UNITED STATES DISTRICT COURT

DISTRICT OF MASSACHUSETTS

 

HASBRO, INC.,

 

Plaintiff,

 

v. Civil Action No. 97-1 0065DPW

 

CLUE COMPUTING, INC.,

 

Defendant.

 

 

 

 

DEFENDANT'S MOTION TO DISMISS OR,

IN THE ALTERNATIVE, TO TRANSFER ACTION

 

The defendant Clue Computing, Inc. hereby respectfully moves to dismiss the above-captioned action pursuant to Fed. R. Civ. P. 12 (b) (2), (3) and (5) on the grounds that this Court lacks personal jurisdiction over the defendant, venue is improper and service of process was insufficient. Alternatively, the defendant moves to transfer the action to the U.S. District Court for the District of Colorado pursuant to 28 U.S.C. 1404 (a).

 

In support of this Motion, the defendant adverts to the Affidavit of Eric Robison and the Defendant's Memorandum of Law in Support of Motion to Dismiss or, in the Alternative, to Transfer Action, both of which are filed herewith.

 

REQUEST FOR ORAL ARGUMENT

 

Clue Computing, Inc., believing that oral argument may assist the Court and wishing to be heard through its counsel, respectfully requests oral argument on this Motion pursuant to Local Rule 7.1 (D).

 

 

 

 

CLUE COMPUTING, INC.

By its attorney,

 

 

 

 

 

Thomas A. Mullen, P.C.

4 Avon Street

Wakefield, Massachusetts 01880

(617) 245-2284

BBO No. 360315

 

Date: February 21, 1997

 

 

Certificate of Service

 

I hereby certify that a true copy of the above document was served upon the attorney of record for each other party by hand on February 21, 1997.

 

Thomas A. Mullen, P.C.

 

a:\3 I\clue.mo

 

 

 

UNITED STATES DISTRICT COURT

DISTRICT OF MASSACHUSETTS

 

HASBRO, INC.,

 

Plaintiff

 

v. Civil Action No. 97-10065-DPW

 

CLUE COMPUTING, INC.,

 

Defendant

 

 

 

AFFIDAVIT OF ERIC ROBISON

 

Your affiant Eric Robison, being first duly sworn, hereby deposes and states as follows:

 

1. My name is Eric Robison. I am President (and Treasurer and Secretary), sole shareholder, sole director, and sole full-time employee of Clue Computing, Inc., a Colorado corporation located in Longmont, Colorado. Clue Computing, Inc., was incorporated on 22 May 1996 in Colorado. The company began as a partnership called Clue Computing. I acquired sole ownership of the company on 15 October 1994 and did not change the name. The business name "Clue Computing" was registered with the Colorado Secretary of State on 1 June 1994, when the partnership began to do business. The company has been in business continuously since 1 June 1994 in Longmont, Colorado, first as a partnership, then a sole proprietorship, and now as a corporation. The company has no bank account or any other assets in any state other than Colorado.

2. The business of Clue Computing, Inc., (and of its predecessor Clue Computing) is computer consulting and the provision of Internet access to other persons and businesses. My company has had nothing to do with toys, games, puzzles, or infant care products and has had no branch offices or subsidiaries.

3. My company has owned the "clue.com" Internet domain name since 13 June 1994, when my registration of that domain name was formally approved by the Internet Network Information Center (the "InterNIC"), the agency that administers Internet domain names. Before I registered "clue.com" for my business, nobody owned it; in fact, it did not exist. The computer that serves the clue.com domain name is, and always has been, physically located in Longmont, Colorado.

 

4. The Internet is a worldwide network of computers through which businesses and individuals can send nearly-instantaneous "email" (electronic mail) communications and other information of various kinds.

 

5. Email communications on the Internet are made using addresses like 'name@domain.com'. The "name" is the name of the user, often (but not necessarily) an individual person. The part of the address after the "@" sign is called the "domain name". The domain name is a unique identifier which designates a set of computers on the Internet in the same way that a street address designates a physical location. For example, my Internet address is ericr@clue.com, which denotes Eric Robison ("ericr", for Eric R., the individual) at clue.com, the domain or computer address. The address is pronounced "eric r at clue dot com". The part of the address after the "dot", or period, is a general indicator of the type of network at that domain; the ".com" designation indicates a commercial network, while ".mil" indicates a military address, ".gov" indicates a government address, and ".org" indicates a non-profit organization. While the "name" preceding the domain name is unique to a single user, many users can share a single domain name.

 

6. The "Web", or the World Wide Web, is a part of the Internet that permits the communication of not only text but also graphic images, sounds, and even full-motion video. Many hundreds of thousands of businesses now have websites to provide information about their products and services. An address on the Web includes the Internet domain name-- the Internet address-- of the computer that "serves", or contains, that particular website. For example, the website maintained by Clue Computing, Inc., is found at http://www.clue.com. (The "http://www" prefix is the traditional means of identifying a web address.) Internet users can not only see information about Clue Computing, Inc., at this website but can also send messages to the company through the website.

 

7. Clue Computing, Inc., uses its clue.com address to communicate with clients and to provide Internet access to clients; specifically, several individuals and businesses use the clue.com domain for their own email and websites. Clue Computing, Inc., also maintains its own website at clue.com, at which site clients and potential clients can learn about services available from Clue Computing, Inc.

 

8. Neither Clue Computing, Inc., nor its predecessor, Clue Computing have ever done business in Massachusetts. The basis for Plaintiff Hasbro's claim that Clue Computing, Inc. has "transacted business" in Massachusetts is unclear, but it may be based on a statement on Clue Computing's web page to the effect that Digital Equipment Corporation (DEC) has been a client of Clue Computing, Inc. (DEC's corporate headquarters are m Massachusetts). Plaintiff's claim may also be based on the fact that my company maintains a website that is accessible to persons in Massachusetts. The facts are these:

a. I once contracted with a New Hampshire company called Professional Training Services (PTS) to provide computer training to DEC employees. PTS hired me, among others, so that it could fulfill its own contract with DEC to train DEC employees and customers. My provision of training services pursuant to this contract with PTS occurred before I incorporated my company. I had no contact of any kind with anyone in Massachusetts. I provided training in several states-- Colorado, Texas, California, Georgia, Maryland, Arizona-- and in Canada, and not in Massachusetts.

b. My company, incorporated or not, has never provided services in Massachusetts, contracted with anyone in Massachusetts, received payment from Massachusetts, or even received inquiries from potential clients in Massachusetts.

c. My company's website is not designed to draw the attention of Massachusetts citizens or businesses in particular. The Clue Computing, Inc., website is accessible to everyone in the world who has access to the World Wide Web. It is impossible to prevent people in Massachusetts from accessing the Clue Computing, Inc., website; there is no technology available for this purpose.

d. To access a website, a user must take several affirmative steps, including the use of special software called a "web browser". First, the user must access the Internet itself. The user must then "run" (start on the user's computer) the browser software. Then, the user must instruct the browser to locate a particular website, which is done either by directing the browser to a specific Internet address (e.g. a domain name, in this case "clue.com") or by using one of many available "search engines" that are available on the Internet and that can search the Web for specific words.

e. My company has not done business or "caused injury" in the Commonwealth of Massachusetts, and my company neither "resides" nor "may be found" in the District of Massachusetts.

 

9. The history of the instant litigation is this:

 

a. Internet domains are administered by a private corporation called Network Solutions, Inc. (NSI), under contract with the National Science Foundation, a US Government agency. Domain names can be registered by any Internet user on a first-come, first-served basis; a user can have any domain name he/she/it wishes so long as nobody else already has the same one. In July 1995, NSI adopted a policy concerning domain-name disputes. This new policy caused NSI to cut off-- to make unusable-- a user's domain name simply because someone else presented NSI with a trademark on a word contained in that domain name. In the instant case, Hasbro informed NSI that Hasbro had a trademark on the word "CLUE" (the name of one of its board games), whereupon NSI informed me that it would cut off my clue.com domain name by a date certain. Had this cut-off occurred, my email communication would have been cut off, and my website would have effectively disappeared. The same would have been true of those individuals and businesses to whom I provide Internet access.

 

b. My company's lawyer and I discussed the matter with both NSI and counsel for Hasbro, and during our conversations with Hasbro's attorney we learned that Hasbro's intention was to obtain the clue.com address for itself so that it could create its own website at that address where Internet users could play its "CLUE" game. Hasbro had already done something similar at "monopoly.com". Shortly thereafter, neither NSI nor counsel for Hasbro would return any more calls from counsel or myself, and the cut-off deadline approached. Accordingly, Clue Computing, Inc., brought an action in the Boulder County District Court against NSI seeking, among other things, injunctive relief.

 

c. On the eve of the preliminary-injunction hearing, NSI filed an interpleader action in the U.S. District Court for the District of Colorado. Despite NSI's request that the state court abandon its case in favor of the newly-filed federal action, the state judge enjoined NSI from cutting off the clue.com domain. Clue Computing, Inc., then agreed to stay the state proceedings until the interpleader action was resolved in order to avoid having to fight on two fronts. (The state court's order is attached hereto and marked Attachment A.)

 

d. NSI necessarily made Hasbro a party to the interpleader action. Hasbro retained local counsel: Holland & Hart, LLP, one of the largest firms in the Rocky Mountain region. Holland & Hart has over 200 attorneys and offices in Denver, Aspen, Boulder, Colorado Springs, Cheyenne, Jackson Hole, Billings, Boise, Salt Lake City, and Washington, D.C. Hasbro could have litigated any issues it chose to litigate in the interpleader action, including its current allegations of trademark infringement and dilution, but chose instead to move to dismiss the interpleader action. (Clue Computing, Inc., had also moved to dismiss, but on different grounds.) Hasbro's motion to dismiss was signed by a partner in the Holland & Hart firm. "Of counsel" on the motion was a named partner in the Palo Alto firm of Wilson, Sonsini, Goodrich & Rosati, a firm of more than 300 attorneys.

 

e. Hasbro prevailed in its motion to dismiss the interpleader action. Hasbro had argued that the federal court could not proceed with interpleader relief until the "res"-- the clue.com domain name-- was deposited with the court, meaning that the domain should be cut off and rendered unusable by anyone. Such a result would, of course, have effectively ended the matter; Clue Computing, Inc., would have been forced to either quit business or attempt to re-establish its communications, and the communications of those who relied on the same address, at some other address. The federal judge in Denver deferred to the state court's injunction and simply dismissed the interpleader action. (The federal judge's order is attached hereto and marked Attachment B.)

 

f. On 10 January 1997, NSI answered the state-court complaint. On that same date, Hasbro filed its lawsuit in Boston. Hasbro obviously knew that my company had counsel but made no effort to communicate with him, even about service. Instead, Hasbro "served" me with the complaint by mailing a copy to an address in Colorado and by serving the Secretary of the Commonwealth of Massachusetts.

 

10. Based on its own annual report, Hasbro enjoyed 1995 revenues of $2,858,200,000 and had 13,000 employees. It has demonstrated its willingness to spend thousands of dollars on attorneys in Colorado alone. Clue Computing, Inc., by contrast, spent about 25 % of its 1996 annual revenue (which revenue will turn out to be somewhere in the high five figures) on legal fees and costs in its attempt to protect its clue.com Internet address, a highly-valued business asset. Both of my company's lawyers-- Mr. Dubois in Boulder and Mr. Mullen in Boston-are solo practitioners. My company has had to rely on its counsel's willingness to accept payments against the amount owed to counsel.

 

11. I am expected to be Clue Computing, Inc.'s, primary witness in this matter. I will testify about the decisions I made in choosing the company's name and choosing the company's clue.com Internet address. I live in Longmont, Colorado. Additionally, my company's accountant is located in Longmont, Colorado, as are all the company's books and records.

 

12. Clue Computing, Inc., cannot afford to send me to Boston to contend with this lawsuit. Even the retention of Boston counsel is a severe financial hardship. In addition to the financial difficulty, it is necessary that I devote my time to the service of my clients. Any time spent away from Colorado, unless it is spent to fulfill a contract with a paying client, costs me significant amounts of income because much of my consulting work is billed hourly. Also, I am under contract to a local corporate customer until sometime in June 1997 (or beyond) to provide services 20 hours per week.

 

FURTHER, the affiant sayeth not.

 

 

 

Signed under the pains and penalties of perjury this 19th day of February, 1997:

 

Eric Robison, President

Clue Computing, Inc.

 

 

 

Certificate of Service

 

I hereby certify that a true copy of the above document was served upon the attorney of record for each other party by hand on February 21, 1997.

 

 

Thomas A. Mullen, P.C.

 

 

 

 

DISTRICT COURT, BOULDER COUNTY, COLORADO

Case No. 96-CV-694, Division 5

 

PRELIMINARY INJUNCTION AND TEMPORARY STAY

 

CLUE COMPUTING, INC., Plaintiff,

 

v.

 

NETWORK SOLUTIONS, INC., Defendant.

 

This Court conducted a hearing on Plaintiff's motion for preliminary injunction on 25 June 1996. Being fully advised, the Court orders as follows:

1. Defendant Network Solutions, Inc., and Defendant's attorneys, officers, agents, servants, employees and any and all other persons in active concert or participation with them, are hereby enjoined from making any change to the registration and use of the "clue.com" domain name until permitted to do so by further order of this Court.

 

2. Proceedings in the instant case are stayed for 90 days, by which time the parties shall notify this Court of the status of the related federal interpleader action.

 

Done this 28 day of June, 1996, nunc pro tunc 25 June 1996, by the Court:

 

ORIGINAL SIGNED BY MORRIS W. SANDSTEAD JR., DISTRICT COURT

 

 

 

Attachment A

 

 

IN THE UNITED STATES DISTRICT COURT

FOR THE DISTRICT OF COLORADO

Judge Wiley Y. Daniel

CIVILACTION No. 96-D-1530

 

NETWORK SOLUTIONS, Inc.,

Plaintiffs,

 

v.

 

CLUE COMPUTING, Inc., and HASBRO, Inc.,

Defendants.

 

ORDER OF DISMISSAL

 

 

This 28 U.S.C. 1335 statutory interpleader matter is before the Court on Defendant Clue Computing, Inc.'s ("CCI") Motion to Dismiss, filed July 22, 1995 and Defendant Hasbro, Inc.'s ("Hasbro") Conditional Motion to Dismiss, filed July 29, 1996.

Plaintiff Network Solutions, Inc. ("Network") filed responses to both of these motions on August 8, 1996 and August 14, 1996 respectively. CCI filed a reply on August 16, 1996 and Hasbro file a reply on August 21, 1996. Having reviewed the briefs of the parties and the relevant legal authority, I conclude that I must grant the motions of Defendants, dismissing this case for the reasons stated herein.

 

Plaintiff is a management company operating under a cooperative agreement with the National Science Foundation to administer the registration of Internet domain names. A controversy has arisen between CCI -- who holds the domain name registration "CLUE.COM" managed by Plaintiff- and Defendant Hasbro who claims that CLUE.COM infringes on a registered trademark name that Hasbro has held since the 1950's. On February 1, 1996 Plaintiff informed Defendant CCI that its use of CLUE.COM may infringe on Defendant Hasbro's trademark, and required CCI to produce a trademark certification or accept the assignment of a new domain name. In response, on June 13, 1996, CCI

Attachment B

initiated a lawsuit in Boulder County District Court against Network for, inter alia, breach of contract and seeking a temporary restraining order and preliminary injunction to prohibit Network from placing on hold the use of the domain CLUE.COM. Thereafter, Network initiated the present 28 U.S.C. 1335 statutory interpleader proceeding in this Court, claiming that it is "an impartial and unbiased stakeholder, has no interest in the property in dispute and is prepared to assign registration and use of the "CLUE.COM" domain name as determined by the Courts (Complaint for Interpleader, filed June 21, 1996).

 

In order for a federal court to exercise jurisdiction pursuant to 28 U.S.C. 1335, a plaintiff must establish three prerequisites: 1) that plaintiff has in its custody or possession money or property valued at $500 or more; 2) that two or more adverse claimants of diverse citizenship claim rights to the money or property; and 3) that The plaintiff has deposited such money or property or has paid the amount of the loan or other value of such instrument into the registry of the court, there to abide the judgment of the court, or has given bond payable to the clerk of the court in such amount and with such surety as the court or judge may deem proper...." All the parties to this case agree that Plaintiff has established the first two of the foregoing requirements. The adverse Defendants, however, argue that Plaintiff has not met the third requirement of depositing the domain name into the registry of this Court as is required by the statute.

The requirement that the plaintiff deposit the res in controversy into the Court's registry is to assure the safety of the disputed property and to facilitate the Court's final judgment. The Plaintiff has argued that it has met its requirement by acknowledging that it will maintain the status quo and, ultimately, follow this Court's determination of rights with regard to domain name. (Affidavit of David M. Graves, Exhibit F of Plaintiff's Complaint). The statute, however, requires more. In General Atomic Co. v. Duke Power Co., 553 F. 2d 53, 56-57 (10th Cir. 1977), the Tenth Circuit held that because the property at issue was not in the hands of the interpleading plaintiff, "[t]he essential aspect . . . that the res be under the control of the person bringing the lawsuit, so as to be deliverable to the registry of the court," has not been met. In the case at bar, Plaintiff has allowed -- and pursuant to the preliminary injunction issued by the Boulder County Court must allow -- CCI to continue to use the domain name CLUE.COM. (See Plaintiffs Opposition to Hasbro's Conditional Motion to Dismiss, at p. 4, filed August 14, 1996). Because CCI is allowed continuing use of the domain name, I find that Plaintiff cannot deliver CLUE.COM to this Court and cannot adequately safeguard CLUE.COM as to allow this Court to exercise jurisdiction pursuant to 28 U.S.C. 1335. Plaintiff's failure to meet the third threshold requirement means that this Court lacks subject matter jurisdiction to adjudicate Plaintiffs interpleader action.

 

I want to make clear, however, that under some circumstances a determination of rights to intangibles, such as domain names, could be decided in an interpleader action. For example, if Plaintiff had been able to suspend use of the CLUE.COM name, and promised this Court that its use would remain suspended during the pendency of the interpleader action, I would have been satisfied that Plaintiff had effectively deposited the domain name into the Court's registry. However, because the Boulder County District Court issued an injunction preventing Plaintiff from suspending the CLUE.COM name, and because as a matter of comity I will not request that the Boulder County District Court vacate its preliminary injunction, Plaintiff cannot successfully deposit the domain name with the Court.

Additionally, even if the Plaintiff had successfully deposited the domain name in this Court's registry, I would still be compelled to dismiss this interpleader action. The "typical plaintiff in an interpleader is an innocent stakeholder who is subject to competing claims. It is the general rule that a party seeking interpleader must be free from blame in causing the controversy, and where he stands as a wrongdoer with respect to the subject matter of the suit or any of the claimants, he cannot have relief by interpleader." Farmers Irrigating Ditch & Reservoir Co. v. Kane, 845 F. 2d 229 (10th Cir. 1988). In the present case, Plaintiff is not merely a disinterested stakeholder praying the Court to resolve a dispute between adverse parties. Instead, Plaintiff is being sued in an, inter alia, breach of contract proceeding in Boulder County District Court. Thus, the CLUE.COM dispute is not merely between CCI and Hasbro, rather the dispute implicates the duties flowing from the agreement between CCI and Network. Therefore, I will not allow Network to use an interpleader action to invoke the equitable jurisdiction of this Court in order to escape adjudication of its contractual duties, and possible liability, in the state court action.

Accordingly, it is hereby

 

ORDERED that both Defendants CCI's and Hasbro's Motions to Dismiss are

 

GRANTED and this case is dismissed. It is

 

FURTHER ORDERED that the parties bear their own costs and attorneys' fees in

 

this proceeding.

 

DATED at Denver, Colorado, this 29 day of October, 1996.

 

BY THE COURT:

 

WILEY Y. DANIEL

United States District Judge