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Devry Inc. v. University of Medicine and Health Sciences--St. Kitts

February 3, 2009

DEVRY INC. AND GLOBAL EDUCATION INTERNATIONAL, INC. PLAINTIFFS,
v.
UNIVERSITY OF MEDICINE AND HEALTH SCIENCES--ST. KITTS DEFENDANT.



The opinion of the court was delivered by: David H. Coar United States District Judge

HONORABLE DAVID H. COAR

MEMORANDUM OPINION AND ORDER

Plaintiffs DeVry Inc. and Global Education International, Inc. ("Plaintiffs") bring this action against Defendant University of Medicine and Health Sciences -- St. Kitts ("Defendant" or "UMHS") alleging trademark infringement in violation of Section 32(a) of the Trademark Act, 15 U.S.C. § 1114(a), false representation and false designation of origin in violation of the Lanham Act, 15 U.S.C. § 1125(a), common law unfair competition, and a violation under the Illinois Uniform Deceptive Trade Practices Act, 815 ILCS 510/2. Defendant now moves to dismiss the complaint pursuant to Fed. R. Civ. P. 12(b)(6) for failure to state a claim upon which relief can be granted. The motion is DENIED.

BACKGROUND

Plaintiff, DeVry Inc. ("DeVry"), is a Delaware corporation having an address of One Tower Lane, Oakbrook Terrace, Illinois 60181. Plaintiff, Global Education International, Inc. ("Global"), is a corporation organized under the laws of Barbados having an address of Parker House, Wildey Business Park, Wildey Road, St. Michael, Barbados. Global is a subsidiary of DeVry. UMHS is an educational institution which maintains an administrative office at 460 W. 34th Street, 12th Floor, New York, New York 10001. This Court has personal jurisdiction over UMHS, inter alia, pursuant to 735 ILCS 5/2-209 in that UMHS has committed an intentional tortious act in the State of Illinois which constitutes the subject matter of this action, and has transacted business within the State of Illinois.

Plaintiffs, through their related companies, own and operate a medical school under the name Ross University School of Medicine and a veterinary school under the name Ross University School of Veterinary Medicine (collectively, "Ross University"). Compl. ¶ 8. Global is the owner of the trademarks and service marks ROSS and ROSS UNIVERSITY, relating to educational services and related goods and services. Id. at ¶ 9-16. Global, through its predecessors in interest, has been using the marks ROSS and ROSS UNIVERSITY since long before UMHS existed. Id. at ¶ 22.

Ross University medical school offers educational courses to medical students to prepare them for a career in medicine, and the veterinary school for careers in veterinary medicine. Id. at ¶ 23, 27. The medical and veterinary schools are advertised and promoted under the ROSS mark and the ROSS UNIVERSITY mark throughout the United States, including the State of Illinois. Id. at ¶ 24, 28. Plaintiffs' primary market for the medical and veterinary schools is the U.S, and Plaintiffs' medical and veterinary school services are directed to U.S. customers. Id. at ¶ 25-26, 29-30. Plaintiffs, through their related companies, have continuously used the ROSS and ROSS UNIVERSITY marks in commerce to identify and distinguish their goods and services from the goods and services of others. Id. at ¶ 31-32. Plaintiffs, through their related companies, have expended time, money, effort and resources in advertising and promoting throughout the United States the goods and services offered under the ROSS and ROSS UNIVERSITY marks, including the State of Illinois. Id. at ¶ 33. ROSS and ROSS UNIVERSITY are distinctive marks of educational services in the fields of medicine and veterinary medicine. Id. at ¶ 35-37.

Defendant UMHS is a newly formed medical school. Id. at ¶ 38. UMHS began promoting its medical school educational services in or about September of 2007, and classes began in May of 2008. Id. at ¶ 39-40. UMHS has promoted its educational services within the State of Illinois, including at the Benedictine University Health Professions Fair on March 26, 2008, in Lisle, Illinois. Id. at ¶ 41. UMHS shares a campus in the Caribbean nation of St. Kitts and Nevis with a nursing school which has been named "International University of Nursing" or "Robert Ross International University of Nursing" ("IUON") at various times over the past three years. Id. at ¶ 42. The combined UMHS/IUON campus is located on land near the Ross University School of Veterinary Medicine campus. Id. at ¶ 43. UMHS and IUON share most or all of the same ownership group, administrators, and administrative offices. Id. at ¶ 44.

Plaintiffs and IUON are engaged in litigation captioned "DeVry Inc. and Global Education International, Inc. v. International University of Nursing d/b/a Robert Ross International University of Nursing," No. 06 C 3364 in the United States District Court for the Northern District of Illinois (the "IUON Action"). The IUON Action includes trademark infringement and unfair competition claims that, among other things, IUON is unfairly trading on the established reputation of Ross University. Id. at ¶ 45. The case was tried before Judge Guzman in June 2008 and is in post-trial briefing.

Plaintiffs give several examples supporting the complaint's allegations. UMHS has promoted its medical school services using letterhead which contains the logo "UMHS -- Founded by Dr. Robert Ross." Id. at ¶ 47. A sign at the entrance to the combined UMHS/IUON campus states "Founded by Dr. Robert Ross." Id. at ¶ 48. The first text page of a UMHS printed brochure focuses on the past success of Ross University and mentions Ross University four separate times. Id. at ¶ 51 (e.g., "Dr. Robert Ross, founder and former owner of Ross University School of Medicine, is excited to announce the opening of his new medical school . . . . Under his guidance, Ross University grew into one of the largest medical and veterinary schools in the world."). At various times, the home page of the UMHS website focused on the past success of Ross University, including mentioning Ross University four separate times. Id. at ¶ 52. Job position advertisements for UMHS faculty have stated that UMHS is "established by the founder and former owner of Ross University School of Medicine." These advertisements also instruct applicants to reply to an e-mail address at the "ross-central.com" domain, id. at ¶ 53, which, Plaintiffs contend, imply that UMHS is run by the "central" administration of Ross University. A letter from UMHS President Warren Ross to perspective students discusses the past success of Ross University and mentions Ross University four separate times within two paragraphs. Id. at ¶ 54 (using same language as the printed brochure quoted above). On September 28, 2007, a registered user of the internet web site ValueMD.com posted a message to a community forum dedicated to UMHS on that site. The user, having the screen name "eastern2western," stated "I think Ross should have just merged his new buildings [i.e. the UMHS/IUON campus] with the old school instead of starting everything from scratch again because it take a while to get accepted by the different states." Id. at ¶ 57. Plaintiff contends that this statement shows an erroneous belief that UMHS and Ross University were then affiliated and under the same ownership.

UMHS is not associated with, sponsored by, approved by, or otherwise connected with Plaintiffs, or Ross University School of Medicine, or Ross University School of Veterinary Medicine. Id. at ¶ 55.

LEGAL STANDARD

On a motion to dismiss for failure to state a claim upon which relief can be granted, the district court must accept all well-pleaded factual allegations as true and draw all reasonable inferences in favor of the plaintiff. Fed. R. Civ. P. 12(b)(6); Gastineau v. Fleet Mortg. Corp., 137 F.3d 490, 493 (7th Cir. 1998) (citation omitted). The purpose of a 12(b)(6) motion is to decide the adequacy of the complaint, not to determine the merits of the case. Gibson v. City of Chicago, 910 F.2d 1510, 1520 (7th Cir. 1990) (citation omitted). A complaint should not be dismissed pursuant to Rule 12(b)(6) unless it fails it provide fair notice of what the claim is and the grounds upon which it rests or it is apparent from the face of the complaint that under no plausible facts may relief be granted. St. John's United Church of Christ v. City of Chicago, 502 F.3d 616, 625. Although "[a]ll the complaint need do to withstand a motion to dismiss for failure to state a claim is outline or adumbrate a violation of the statute or constitutional provision upon which the plaintiff relies and connect the violation to the named defendants," Christensen v. County of Boone, Illinois, 483 F.3d 454, 459 (7th Cir. 2007) (quoting Brownlee v. Conine, 957 F.2d 353, 354 (7th Cir.1992) (internal citations and quotation ...


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