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GEMOLOGICAL INSTITUTE OF AMERICA v. PHAN
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
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