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GEMOLOGICAL INSTITUTE OF AMERICA v. PHAN

June 29, 2001

GEMOLOGICAL INSTITUTE OF AMERICA, INC., PLAINTIFFS
v.
TRANG THI-DAI PHAN, ET AL., DEFENDANTS



The opinion of the court was delivered by: Deborah A. Robinson, United States Magistrate Judge

MEMORANDUM ORDER

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.

BACKGROUND

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.

DISCUSSION

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. ...


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