United States District Court, W.D. North Carolina, Asheville Division
MEMORANDUM OF DECISION AND ORDER
Reidinger United States District Judge
MATTER is before the Court on the Defendant Michael
E. Elkins' Motion to Dismiss [Doc. 47], the
Plaintiff's Motion to Amend Complaint [Doc. 52], and the
Plaintiff's Motion to Dismiss Defendants'
Counterclaims [Doc. 54].
Plaintiff MC1 Healthcare, LLC, doing business as Mountainside
(“Plaintiff”), initiated this action in the
United States District Court for the Southern District of New
York on August 1, 2018, against Defendants Mountainside
Solutions, Inc., now known as Mountainview Recovery, Inc.,
(“Defendant Mountainview”) and Michael E. Elkins
(Defendant Elkins) (collectively, “Defendants”)
alleging trademark infringement, cybersquatting, and unfair
competition. [Docs. 1, 6].
August 27, 2018, the Defendants filed a motion to dismiss for
lack of personal jurisdiction pursuant to Rule 12(b)(2) of
the Federal Rules of Civil Procedure. [Doc. 14]. In response,
the Plaintiff filed a motion to transfer the action to the
United States District Court for the Western District of
North Carolina. [Doc. 24]. In turn, the Defendants filed a
motion for attorneys' fees and costs, on the basis of
having to file a motion to dismiss. [Doc. 29]. On October 25,
2018, the New York Federal Court granted the Plaintiff's
motion to transfer, denied the Defendants' motions, and
transferred the action to this Court on November 1, 2018.
[See Text Orders dated October 25, 2018; Docs. 36,
November 15, 2018, Defendant Mountainview filed an Answer to
the Complaint and Counterclaims against the Plaintiff seeking
the cancellation of Plaintiff's federal trademark
registration. [Doc. 46]. On the same day, Defendant Elkins
filed the present motion to dismiss the Complaint pursuant to
Rule 12(b)(6) of the Federal Rules of Civil Procedure. [Doc.
47]. Thereafter, the Plaintiff filed the present motions to
amend the Complaint and to dismiss the Defendant
Mountainview's Counterclaims pursuant to Rule 12(b)(6).
[Docs. 52, 54].
to the Complaint, Plaintiff is a limited liability company
with its principal place of business in Canaan, Connecticut.
[Doc. 6 at ¶ 5]. The Plaintiff operates a drug and
alcohol addiction treatment center with facilities in
Connecticut and New York. [Id. at ¶ 8]. The
Defendant Mountainview is a corporation organized under the
laws of the State of North Carolina with a business address
in Weaverville, North Carolina. [Id. at ¶ 6].
Defendant Mountainview operates a drug and alcohol recovery
facility in North Carolina. [Id. at ¶ 19].
Defendant Elkins is the president of Defendant Mountainview
and “controlled, directed, and was the moving force
behind the wrongful activities of [Defendant]
Mountainview.” [Id. at ¶ 7].
23, 2017, the Plaintiff obtained a federal trademark
registration, Registration No. 5208592, for
“MOUNTAINSIDE” in connection with services for
“rehabilitation of drug addicted patients, ”
which is currently valid and registered on the Principal
Trademark Register of the United States Patent and Trademark
Office. [Id. at ¶¶ 14-15]. The Plaintiff
also alleges that for decades it has used the name and mark
“MOUNTAINSIDE” extensively in advertising and
promotion in the United States. [Id. ¶¶
16-17]. Plaintiff further alleges to have expended
substantial time, effort, and money to ensure that members of
the public associate the mark exclusively with Plaintiff and
its treatment services. [Id. at ¶ 17].
Plaintiff discovered that Defendant Mountainview was
operating a drug and alcohol addiction facility in North
Carolina as “Mountainside Solutions.”
[Id. ¶ 19]. Plaintiff alleges that Defendant
Mountainview intentionally selected and chose to incorporate
into its name the term “MOUNTAINSIDE” in order to
confuse consumers into believing that it was associated with
the Plaintiff to gain immediate acceptance in the
marketplace, to compete unfairly, and to trade off the
goodwill and reputation established by Plaintiff's name
and mark. [Id. at ¶ 21, 27]. The Plaintiff
further alleges that the day after Defendant Mountainview was
formed, Defendant Mountainview registered
www.mountainsidesolutionsinc.com as a domain name without the
permission or authorization of Plaintiff and with complete
knowledge of Plaintiff's “MOUNTAINSIDE” name
and mark. [Id. at ¶¶ 20, 22]. The
Defendant Mountainview wholly incorporated the name and mark
“MOUNTAINSIDE” in its name, trade name, domain
name, and used a logo substantially similar to that used by
Plaintiff. [Id. at ¶ 23]. Further, the
Defendant Mountainview also actively misrepresented being
affiliated with the Plaintiff, causing people to inquire with
the Plaintiff about a non-existent “new location”
in North Carolina. [Id. at ¶ 25].
Plaintiff, by a letter dated July 2, 2018, notified the
Defendant Mountainview of the Plaintiff's intellectual
property rights in its name, mark, and logo
“MOUNTAINSIDE, ” and demanded transfer of the
domain name, among other demands. [Id. at ¶
29]. The Defendant Mountainview did not respond to
Plaintiff's letter. [Id. at ¶ 30].
Thereafter, the Plaintiff learned that Defendant Mountainview
changed its company name from “Mountainside Solutions,
Inc., ” to “Mountainview Recovery, Inc., ”
and appeared to have stopped using the domain name at issue.
[Id. at ¶ 31, 32]. The Defendant Mountainview
continues to offer the same addiction treatment services and
operates a website with a domain name of
www.mountainviewrecovery.com using a logo with the same
image, color scheme, font, and style as its prior mark.
[Id. at ¶¶ 32-33].
Plaintiff alleges that both the Defendant Mountainview's
prior use of the “MOUNTAINSIDE” mark and current
use of the “MOUNTAINVIEW RECOVERY” mark infringe
on Plaintiff's mark, as such marks are likely to cause
confusion between the two respective drug and alcohol
addiction treatment services. [Id. at ¶¶
Defendant Elkins now moves to dismiss the Plaintiff's
Complaint pursuant to Rule 12(b)(6) of the Federal Rules of
Civil Procedure for “lack of venue.” [Doc. 47].
In response to the Defendant Elkins' Motion, the
Plaintiff filed a Motion to Amend Complaint [Doc. 52], which
the Defendant Mountainview partially opposes and the
Defendant Elkins asserts is futile [Doc. 57]. In addition,
the Plaintiff has also ...