thurn und Taxis Italia S.P.A., Thurn & Taxis, LLC, Karl Prince von Thurn & Taxis, LLC, Thurn und Taxis Capital Management AG, Arglen & Co., LLC, Arglen Acquisitions, LLC, Mentor Capital Partners, LLC and Mentor Capital Partners, Ltd. Plaintiff has asserted five causes of action against Defendants: (1) false endorsement under 15 U.S.C. § 1125(a); (2) violation of New York Civil Rights Law §§ 50-51; (3) violation of the Anti-Cybersquatting Consumer Protection Act, 15 U.S.C. § 1125(d); (4) violation of New York General Business Law § 349; and (5) that Defendants have engaged in common law unfair competition.
Defendants Thurn & Taxis, LLC, Karl Prince von Thurn & Taxis, LLC, Thurn und Taxis Capital Management AG, Arglen & Co., LLC, and Arglen Acquisitions, LLC ("Moving Defendants") have moved to dismiss the Complaint pursuant to Fed. R. Civ. P. 12(b)(6). Defendant Thurn und Taxis Capital Management AG also moves to dismiss pursuant to Fed. R. Civ. P. 12(b)(2).*fn1
The following facts are taken from Plaintiff's Complaint and are assumed to be true for the purposes of Defendants' Motion to Dismiss.
Plaintiff Prince Albert Fürst von Thurn und Taxis ("Prince Albert"), representative of the von Thurn und Taxis family of Regensburg, Germany (hereinafter referred to as the "Thurn und Taxis Family" or "the Family"), is head of the Family, the heir to its fortune, and as its representative, the holder of the Thurn und Taxis Family's trademarks. (Compl. ¶ 1.) Prince Albert resides in Regensburg, Germany. (Id. ¶ 4.)
Upon information and belief, Defendant Karl Prince von Thurn und Taxis ("Karl Prince") is a resident of New York, and has at all relevant times, directed or controlled the business activities of Defendants Thurn & Taxis, LLC, Karl Prince von Thurn & Taxis, LLC, and Thurn & Taxis Italia S.P.A., in New York. (Id. ¶ 5.) Thurn und Taxis Italia S.P.A. is an Italian corporation with offices in New York and its principal place of business in Italy. Thurn & Taxis, LLC is a Delaware corporation with its principal place of business in New York. Karl Prince von Thurn & Taxis, LLC is a New York corporation with its principal place of business in New York. (Id. ¶¶ 6-8.)
Defendant Thurn und Taxis Capital Management AG is a company incorporated in the Principality of Liechtenstein, with places of business in Liechtenstein and Switzerland. (Id. ¶ 9.) Defendants Arglen & Co., LLC and Arglen Acquisitions, LLC are Delaware corporations with their principal places of business in New York. (Id. ¶¶ 10-11.) Defendant Mentor Capital Partners, Ltd. is a Pennsylvania corporation with its principal place of business in Pennsylvania.*fn2
A. The Thurn und Taxis Family
Plaintiff is the 12th Prince of the Thurn und Taxis Family, "an internationally celebrated and respected European royal family which has played an important role in the development of all aspects of modern European communication, transportation and industry." (Id. ¶¶ 14, 16.) For more than 300 years, the Family controlled all imperial communications between Vienna and the Hapsburg empire, through an officially sanctioned monopoly. (Id. ¶ 14.) Through this monopoly, the Family was able to establish the first large-scale postal service. Because of this history, and the "overwhelming prevalence of the Thurn und Taxis postal system throughout Europe," the Thurn und Taxis Family is "synonymous with European industry and commerce." (Id.)
Although it gradually lost its monopoly over the postal service, the Family increased its wealth, power and influence in commerce and industry, due to its interests in numerous other enterprises, such as real estate, banking and railroads. Prince Albert's great-grandfather, Albert Prinz von Thurn und Taxis was particularly famous for his fortune and business interests at the turn of the twentieth century. (Id. ¶ 15.)
Prince Albert is one of three children born to Prince Johannes von Thurn und Taxis, the 11th Prince of Thurn und Taxis, and Princess Gloria von Thurn und Taxis. His parents led prominent lives as members of international society. His sisters are Princess Maria Theresia and Princess Elisabeth. Prince Albert inherited the princely title upon his father's death in 1990. (Id. ¶ 16.)
In recent years, the Family has expanded its business interests to include banking, finance, agriculture and forestry, real estate and brewing. The Family's holdings include a private bank, the Thurn und Taxis brewery and other investments. (Id. ¶ 17.) Throughout history, the Family has been known for its business acumen and investment strategies in building one of Europe's largest fortunes. The current matriarch, Plaintiff's mother, Princess Gloria von Thurn und Taxis, has received wide publicity for her business acumen, since taking charge of the management of the Family's fortune following her husband's death in 1990. (Id. ¶ 18.)
The Family has also received much publicity in the "popular social press," having been featured regularly in society pages. Plaintiff has also been identified in Forbes Magazine as the world's youngest billionaire and is listed number 278 on Forbes' "The World's Richest People" List. (Id. ¶ 19.)
The Family has also used its celebrity to promote charitable causes. It is active in promoting its rich history and contributions to German culture by making the Palaces of the Princes of Thurn und Taxis in Regensburg open to the public. The grounds, including museums, are open to public tours, and rooms in the castle can be rented for private functions. A description and virtual tour of the grounds can be found on the official Family website (http://www.thurnundtaxis.de). The opening of the Palace has increased the Family's public profile and the worldwide recognition of the Family. Numerous tourists from the United States visit the Palace, and thousands of U.S. residents access the Family website annually. (Id. ¶¶ 20-21.)
Plaintiff, as representative of the Thurn und Taxis Family, owns the following three trademarks registered with the German Patent and Trademark Office:
* FÜRST THURN UND TAXIS; Registration No. 30240914: Registered on or about April 24, 2003, for current or future use with goods and services, including matters relating to insurance, real estate, finance, advertising and business management.
* THURN UND TAXIS; Registration No. 30240915: Registered on or about April 24, 2003, for similar matters as listed with regard to the FÜRST THURN UND TAXIS trademark.
* TT and Design; Registration No. 30240916: Mark consists of the letters TT with a stylized crown design which was registered on or about May 5, 2003, for similar matters as listed with regard to the FÜRST THURN UND TAXIS and THURN UND TAXIS trademarks.
Plaintiff also filed trademark applications with the United States Patent and Trademark Office on December 11, 2003, for the marks registered with the German Patent and Trademark Office. (Id. ¶¶ 22-23.)
In addition, Plaintiff owns the domain name registration for "www.thurnundtaxis.de." (Id. ¶ 24.) The Family's crest is also well-known. The crest includes a coat of arms and crown design. This crest is feature prominently on the Family's website. (Id. ¶ 25; see also id. at Ex. B.)
C. Defendants' Infringing Activities
According to Plaintiff, Defendant Karl Prince von Thurn und Taxis ("Karl Prince") is a member of the "Tsheck" branch of the Thurn und Taxis Family, which separated from the Regensburg branch in 1748. The Tsheck branch is unknown today, and references to the Thurn und Taxis Family are known and understood to be references to Plaintiff's Regensburg branch. Karl Prince is a distant cousin of Plaintiff's father. He has never been involved in the day-to-day affairs of the Thurn und Taxis Family or any of the Family's business enterprises. (Id. ¶ 26.) Despite Karl Prince's distant relationship to the Family, Plaintiff alleges that Karl Prince "has engaged in a scheme to capitalize on the good will associated with the Thurn Family in international business circles, by using the Family name and referring prominently to its rich history, particularly in business matters . . . ." (Id. ¶ 27.) Karl Prince has done this to promote a group of affiliated investment companies in the United States and Europe, referred to in the Complaint as the "Thurn und Taxis Group,"*fn3 in a manner that falsely and misleadingly implies endorsement, or sponsorship by, or association or affiliation with the Thurn und Taxis Family. (Id.)
1. Thurn & Taxis, LLC and Arglen & Co., LLC
In or about June, 2003, the Family learned that Karl Prince was involved with Defendant Thurn & Taxis, LLC, which is believed to have provided financial advice and/or opportunities to investors in the United States and Europe. Thurn & Taxis, LLC's website, http://www.thurn-taxis.com, prominently featured a logo consisting of the coat of arms and crown of the Thurn und Taxis Family and included a page entitled "Thurn & Taxis: The History of an Enterprising Family." This page set forth an extensive description of the Family's success in building its vast fortune through business enterprises, including statements such as: the Family's "wealth was vast and few other European families could match it;" Albert Prinz von Thurn und Taxis, great-grandfather of Plaitniff, "was famous throughout Europe for the size of his fortune;" and "by the 1990's the family fortune had expanded to include five banks and several entertainment businesses." (Id. ¶¶ 29-30.) The website described Karl Prince as the chairman of the Thurn & Taxis group of companies and represented that "Thurn & Taxis partners with some of the world's most sagacious and influential individual, corporations, and funds." (Id. ¶ 31.)
Plaintiff believes that Defendant Arglen & Co., LLC is affiliated with Karl Prince and the Thurn und Taxis Group. In addition, Garry P. Gyselen and Barry Kolevzon, principals or otherwise employed by Arglen, were listed as the "New York Team" on the Thurn & Taxis, LLC website in or about August, 2003. Plaintiff also believes that Defendant Thurn und Taxis Capital Management AG owns the domain name registration "www.thurntaxis.com" and is an affiliate of Defendant Thurn & Taxis, LLC. (Id. ¶¶ 33-34.)
Thurn & Taxis, LLC is not connected in any way to the Thurn und Taxis Family. However, Plaintiff alleges that the use of the name Thurn & Taxis, LLC, the domain name of the Thurn & Taxis, LLC website (www.thurn-taxis.com), the use of the Thurn und Taxis crest and crown, and the extensive discussion of the Family's history and business interests, were intended to falsely suggest that Thurn & Taxis, LLC's services and activities were endorsed, sponsored, authorized or approved by Plaintiff and the Family. The use of the Family's name, crest and crown was not approved by Plaintiff or the Family. (Id. ¶ 32.)
Based on Karl Prince's activities, attorneys for the Family sent a letter to Thurn & Taxis, LLC on July 11, 2003, demanding that the company cease and desist from any further use of the Family name or any reference to the Family's business history due to the misleading nature of the representations of the purported relationship between Thurn & Taxis, LLC and the Family. Thurn & Taxis, LLC refused, asserting that Karl Prince was authorized to use his name, and as "Chairman" of the company, he was "actively involved in the execution of the company's business in North America and Europe." (Id. ¶¶ 35-36.) The Family reiterated its cease and desist demand on September 30, 2003, and suggested that the company use a different name, such as "Arglen" in light of the apparent affiliation between Arglen and Thurn & Taxis, LLC. In response to this demand, on October 7, 2003, Thurn & Taxis, LLC advised the Family that it had revised the historical section of its website, to clarify that Karl Prince represented that "Moravian branch of the family rather than the Regensburg branch." (Id. ¶ 37-38.)
However, Plaintiff states that the "revised" page still prominently featured the history of the Thurn und Taxis Family, and not Karl Prince, and the distinction between the branches was made only late in the description and still failed to distinguish Karl Prince from the remainder of the Family. The misleading suggestion of a connection between Thurn & Taxis, LLC and the Family remained. (Id. ¶ 39.) Plaintiff contends that Thurn & Taxis, LLC deliberately maintained the use of the Thurn und Taxis Family name and the references to its history and business interests, to mislead investors into believing that Karl Prince and Thurn & Taxis, LLC were representing or associated with the Family and their business interests. (Id. ¶ 41.)
In or about October, 2003, Karl Prince purportedly resigned as Chairman of Thurn & Taxis, LLC and requested that the company stop using the name of the Family. However, Thurn & Taxis, LLC continues to be listed as an active corporation with the New York State Department of State, and upon information and belief, continues to conduct business in the same manner as it did prior to October, 2003. (Id. ¶ 40.)
2. Mentor Capital Partners
In or about October, 2003, the Family became aware that Karl Prince had become associated as "special partner" with an investment group, Mentor Capital Partners, LLC of Naples, Florida. In materials announcing Karl Prince's partnership, Mentor Capital referred to Karl Prince as a member of the "distinguished" Thurn und Taxis Family and a "current steward of the Thurn und Taxis name." Karl Prince was also described as the leader of an investment group and a board member of several affiliated companies. (Id. ¶¶ 42-43.)
The website for Mentor Capital (http://www.mentcap.com) described the Thurn und Taxis Family as "an entity that had 'amassed a fortune through astute management and shrewd investment' over 500 years . . ." It further suggested that the Family was involved with, or backing, Karl Prince and a purported $50 million limited partner commitment "from Thurn and Taxis and affiliates." (Id. ¶ 44.)
On October 22, 2003, the Family sent Mentor Capital a cease and desist letter, demanding that it refrain from any further use of the Family's name and history in any form in any future business dealings. Mentor Capital refused to comply with this demand, taking the position that it was merely making references to Karl Prince's personal heritage in the website. Mentor Capital also advised by letter that Karl Prince had executed a commitment with respect to a potential investment by himself and persons and entities affiliated with him, and that it was anticipated that Karl Prince would hold partner status in relation to a Mentor Capital, LLC fund. (Id. ¶¶ 45-46.) Upon information and belief, ...