Burger King, 471 U.S. at 476-7, 105 S.Ct. at 2184. No one
factor is dispositive; a court must balance all seven.
Panavision, 141 F.3d at 1323.
i) Limited's Purposeful Interjection is Significant
This factor weighs strongly in favor of the Court's exercise of
personal jurisdiction. Here, the extent of Limited's purposeful
interjection was substantial. Limited, allegedly, has
purposefully and deliberately designed a website using Crate &
Barrel's trademark as their Internet domain name, prominently
displayed Crate & Barrel's mark on their website, solicited
business through the website, and conducted business over the
Internet through the website. Limited's actions via the Internet
were directed toward Crate & Barrel in Illinois.
In addition, Limited deliberately and purposefully pursued,
developed and maintained business contacts in Illinois by
attending trade shows to promote its business in the United
States, purchasing goods from Illinois vendors, and advertising
in publications circulated in Illinois. Thus, Defendant has
purposefully and substantially interjected itself into the forum
state of Illinois by both its Internet and its non-Internet
ii) Defendant's Burden in Litigating
A defendant's burden in litigating in the forum is a factor in
the assessment, however, unless the inconvenience is so great as
to constitute a deprivation of due process, it will not overcome
clear justifications for the exercise of jurisdiction.
Panavision, 141 F.3d at 1323.
In this case, Defendant has already made several trips to
Illinois and other parts of the United States to attend trade
shows, develop relationships with vendors and suppliers, and
promote it's business. In this era of Internet communications
(with which Defendant is well familiar), faxes,
telecommunications, and discount air travel, requiring Limited to
litigate in Illinois is not constitutionally unreasonable. See
This factor concerns the extent to which this Court's exercise
of jurisdiction would conflict with the sovereignty of the
Republic of Ireland, Defendant's principal place of business.
Panavision, 141 F.3d at 1323. Although Plaintiff and Defendant
are involved in litigation in Ireland, Plaintiff has brought a
separate claim in each jurisdiction, each based on the trademark
laws of the particular forum. The Irish court will not decide
liability under the Illinois Uniform Deceptive Trade Practices
Act and the Lanham Act. The exercise of jurisdiction by a federal
court in Illinois does not implicate sovereignty concerns of the
Republic of Ireland.
iv) Forum State's Interest
This factor weighs heavily in favor of exercising jurisdiction.
"Illinois has a strong interest in adjudicating disputes that
involve the alleged infringement of an Illinois . . . company's
trademark." LFG, 78 F. Supp.2d at 739.
v) Efficient Resolution
This factor is not compelling in either direction. It focuses
on the location of the evidence and witnesses. It is no longer
weighed heavily given the modern advances in communications and
transportation. Panavision, 141 F.3d at 1323. It would appear
that the evidence to be presented by each party is equal in
proportion, with the location of witnesses approximately evenly
divided between Illinois and Ireland.
vi) Convenient and Effective Relief for Plaintiff
This factor also weighs slightly in favor of exercising
personal jurisdiction. It would certainly be more convenient for
Crate & Barrel to litigate in Chicago than in Ireland. On the
other hand, it would not be overly burdensome to Crate & Barrel
to litigate in Ireland, as evidenced by the fact that it is
already involved in a lawsuit with Limited in Ireland for alleged
violation of Irish trademark laws. However, Crate & Barrel can
only obtain relief under the Lanham Act and under the Illinois
Uniform Deceptive Trade Practices Act in Illinois.
vii) Alternative Forum
This factor is a wash. The alternative forum in which to
litigate in this case is Ireland, and, as previously discussed,
the parties are presently involved in litigation there to
litigate Irish trademark issues. However, the Illinois forum is
necessary to litigate United States and Illinois trademark
Weighing all the factors, the Court finds it not unreasonable
to exercise personal jurisdiction over Limited. Plaintiff has
made a prima facie case for personal jurisdiction over Limited
under both the due process analysis and the amenability to
service test, and personal jurisdiction is reasonable. Therefore,
the Court denies Limited's motion to dismiss for lack of personal
IV. SUPPLEMENTAL JURISDICTION OVER STATE LAW CLAIMS.
Supplemental jurisdiction is proper over state law claims in
the following situations:
(a) [I]n any civil action of which the district
courts have original jurisdiction, the district
courts shall have supplemental jurisdiction over all
other claims that are so related to claims in the
action within such original jurisdiction that they
form part of the same case or controversy under
Article III of the United states Constitution.
(c) The district courts may decline to exercise
supplemental jurisdiction over a claim under
subsection (a) if —
(1) the claim raises a novel or complex issue of
(2) the claim substantially predominates over the
claim or claims over which the district court has
(3) the district court has dismissed all claims
over which it has original jurisdiction, or
(4) in exceptional circumstances, there are other
compelling reasons for declining jurisdiction.
28 U.S.C. § 1367(a), (c).
The Supreme Court has held that, in order for a district court
to have supplemental jurisdiction over a state law claim, "the
federal claim must have substance sufficient to confer subject
matter jurisdiction on the court. The state and federal claims
must derive from a common nucleus of operative facts. But if,
considered without regard to their federal or state character, a
plaintiff's claims are such that he would ordinarily be expected
to try them all in one judicial proceeding, then, assuming
substantiality of the federal issues, there is power in federal
courts to hear the whole." United Mine Workers of America v.
Gibbs, 383 U.S. 715, 725, 86 S.Ct. 1130, 1138, 16 L.Ed.2d 218
(1966). In addition, "supplemental jurisdiction is not limited to
restatements of the same basic ground for recovery . . . The
claims need only revolve around a central fact pattern." White
v. County of Newberry, S.C., 985 F.2d 168, 172 (4th Cir. 1993).
In this case, supplemental jurisdiction over the Illinois claim
is appropriate. Both the federal claim, a violation of the Lanham
Act, and the state claim, a violation of the Illinois Uniform
Deceptive Trade Practices Act, arise from the same nucleus of
operative facts, specifically, Defendant's alleged use of
Plaintiff's trademark on Defendant's Internet website, as
Defendant's domain name, and on Defendant's labels of goods.
Furthermore, there are no factors under 28 U.S.C. § 1367(c) that
would warrant this Court to decline jurisdiction over the state
claim. Finally, the Court notes several Illinois cases involving
alleged trademark infringement over the Internet that have been
brought and decided under both the federal Lanham Act and related
Illinois state laws. LFG, 78 F. Supp.2d 731; Juno, 979 F. Supp. 684;
Intermatic, 947 F. Supp. 1227. This Court will exercise
supplemental jurisdiction over the Illinois trademark action.
V. MOTION TO STAY THE PROCEEDINGS
Plaintiff owns a number of foreign trademark and service mark
registrations for the "Crate & Barrel" and "CRATE AND BARREL"
marks, including registrations in Ireland, the United Kingdom,
and the European Community. (Pl.Comp. at 3). In addition to their
present suit in this court, Plaintiff has brought suit against
Limited in Ireland and the United Kingdom, alleging that
Limited's use of Plaintiff's mark infringes on its trademark
rights. Specifically, in the case pending in Ireland, Plaintiff
alleges trademark infringement, passing off, and conspiracy to
damage the business interests, reputation, and goodwill of
Plaintiff. (D.Mot. to Dismiss, Ex. D). In the case pending in the
United Kingdom, Plaintiff alleges trademark infringement. (D.Mot.
to Dismiss, Ex. C).
Because Plaintiff has brought similar actions against the
Defendant in Ireland and the United Kingdom, Defendant argues
that this case should be stayed to preserve judicial economy and
to avoid piecemeal litigation. The Court finds these arguments
unpersuasive and declines to stay the proceedings.
"Federal courts have a `virtually unflagging obligation to
exercise the jurisdiction given to them.'" Moses H. Cone
Memorial Hospital v. Mercury Construction Corp., 460 U.S. 1, 15,
103 S.Ct. 927, 936, 74 L.Ed.2d 765 (1983) (quoting Colorado
River Water Conservation District v. United States,
424 U.S. 800, 96 S.Ct. 1236, 47 L.Ed.2d 483 (1976)). Only under "rare" and
"exceptional circumstances" providing the "clearest of
justifications" should a federal court consider surrendering this
jurisdiction. Id., 460 U.S. at 25-6, 103 S.Ct. at 942.
The Supreme Court has provided several factors to consider when
determining whether the case at hand qualifies as one of those
"rare" and "exceptional circumstances" warranting a stay of
proceedings in the event of concurrent jurisdiction.
In assessing the appropriateness of [a stay] in the
event of an exercise of concurrent jurisdiction, a
federal court may also consider such factors as the
inconvenience of the federal forum; the desirability
of avoiding piecemeal litigation; and the order in
which jurisdiction was obtained by the concurrent
forums. No one factor is necessarily determinative; a
carefully considered judgment taking into account
both the obligation to exercise jurisdiction and the
combination of factors counseling against that
exercise is required. Only the clearest of
justifications will warrant dismissal.
Id., 460 U.S. at 15, 103 S.Ct. at 936-7 (citing Colorado
River, 424 U.S. at 818-9, 96 S.Ct. at 1246-7).