Pebble Beach (US) Cannot Sue Pebble Beach (UK) for Website
Pebble Beach (without a golf course in the United Kingdom) cannot be sued in the United States for trademark infringement over its website by Pebble Beach (the one with the golf course in the US).
The Ninth Circuit Court of Appeals found that as long as Pebble Beach in the UK maintains only a passive website for advertising its own business, it cannot be sued in the United States because the court lacks jurisdiction.
Michael Caddy, who is a citizen of both the United States and the UK, owns Pebble Beach, a three-room bed and breakfast and bar in southern England on a cliff overlooking the pebbly beaches of England’s south shore. “The name of the operation is ‘Pebble Beach,’ which, given its location, is no surprise,” the court wrote. Caddy also owns the website www.pebblebeach-uk.com. The website is not interactive. Visitors to the website may fill out an online inquiry form; however, the website does not have a reservation system, nor does it allow potential guests to book rooms or pay for services online.
Pebble Beach Company in California sued Caddy under the federal Lanham Act and the California Business and Professions code for intentional infringement and dilution of its “Pebble Beach” trademark because of the pebblebeach-uk website. Caddy moved to dismiss for lack of personal jurisdiction.
The appellate court found that Pebble Beach failed to identify any conduct by Caddy that took place either in California or in the United States to allow the court to have jurisdiction over Caddy. In order to succeed, Pebble Beach has to show “something more” than just the use of the name. “The only acts identified by Pebble Beach as being directed at California are the website and the use of the name ‘Pebble Beach’ in the domain name. These acts were not aimed at California and, regardless of foreseeable effect, are insufficient to establish jurisdiction,” the court said.
Furthermore, the court found that Caddy “is not a cybersquatter trying to obtain money from Pebble Beach. His operation is legitimate and his website relates directly to that end.”
Pebble Beach also argued that by using “.com” rather than “.uk,” Caddy demonstrated that the United States was his “primary market and that he is directly advertising his services in the United States.” The court said the use of “.com” rather than “.uk” does not provide much more “than a slight indication of where a website may be located and does not establish to whom the website is directed.”
Finally, Pebble Beach argued that since some Americans stay at the UK bed and breakfast, Pebble Beach satisfies the “something more” requirement. The court rejected this argument noting that “there is not a scintilla of evidence indicating that this patronage is related to either Caddy’s choice of a domain name or the posting of a passive website.” Finding that the court lacked personal jurisdiction over Caddy, the appellate court affirmed the trial court’s dismissal of the case.
Pebble Beach Company v. Michael Caddy, Ninth Cir. No. 04-15577, issued July 12, 2006.