United States District Court, D. Utah
MEMORANDUM DECISION ON DEFENDANT'S MOTION TO
DISMISS FOR LACK OF JURISDICTION
Honorable Jill N. Parrish United States District Court Judge
the court is Defendant Mark M. Youssef 's Motion to
Dismiss for Lack of Jurisdiction filed March 28, 2016.
(Docket No. 31). As discussed below, the court concludes that
it may not properly exercise personal jurisdiction over Dr.
Youssef here, but grants leave for Younique to submit a
request for transfer before the court dismisses the case.
action arises from a trademark dispute between Plaintiff
Younique, L.L.C., a cosmetics company headquartered in Lehi,
Utah, and Defendant Mark M. Youssef, a medical doctor who
owns and operates the YOUnique Cosmetic Surgery Center in
Santa Monica, California. In 2012, Younique allegedly began
selling a variety of cosmetics, skincare, and beauty products
under the "YOUNIQUE PRODUCTS" brand. (Docket No. 2,
¶ 13). Younique registered a federal trademark for the
"YOUNIQUE PRODUCTS" brand name in 2014 (Reg. No. 4,
504, 512), and an associated logo in 2015 (Reg. No. 4, 821,
584). Dr. Youssef alleges his practice has provided surgical
and non-surgical cosmetic treatments under the
"YOUNIQUE" mark since 2005. Dr. Youssef also
alleges he has sold certain "medicated and non-medicated
cosmetics" under the "YOUNIQUE" mark since
2006. (Docket No. 31, at 3-4). Dr. Youssef registered a
federal service mark for "YOUNIQUE" in 2008 (Reg.
No. 3, 543, 530). Thus, both Younique and Dr. Youssef lay
claim to some form of a "Younique" mark.
2014, Dr. Youssef filed an application for a trademark on the
"YOUNIQUE" mark in order to further his sales of
cosmetic products. His application was denied when the U.S.
Patent and Trademark Office determined that his
"YOUNIQUE" mark was likely to cause confusion with
Younique's sales of cosmetics under the preexisting
"YOUNIQUE PRODUCTS" trademark. In response, Dr.
Youssef sent a cease-and-desist letter to Younique in Lehi,
Utah, alleging infringement of his service mark and
threatening litigation. Shortly thereafter, in August of
2015, Dr. Youssef filed a petition to cancel Younique's
trademark and supplant it with his own application, arguing
that he was the first to use the mark. That petition is
pending before the U.S. Trademark Trial and Appeals Board
response to Dr. Youssef's letter and petition to the
TTAB, Younique filed this action for declaratory relief in
the District of Utah under the Federal Declaratory Judgments
Act. See 28 U.S.C. §§ 2201, 2202. Younique
seeks a declaration that its use of the "YOUNIQUE
PRODUCTS" trademark does not infringe on or dilute any
rights Dr. Youssef may have in his service mark or pending
trademark under federal and state law, and that its use of
the "YOUNIQUE PRODUCTS" trademark does not
constitute unfair competition, deceptive trade practice, or
other tortious activity under federal or state law. Younique
also seeks an order dismissing Dr. Youssef's petition,
which is currently pending at the TTAB, and an injunction
against any further action by Dr. Youssef to challenge
Younique's trademark registration. (See Docket
No. 2, ¶¶25-37).
March 28, 2016, Dr. Youssef filed the instant Motion to
Dismiss for Lack of Personal Jurisdiction. (Docket No. 31).
Dr. Youssef argues that he does not have the required
"minimum contacts" with this forum to create
general or specific personal jurisdiction, that any contacts
he has with this forum are unrelated to Younique's claim,
and, finally that any exercise of personal jurisdiction would
not be reasonable or fair under due process principles.
Younique timely filed a Memorandum in Opposition on August
10, 2016. (Docket No. 40). Dr. Youssef timely filed an
appropriate reply on August 24, 2016. (Docket No. 43). Oral
argument was held before the court on September 20, 2016. The
court now considers the arguments of the parties on this
matter under jurisdiction granted by 28 U.S.C. § 2201.
described above, the motion at hand contests this court's
exercise of personal jurisdiction over Dr. Youssef.
"[W]hen the court's jurisdiction is contested, the
plaintiff has the burden of proving jurisdiction
exists." Wenz v. Memery Crystal, 55 F.3d 1503,
1505 (10th Cir. 1995). Where, as here, no evidentiary hearing
has been held and the motion for personal jurisdiction is
based on affidavits and other preliminary materials, the
plaintiff "need only make a prima facie showing
of personal jurisdiction." Dudnikov v. Chalk &
Vermilion Fine Arts, Inc., 514 F.3d 1063, 1070 (10th
Cir. 2008) (citing Wenz, 55 F.3d at 1505). Moreover,
any factual disputes must be resolved in favor of the
established the parameters of the burden on Younique, the
court now turns to the substance of Dr. Youssef's motion.
As discussed above, Dr. Youssef challenges this court's
exercise of personal jurisdiction over him as a non-resident
of this forum. When determining the extent of its own
personal jurisdiction over a non-resident defendant, the
court "begins [its analysis] with two questions."
See Id. The first question asks whether the exercise
of personal jurisdiction by this court aligns with the
applicable jurisdictional statute. The second question asks
whether the exercise of personal jurisdiction by this court
comports with principles of constitutional due process.
See Trujillo v. Williams, 465 F.3d 1210, 1217 (10th
Cir. 2006). As to the first question, neither the Lanham Act,
15 U.S.C. § 1051 et seq., nor the Declaratory
Judgment Act, 28 U.S.C. § 2201 et seq., provide
for nationwide service of process. See Capitol Fed. Sav.
Bank v. E. Bank Corp., 493 F.Supp.2d 1150, 1158 (D. Kan.
2007) (Lanham Act); Dudnikov, 514 F.3d at 1070
(Declaratory Judgments Act). Thus, the applicable
jurisdictional statute is Utah's long-arm statute,
see Fed. R. Civ. P. 4(k)(1)(A), which
"authorizes jurisdiction to the full extent of the
federal constitution." Emp 'rs Mut. Cas. Co. v.
Bartile Roofs, Inc., 618 F.3d 1153, 1159 (10th Cir.
2010); see also Utah Code Ann. § 78B-3-201(3);
Starways, Inc. v. Curry, 980 P.2d 204, 206 (Utah
1999). Because the applicable long-arm statute and due
process are coextensive in this case, "the first,
statutory, inquiry effectively collapses into the second,
constitutional, analysis." Dudnikov, 514 F.3d
at 1070. As a result, this court need not conduct a separate
statutory inquiry, Emp'rs Mut., 618 F.3d at
1159, but will instead focus its personal jurisdiction
analysis on the requirements of due process.
noted above, Younique must satisfy this court that the
exercise of personal jurisdiction over Dr. Youssef comports
with due process. "The Supreme Court has held that, to
exercise jurisdiction in harmony with due process, defendants
must have 'minimum contacts' with the forum state,
such that having to defend a lawsuit there would not
'offend traditional notions of fair play and substantial
justice.'" Dudnikov, 514 F.3d at 1070
(quoting Int'l Shoe Co. v. Washington, 326 U.S.
310, 316, 66 S.Ct. 154 (1945)). Personal jurisdiction over a
non-resident defendant may take either general or specific
form. See Helicopteros Nacionales de Colombia, S.A. v.
Hall, 466 U.S. 408, 414 nn.8, 9, 104 S.Ct. 1868 (1984).
General personal jurisdiction arises from a non-resident
defendant's "continuous and systematic" contact
with the forum. Daimler AG v. Bauman, 134 S.Ct. 746,
754 (2014) (internal quotations omitted) (quoting
Goodyear Dunlop Tires Operations, S.A. v. Brown, 564
U.S. 915, 919, 131 S.Ct. 2846 (2011)). Such pervasive contact
subjects a non-resident defendant to any claim arising in the
forum because he is "essentially at home" there.
Id. (quoting Goodyear, 564 U.S. at 919);
Shrader v. Biddinger, 633 F.3d 1235, 1239 (10th Cir.
2011) (explaining that general jurisdiction subjects a
non-resident defendant to the court's jurisdiction
"for any lawsuit"). Where a non-resident defendant
does not have sufficient contact with the forum to be
considered "essentially at home" there, a court may
nonetheless exercise specific personal jurisdiction over him
in claims that arise out of, or are specific to, his contact
with the forum. See Walden v. Fiore, 134 S.Ct. 1115,
1121 n.6 (2014); Anzures v. Flagship Rest. Grp., 819
F.3d 1277, 1280 (10th Cir. 2016).
Younique argues that Dr. Youssef has "minimum
contacts" with Utah sufficient to permit the exercise of
specific personal jurisdiction. As noted above, a court may not
exercise personal jurisdiction over a non-resident defendant
unless he has "minimum contacts with the forum state,
such that having to defend a lawsuit there would not offend
traditional notions of fair play and substantial
justice." Dudnikov, 514 F.3d at 1070 (internal
quotations omitted). In the context of specific personal
jurisdiction, the "minimum contacts" inquiry
"depends 'on the relationship among the defendant,
the forum, and the litigation[.]'" See
Anzures, 819 F.3d at 1280 (quoting Walden, 134
S.Ct. at 1121). More precisely, in evaluating whether the
exercise of specific personal jurisdiction comports with due
process, courts make three inquiries: "(1) whether the
defendant purposefully directed its activities at residents
of the forum state; (2) whether the plaintiff's injury
arose from those purposefully directed activities; and (3)
whether exercising jurisdiction would offend traditional
notions of fair play and substantial justice."
Newsome v. Gallacher, 722 F.3d 1257, 1264 (10th Cir.
2013); see also Dudnikov, 514 F.3d at 1071.
Supreme Court recently clarified the contours of the first
inquiry: "For a State to exercise jurisdiction
consistent with due process, the defendant's suit-related
conduct must create a substantial connection with the forum
State." Walden, 134 S.Ct. at 1121. The Court
focused on two essential attributes of a non-resident
defendant's "substantial connection with the forum
State." Id. at 1121-22. First, the
defendant-forum "relationship must arise out of contacts
that the 'defendant himself creates with the
forum State[, ]" and not from contacts the plaintiff or
third parties have with the forum State. Id. at 1122
(emphasis in original) (quoting Burger King Corp. v.
Rudzewicz, 471 U.S. 462, 475, 105 S.Ct. 2174 (1985)).
Second, the relationship must arise from "the
defendant's contacts with the forum State itself, not the
defendant's contacts with persons who reside there."
Id. Thus, "the mere fact that [a
defendant's] conduct affected [a] plaintiff with
connections to the forum State does not suffice to authorize
jurisdiction." Id. at 1126.
arguing that this court may properly exercise specific
personal jurisdiction over Dr. Youssef, Younique first
alleges multiple commercial contacts between Dr. Youssef and
the State of Utah. Younique alleges that Dr. Youssef traveled
to Utah and performed certain "medical services"
for visitors at the Sundance Film Festival in 2007, that he
has "actively solict[ed] and treat[ed]" Utah
residents at his cosmetic surgery practice in California,
that he sold "YOUNIQUE"-branded products to Utah
residents in California, that he shipped some of those
products to Utah after they were purchased in California, and
finally, that he operated an online store that advertised
beyond California and could theoretically sell and ship
products to Utah. (Docket No. 40, at 1-3). Younique claims
that these contacts suffice to ground personal jurisdiction
in this instance. Id. at 3. In the alternative,
Younique points to Dr. Youssef's recent conduct that
precipitated this declaratory action, specifically his
sending of a cease-and-desist letter to Younique's
headquarters in Lehi, Utah. Id. Plaintiff argues
that this conduct alone is also sufficient to create personal
jurisdiction over Dr. Youssef in Utah. Id. at 14. In
short, Younique argues that Dr. Youssef's ...