The Agave Project LLC v. Host Master 1337 Services LLC

— 1 — — 2 — — 3 — — 4 — — 5 — UNITED STATES DISTRICT COURT 6 WESTERN DISTRICT OF WASHINGTON AT SEATTLE — 7 — THE AGAVE PROJECT LLC, d/b/a CASE NO. 2:23-cv-1984 8 THORNTAIL, and JOEL VANDENBRINK, individual, ORDER GRANTING IN PART 9 PLAINTIFFS’ MOTION FOR Plaintiffs, TEMPORARY RESTRAINING ORDER — 10 — v. — 11 — HOST MASTER 1337 SERVICES LLC, 12 a ST. KITTS and NEVIS company, and a DOE, — 13 — Defendants. — 14 — — 15 — Plaintiffs The Agave Project LLC, d/b/a Thorntail Hard Agave (“Thorntail”) — 16 — and Joel VandenBrink filed a lawsuit on December 22, 2023, to “stop Defendants, — 17 — Host Master 1337 LLC and a Doe, from cybersquatting on the domain — 18 — ‘thorntailhardavage.com’ and using this domain, as well as mirror websites, to — 19 — publish false, defamatory, and disparaging content about Thorntail and — 20 — Vande[n]Brink with the intent to interfere with Plaintiff’s business.” Dkt. No. 1 at — 21 — 1. — 22 — — 23 — 1 Plaintiffs move for a temporary restraining order to block Defendants from 2 using the thorntailhardagave.com domain or publishing defamatory content about 3 Plaintiffs. They also request leave to serve Defendants by mail and email and to 4 conduct expedited discovery. For the reasons explained below, the Court GRANTS 5 in part the motion. 6 1. BACKGROUND 7 According to the complaint, Thorntail is an alcohol beverage company that 8 VandenBrink incorporated in March 2023. Dkt. No. 1 at 3. Plaintiffs allege that as 9 early as March 2023, they secured trademark rights in the “Thorntail Hard Agave” 10 mark by offering for sale, securing an agreement for distribution of, and continuing 11 to market and promote their products under the Thorntail Hard Agave brand. Id. at 12 3-5. 13 Plaintiffs claim that between May and August 2023, Defendant Doe created 14 and registered the domains “thorntailhardagave.com,” “anonimcard.com,” and 15 “kompletedesignbuild.com” (“Subject Websites”) to display various inflammatory 16 and false statements and images about Plaintiffs. Id. at 4-5. To hide his identity, 17 Doe used Defendant Host Master 1337 LLC as an intermediary to register the 18 domains through Tucows, which according to Plaintiffs has a history of refusing to 19 comply with valid “takedown” requests from trademark holders. Id. at 6. 20 In November 2023, Plaintiffs tried to gain control of the 21 thorntailhardagave.com domain through the World Intellectual Property 22 Organization’s Uniform Domain-Name Dispute-Resolution Policy (“UDRP”) 23 arbitration process. Id. at 7. Plaintiffs named Host Master 1337 as the registrant of 1 the domain, but Host Master 1337 never responded to Plaintiffs’ UDRP complaint. 2 Id. Through the UDRP process, Plaintiffs learned that Host Master 1337 provided 3 only a P.O. Box and email address, and not a physical address, when it registered 4 the domains of the Subject Websites with Tucows. Dkt. No. 3 at 1-2. On December 5 12, 2023, an arbitrator denied Plaintiffs’ request to transfer the domain based on 6 his finding Thorntail had not acquired secondary meaning. Dkt. No. 1 at 7. 7 Plaintiffs now move for a temporary restraining order to enjoin operation of 8 the Subject Websites. Since filing their motion, however, Plaintiffs report that the 9 Subject Websites have been “taken down.” Dkt. No. 9 at 1-2. Even so, Plaintiffs 10 maintain their request for preliminary relief. Id. Plaintiffs also seek expedited 11 discovery from third parties to determine Doe’s identity and leave to serve 12 Defendants through alternative service. 13 2. DISCUSSION — 14 — 2.1 Legal Standard. — 15 — A Temporary Restraining Order (“TRO”) is an “extraordinary remedy that — 16 — may only be awarded upon a clear showing that the plaintiff is entitled to such — 17 — relief.” See Winter v. Nat. Res. Def. Council, Inc., 555 U.S. 7, 24 (2008). The — 18 — standard for issuing a TRO is the same as that of a preliminary injunction—the — 19 — moving party must demonstrate “[(1)] ‘that he is likely to succeed on the merits, — 20 — [(2)] that he is likely to suffer irreparable harm in the absence of preliminary relief, — 21 — [(3)] that the balance of equities tips in his favor, and [(4)] that an injunction is in — 22 — the public interest.”’ Stormans, Inc. v. Selecky, 586 F.3d 1109, 1127 (9th Cir. 2009) — 23 — 1 (quoting Winter, 555 U.S. at 20 ). All four elements must be present, although a 2 “stronger showing of one element may offset a weaker showing of another.” All. for 3 the Wild Rockies v. Cottrell, 632 F.3d 1127, 1131 (9th Cir. 2011). — 4 — 2.2 Plaintiffs have not shown that a TRO should issue. — 5 — Plaintiffs’ motion focuses mostly on the strength of their claims against — 6 — Defendants, but they cannot evade the requirements of Rule 65 by arguing the — 7 — merits of their claim. Plaintiffs fail to demonstrate that they will suffer “irreparable — 8 — harm” without preliminary relief, which defeats their quest for a TRO. — 9 — The primary injuries that Plaintiffs allege are a “significant loss of — 10 — prospective customers, partnering business, goodwill, and business reputation.” — 11 — Dkt. No. 2 at 20. But apart from quoting a “potential strategic partner” as refusing — 12 — to partner with Plaintiffs on a business deal unless the thorntailhardagave.com — 13 — domain is taken down, Dkt. No. 4 at 1-2, Plaintiffs do not offer any evidence of — 14 — actual or imminent loss to their business or reputation. — 15 — The Subject Websites have been taken down, removing them as a present — 16 — threat. And while the loss of goodwill and reputation are important considerations — 17 — in gauging irreparable harm, Plaintiffs’ conclusory and speculative statements — 18 — about the possibility of loss if the websites are reactivated do not count as a “clear — 19 — showing” that they are entitled to relief. Winter, 555 U.S. at 22 (“Issuing a — 20 — preliminary injunction based only on a possibility of irreparable harm is — 21 — inconsistent with our characterization of injunctive relief as an extraordinary — 22 — — 23 — 1 remedy that may only be awarded upon a clear showing that the plaintiff is entitled 2 to such relief.”). 3 Moreover, some of the threatened harms Plaintiffs identified are not 4 necessarily irreparable, as lost business agreements and customers may be 5 addressed through an award of money damages. See Idaho v. Coeur d’Alene Tribe, — 6 — 794 F.3d 1039, 1046 (9th Cir. 2015) (“Purely economic harms are generally not 7 irreparable, as money lost may be recovered later, in the ordinary course of 8 litigation.”). 9 Finally, Plaintiffs’ claims about the threat of injury are undercut by the 10 simple passage of time, as the Subject Websites were live for over six months before 11 Plaintiffs sought relief. See Citibank, N.A. v. Citytrust, 756 F.2d 273, 276 (2d Cir. 12 1985) (“Preliminary injunctions are generally granted under the theory that there is 13 an urgent need for speedy action to protect the plaintiffs’ rights. Delay in seeking 14 enforcement of those rights, however, tends to indicate at least a reduced need for 15 such drastic, speedy action.”). 16 Because the Subject Websites have been taken down and the threat of future 17 injury is speculative for now, the Court cannot find that Plaintiffs will likely suffer 18 irreparable harm without an immediate injunction. Stormans, Inc., 586 F.3d at 19 1127 (“The proper legal standard for preliminary injunctive relief requires a party 20 to demonstrate … that he is likely to suffer irreparable harm in the absence of 21 preliminary relief….”). Given that Plaintiffs have failed to clearly show a likelihood 22 of irreparable harm, which is perhaps “the single most important prerequisite for 23 the issuance of a preliminary injunction,” the Court need not analyze the remaining 1 perquisites to granting preliminary relief. Freedom Holdings, Inc. v. Spitzer, 408 2 F.3d 112, 114 (2d Cir. 2005); see Winter, 555 U.S. at 22 (“Our frequently reiterated 3 standard requires plaintiffs seeking preliminary relief to demonstrate that 4 irreparable injury is likely in the absence of an injunction.”). 5 Accordingly, Plaintiffs’ motion for a temporary restraining order is DENIED. — 6 — 2.3 Good cause is found to conduct expedited discovery. — 7 — Plaintiffs also seek leave to conduct limited expedited discovery to learn the — 8 — identity of Doe and the operator of the Subject Websites. Specifically, Plaintiffs — 9 — propose subpoenaing “1) the domain registrars for websites — 10 — thorntailhardagave.com, anonimcard.com (Tucows Domains Inc.), and — 11 — kompletedesignbuild.com (Whois Privacy Corp.); (2) website hosts for — 12 — kompletedesignbuild.com (Cloudflare Inc.); and (3) back-end service providers, web — 13 — designers, or other service providers that may be identified as a result of discovery — 14 — directed at domain registrars and website hosting services.” Dkt. No. 2 at 23. — 15 — Typically, parties may not seek “discovery from any source before the — 16 — conference required by Rule 26(f).” Fed. R. Civ. P. 26(d)(1). But expedited discovery — 17 — before a Rule 26(f) conference is permitted for “[g]ood cause … where the need for — 18 — expedited discovery, in consideration of the administration of justice, outweighs the — 19 — prejudice to the responding party.” Semitool, Inc. v. Tokyo Electron Am., Inc., 208 20 F.R.D. 273 , 276 (N.D. Cal. 2002). — 21 — Plaintiffs have shown good cause to conduct limited early discovery to — 22 — identify Doe. Courts routinely allow early discovery solely to identify “Doe” — 23 — 1 defendants on whom process could not otherwise be served. See, e.g., Music Grp. 2 Macao Com. Offshore Ltd. v. John Does I-IX, No. 14-CV-621 RSM, 2014 WL 3 11010724, at *1–2 (W.D. Wash. July 18, 2014) (granting expedited discovery from 4 Twitter, Inc. sufficient to identify Doe defendants). So Plaintiffs’ stated purpose in 5 seeking the subpoenas justifies their request. 6 The Court finds that no prejudice to Defendants will result if Plaintiffs are 7 given leave to conduct expedited discovery. Plaintiffs’ request is narrowly tailored to 8 seek information only from those domain registrars, website hosts, and back-end 9 service providers associated with Defendants. Furthermore, Plaintiffs’ proposed 10 discovery is directed to non-parties—not the Defendants—which courts recognize as 11 “not imposing a significant burden upon defendants.” Amazon.com, Inc. v. Yong, No. 12 21-170RSM, 2021 WL 1237863 , at *3 (W.D. Wash. Apr. 2, 2021) (internal quotation 13 marks omitted). 14 Thus, the Court GRANTS Plaintiffs’ motion for limited expedited discovery to 15 subpoena records related to the Doe Defendant. — 16 — 2.4 Alternative service of process is appropriate for Defendant Host Master 1337, but not the Doe Defendant. — 17 — Plaintiffs seek an order permitting service by email address and P.O. Box on — 18 — Defendants. To start, Plaintiffs ask the Court to treat Host Master 1337 as Doe’s — 19 — registered agent for the purpose of service. But Doe’s identity, location, and — 20 — relationship to Host Master 1337, if any, are all unknown, so the Court cannot — 21 — determine whether or how Doe can properly be served, including whether Doe may — 22 — be served through Host Master 1337. Thus, the Court DENIES Plaintiffs’ motion to — 23 — 1 serve Doe through alternative means. As explained above, however, the Court has 2 granted Plaintiffs leave to conduct expedited third-party discovery to discern the 3 identity of Doe; Plaintiffs may renew their motion for alternative service if more is 4 learned about Doe’s identity. 5 Next, Plaintiffs request leave to serve Host Master 1337 by mail at a P.O. 6 Box in Saint Kitts and Nevis and via email. Plaintiffs obtained this contact 7 information through the UDRP process, but they could not identify a physical 8 address for Host Master 1337. 9 A foreign corporation may be served “at a place not within any judicial 10 district of the United States, in any manner prescribed by Rule 4(f) for serving an 11 individual, except personal delivery under (f)(2)(C)(i).” Fed. R. Civ. P. 4(h)(2). Rule 12 4(f)(1) provides for service “by an internationally agreed means of service. . . such as 13 those authorized by the Hague Convention.” And Rule 4(f)(2) provides that “if there 14 is no internationally agreed means, or if an international agreement allows but does 15 not specify other means” then service can happen by a “method that is reasonably 16 calculated to give notice.” Lastly, Rule 4(f)(3) allows for “service by other means not 17 prohibited by international agreement, as the court orders.” 18 Host Master 1337’s P.O. Box is in Saint Kitts and Nevis. Plaintiffs argue that 19 the dual-island nation is a party to the Hague Convention, but it is not listed as a 20 current signatory to the Hague Convention on the Service Abroad of Judicial and — 21 — — 22 — — 23 — 1 Extrajudicial Documents.1 See Contracting Parties and Signatories to Convention of 2 15 November 1965 on the Service Abroad of Judicial and Extrajudicial Documents 3 in Civil or Commercial Matters, https://www.hcch.net/en/instruments/ 4 conventions/status-table/?cid=17 (last visited December 29, 2023); see also TEMPO 5 Networks LLC v. Gov’t of NIA, No. CIV. 2:14-6334 WJM, 2015 WL 4757911 , at *5 6 (D.N.J. Aug. 12, 2015) (“[B]ecause Nevis and St. Kitts are not listed as current 7 members or signatories of the Hague Convention, the Hague Convention does not 8 apply.”). This forecloses service under Rule 4(f)(1), but not under subsection (f)(3). 9 Under Rule 4(f)(3), “trial courts have authorized a wide variety of alternative 10 methods of service including publication, ordinary mail, mail to the defendant’s last 11 known address, delivery to the defendant’s attorney, telex, and most recently, 12 email.” Rio Properties, Inc. v. Rio Int’l Interlink, 284 F.3d 1007, 1016 (9th Cir. 2002). 13 Regardless of the method, service “must also comport with constitutional notions of 14 due process.” Id. That is, the “method of service crafted by the district court must be 15 ‘reasonably calculated, under all the circumstances, to apprise interested parties of 16 the pendency of the action and afford them an opportunity to present their 17 objections.’” Id. at 1016-17 (quoting Mullane v. Cent. Hanover Bank & Tr. Co., 339 18 U.S. 306, 314 (1950)). 19 The Court could find no international agreement expressly prohibiting 20 Plaintiffs’ proposed methods of service. — 21 — 22 1 Plaintiffs cite an electronic bulletin from the U.S. Citizen and Immigration Services, announcing that Saint Kitts and Nevis has recently entered the Hague 23 Adoption Convention, but the Adoption Convention does not discuss service abroad. 1 Plaintiffs do not have a valid physical address at which to serve Host Master 2 1337, but they have shown that Host Master 1337 “has structured its business such 3 that it could only be contacted via its email address” and P.O. Box. Bright Sols. For 4 Dyslexia, Inc. v. Lee, No. 15-CV-01618-JSC, 2017 WL 10398818 , at *7 (N.D. Cal. 5 Dec. 20, 2017), report and recommendation adopted, No. 15-CV-01618-CW, 2018 6 WL 4927702 (N.D. Cal. Mar. 26, 2018). Plaintiffs emailed Defendants copies of the 7 complaint and their motion papers seeking a TRO, and the Subject Websites were 8 taken down the next day. See Dkt. Nos. 7, 9. The Court agrees with Plaintiffs that 9 the most reasonable inference from this action is that Defendants have actual notice 10 of this lawsuit and are monitoring the email account. 11 Under similar circumstances, courts have held that service via email and 12 international mail are valid methods of service under Rule 4(f)(3). See, e.g., Rio 13 Properties, Inc., 284 F.3d at 1018 (“[W]hen faced with an international e-business 14 scofflaw, playing hide-and-seek with the federal court, email may be the only means 15 of effecting service of process.”); Brockmeyer v. May, 383 F.3d 798, 800 (9th Cir. 16 2004) (holding service of process by international mail is permitted by the Hague 17 Convention); Amazon.com Inc. v. Bamb Awns, No. C22-402-MLP, 2023 WL 2837076 , 18 at *3 (W.D. Wash. Apr. 7, 2023) (authorizing service by email to defendants located 19 abroad). 20 Plaintiffs have identified an email address and P.O. Box that Host Master 21 1337 registered in connection with its business and that the email address remains 22 active. Viewed as a whole, the Court finds sufficient indicia that Host Master 1337 23 is likely to receive notice if served by email and international mail. Service in this 1 way is reasonably calculated under all the circumstances to apprise Host Master 2 1337 of the pendency of this action and to give it a chance to defend its 3 interests. See Rio Properties, Inc., 284 F.3d at 1016-17 . 4 3. CONCLUSION 5 In sum, the Court rules as follows: 6 3.1. The Court DENIES Plaintiffs’ motion for a temporary restraining 7 order. 8 3.2. The Court also DENIES Plaintiffs’ request for the Court to require 9 Defendants to show cause why a preliminary injunction should not 10 issue. 11 3.3. The Court GRANTS Plaintiffs’ motion for expedited discovery. 12 Plaintiffs are granted leave to serve Rule 45 subpoenas on the entities 13 and individuals below solely to gather account information that will 14 help identify the Doe Defendant: 15 • the domain registrars for websites thorntailhardagave.com, 16 anonimcard.com (Tucows Domains Inc.), and 17 kompletedesignbuild.com (Whois Privacy Corp.); 18 • website hosts for kompletedesignbuild.com (Cloudflare Inc.); and 19 • back-end service providers, web designers, or other service 20 providers that may be identified as a result of discovery directed at 21 domain registrars and website hosting services. 22 • Plaintiffs must provide a copy of this order with each subpoena 23 issued. 1 3.4. The Court GRANTS, in part, Plaintiffs’ motion for alternative service. 2 Plaintiffs may serve Host Master 1337 via email at 3 thorntailhardagave.com@njal.la and at the P.O. Box identified in the 4 UDRP proceedings. — 5 — 6 Dated this 29th day of December, 2023. — 7 — A 8 Jamal N. Whitehead United States District Judge — 9 — — 10 — — 11 — — 12 — — 13 — — 14 — — 15 — — 16 — — 17 — — 18 — — 19 — — 20 — — 21 — — 22 — — 23 —