United States District Court, D. Vermont
RULING ON MOTION TO TRANSFER VENUE (DOC. 36)
HONORABLE J. GARVAN MURTHA United States District Judge.
TPW Management, LLC (“TPW”) alleges Defendant
Yelp Inc. (“Yelp”) has infringed its registered
trademark under federal law and asserts related state law
claims. (Doc. 1 (“Compl.”).) Yelp moves to change
venue to the United States District Court for the Northern
District of California under 28 U.S.C. § 1404(a). (Doc.
36). TPW opposes the transfer. (Doc. 46.) Yelp filed a reply.
(Doc. 51.) For the reasons stated below, Yelp’s motion
commenced this trademark action on October 29, 2015, and
moved for a preliminary injunction on December 17, 2015.
(Doc. 12.) The motion was fully briefed on February 19, 2016.
(Docs. 23, 32.) On March 3, Yelp filed the motion to change
venue (Doc. 36) as well as a motion for leave to file a
surreply to the motion for preliminary injunction (Doc. 37),
which TPW moved to strike (Doc. 42) and opposes (Doc. 43),
and a motion to stay pending resolution of the motion to
change venue (Doc. 38), which TPW opposes (Doc. 44).
Vermont limited liability company with its principal place of
business in Manchester Center, Vermont, provides management,
home services, vendor sourcing, rental management and sales
to over 3, 000 resort homeowners in fifty resort area
community associations in New England. Compl. ¶ 8. It
markets its services to its customers with its registered
trademark “We Know Just the Place” (“TPW
Mark”). Id. ¶ 15. Yelp is a Delaware
corporation headquartered in San Francisco, California.
Id. ¶ 3; Doc. 8 (“Answer”) ¶
3. TPW alleges Yelp, an online referral service connecting
users with local service providers, filed an application to
register the trademark “We Know Just the Place”
in October 2015, and initiated a multi-million dollar
multi-media advertising campaign for its tenth anniversary
celebration featuring the phrase. Compl. ¶¶ 31, 40,
42. Yelp acknowledges TPW is the registrant of the TPW Mark,
the registration of which is limited to “[r]eal estate
services, namely vacation home rental management
services.” Answer ¶ 21.
argues first that TPW should have brought this case in the
Northern District of California because Yelp’s terms of
service include a mandatory forum selection clause requiring
any claim be brought in the exclusive venue of a state or
federal court in San Francisco County, California. (Doc. 36
at 7-10.) Secondly, it argues the traditional forum non
conveniens analysis also favors transfer because the case
could have been brought in the Northern District of
California, “almost all the non-party witnesses would
likely live and work in California, ” and cannot be
compelled to attend trial in Vermont, and the key evidence,
facts, and witnesses are in California. Id. at
argues the forum selection clause is not enforceable because
Yelp did not reasonably communicate it to TPW and the terms
of service do not apply for commercial purposes. Further, it
argues Yelp has failed to make a clear and convincing showing
the balance of convenience strongly supports transferring the
case from the chosen forum. (Doc. 46.)
U.S.C. § 1404(a) provides “[f]or the convenience
of parties and witnesses, in the interest of justice, a
district court may transfer any civil action to any other
district or division where it might have been brought.”
The moving party bears the burden of showing why transfer is
appropriate. See Country Home Prods., Inc. v.
Schiller-Pfeiffer, Inc., 350 F.Supp.2d 561, 569 (D. Vt.
2004) (citing Ford Motor Co. v. Ryan, 182 F.2d 329,
330 (2d Cir. 1950)). Defendant must present clear and
convincing evidence that the balance of convenience favors
transfer to the Northern District of California. See
Anichini v. Campbell, 2005 WL 2464191 *6 (D. Vt. 2005)
(citing Tom and Sally’s Handmade Chocolates, Inc.
v. Gasworks, Inc., 977 F.Supp. 297, 302 (D. Vt. 1997);
Factors, Etc., Inc. v. Pro Arts, Inc., 579 F.2d 215,
218 (2d Cir. 1978), abrogated on other grounds by Pirone
v. MacMillan, Inc., 894 F.2d 579 (2d Cir. 1990)).
“Absent a clear and convincing showing that the balance
of convenience strongly favors an alternate forum,
discretionary transfers are not favored.” See Tom
and Sally’s Handmade Chocolates, 977 F.Supp. at
302. A mere shifting of inconveniences is not grounds for
transfer. Finkielstain v. Seidel, 692 F.Supp. 1497,
1509-10 (S.D.N.Y. 1988), aff’d in part, rev’d in
part, 857 F.2d 893 (2d Cir. 1988).
considering a motion to transfer, the Court balances a
variety of factors, including: (1) convenience of the
parties; (2) convenience of witnesses; (3) relative means of
the parties; (4) locus of operative facts and relative ease
of access to sources of proof; (5) attendance of witnesses;
(6) weight accorded the plaintiff’s choice of forum;
(7) desirability of having the case tried by a forum familiar
with the substantive law to be applied; (8) practical
difficulties; and (9) how best to serve the interest of
justice, based on assessment of the totality of material
circumstances. See Country Homes Prods., Inc., 350
F.Supp.2d at 570.
selection clause is presumptively enforceable if (1)
reasonably communicated to the party resisting enforcement;
(2) the clause is mandatory; and (3) the claims and parties
are subject to the clause. Martinez v. Bloomberg LP,
740 F.3d 211, 217 (2d Cir. 2014) (citing Phillips v.
Audio Active Ltd., 494 F.3d 378, 383 (2d Cir. 2007). To
overcome this presumption, a party must make a sufficiently
strong showing enforcement would be unreasonable or unjust,
or that the clause was invalid. Martinez, 740 F.3d
at 217; Phillips, 494 F.3d at 383-84.
on an evaluation of the traditional factors, the Court
concludes Yelp has met its considerable burden of
demonstrating the propriety of transferring this matter. The
employees and documents of Yelp are generally located in
California and appear to outnumber and outweigh those of TPW.
Third parties and their employees likely to have knowledge
relevant to the trademark claim are located in California,
see Doc. 36-8, and witnesses that are not Yelp
employees cannot be compelled to attend trial in Vermont.
See Fed.R.Civ.P. 45(e). While Yelp is a large
company, TPW also appears to have substantial means and hired
counsel based in California at the outset of the suit well
before the motion to transfer was filed. See Doc. 4.
TPW’s choice of forum is deserving of some deference
and the complaint raises Vermont statutory and state common
law claims with which this Court is likely to be more
familiar than a court in the Northern District of California,
on balance, the Court determines transferring this case is
warranted. Accordingly, the Court, in its discretion, grants
Yelp’s motion to transfer venue. See Klein v.
Domino’s Pizza, Inc., 769 F.Supp. 152 (D. Vt.
1991) (granting transfer to California, despite the Vermont
plaintiff’s choice of Vermont forum, alleged busy
California courts, and defendant’s status as a large
nationwide corporation, because the defendant’s fact
witnesses outnumbered the plaintiff’s and were mostly
located in California, as were the relevant documents, and
could not be compelled to attend trial). ...