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
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 We n z , 55 F.3d at
1505). Moreover, any factual disputes must be resolved in
favor of the plaintiff. Id.
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 h
eadquarters 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 ...