United States District Court, District of Columbia
June 29, 2001
GEMOLOGICAL INSTITUTE OF AMERICA, INC., PLAINTIFFS
TRANG THI-DAI PHAN, ET AL., DEFENDANTS
The opinion of the court was delivered by: Deborah A. Robinson, United States Magistrate Judge
Pending for determination by the undersigned United States Magistrate
Judge is Defendants' Motion to Transfer Venue (Docket No. 8). In it,
defendants seek to transfer this action to the Southern District of Texas
pursuant to 28 U.S.C. § 1404(a). Plaintiff opposes the motion on the
ground that defendants cannot demonstrate that "the balance of
convenience `strongly' favors" the Southern District of Texas over the
District of Columbia, and that this district "is actually more
convenient." Plaintiff's Memorandum of Points and Authorities in
Opposition to Defendants' Motion to Transfer Venue ("Plaintiff's
Opposition") at 1.
Upon consideration of the motion; the memoranda in support thereof and
in opposition thereto; the oral arguments of counsel at the hearing on
the motion and the entire record herein, the motion will be granted.
Plaintiff Gemological Institute of America, Inc. ("GIA") is a
non-profit organization which maintains its principal place of business
in Carlsbad, California. Among the activities which plaintiff conducts
is the issuance of diamond grading reports and the credentialing of
jewelers and other retailers. Plaintiff's Opposition at 3.
Defendants Phan, Inc. and GIA & CO. Enterprises, Inc. ("GIA & CO.,
Inc.") are both Texas corporations with their principal place of business
in Houston, Texas. Defendants state that defendant Trang Thi-Dai Phan is
the president of Phan, Inc., and that she resides in Houston. Defendants'
Motion to Transfer Venue ("Defendants' Motion") at 1. Phan, Inc. owns
and operates four clothing stores which do business under the name "GIA &
CO." One of the stores is located in the District of Columbia; the other
three are in Texas, Maryland and Pennsylvania. Id. In a declaration
which accompanies defendants' motion, defendant Trang Phan states that
she is one of five sisters who founded Phan, Inc., a privately owned
corporation in late 1996. Defendant Trang Phan characterizes Phan, Inc.
as "a small company with limited resources" which has not grossed in
excess of $400,000 annually since it opened its first store. Defendant
Trang Phan represents that defendant GIA & CO., Inc. "is a wholly owned
inactive subsidiary of Phan, Inc. and has no assets." Defendants' Motion
at 1; Declaration of Trang Thi-Dai Phan in Support of Defendants' Motion
to Transfer Venue ("Phan Declaration"), ¶¶ 2-4, 7, 9.
The application of defendant Phan, Inc. to register the "GIA & CO."
mark was approved in late 1998. In October, 1999, plaintiff filed an
opposition against the trademark application in the Patent and Trademark
Office. In November, 2000, plaintiff commenced the instant action for
trademark infringement, unfair competition and trademark dilution.*fn1
Defendants move this court to transfer this action to the Southern
District of Texas. Defendants maintain that the District of Columbia is
an inconvenient forum, and that the Southern District of Texas is more
convenient because the defendants, their witnesses, and all of their
"documents and things" are located there. Defendants further maintain
that plaintiff would not be inconvenienced by the transfer, and that the
transfer would reduce the litigation costs of all parties. Finally,
defendants maintain that the interest of justice favors the transfer of
this action to the Southern District of Texas. See Defendants' Motion at
4-11; Defendants' Reply to Plaintiff's Memorandum of Points and
Authorities in Opposition to Defendants' Motion to Transfer Venue
("Defendants' Reply") at 2, 6-17.
Plaintiff, in its opposition, proffers that two "significant factor[s]"
informed its decision to file this action in this district. First,
plaintiff represents that defendant Trang Phan "had declared earlier in
the year . . . that her address was in Washington, D.C.[,]" and plaintiff
therefore concluded that the District of Columbia was the only district
in which [plaintiff] could maintain an action against both [Trang Phan]
and her companies." Second, plaintiff claims that "this district
appeared to be the center of gravity for Defendants' infringing
activities, and, based upon discovery taken in the related Opposition
before the [Trademark Trial and Appeal Board], that has now been
confirmed." Plaintiff's Opposition at 4. Plaintiff maintains that
defendants "cannot meet their burden to show that the balance of
convenience `strongly' favors Texas over Washington, D.C.[,]" and that
"when all of the interests are weighed, the D.C. Court is actually more
convenient." Plaintiff's Opposition at 1.
Plaintiff submits that it would be "greatly inconvenienced" by the
requested transfer because "[plaintiff's] New York-based employees
responsible for serving the vast majority of accounts in Washington,
D.C., Maryland and Pennsylvania would be substantially inconvenienced by
a proceeding in Texas." Plaintiff adds that "GIA & CO's infringing
activities are predominantly in this District and the surrounding area,"
and that plaintiff "likely would need to arrange for . . . travel to
Texas and to pay for . . . travel costs and time away from work" of "the
aggrieved GIA-credentialed retailers and others[.]" Plaintiff's
Opposition at 9-10.
Section 1404(a) of Title 28 of the United States Code provides that
"[f]or the convenience of the 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."
28 U.S.C. § 1404(a). The threshold question in the consideration of
a motion to transfer pursuant to this provision is thus whether the
action could have been brought in the proposed transferee district.
Deloach v. Philip Morris Co., Inc., 132 F. Supp.2d 22, 24 (D.D.C. 2000);
Reiffin v. Microsoft Corp., 104 F. Supp.2d 48, 51 (D.D.C. 2000); see
Boers v. United States, 133 F. Supp.2d 64, 65 (D.D.C. 2001) ("[t]o
transfer an action, venue must be proper in the transferee district.").
The court must also consider factors bearing on the interests of the
parties as well as the public interest, including
the convenience of the witnesses of plaintiff and
defendant; ease of access to sources of proof;
availability of compulsory process to compel the
attendance of unwilling witnesses; the amount of
expense for willing witnesses; the relative congestion
of the calendars of potential transferor and
transferee courts; and other practical aspects of
expeditiously and conveniently conducting a trial.
Boers, 133 F. Supp.2d at 65 (quoting SEC v. Page Airways, 464 F. Supp. 461,
463 (D.D.C. 1978)); see Reiffin,104 F. Supp.2d at 51-52; Wilderness Soc'y
v. Babbitt, 104 F. Supp.2d 10, 12 (D.D.C. 2000).
This Court has held that "[i]n assessing the convenience to the parties
of the two potentially proper venues, the court recognizes that the
plaintiff's choice of forum is usually accorded `substantial deference' in
the venue analysis." Reiffin, 104 F. Supp.2d at 52. Deference to a
plaintiff's choice of forum is particularly strong where plaintiff has
chosen his home forum; however, "substantially less deference is
warranted when the forum preferred by the plaintiff is not his home
forum." Id.; see Deloach, 132 F. Supp.2d at 24 ("although a plaintiff's
choice of forum is ordinarily accorded a significant degree of
deference, numerous cases in this Circuit recognize that such a choice
receives substantially less deference where the plaintiffs, as here,
neither reside in, nor have any substantial connection to, that
The moving party bears the burden of demonstrating that transfer
pursuant to Section 1404(a) is warranted. Deloach, 132 F. Supp.2d at 24;
Sheraton Operating Corp. v. Just Corporate Travel, 984 F. Supp. 22, 25
(D.D.C. 1997). The district court has broad discretion in the
determination of such motions, and should "adjudicate such motions
according to an `individualized, case-by-case consideration of
convenience and fairness.'" Stewart Org., Inc. v. Ricoh Corp.,
487 U.S. 22, 29 (1988) (citation omitted); see Deloach, 132 F. Supp.2d at
24; Wilderness Soc'y, 104 F. Supp.2d at 12.
Venue in Proposed Transferee District
First, the undersigned finds that the answer to the "threshhold
question" is that this action could have been brought in the Southern
District of Texas. As jurisdiction is founded upon a federal question,
*fn2 the action may be brought in "a judicial district where any
defendant resides, if all defendants reside in the same State."
28 U.S.C. § 1391(b)(1); see Deloach, 132 F. Supp.2d at 24. Plaintiff
does not dispute that the two corporate defendants have their principal
place of business in Houston, in the Southern District of Texas. While
plaintiff contends that the individual defendant, Trang Phan, resides in
the District of Columbia, the undersigned finds that plaintiff relies
upon a strained reading of defendant Phan's deposition testimony in
support of that contention.*fn3 However, as defendant Trang Phan, in
the declaration which accompanies defendants' motion, states that "I
reside at 4380 Varsity Lane, Houston, Texas 77004," see Phan
Declaration, ¶ 3, the undersigned need not give further
consideration to the statements previously made by defendant Phan, in
some other context, regarding where she lived. Accordingly, the
undersigned finds that each of the three defendants is subject to
personal jurisdiction in the Southern District of Texas.
Plaintiff's Choice of Forum
Next, the undersigned finds that little deference to plaintiff's choice
of forum is warranted, since the District of Columbia is not plaintiff's
home forum, and plaintiff has not shown that it has "any substantial
connection" to this forum. See Deloach, 132 F. Supp.2d at 24; Hawksbill
Sea Turtle v. FEMA, 939 F. Supp. 1, 3 (D.D.C. 1996). More specifically,
plaintiff has not shown that the interests of this forum in the parties or
the subject matter outweigh those of the proposed transferee district,
where all defendants reside; the corporate defendants maintain their
principal place of business; and defendants' inventory, records and
witnesses are located. Nor has plaintiff shown that its ties to the
District of Columbia are more significant than its ties to the Southern
District of Texas; indeed, plaintiff has not shown that the nature and
extent of its activities in the District of Columbia are any different
than they are in the Southern District of Texas.*fn4
While plaintiff claims that "the greatest impact of the infringement
occurs here[,]" see Plaintiff's Opposition at 1, the undersigned finds
that the claim is wholly conclusory. Plaintiff appears to rely solely on
the statement of defendant Trang Phan that the District of Columbia store
is the "most profitable" of the four; however, plaintiff has not
attempted to show that it is significantly more profitable that any other
store, or that there is any nexus between the profits of the District of
Columbia store and the "impact" of the alleged infringement. The
undersigned finds that plaintiff's assertion that defendant Phan, Inc.
maintains a corporate office in the District of Columbia, see Plaintiff's
Opposition at 5, is unfounded: defendant Trang Phan described the
Washington, D.C. address as a "residence." See Plaintiff's Exhibit 11
(Transcript of Deposition of Trang Phan at 63:16-17). The only reference
plaintiff makes in its complaint to any alleged infringement in the
District of Columbia is that one of the stores the corporate defendants
operate is in the District of Columbia. See First Amended Complaint and
Jury Demand, ¶¶ 7-8. Plaintiff specifically alleges that the
corporate defendants also sell infringing goods in Austin, Texas, as well
as Baltimore, Maryland and State College, Pennsylvania. First Amended
Complaint and Jury Demand, ¶¶ 9-10.
In sum, because the court "recognizes the diminished consideration
accorded to a plaintiff's choice of forum where . . . that forum has no
meaningful ties to the controversy and no particular interest in the
parties or subject matter[,]" plaintiff's choice of the District of
Columbia is entitled to little deference. Wilderness Soc'y, 104 F.
Supp.2d at 13 (internal quotations omitted); see Comptroller of Currency
v. Calhoun Nat'l Bank, 626 F. Supp. 137, 140 n. 9 (D.D.C. 1985)
(plaintiff's choice of forum entitled to less deference where there is "an
insubstantial factual nexus" with the chosen forum.).
Factors Enumerated in Section 1404(a)
Finally, the undersigned finds that consideration of the factors
expressly enumerated in Section 1404(a) — the convenience of the
parties, the convenience of the witnesses, and the interests of justice
— warrants the determination that this action should be transferred
to the Southern District of Texas pursuant to that statute. The District
of Columbia is not plaintiff's home forum; moreover, plaintiff does not
contend that any of its offices, employees, documents, party witnesses or
expert witnesses are in the District of Columbia. The principal
inconvenience which plaintiff asserts that the proposed transfer would
occasion is that "the numerous third party witnesses would be greatly
inconvenienced by having to travel 1500 miles or more to Texas."
Plaintiff's Opposition at 11. However, that claim, standing alone, is
not a basis upon which to determine that the balance of interests favors
denial of the motion to transfer. This Court has held that "convenience
of the witnesses should be considered `only to the extent that the
witnesses may actually be unavailable for trial in one of the fora.'"
Wilderness Soc'y, 104 F. Supp.2d at 15 (citation omitted). The
undersigned finds that plaintiff has failed to make this showing.
Plaintiff has not identified a single witness who would be available in
the District of Columbia but not the Southern District of Texas, or shown
that the "inconvenience" of travel to Texas is significantly greater than
that of travel to the District of Columbia. In any event, since
plaintiff, by its own admission, maintains a presence "throughout the
United States and rest of the world[,]" see Plaintiff's Opposition at 3,
the retailers plaintiff intends to call as "third party" witness are
certainly available in Texas. See Plaintiff's Opposition at 11-12.
In contrast, defendants have shown that their key witnesses, documents
and stored inventory are in the Southern District of Texas. See
Defendant's Reply at 8-11. Indeed, plaintiff does not dispute this
proposition, and instead, suggests simply that "[d]efendants'
inconvenience is greatly exaggerated[.]" See Plaintiff's Opposition at
8-9. While plaintiff maintains that Bien Phan, a District of Columbia
resident, is "the most knowledgeable person concerning GIA & CO.'s
present jewelry sales and the types of customers it receives for all four
of GIA & CO. stores[,]" see Plaintiff's Opposition at 9, defendants
represent that defendant Trang Phan — who is available in the
Southern District of Texas — makes the purchasing and sales
decisions. Defendants' Reply at 11-12.
Additionally, the undersigned finds that the interests of justice favor
the transfer of this action to the Southern District of Texas. Plaintiff
does not maintain that it is unable to bear the cost of litigating this
action in Texas. While plaintiff, in its opposition, states that
"neither plaintiff nor plaintiff's counsel has an office or employee
anywhere in Texas[,]" see Plaintiff's Opposition at 10, plaintiff
likewise has no office or employee in the District of Columbia. The fact
that plaintiff's counsel has an office in the District of Columbia but
not the Southern District of Texas is of little moment. See Vencor
Nursing Ctrs. v. Shalala, 63 F. Supp.2d 1, 6 n. 4 (D.D.C. 1999) (citing
Armco Steel Co. v. CSX Corp., 790 F. Supp. 311, 324 (D.D.C. 1991));
National Union Fire Ins. Co. v. Coric, 924 F. Supp. 373, 380 (N.D.N.Y.
1996), aff'd in part, rev'd in part, 108 F.3d 17 (2nd Cir. 1997). One
court has expressly held that "any inconvenience that might enure to
counsel is unpersuasive and generally not a factor to consider." Wine
Mkts. Int'l, Inc. v. Bass, 939 F. Supp. 178, 182 (E.D.N.Y. 1996)
Moreover, as the corporate defendants maintain their principal place of
business in the Southern District of Texas; the individual defendant
resides there; one of the retail outlets operated by defendants is
there; and defendants' records and stored inventory are there,
"[plaintiff's] allegations are far more likely to constitute a `matter of
great public concern'" to the citizens of the Southern District of Texas
than to the citizens of the District of Columbia. See Deloach,
132 F. Supp.2d at 26. Plaintiff, by its own characterization, maintains a
global presence, and does not suggest that the cost of litigating this
action in the Southern District of Texas would present an undue burden.
Defendants, on the other hand, have shown that their resources are far
more limited than plaintiff's. See Defendants' Reply at 15-17.
A court may properly consider in assessing the interest of justice "the
relative ability of the parties to bear the expenses of litigating in a
distant forum[.]" Radisson Hotels Int'l, Inc. v. Westin Hotel Co.,
931 F. Supp. 638, 641-42 (D.Minn. 1996); see Ashmore v. Northeast
Petroleum Div. of Cargill, Inc., 925 F. Supp. 36, 39 (D.Me. 1996) ("The
relative financial strength of the parties to absorb the costs of
litigation is a consideration in a transfer of venue analysis."). As
plaintiff "has not offered any documentation to show that prosecuting
[its] action in [the Southern District of Texas] would be unduly
burdensome to [its] finances[,]" see Lappe v. American Honda Motor Co.,
857 F. Supp. 222, 230 (N.D.N.Y. 1994), aff'd, 101 F.3d 682 (2nd Cir.
1996), the undersigned finds that the relative financial means of the
parties favors transfer.
Accordingly, the undersigned finds that the transfer of this action to
the Southern District of Texas would minimize the defendants' burden of
litigation, and would not demonstrably increase plaintiff's burden. See
Harris v. Republic Airlines, 699 F. Supp. 961, 962 (D.D.C. 1988) (court
may take into account "practical considerations which will facilitate a
final resolution of the litigation in an expeditious and inexpensive
manner."); cf. Heating and Cooling Master Marketers Network, Inc. v.
Contractor Success Group, Inc., 935 F. Supp. 1167, 1172 (D.Kan. 1996)
(where transfer "would only shift the inconveniences to plaintiff," court
will not disturb plaintiff's legitimate choice of forum.); Enviroplan v.
Western Farmers Elec. Coop., 900 F. Supp. 1055, 1064 (S.D. Inc. 1995)
(transfer should not be granted where transfer "would shift convenience
(and conversely, inconvenience) from one party to another[.]").
For all of the foregoing reasons, the undersigned finds that this
action could have been brought in the Southern District of Texas. The
undersigned further finds that the balance of the interests of the
parties and the witnesses, as well as the interests of justice, warrant
the transfer of this action to the Southern District of Texas. It is,
therefore, this __ day of June, 2001,
ORDERED that Defendants' Motion to Transfer Venue (Docket No. 8) is
GRANTED, and that this action is transferred to the Southern District of
Texas pursuant to 28 U.S.C. § 1404(a).