United States District Court, D. Delaware
DIDEM GUNEY ALSOY and MEHMET ALIALSOY and BONAPORT LLC, a Delaware limited liability company, Plaintiffs,
CICEKSEPETI INTERNET HIZMETLERI ANONIM SIRKETI, a Turkish company, Defendant.
R. Wood, Jr., Esquire and Adam V. Orlacchio, Esquire of Blank
Rome LLP, Wilmington, Delaware. Counsel for Plaintiffs. Of
Counsel: Steven M. Johnston, Esquire and Timothy D. Pecsenye
of Blank Rome LLP.
E. Moore, Esquire and Stephanie E. O'Byrne, Esquire of
Potter Anderson & Corroon, LLP, Wilmington, Delaware.
Counsel for Defendant. Of Counsel: Aaron J. Weinzierl,
Esquire of Foley & Lardner LLP.
ROBINSON District Judge.
February 20, 2015, Didem Guney Alsoy, Mehmet Ali Alsoy, and
Bonaport, LLC ("plaintiffs") filed a complaint
against Ciceksepeti internet Hizmetleri Anonim Sirketi
("defendant"), alleging violations of: (1) the
reverse domain name hijacking provision of the Lanham Act, 15
U.S.C. § 1114(2)(D)(v); (2) Delaware's Deceptive
Trade Practices Act, 6 Del. C. § 2532
("DTPA"); and (3) Delaware common law unfair
competition. (D.I. 1) Presently before the court are
defendant's motions to dismiss or to stay. (D.I. 10) This
court has jurisdiction under 28 U.S.C. §§ 1331 and
Guney Alsoy and her husband Mehmet Ali Alsoy are Turkish
nationals who have been involved in various food-distributing
businesses in Turkey, including a company named BonnyFood
A.S., which once owned the Turkish trademark
"BonnyFood" and the Turkish domain name
<bonnyfood.com.tr>. (D.I. 1 at¶¶ 10-15) Ms.
Alsoy registered the U.S. domain name <bonnyfood.com>
in 2008 and, at some point in 2009, BonnyFood A.S. began
using it. (D.I. 1 at¶¶ 11, 21) Since 2013,
the Alsoys, BonnyFood A.S., and various partners and
corporate officers have been embroiled in litigation in
Turkish courts over allegations of fraud and misconduct.
(D.I. 1 at ¶¶ 16-22) During this litigation,
BonnyFood A.S. "was having trouble meeting its financial
obligations, " and the company sold the Turkish
"BonnyFood" trademark in a judicial
auction. (D.I. 1 at¶18) Defendant is the
current owner of the Turkish "BonnyFood" trademark
and the <bonnyfood.com.tr> domain name. (D.I. 1 at
August 2014, the Alsoys established Bonaport LLC
("Bonaport") under Delaware law. (D.I. 1 at ¶
23) Bonaport "is a marketing outsourcing company in the
food industry primarily [that] has clients in Turkey, U.K.
and New Jersey." (D.I. ¶ 24) Bonaport and Mr. Alsoy
are the current registrants of the <bonnyfood.com>
domain name, and Bonaport maintains a website at that
address. (D.I. ¶ 24) In September 2014, Bonaport applied
for the U.S. trademark BONNYFOOD. (D.I. 1 at¶25) The
USPTO published the mark for opposition on May 26, 2015, and
the application is currently pending. (D.I. 1 at¶25)
October 2014, defendant petitioned the World Intellectual
Property Organization ("WIPO") under a Uniform
Domain Name Dispute Resolution Policy ("UDRP")
proceeding to gain the registration of the
<bonnyfood.com> domain name. (D.I. 1 at ¶ 29) On
January 29, 2015, a WIPO panel ordered Mr. Alsoy and Bonaport
LLC to transfer the U.S. domain name to defendant. See WIPO
Case No. D2014-1775. Pursuant to UDRP policies and the Lanham
Act, plaintiffs commenced this action on February 20, 2015.
now moves under Rule 12(b)(6) of the Federal Rules of Civil
Procedure to dismiss the Delaware state law claims. (D.I. 11
at 8) Defendant also moves to dismiss the Lanham
claims on prudential grounds and international comity. (D.I.
11 at 15) Alternatively, defendant requests a stay pending
the outcome of the litigation in Turkey. (D.I. 1 at 15)
MOTION TO DISMISS
Failure To State A Claim
Standard of review
motion filed under Rule 12(b)(6) tests the sufficiency of a
complaint's factual allegations. Bell Atl. Corp. v.
Twombly, 550 U.S. 544, 555 (2007); Kost v.
Kozakiewicz, 1 F.3d 176, 183 (3d Cir. 1993). A complaint
must contain "a short and plain statement of the claim
showing that the pleader is entitled to relief, in order to
give the defendant fair notice of what the . . . claim is and
the grounds upon which it rests." Twombly, 550
U.S. at 545 (internal quotation marks omitted) (interpreting
Fed.R.Civ.P. 8(a)). Consistent with the Supreme Court's
rulings in Twombly and Ashcroft v. Iqbal,
556 U.S. 662 (2009), the Third Circuit requires a three-part
analysis when reviewing a Rule 12(b)(6) motion. Connelly
v. Lane Const. Corp., 809 F.3d 780, 787 (3d. Cir. 2016).
In the first step, the court "must tak[e] note of the
elements a plaintiff must plead to state a claim." Next,
the court "should identify allegations that, because
they are no more than conclusions, are not entitled to the
assumption of truth." Lastly, "[w]hen there are
well- Resolution Policy (August 26, 1999),
pleaded factual allegations, a court should assume their
veracity and then determine whether they plausibly give rise
to an entitlement for relief." Id. (citations
Twombly and Iqbal, the complaint must
sufficiently show that the pleader has a plausible claim.
McDermott v. Clondalkin Grp., Civ. No. 15-2782, 2016
WL 2893844, at *3 (3d Cir. May 18, 2016). Although "an
exposition of [the] legal argument" is unnecessary,
Skinner v. Switzer,562 U.S. 521 (2011), a complaint
should provide reasonable notice under the circumstances.
Id. at 530. A filed pleading must be "to the
best of the person's knowledge, information, and belief,
formed after an inquiry reasonable under the circumstances,
" such that "the factual contents have evidentiary
support, or if so identified, will likely have evidentiary
support after a reasonable opportunity for further
investigation or discovery." Anderson v. Bd. of Sch.
Directors of Millcreek Twp. Sch. Dist, 574 F.App'x
169, 174 (3d Cir. 2014) (quoting Fed.R.Civ.P. 11(b)). So long
as plaintiffs do not use "boilerplate and conclusory
allegations" and "accompany their legal theory with
factual allegations that make their theoretically viable
claim plausible, " the Third Circuit has held
"pleading upon information and belief ...