United States District Court, S.D. New York
OPINION AND ORDER
case is the unfortunate devolution of a dispute between the
McAllister Olivarius law firm and its former client Mark
Myers Mermel regarding legal fees. In its single-count
Complaint, plaintiff McAllister Olivarius alleges that
defendant Mermel registered the domain name
mcallisterolivariustruth.com in order to divert potential
clients and others seeking information about the firm and,
having done so, to induce plaintiff to reduce the amount it
was seeking from him in unpaid legal fees by threatening to
publish allegedly damaging documents about plaintiff on the
website. Defendant thereby, in plaintiff's view, violated
the Anticybersquatting Consumer Protection Act. Before the
Court is defendant's motion to dismiss for lack of
jurisdiction under Federal Rule of Civil Procedure 12(b)(1)
and for failure to state a claim under Federal Rule of Civil
Procedure 12(b)(6). ECF No. 8.
pertinent allegations of the Complaint are as follows:
Plaintiff is a general partnership that operates as a law
firm both in the United Kingdom and the United States.
Complaint ("Compl.") at p.1 ¶ 1, ECF No. 1.
Dr. Ann Olivarius, together with Dr. Jef McAllister, founded
McAllister Olivarius in 1996 as a general practice law firm.
See Id. at p.2 ¶ 1. The firm specializes in
cases involving gender discrimination and sexual harassment
in employment and educational settings. Id.
its founding, plaintiff has regularly, continuously, and
systematically used the name "McAllister Olivarius"
in connection with the marketing and promotion of its legal
services throughout the United States and abroad. See
Id. at p.4 ¶ 6. Among other things, McAllister
Olivarius promotes itself through articles about its cases
published in media outlets and online via its website and
social media presence. Id. The firm's cases also
have generated articles in multiple publications, including
the New York Times, the Los Angeles Times, Huffington Post,
and the Chronicle of Higher Education. Id.
Plaintiff's website, mcolaw.com, has attracted more than
78, 000 visitors worldwide since January 1, 2014. Over 800,
000 people have viewed information distributed by Olivarius
via Twitter in October and November 2017. Id.
Defendant Mark Myers Mermel is a real estate developer and a
former candidate for Lieutenant Governor of New York.
Id. at p.2 ¶ 2. Mermel has earned postsecondary
degrees from the University of Vermont, Columbia University,
and the Divinity School at Yale University. Id. at
p.2 ¶ 2. Mermel retained plaintiff as counsel on or
about May 15, 2012 in connection with a dispute with Yale.
Id. at p.5 ¶ 8. The terms of plaintiff's
representation in connection with this dispute were
memorialized in a written engagement letter, which was signed
by Mermel on May 15, 2012 (the "Engagement
Letter"). Id. at p.5 ¶ 9; see also
Id. at Ex. A. The Engagement Letter contains a
provision that "[a]ny dispute or legal issue arising
from these terms of business or the engagement letter will be
determined by the laws of the State of Connecticut, without
reference to the principles of conflicts of law, and
considered exclusively by Connecticut and U.S. courts."
Id. at Ex. A, Terms of Business ¶ 10.
May 2012 and August 2014, plaintiff sent eight invoices to
Mermel, each setting forth the fees owed for its legal
representation of Mermel and detailing the time spent and
work performed. Id. at p.6 ¶ 12. Defendant
refused, and continues to refuse, to pay plaintiff as
required by the terms of the Engagement Letter. Id.
at p.6 ¶ 11. Accordingly, on June 20, 2016, plaintiff
filed a civil action against defendant for breach of contract
and quantum meruit in the Superior Court for New Haven
County, Connecticut. Id. at p.6 ¶ 13.
point, Mermel registered the domain name
mcallisterolivariustruth.com. Id. at p.6
¶¶ 14-15. The website bore the title
"McAllister Olivarius TRUTH" in large letters on
every page. Id. at Ex. B. It had a home page, as
well as pages named "Practice Areas, "
"Attorneys", and "Contact, " Id.
The home page displayed a picture of balance scale and the
text "HI, MR JEF!" Id. The "Practice
Areas" page was blank. Id. The
"Attorneys" page listed two lawyers with no
connection to McAllister Olivarius. See Id.; see
also Id. at p.6 ¶ 16. This page also displayed
the following text: "When you experience an injury,
everything can change - we know that at Wilson & Doyle.
With more than a century of combined experience litigating on
our clients' behalf, you can focus on recovering, instead
of finding yourself overwhelmed and worried about your court
case." Id. at Ex. B. The Contact page included
a form for visitors to send a message. Id. at p.6
1, 2016, in response to one of plaintiff's written
demands for payment, Mermel threatened to populate the
website with select documents that, Mermel claimed,
"would cast Plaintiff and its principals in a negative
light with 'other potential clients' and
“cripple if not close' its business."
Id. at p.7 ¶ 17. Mermel then offered to forego
this plan if "both parties would simply 'walk
away' from the unpaid balance, or, alternatively,
plaintiff [substantially] reduced its balance."
Id. at p.7 ¶ 18.
27, 2017, McAllister Olivarius sought leave to amend its
original complaint in New Haven County Superior Court to add
an anticybersquatting claim. Id. at p.7 ¶ 19.
Mermel subsequently removed the website from the internet.
Id. at p.7 ¶ 20. On July 24, 2017, plaintiff
sought leave to file a second amended complaint, adding an
intentional spoliation of evidence claim. Id. at p.7
¶ 21. Mermel opposed. Id. at p.7 ¶ 22. The
New Haven County Superior Court denied plaintiff's
request on September 25, 2017, ruling that plaintiff's
new claims were insufficiently related to its debt collection
claims to warrant joinder in that action. Id. at p.7
¶ 22. Plaintiff brought the instant action on December
20, 2017. See ECF No. 1.
pro se, now moves to dismiss plaintiff's complaint for
lack of subject matter jurisdiction and failure to state a
claim. See ECF No. 8. When, as here, a party proceeds pro se,
a court must liberally construe the party's briefs,
"reading such submissions¶to raise the
strongest arguments they suggest.'" Bertin v.
United States, 478 F.3d 489, 491 (2d Cir. 2007) (quoting
Burgos v. Hopkins, 14 F.3d 787, 790 (2d Cir. 1994)).
"The policy of liberally construing pro se submissions
is driven by the understanding that [i]mplicit in the right
to self-representation is an obligation on the part of the
court to make reasonable allowances to protect pro se
litigants from inadvertent forfeiture of important rights
because of their lack of legal training.'" Abbas
v. Dixon, 480 F.3d 636, 639 (2d Cir. 2007). Although one
suspects that these principles were formulated for the
benefit of persons less educated than Mr. Mermel, they
nevertheless fully apply here.
Subject Matter Jurisdiction
motion to dismiss for lack of subject matter jurisdiction
under Federal Rule of Civil Procedure 12(b)(1) can be granted
"when the court lacks the statutory or constitutional
power to adjudicate the case." Nowak v. Ironworkers
Local 6 Pension Fund, 81 F.3d 1182, 1187 (2d Cir. 1996).
In reviewing a 12(b)(1) motion, the Court must
""accept as true all factual allegations in the
complaint and draw all reasonable inferences in the
Plaintiff's favor." See Merritt v. Shuttle,
Inc., 245 F.3d 182, 186 (2d Cir. 2001). Defendant's
arguments for dismissing under Rule 12(b)(1), even generously
construed, are entirely without merit. Mermel first argues
that this action is procedurally improper because McAllister
Olivarius is the plaintiff and only defendants are entitled
to removal under 28 U.S.C. §§ 1441. See 28 U.S.C.
§ 1441(a) ("[A]ny civil action brought in a State
court of which the district courts of the United States have
original jurisdiction, may be removed by the defendant or
defendants, to the district court of the United States for
the district and division embracing the place where such
action is pending."). However, this case does not
involve removal. Granted, plaintiff sought to bring this
claim in state court, but its request for leave to amend its
complaint to include this cybersquatting claim was denied by
the Connecticut state court. See Compl. at p.7 ¶ 22.
Plaintiff thereafter initiated the instant action in this
Mermel seems to argue that this case does not present a
federal question because the "original complaint" -
that is, the Connecticut complaint - alleged only breach of
contract and quantum meruit. See Memorandum of Law in Support
of Defendant Mark Myers Mermel Motion to Dismiss the
Complaint ("Def. Mem.") at 17, ECF No. 9. This
argument, like the previous one, misconstrues the
relationship between this action and the Connecticut action.
Although there may be a factual nexus between the two
lawsuits, they are procedurally distinct. The cause of action
that plaintiff has pled before this Court is based solely on
a federal statute, the AntiCybersquatting Consumer Protection
Act, 15 U.S.C. § 1125(d). The case therefore presents a
federal question. See 28 U.S.C. § 1331 ("The
district courts shall have original jurisdiction of all civil
actions arising under the Constitution, laws, or treaties of
the United States.").
final argument relating to jurisdiction depends on a choice
of law provision in the Engagement Letter stipulating that
"[a]ny dispute or legal issue arising from these terms
of business or the engagement letter will be determined by
the laws of the State of Connecticut, without reference to
the principles of conflicts of laws of the State of
Connecticut." Compl. at Ex. A. As an initial matter,
plaintiff's anticybersquatting claim does not
"aris[e]" from the terms of the parties'
attorney-client relationship or the Engagement Letter.
Therefore, the Engagement Letter's choice of law
provision does not cover this dispute. Moreover, even if the
clause were applicable here, it would govern only which
state's law this Court must apply and therefore would not
bar this Court's exercise of jurisdiction. See
Executive Telecard, Ltd. v. Engelman, 1996 WL 191967, at
*3 (S.D.N.Y. Apr. 19, 1996).
Failure to State a Claim
motion to dismiss under Federal Rule of Civil Procedure
12(b)(6) presents a closer question. To survive a motion to
dismiss for failure to state a claim under Rule 12(b)(6),
"a complaint must contain sufficient factual matter,
accepted as true, toxstate a claim to relief that
is plausible on its face.'" Ashcroft v.
Igbal, 556 U.S. 662, 678 (2009) (quoting Bell Atl.
Corp. v. Twombly, 550 U.S. 544, 570 (2007)). Mere
conclusory statements in a complaint and "formulaic
recitation[s] of the elements of a cause of action" are
not sufficient. Twombly, 550 U.S. at 555.
considering a Rule 12(b)(6) motion, while the court generally
looks to "the allegations on the face of the complaint,
" "the court may permissibly consider . . .
[d]ocuments that are attached to the complaint or
incorporated in it by reference, " which "are
deemed part of the pleading." Roth v. Jennings,
489 F.3d 499, 509 (2d Cir. 2007) .
Anticybersquatting Consumer Protection Act
("ACPA"), enacted in 1999, is intended "to
protect consumers and American businesses, to promote the
growth of online commerce, and to provide clarity in the law
for trademark owners by prohibiting the bad-faith and abusive
registration of distinctive marks as Internet domain names
with the intent to profit from the goodwill associated with
such marks - a practice commonly referred to as
'cybersquatting.'" S. Rep. No. 106-140, at 4;
see also Sporty's Farm L.L.C. v. Sportsman's
Market, Inc., 202 F.3d 489, 493 (2d Cir. 2000)
("Cybersquatting involves the registration of domain
names of well-known trademarks by non-trademark holders who
then try to sell the names back to the trademark
owners."). The ACPA provides:
A person shall be liable in a civil action by the owner of a
mark, including a personal name which is protected as a mark
under this section, if, without regard to the goods or
services of the parties, that person-
(i) has a bad faith intent to profit from that mark,
including a personal name which is protected as a mark under
this section; and (ii) registers, traffics in, or uses a
domain name that-
(I) in the case of a mark that is distinctive at the time of
registration of the domain name, is identical or ...