Zippo Mfr. Co. v. Zippo Dot Com, Inc., 952 F. Supp. 1119 (W.D.Pa. 1997)MEMORANDUM OPINIONMcLAUGHLIN, District Judge.This is an Internet domain name [FN1] dispute. At this stage of the controversy, we must decide the Constitutionally permissiblereach of Pennsylvania's Long Arm Statute, 42 Pa.C.S.A. § 5322, through cyberspace. Plaintiff Zippo Manufacturing Corporation("Manufacturing") has filed a five count complaint against Zippo Dot Com, Inc. ("Dot Com") alleging trademark dilution,infringement, and false designation under the Federal Trademark Act, 15 U.S.C. §§ 1051-1127. In addition, the Complaint allegescauses of action based on state law trademark dilution under 54 Pa.C.S.A. § 1124, and seeks equitable accounting and impositionof a constructive trust. Dot Com has moved to dismiss for lack of personal jurisdiction and improper venue pursuant toFed.R.Civ.P. 12(b)(2) and (3) or, in the alternative, to transfer the case pursuant to 28 U.S.C. § 1406(a). For the reasons set forthbelow, Defendant's motion is denied.I. BACKGROUNDThe facts relevant to this motion are as follows. Manufacturing is a Pennsylvania corporation with its principal place of businessin Bradford, Pennsylvania. Manufacturing makes, among other things, well known "Zippo" tobacco lighters. Dot Com is aCalifornia corporation with its principal place of business in Sunnyvale, California. Dot Com operates an Internet Web site [FN2]and an Internet news service and has obtained the exclusive right to use the domain names "zippo.com", "zippo.net" and"zipponews.com" on the Internet. [FN3]Dot Com's Web site contains information about the company, advertisements and an application for its Internet news service. Thenews service itself consists of three levels of membership--public/free, "Original" and "Super." Each successive level offersaccess to a greater number of Internet newsgroups. A customer who wants to subscribe to either the "Original" or "Super" level ofservice, fills out an on-line application that asks for a variety of information including the person's name and address. Payment ismade by credit card over the Internet or the telephone. The application is then processed and the subscriber is assigned a passwordwhich permits the subscriber to view and/or download Internet newsgroup messages that are stored on the Defendant's server inCalifornia.Dot Com's contacts with Pennsylvania have occurred almost exclusively over the Internet. Dot Com's offices, employees andInternet servers are located in California. Dot Com maintains no offices, employees or agents in Pennsylvania. Dot Com'sadvertising for its service to Pennsylvania residents involves posting information about its service on its Web page, which isaccessible to Pennsylvania residents via the Internet. Defendant has approximately 140,000 paying subscribers worldwide.Approximately two percent (3,000) of those subscribers are Pennsylvania residents. These subscribers have contracted to receiveDot Com's service by visiting its Web site and filling out the application. Additionally, Dot Com has entered into agreements withseven Internet access providers in Pennsylvania to permit their subscribers to access Dot Com's news service. Two of theseproviders are located in the Western District of Pennsylvania.The basis of the trademark claims is Dot Com's use of the word "Zippo" in the domain names it holds, in numerous locations in itsWeb site and in the heading of Internet newsgroup messages that have been posted by Dot Com subscribers. When an Internetuser views or downloads a newsgroup message posted by a Dot Com subscriber, the word "Zippo" appears in the "Message-Id"and "Organization" sections of the heading. [FN4] The news message itself, containing text and/or pictures, follows.Manufacturing points out that some of the messages contain adult oriented, sexually explicit subject matter.II. STANDARD OF REVIEWWhen a defendant raises the defense of the court's lack of personal jurisdiction, the burden falls upon the plaintiff to comeforward with sufficient facts to establish that jurisdiction is proper. Mellon Bank (East) PSFS, N.A. v. Farino, 960 F.2d 1217,1223 (3d Cir.1992) (citing Carteret Savings Bank v. Shushan, 954 F.2d 141 (3d Cir.1992), cert. denied 506 U.S. 817, 113 S.Ct.61, 121 L.Ed.2d 29 (1992)). The plaintiff meets this burden by making a prima facie showing of "sufficient contacts between thedefendant and the forum state." Mellon East, 960 F.2d at 1223 (citing Provident Nat. Bank v. California Fed. Sav. & Loan Assoc.,819 F.2d 434 (3d Cir.1987)).III. DISCUSSIONPage1of7Zippo Mfr. Co.9/13/2007file://C:\CMU\LawCourse2007\readings\Jurisdiction\Zippo Mfr_ Co.htmA. Personal Jurisdiction1. The Traditional FrameworkOur authority to exercise personal jurisdiction in this case is conferred by state law. Fed.R.Civ.P. 4(e); Mellon, 960 F.2d at 1221.The extent to which we may exercise that authority is governed by the Due Process Clause of the Fourteenth Amendment to theFederal Constitution. Kulko v. Superior Court of California, 436 U.S. 84, 91, 98 S.Ct. 1690, 1696, 56 L.Ed.2d 132 (1978).Pennsylvania's long arm jurisdiction statute is codified at 42 Pa.C.S.A. § 5322(a). The portion of the statute authorizing us toexercise jurisdiction here permits the exercise of jurisdiction over non-resident defendants upon: (2) Contracting to supplyservices or things in this Commonwealth. 42 Pa.C.S.A. § 5322(a). It is undisputed that Dot Com contracted to supply Internetnews services to approximately 3,000 Pennsylvania residents and also entered into agreements with seven Internet accessproviders in Pennsylvania. Moreover, even if Dot Com's conduct did not satisfy a specific provision of the statute, we wouldnevertheless be authorized to exercise jurisdiction to the "fullest extent allowed under the Constitution of the United States." 42Pa.C.S.A. § 5322(b).The Constitutional limitations on the exercise of personal jurisdiction differ depending upon whether a court seeks to exercisegeneral or specific jurisdiction over a non-resident defendant. Mellon, 960 F.2d at 1221. General jurisdiction permits a court toexercise personal jurisdiction over a non-resident defendant for non-forum related activities when the defendant has engaged in"systematic and continuous" activities in the forum state. Helicopteros Nacionales de Colombia, S.A. v. Hall, 466 U.S. 408, 414-16, 104 S.Ct. 1868, 1872-73, 80 L.Ed.2d 404 (1984). In the absence of general jurisdiction, specific jurisdiction
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