Ahmed v. Hosting.Com

Citations: 28 F. Supp. 3d 82; 2014 WL 2925292Docket: Civil Action Nos. 13-13117-WGY, 14-10026-WGY

Court: District Court, D. Massachusetts; June 27, 2014; Federal District Court

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Naeem Ahmed has filed two lawsuits against Hosting.com, Facebook, Inc., and four unidentified John Doe defendants for trademark infringement concerning the trademarks "The News International," "the Jang," and "Geo" (collectively referred to as the 'Marks'). Ahmed claims to have a proprietary interest in these Marks and alleges that the infringing activities of the John Does are causing significant financial losses and irreparable harm to his business.

Both Hosting and Facebook have moved to dismiss the complaints, arguing that the court lacks subject matter jurisdiction and that Ahmed has not adequately stated a trademark infringement claim. 

Procedurally, Ahmed's complaint against Hosting was filed on December 9, 2013, with Hosting filing its motion to dismiss on January 29, 2014. Ahmed opposed this motion, and Hosting subsequently provided additional documentation for judicial notice. For Facebook, Ahmed filed his complaint on January 7, 2014, with Facebook moving to dismiss on February 27, 2014, which Ahmed also opposed. Facebook has similarly submitted materials for judicial notice.

The core allegations involve Ahmed's rights to the Marks and the alleged infringement by Hosting and Facebook. Hosting operates the website www.thenews.com.pk for Jang, a major Pakistani media company that registered a trademark for one of the Marks in 1995. Facebook is accused of hosting pages run by the John Does that use the Marks. Ahmed sent a cease and desist notice to Hosting regarding the allegedly infringing website, but Hosting argued that the notice was invalid as it pertained to trademark, not copyright, infringement, and refused to act on it.

Ahmed's claim of a 'common law and statutory licensee' interest in the trademarks associated with 'The News International' and 'the Jang' marks is based on two U.S. trademark applications filed by Axact (Pvt) Limited, a Pakistani company. Following awareness of these applications, Jang initiated legal action against Axact in Pakistan, resulting in a High Court injunction prohibiting Axact from undermining Jang's trademarks. Subsequently, News Publication (Pvt) Limited, part of the Jang Group, filed its own U.S. trademark applications for 'The News International.' Axact later assigned its applications to Ahmed, who then attempted to assert trademark infringement claims under the Lanham Act. However, the U.S. Patent and Trademark Office (USPTO) denied registration for both applications, which means they do not meet the criteria for 'registered' marks under the Lanham Act.

For a court to have jurisdiction, a plaintiff must demonstrate standing, which requires proof of a 'personal injury' linked to the defendant's actions. In the context of trademark law, standing is granted to those with an ownership interest in registered trademarks or those with a reasonable interest in unregistered marks susceptible to infringement. Ahmed's claims, although referencing the Lanham Act, fail because he does not hold registered trademarks as defined by the Act, nor has he established himself as an exclusive licensee or owner of the marks. His allegations of ownership stem solely from Axact's applications, which do not confer rights. Furthermore, he has not clarified any relationship with Axact, the entity that filed the applications.

Ahmed lacks standing to pursue his trademark infringement claims, leading to a lack of subject matter jurisdiction, necessitating the dismissal of his complaints against Hosting and Facebook. The court identifies that complete diversity of citizenship is absent, which prevents it from hearing state-law claims. Although Ahmed references a federal claim under the Lanham Act, he simultaneously argues for diversity jurisdiction based on Massachusetts law, which requires state registration of the trademark for infringement suits. Since there is no evidence of such registration in Massachusetts, his claims fail under state law as well. The court notes that the standards for state and federal trademark law are largely identical and can be analyzed together.

Ahmed's designation as a "common law and statutory licensee" is unsubstantiated, and his claims of using the mark in various contexts lack factual support, undermining his assertions. Additionally, he is collaterally estopped from presenting his claims against Hosting and Facebook due to a prior ruling in Ahmed v. Twitter, Inc., where the same issues regarding his rights to the trademarks were litigated and resolved. The requirements for collateral estoppel are met, as the issues are the same, were actually litigated, resulted in a binding judgment, and were essential to that judgment. Overall, the case involves a complex trademark dispute over marks originating from Pakistan, with Ahmed alleging infringement against multiple defendants.

The previous case involving Ahmed was litigated and resulted in a determination by Judge Stearns that Ahmed did not demonstrate any past or present use of the Marks, leading to a finding of no trademark infringement. The judge also concluded that Ahmed's claims of harm were merely unsupported assertions. As a result, the case was dismissed, establishing a valid and binding final judgment on the matter. This determination was essential to the order, as it was fundamentally based on the resolution of the trademark issue. Although the current Court does not rely on collateral estoppel to dismiss the case, it recognizes that such estoppel would prevent Ahmed from pursuing the present litigation. Additionally, .Hosting and Facebook argue in their motions to dismiss that Ahmed has failed to state a plausible claim, and Hosting claims there is no personal jurisdiction over them. However, the Court finds it unnecessary to address these claims due to a lack of subject matter jurisdiction. The Court cites the precedent that federal courts typically resolve subject matter jurisdiction issues before personal jurisdiction issues and refers to recent rulings by Judge Zobel against Ahmed in similar cases.