The opinion of the court was delivered by: Chin, D.J.
In this trademark infringement and dilution case, defendants move to dismiss the complaint for improper venue pursuant to Federal Rule of Civil Procedure 12(b)(3) or, alternatively, to transfer the action under 28 U.S.C. § 1404(a). For the reasons stated below, the motion is denied.
For purposes of this motion, the facts in the complaint are assumed to be true and are construed in the light most favorable to plaintiffs. Plaintiff Cartier, a division of Richemont North America, Inc. ("Cartier NA"), is a Delaware corporation with its principal place of business in New York, New York. (Am. Compl. ¶ 1). Plaintiff Cartier International, N.V. ("Cartier International") is a Netherlands Antilles corporation with its principal place of business in Curaçao, Netherlands Antilles. (Id. ¶ 2). Plaintiffs will be jointly referred to as "Cartier." Founded in Paris during the 19th century, Cartier is an upscale designer, manufacturer, and retailer of fine jewelry and watches. (Id. ¶¶ 9-12). The Cartier brand enjoys world renown, and Cartier NA operates retail shops in cities across the United States, including New York. (Id. ¶¶ 11, 12).
Defendant Micha, Inc. ("Micha") is a California corporation with its principal office and place of business in San Diego, California. (Id. ¶ 3). Micha services and sells watches to jewelers and others involved in selling watches to the general public. (Id. ¶¶ 23-24). Defendant Michel Mottale is an officer or managing agent of Micha, and the two share the same place of business. (Id. ¶ 4).
Cartier manufactures many of its watches in both gold and steel versions, but only sets diamonds on the watch and/or watchband in its gold versions of each particular model. (Id. ¶ 22). Defendants acquired Cartier watches made of stainless steel or other metals and, without Cartier's authorization, added diamonds to the watches "at various locations, including in direct imitation of the placement of diamonds by Cartier on the equivalent genuine versions of such models." (Id. ¶ 23). Defendants, and other jewelers for whom defendants render such services, sell these altered watches to the general public with the Cartier trademark intact. (Id.)
Cartier first became aware of defendants' acts of infringement in a similar action in this Court, Cartier, Inc. v. Aaron Faber Inc., No. 05 Civ. 6615 (S.D.N.Y.) (Benschar Decl. ¶ 3), filed on July 22, 2005.*fn1 In response to an interrogatory in Aaron Faber, J&P Timepieces and one of its principals, Jeff Morris, identified Micha as having been used by J&P Timepieces to add diamonds to or to otherwise alter Cartier watches. (Benschar Decl. Ex. B ¶ 7). In his deposition, Morris stated that on two occasions he engaged Micha to place diamonds on Cartier watches for him. (Id. Ex. C at 2-3). Invoices date the two transactions to July 11 and 17, 2002 (id. at 4-5) -- the only business conducted between Morris and J&P Timepieces and Micha. (Id. at 2). While Morris did not refer to Mottale by name in the deposition, he used "Micha" and the terms "he" or "him" interchangeably. (Id. at 2-3). Morris indicated that he might have given "him" one of the watches, a Cartier "Panther," at a trade show, after which "he" likely mailed the watch to Morris in New York, although "he" may have delivered the Panther to Morris at a later trade show. (Id. at 2). An invoice from Micha to Morris for a transaction involving a Cartier "Baignoire" included a line-item charge for shipping to Morris in New York. (Id. at 5). Micha charged Morris a total of $5,965 for work on both watches. (Benschar Decl. Ex. F at 1-2). J&P Timepieces and Morris have their place of business in New York, New York. (Benschar Decl. ¶ 3).
After learning of defendants' alleged actions in the course of the Aaron Faber proceedings, Cartier served Micha with a subpoena to produce all documents concerning the sale of Cartier watches with "after-market diamonds," or the setting of such diamonds on Cartier watches. (Id. Ex. D at 3). Micha responded to the subpoena and produced documents "showing [a] substantial number of transactions" for the sale of watches with added diamonds, or the mounting of diamonds on Cartier watches at the request of other jewelers. (Benschar Decl. ¶ 8). The transactions evidenced by the documents involved customers in California, New York, six other states, the District of Columbia, Mexico, and Hong Kong. (Id.). Two of the documents concerned the transactions between Micha and Morris. (Id.; see Benschar Decl. Ex. F).
Cartier subsequently deposed Mottale, who appeared on behalf of Micha. (Benschar Decl. ¶ 9; see id. Ex. G). Mottale admitted to working for Micha but invoked his Fifth Amendment right against self-incrimination when asked, inter alia, about his specific position at the company and whether anybody else worked for Micha. (Benschar Decl. Ex. G at 3). Mottale continued to invoke the Fifth Amendment in response to nearly all the substantive questions posed at the deposition. (Id. at 2-4).
Cartier identifies several actions by defendants as giving rise to their complaint: the unauthorized placement of diamonds on watches bearing the Cartier Trademark; the provision of such services to jewelers with the knowledge that the watches would be sold to the general public; and creating confusion among the consuming public regarding the origins of the watches. (Am. Compl. ¶¶ 23, 25, 27.)
Cartier filed the complaint in this action on June 19, 2006, asserting trademark infringement under 15 U.S.C. § 1114(1), false designation of origin under 15 U.S.C. § 1125(a), and trademark dilution under 15 U.S.C. § 1125(c). Cartier also asserts claims of common law trademark infringement and unfair competition, and a New York state claim for dilution pursuant to N.Y. Gen. Bus. L. § 360-l. Cartier filed an amended complaint on August 31, 2006, asserting that venue was proper pursuant to 28 U.S.C. § 1391(b) because defendants sold infringing watches and/or provided infringing ...