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Gucci America, Inc. v. Frontline Processing Corp.

June 23, 2010


The opinion of the court was delivered by: Hon. Harold Baer, Jr., District Judge


Gucci America, Inc. is a well-known manufacturer of luxury goods. The company holds a variety of trademarks in its products and designs, and invests substantial capital in ensuring that the marks maintain a reputation for quality. Seeking to capitalize on the popularity of Gucci products, certain internet merchants have sold "replica," counterfeit Gucci products that infringe Gucci marks at significantly lower prices and of lower quality. Gucci recently concluded a successful litigation against one such merchant that operated a website called The owners of the website admitted that they sold counterfeit Gucci products to customers across the country through the website. In its continuing effort to root out and prevent infringement of its trademarks, Gucci now brings suit against three entities, which while a step down in the "food chain," allegedly ensured that was able to sell these counterfeit products. These defendants allegedly established the credit card processing services used to complete the online sales of fake Gucci items. The three defendants have jointly moved to dismiss the case for lack of personal jurisdiction and for failure to state a claim. For the reasons that follow, the defendants' motion to dismiss is DENIED.


Gucci America, Inc. ("Plaintiff" or "Gucci") is a New York company, with its principal place of business in New York City. Compl. ¶ 11. It is the sole, exclusive distributor in the United States of items labeled with the "Gucci Marks," including leather goods, jewelry, home products, and clothing. Id. The Gucci Marks are a series of marks --the Gucci name, the Gucci crest, the "non-interlocking GG monogram," the "repeating GG design," etc.-- registered by Gucci with the United States Patent and Trademark Office. See Compl. ¶¶ 24-25 (reproduction of marks), Ex. 1 (Patent Office registration certificates). According to Plaintiff, the marks are well-known and recognizable in the United States and around the world. Gucci promotes the marks widely, and relies on "strict quality control standards" for its products, and as a result has achieved and retains a reputation for quality. Id. ¶ 28. The company spends hundreds of millions of dollars to advertise and promote its products and marks, and enjoys billions in sales of the Gucci products. "Based on the extensive sales of the Gucci [p]roducts and such products' wide popularity," claims Plaintiff, "the Gucci Marks have developed a secondary meaning and significance in the minds of the purchasing public, and the services and products utilizing and/or bearing such marks and names are immediately identified by the purchasing public with Plaintiff." Id. ¶ 30.

This case arises out of Plaintiff's attempts to eliminate online sales of counterfeit products and the unauthorized use of the Gucci Marks. In Gucci America, Inc., et al. v. Laurette Company, Inc., et al., No. 08 Civ. 5065(LAK), Gucci brought suit in this District against certain defendants, collectively known as the "Laurette Counterfeiters" or "Laurette," for the sale of counterfeit Gucci products on a website called ""*fn1 Through this website, the Laurette Counterfeiters sold a variety of "replica" luxury products, and, in particular, sold replica Gucci products under the Gucci name, with the various Gucci registered trademarks, and at fractions of the retail price for an authentic version. See Compl. ¶¶ 33-36 (describing and providing images of counterfeit Gucci products sold on The website itself was replete with the use of the Gucci name and trademarks. See id. ¶ 41 (image of website). According to Plaintiff, the Laurette Counterfeiters "openly boasted" about the sale of counterfeit products, because the website expressly noted that the products were not authentic but rather "mirror images" of Gucci products. See id. ¶ 32. Though they are inferior in quality and workmanship, they appear to the naked eye to be similar if not identical to Gucci products. Gucci claims that, as a result of the sale of these counterfeit products, customers were deceived and misled "into believing that the products sold by the Laurette Counterfeiters on were authorized or sponsored by the Plaintiff." Id. ¶ 40. Eventually, Laurette consented to the entry of judgment and admitted liability for counterfeiting activities. According to Plaintiff, "the Laurette [c]ounterfeiters admitted . that, without authorization or license . they willfully and intentionally used, reproduced and/or copied the Gucci [m]arks in connection with their manufacturing, distributing, exporting, importing, advertising, marketing, selling and/or offering to sell their [c]ounterfeit [p]roducts." Id. ¶ 31.

Plaintiff now seeks to bring the present action against three companies, Durango Merchant Services, Frontline Processing Corporation, and Woodforest National Bank*fn2 , who allegedly assisted the Laurette Counterfeiters and other similar website operators. Durango Merchant Services ("Durango") is a Wyoming corporation with its business address in Durango, Colorado. According to Defendants, Durango has only five employees, and has no offices, no employees, and no property located in New York. Durango's business is predicated on assisting merchants in setting up credit card processing services with institutions that provide credit card merchant accounts. Durango does business with New York-based companies, but maintains that this accounts for less than one percent of its revenue. Frontline Processing Corporation ("Frontline") is a Nevada corporation with its principal place of business in Bozeman, Montana. Frontline is a "nationwide provider of credit card processing and electronic payment services for merchants, banks, and sales agents," and is an "Independent Service Organization" and "Merchant Service Provider" with Visa and Mastercard, respectively. Compl. ¶ 58. Similar to Durango, Defendants claim that Frontline has no office, no employees, and no property in New York. A small minority of the businesses it has worked with maintain addresses in New York. Finally, Woodforest National Bank ("Woodforest") is a bank organized under the laws of the United States, with its business address in The Woodlands, Texas. Similar to Frontline, Woodforest also "provides certain credit card processing services." Id. ¶ 14. Like the other two defendants, Woodforest claims to have no New York offices or property in New York, while a small percentage of its business comes from New York-based clients. Gucci alleges that Woodforest provides some of its services through an affiliate with an office in New York, Merchants' Choice Card Services Corporation ("MCCS"), though Woodforest disputes the nature of the relationship.

To understand the roles of the three defendants and their alleged liability, a summary explanation of the credit card transaction process is necessary. A customer will initiate the process when he or she purchases a product from the merchant with a credit card. Once the credit card information is "swiped" on a terminal, or entered on a website, the merchant terminal transmits an authorization request to the merchant's "acquiring bank," who in this case was Frontline and Woodforest. The acquiring bank sends the credit card request through an electronic network to the cardholder's issuing bank. Based on the cardholder's credit limit or other factors, the issuing bank will send a message back through the network to the acquiring bank, who forwards it back to the merchant, which states that the merchant should either approve or decline the transaction. If approved, the merchant will complete the transaction and the acquiring bank will credit the merchant's account with the appropriate amount of funds. This entire process typically takes a matter of seconds. Some days to months after the sale is completed, the acquiring bank will submit the transaction information to the issuing bank, which will seek payment from the cardholder and settle with the acquiring bank.

Gucci's overarching theory of the case is that Durango arranged for web companies that sold counterfeit Gucci products to establish credit card processing services with companies like Woodforest and Frontline. These processors then provided the credit card services necessary for the sale of the faux Gucci items. The complaint focuses largely on the allegedly representative conduct of Defendants with the Laurette Counterfeiters. According to Plaintiff, Durango acted as an agent for the defendant credit card processing companies*fn3 to locate potential customers, including the Laurette Counterfeiters and other similar infringing online operations. Durango collected a referral fee for bringing together these online merchants with banks and companies like Frontline and Woodforest. Durango's website billed the company as specializing in services for "High Risk Merchant Accounts," including those who sell "Replica Products." Compl. ¶ 48. Gucci alleges that the Laurette Counterfeiters entered into a "Merchant Service Agreement" with Durango through one of its sales representatives, Nathan Counley and, through this relationship, "procur[ed] merchant accounts with credit card processing agencies, including Defendants Frontline and Woodforest." Id. ¶ 51. Gucci asserts that, through email and other documents, Durango was aware that sold counterfeit "replica" Gucci products and nevertheless chose to do business with them.

Frontline began to provide credit card processing services to in September 2006. The relationship was precipitated by an application completed by the Laurette Counterfeiters through the assistance of Durango; Counley was listed as a sales agent for Frontline on the application. See Compl. ¶ 55. Once the service was established, Frontline processed Visa, MasterCard, Discover, and American Express credit card transactions for goods sold by the Laurette Counterfeiters. Frontline deducted a fee, or discount rate, based on the transactions it processed. As part of its services, Frontline would investigate "chargebacks" --a credit card charge that is disputed by a customer-- made in connection with orders from the website. When faced with a chargeback, Laurette allegedly gave detailed documentation to Frontline, including a description of the item purchased and the price that was paid. Since Frontline credited Laurette's account after a credit card transaction was authorized, but before it received any final payment from the issuing bank, it required Laurette to keep a "reserve account" for chargebacks. The account allegedly totaled in excess $40,000 by the time it was shut down in June 2008. Allegedly funded "solely through the proceeds from counterfeit goods sold on" the website, Frontline supposedly took possession of these funds when was shut down. Gucci also alleges that Frontline charged a higher transaction fee, or discount rate, for processing credit cards for high risk merchants, such as "replica" merchants like the Laurette Counterfeiters. Frontline was the only credit card processor used by the Laurette Counterfeiters for from September 2006 to November 2006, and Laurette continued to use Frontline until they were shut down in June 2008. According to Plaintiff, Laurette's sales of counterfeit Gucci products from September 2006 to June 2008 totaled in excess of $500,000.

Laurette allegedly sought to do business with Woodforest because of the high discount rate it was charged by Frontline. The Laurette Counterfeiters applied for an account with Woodforest in November 2006; again Counley from Durango was listed on the application, this time as Woodforest's sales agent. See Compl. ¶ 72. As part of the process, Woodforest employees reviewed the application and completed an "Internet Merchant Review Checklist." The checklist required the employee to review the website and confirm that it contained a "complete description" of the goods offered, and pages of the website were printed in support of this review. Gucci alleges that Woodforest, through its employee, printed a number of pages from that displayed the Gucci Marks and counterfeit Gucci products. A second-level review of the website was allegedly performed after Woodforest accepted the application. An employee or agent would complete a purchase on the website and request a refund; this process was repeated regularly over the relationship with the online merchant. Woodforest began processing credit card transactions --Visa, MasterCard and American Express-- for the Laurette Counterfeiters in November 2006, and continued to provide these services until June 2008 when the website was shut down. Like Frontline, Woodforest also investigated chargebacks and received relevant documentation from Laurette, though Gucci claims that MCCS was responsible for processing the chargeback requests. Also akin to Frontline, Woodforest charged a higher discount rate for replica merchants like Laurette. Woodforest allegedly processed over $1 million in transactions for counterfeit items, and made over $30,000 from the fees on these transactions.

Gucci maintains that the credit card processing services established by these three defendants was essential to the Laurette Counterfeiters' sale of counterfeit Gucci products. These services "facilitated the Laurette Counterfeiters ability to quickly and efficiently transact sales for [c]ounterfeit [p]roducts through their website by enabling customers to use personal credit cards to pay for purchases on" Compl. ¶87. Without credit card processing, Plaintiff claims, websites like could not operate or functionally exist. As such, Gucci believes that Durango, Frontline, and Woodforest are equally responsible for the infringement and counterfeiting engaged in by Laurette through their website. Based on these allegations, Plaintiff brings causes of action for (1) trademark infringement and counterfeiting under the Lanham Act, 15 U.S.C. §§ 1114, 1125, 1116, 1117; (2) contributory trademark infringement and counterfeiting pursuant to the Lanham Act; (3) vicarious liability for trademark infringement and counterfeiting under the Lanham Act; and (4) trademark infringement and unfair competition under New York state law, see N.Y. Gen. Bus. Law §§ 360-k, 360-o. Defendants jointly moved to dismiss these claims based on a purported lack of personal jurisdiction, and because Plaintiff has failed to state a claim, pursuant to Rule 12(b)(2) and (6) of the Federal Rules of Civil Procedure.


A. Personal Jurisdiction

1. Legal Standard

On a motion to dismiss for lack of personal jurisdiction, pursuant to Rule 12(b)(2), the plaintiff bears the burden of showing that the court has jurisdiction over the defendants. See Grand River Enters. Six Nations, Ltd. v. Pryor, 425 F.3d 158, 165 (2d Cir. 2005); Kernan v. Kurz-Hastings, Inc., 175 F.3d 236, 240 (2d Cir. 1999). "Where, as here, a court relies on pleadings and affidavits, rather than conducting a 'full-blown evidentiary hearing,' the plaintiff need only make a prima facie showing that the court possesses personal jurisdiction over the defendant." DiStefano v. Carozzi North America, Inc., 286 F.3d 81, 84 (2d Cir. 2001); see also PDK Labs, Inc. v. Friedlander, 103 F.3d 1105, 1108 (2d Cir. 1997) ("Moreover, we construe the pleadings and affidavits in plaintiff's favor at this early stage."). Personal jurisdiction is necessarily a fact-sensitive inquiry dependent on the particulars of the case before the court. See PDK Labs, 103 F.3d at 1108.

Pursuant to the Federal Rules of Civil Procedure, "[a] court may exercise jurisdiction over any defendant who could be subjected to the jurisdiction of a court of general jurisdiction in the state in which the district court is located." Wiwa v. Royal Dutch Petroleum Co., 226 F.3d 88, 94 (2d Cir. 2000) (internal quotations omitted); Fed.R.Civ.P. 4(k)(1)(a). "Where a defendant resides outside the forum state, a federal court applies the forum state's personal jurisdiction rules if the federal statute does not specifically provide for national service of process." PDK Labs, 103 F.3d at 1108; see also Sunward Elecs., Inc. v. McDonald, 362 F.3d 17, 22 (2d Cir. 2004). The jurisdictional analysis is a two-step inquiry. First, the court must determine whether the plaintiff has shown that the defendants are amenable to service of process under the forum state's laws. Second, the court ...

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