The opinion of the court was delivered by: Hon. Harold Baer, Jr., District Judge
Defendant Destylarnia Sobieski, S.A. ("Sobieski")*fn1 moves this Court pursuant to Federal Rules of Civil Procedure ("FRCP") 12(b)(2), 12(b)(3), and 12(b)(5) to dismiss the instant complaint of Altvater Gessler-J.A. Baczewski Int'l (USA) Inc. ("Gessler-USA"), and Altvater Gessler-J.A. Baczewski GmbH ("Gessler-Austria"), (collectively, "Plaintiffs" or "Gessler") for unfair competition pursuant to 15 U.S.C. § 1125(a)(1) and common law (Count I), trademark dilution pursuant to 15 U.S.C. § 1125(c) and common law (Count II), trademark infringement (Count III), deceptive trade practices pursuant to N.Y. Gen. Bus. L. § 349 (Count IV), unjust enrichment (Count V) and declaratory relief (Count VI). For the following reasons, Defendant's Motion to Dismiss is GRANTED and the Complaint is DISMISSED in its entirety.
Plaintiffs, closely-held corporations owned solely by the Gessler family, produce and sell alcoholic beverages, including a honey-liquor known as "Krupnik." Compl. ¶ 3-4. GesslerUSA, a New Jersey corporation, distributes Gessler's products in the United States. Id. ¶ 1, 4. Gessler-Austria, an Austrian corporation, produces Gessler's alcoholic beverages and distributes Gessler's products in Europe. Id. ¶ 2, 4. Gessler registered at least two trademarks ("Altvater Gessler-J.A. Baczewski" and "J.A. Baczewski") in the United States, Poland, and Austria. Id. ¶ 15-16, 22.
Defendant Sobieski, a Polish corporation, produces and sells alcoholic beverages. Id. ¶ 5. Defendant Adamba Imports International, Inc. ("Adamba") imports and sells alcoholic beverages in the United States. Id. ¶ 6. Defendant Internet Wines & Spirits, Inc., an Illinois corporation, sells alcoholic beverages in the United States and maintains the website www.internetwines.com. Id. ¶ 7. Plaintiffs assert that John Doe Defendants 1-20 are "individuals and/or entities who are conscious, dominant, active, forces behind the wrongful acts of the Defendants." Id. ¶ 9.
b. The Contracts at Issue
On November 5, 1991, Gessler-USA entered into a contract with a Polish company known as "Polmos" to manufacture and market a variety of products (including Krupnik) using the Gessler "family" recipes and trademarks. Id. ¶ 24-25, 28. On or about October 10, 1996, Gessler-USA entered into another contract with Polmos to use the J.A. Baczewski registered Polish trademark. Id. ¶ 26-27. The Agreements were written in Polish and executed in Poland. Id. at Exs. F (1991 Agreement) and H (1996 Agreement).*fn2 Both Agreements specified Poland as the venue for adjudication of "any disputes resulting from this agreement" and that they be heard by "the Economic Court in Gdansk" "according to Polish law." Compl. at Exs. G (1991 Agreement at § 9) and I (1996 Agreement at § 24).
Between 1991 and 2000, Polmos produced and sold a variety of Gessler-USA products in Poland and the United States, including J.A. Baczewski Krupnik, and the business relationship between the two companies prospered.*fn3 Comp. ¶ 30. On December 30, 2000, by mutual agreement of Gessler-USA and Polmos, the 1991 and 1996 agreements terminated. Id. ¶ 40. In 2003, Defendant Sobieski acquired the right, title, and interest in Polmos, and, according to Plaintiffs, "gained unauthorized access to the Plaintiffs' trade secrets recipe for Krupnik which had been entrusted to Polmos under the 1991. . .and 1996 Agreement, and which Polmos was required to return, and cease and desist using, upon termination of those agreements." Id. ¶ 42-43. Plaintiffs allege that, thereafter, Defendant Sobieski diluted and infringed Plaintiffs' "Baczewski" trademark through its internet marketing of Sobieski's Krupnik. Id. ¶ 48-55.
A defendant may be dismissed from a lawsuit pursuant to Federal Rule of Civil Procedure 12, if, as Sobieski claims in the instant case, the defendant lacks sufficient contacts with the forum for the court to exercise jurisdiction over that defendant (FRCP 12(b)(2)), if the venue is improper or inconvenient (FRCP 12(b)(3)), or if service of the process was insufficient (FRCP 12(b)(5)). The burden of proof in order to establish jurisdiction lies with the party invoking that jurisdiction. Blockbuster, Inc. v. Galeno, 472 F.3d 53, 57 (2d Cir. 2006) (citing R. G. Barry Corp. v. Mushroom Makers, Inc., 612 F.2d 651, 655 (2d Cir. 1979)); Linardos v. Fortuna, 157 F.3d 945, 947 (2d Cir. 1998) ("It is also hornbook law that the party invoking federal jurisdiction bears the burden of proving facts to establish that jurisdiction.").
At the pleading stage, a plaintiff is required to make only a prima facie showing of jurisdiction. DiStefano v. Carozzi N. Am., Inc., 286 F.3d 81, 84 (2d Cir. 2001). A court may, on a motion to dismiss, "consider affidavits and documents submitted by the parties without converting the motion into one for summary judgment under Rule 56." Credit Suisse Sec. (USA) LLC v. Hilliard, 469 F. Supp. 2d 103, 106-107 (S.D.N.Y. 2007) (citing ESI, Inc. v. Coastal Corp., 61 F. Supp. 2d 35, 50 n.54 (S.D.N.Y. 1999)).
Plaintiffs claim this Court has subject matter jurisdiction pursuant to 28 U.S.C. §§ 1331 and 1338, and supplemental jurisdiction over the state law claims-e.g., N.Y. Gen. Bus. L. § 349. Further, Plaintiffs allege venue is proper in this District pursuant to 28 U.S.C. § 1391 "because, for example, individually and/or in concert with one another, defendants reside, can be found, and/or are transacting business, within this ...