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Virgin Enterprises Ltd. v. Jai Mundi, Inc.

United States District Court, N.D. Illinois, Eastern Division

July 18, 2014

VIRGIN ENTERPRISES LTD., Plaintiff,
v.
JAI MUNDI, INC. d/b/a VIRGIN VAPOR, Defendant.

MEMORANDUM OPINION AND ORDER

ELAINE E. BUCKLO, District Judge.

Virgin Enterprises, Limited ("Virgin") has sued Jai Mundi, Inc. ("JMI"), a cigarette retailer that does business as "Virgin Vapor, " for trademark infringement, trademark dilution, unfair competition and related state law claims.

JMI has moved to dismiss the case for lack of personal jurisdiction or, in the alternative, to transfer the case to the Northern District of California pursuant to 28 U.S.C. § 1404(a). I deny JMI's motion for the reasons stated below.

I.

"At this early stage in the litigation, and without the benefit of an evidentiary hearing, [Virgin] bears only the burden of making a prima facie case for personal jurisdiction. [I] take [Virgin's] asserted facts as true and resolve any factual disputes in its favor." uBID, Inc. v. The GoDaddy Grp., Inc. , 623 F.3d 421, 423-4 (7th Cir. 2010).

A.

Virgin, a British company with its principal place of business in Geneva, Switzerland, owns more than fifty (50) trademark registrations in the United States covering a broad range of products and services. See Compl. at ¶¶ 3, 39. Virgin licenses its trademarks to several companies that do business in Illinois, including Virgin America and Virgin Atlantic Airlines; Virgin Mobile; and Virgin Wines. Id . at ¶ 3.

JMI is a California corporation formed in 2011 whose principal place of business is located in Lakeport, California. Id . at ¶ 4. Through its website, www.virginvapor.com, JMI markets and sells electronic cigarettes, liquid nicotine, and related products under the brand names "Virgin Vapor, " "Absolute Virgin, " "Not-So-Virgin, " and "Eco Virgin" (collectively, "Virgin Vapor products"). Id . at ¶ 5.

The Virgin Vapor website includes an online store where customers can make direct purchases and submit wholesale orders. The website also includes a "Store Locator" page that lists five locations in Illinois: (1) Roots Smoke & Vapor Shop in Chicago; (2) Smoke and Vape in Chicago; (3) Steam Engine Vaping Co. in Decatur; (4) The Co-Op Shop in East Peoria; and (5) Vape Soul in Arlington Heights. See Dkt. No. 47 ("Pl.'s Opp'n") at Ex. C.[1] Until recently, Virgin Vapor's website also listed a "store" called AMGlobal located in Herrin, Illinois.

In addition to marketing Virgin Vapor products through its website, JMI maintains a Facebook page, a Twitter account, and an online forum where company representatives communicate with customers from around the world. See Pl.'s Opp'n at Exs. E to H. JMI also runs an "affiliate program" in which third parties agree to place a Virgin Vapor banner on their websites in exchange for a recurring 12.5 percent commission on orders placed by customers who click on the banner.

Virgin Vapor also participated in a trade show called the "Vapor World Expo" held in Rosemont, Illinois on May 7-8, 2014. Id . at Ex. I.

B.

On September 27, 2012, Virgin demanded in writing that JMI phase out use of the "Virgin Vapor" name. The parties then engaged in settlement discussions for thirteen months.

On November 14, 2013, one day before the deadline for submitting a counter-proposal, JMI filed suit against Virgin in the Central District of California seeking a declaration that it was not infringing any of Virgin's trademarks. See Jai Mundi, LLC v. Virgin Enterprises Ltd. , No. 13 C 8429-R (C.D. Cal.) ("the California action"). Virgin filed this trademark infringement action on November 19, 2013, five days after JMI filed the California action.

On January 16, 2014, the judge presiding over the California action, the Honorable Manuel Real, granted Virgin's motion to transfer that case to the Northern District of Illinois on the ground that JMI had engaged in forum shopping by filing an anticipatory declaratory judgment suit during settlement negotiations. See id. at Dkt. No. 32. In connection with this ruling, Judge Real noted that venue and personal jurisdiction were proper in the Northern District of Illinois because Defendant sells and promotes its products in this forum. JMI voluntarily dismissed its declaratory judgment action after it was transferred to this district because the present suit encompasses the same issues. See Jai Mundi LLC v. Virgin Enterprises Ltd. , 14 C 383 (N.D. Ill.) at Dkt. No. 40.

On January 6, 2014, while the California action was still pending, JMI moved to dismiss this suit for lack of personal jurisdiction or, alternatively, to transfer this case to the Central District of California. See Dkt. No. 16. In support of this motion, JMI submitted a declaration from its President, Shawnee Jones ("Ms. Jones"), stating that since the company's formation in 2011, it had sold Virgin Vapor products to only one customer in Illinois. See Dkt. No. 17-1 at ¶ 5. That customer, Tom Pellegrino ("Mr. Pellegrino"), owns the AMGlobal "store" previously listed on Virgin Vapor's website. Ms. Jones declared that Mr. Pellegrino purchased about $1, 700 worth of Virgin Vapor products between March 2013 and October 2013. Id . Mr. Pellegrino submitted an attorney-drafted declaration attesting to the same. See Dkt. No. 17-2 at ¶ 4. However, the invoices attached to Mr. Pellegrino's declaration plainly show that he purchased over $5, 000 worth of Virgin Vapor products.

Two days after JMI moved to dismiss this case, Virgin filed a motion seeking leave to conduct discovery on the issue of personal jurisdiction. See Dkt. No. 19. I granted Virgin's motion over JMI's opposition (Dkt. No. 29) and subsequently ...


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