Case 8:15-cv CJC-KES Document 27 Filed 05/02/16 Page 1 of 20 Page ID #:280

Transcription

1 Case :-cv-0-cjc-kes Document Filed 0/0/ Page of Page ID #:0 WILSHIRE BLVD PH BEVERLY HILLS, CA 0-0 DENNIS L. WILSON (Cal. Bar No. 0) KOLLIN J. ZIMMERMANN (Cal. Bar No. 0) LLP Wilshire Blvd PH Beverly Hills, CA 0 Telephone: (0) -0 Facsimile: (0) 0-0 DAVID C. SMITH (D.C. Bar No. ) DCSmith@kilpatricktownsend.com Pro Hac Vice Application to be submitted LLP 0 th Street, N.W., Suite 00 Washington, D.C. 00 Telephone: () 0-00 Facsimile: () 0- (Additional counsel identified on next page) UNITED STATES DISTRICT COURT CENTRAL DISTRICT OF CALIFORNIA SOUTHERN DIVISION SANTA ANA VIRTUALPOINT, INC., Case No.: : cv 0 CJC (KESx) v. Plaintiff, POARCH BAND OF CREEK INDIANS, dba PCI GAMING AUTHORITY, et al. Defendants. REPLY IN SUPPORT OF MOTION TO DISMISS Judge: Cormac J. Carney Hearing Date: May, Time: :0 p.m. Action Filed: December, Trial Date: [Not Set] REPLY IN SUPPORT OF MOTION TO DISMISS

2 Case :-cv-0-cjc-kes Document Filed 0/0/ Page of Page ID #: WILSHIRE BLVD PH BEVERLY HILLS, CA 0-0 MARK H. REEVES (Ga. Bar No. ) MReeves@kilpatricktownsend.com Pro Hac Vice Application to be submitted LLP Enterprise Mill 0 Greene Street, Suite Augusta, GA 00 Telephone: (0) - Facsimile: (0) - Attorneys for Defendant Poarch Band of Creek Indians, dba PCI Gaming Authority REPLY IN SUPPORT OF MOTION TO DISMISS

3 Case :-cv-0-cjc-kes Document Filed 0/0/ Page of Page ID #: WILSHIRE BLVD PH BEVERLY HILLS, CA 0-0 TABLE OF CONTENTS Page INTRODUCTION... ARGUMENT... I. Plaintiff s putative factual background is misleading.... II. Plaintiff s subject matter jurisdiction arguments fail.... III. A. Well-settled precedent bars implied waivers of tribal sovereign immunity.... B. PBCI s limited consent to jurisdiction does not encompass Plaintiff s claims.... C. The only case Plaintiff cites to support its subject matter jurisdiction arguments actually supports PBCI s motion.... Plaintiff s claims are not within the scope of PBCI s consent to personal jurisdiction in this forum IV. The stay should be lifted.... CONCLUSION... i REPLY IN SUPPORT OF MOTION TO DISMISS

4 Case :-cv-0-cjc-kes Document Filed 0/0/ Page of Page ID #: WILSHIRE BLVD PH BEVERLY HILLS, CA 0-0 Cases TABLE OF AUTHORITIES Page(s) In re Bose Corp., 0 F.d 0 (Fed. Cir. 0)..., Clifford v. United States, No. SACV -0-CJC(DFMx), WL (C.D. Cal. Jan., )..., Coalition for ICANN Transparency, Inc. v. Verisign, Inc., F. Supp. d (N.D. Cal. 0)... Demontiney v. United States, F.d 0 (th Cir. 0)... E-Stamps Corp. v. Lahoti, :-cv-0-gaf-man (C.D. Cal. 00)... Hawes v. Network Solutions, Inc., F.d (th Cir. 0)..., Jicarilla Apache Tribe v. Hodel, F.d (0th Cir. )..., Lahoti v. Vericheck, Inc., F.d 0 (th Cir. 0)... Lahoti v. Vericheck, Inc., 0 F. Supp. d 0 (W.D. Wash. 0), aff d, F.d 0 (th Cir. )... McClendon v. United States, F.d (th Cir. )...,,, 0 Michigan v. Bay Mills Indian Cmty., S.Ct. ()... Mo. River Servs., Inc. v. Omaha Tribe of Neb. F.d (th Cir. 0)... ii REPLY IN SUPPORT OF MOTION TO DISMISS

5 Case :-cv-0-cjc-kes Document Filed 0/0/ Page of Page ID #: WILSHIRE BLVD PH BEVERLY HILLS, CA 0-0 Okla. Tax Comm n v. Citizen Band Potawatomi Indian Tribe of Okla., U.S. 0 ()... Pit River Home and Agr. Co-op Ass n. v. United States, 0 F.d 0 (th Cir. )... Quileute Indian Tribe v. Babbitt, F.d (th Cir. )... Santa Clara Pueblo v. Martinez, U.S. ()... Swenson v. T-Mobile USA, Inc., F. Supp. d 0 (S.D. Cal. 0)... Three Affiliated Tribes v. Wold Eng g, U.S. ()... 0 Traton News, LLC v. Traton Corp., F. App x (th Cir. )... United States v. Oregon, F.d 00 (th Cir. )..., Statutes U.S.C. 0 et seq. ( Lanham Act )... passim U.S.C. ()(D)(v)..., U.S.C. (a)... Rules Fed. R. Civ. P.... Fed. R. Civ. P.... Fed. R. Civ. P. (m)... Fed. R. Civ. P. (b)()... Other Authorities Certipost, N.V. v. Virtual Point, Inc., D0- (WIPO Sept., 0)... iii REPLY IN SUPPORT OF MOTION TO DISMISS

6 Case :-cv-0-cjc-kes Document Filed 0/0/ Page of Page ID #: WILSHIRE BLVD PH BEVERLY HILLS, CA 0-0 Etheridge, Creek Country: The Creek Indians and Their World (Univ. of N.C. Press 0)... UDRP Rule..., UDRP Rule... 0, UDRP Rule (b)(xii)..., Wright & Miller, Federal Practice & Procedure 0 (th ed. )... iv REPLY IN SUPPORT OF MOTION TO DISMISS

7 Case :-cv-0-cjc-kes Document Filed 0/0/ Page of Page ID #: WILSHIRE BLVD PH BEVERLY HILLS, CA 0-0 INTRODUCTION Plaintiff concedes that PBCI s sovereign immunity has not been abrogated by Congress and has not been expressly and unequivocally waived by the Tribe except to the extent that the Tribe provided a limited consent to jurisdiction in filing the UDRP proceeding. Thus, Plaintiff s ability to sue PBCI in this Court stands or falls on the terms of that jurisdictional consent. As repeatedly recited in Plaintiff s Response, PBCI consented to suit only with respect to any challenges to a decision in the administrative proceeding cancelling or transferring the domain name. (See, e.g., Pl. s Resp at ). Rather than challenging the decision in the administrative proceeding, however, Plaintiff filed an independent action that has no connection to the UDRP proceeding and to which PBCI never agreed. (See id. at (citing Hawes v. Network Solutions, Inc., F.d (th Cir. 0))). Apparently realizing that its claims fall outside the terms of PBCI s limited consent, Plaintiff dedicates the majority of its Response to asking the Court to find subject matter jurisdiction pursuant to an implied waiver of sovereign immunity that is much broader than the limited consent to jurisdiction to which PBCI agreed. Subject matter jurisdiction is an issue on which Plaintiff has the burden of proof. (PBCI s Mem.at ). However, Plaintiff s arguments run squarely afoul of the controlling authority cited in PBCI s Opening Memorandum holding that waivers of tribal sovereign immunity must be express. Plaintiff s failure to confront these authorities is fatal. Plaintiff s personal jurisdiction arguments are similarly flawed. As with subject matter jurisdiction, personal jurisdiction is an issue on which Plaintiff has the burden of proof. (PBCI s Mem. at ). Yet, Plaintiff makes no argument that PBCI is subject to personal jurisdiction in California on any ground other than PBCI s limited consent to jurisdiction over a challenge to the UDRP decision. Once again, Plaintiff concedes that it is not pursuing such a challenge. As with subject matter jurisdiction, Plaintiff s Response fails to address any of the cases cited in PBCI s Opening Memorandum on REPLY IN SUPPORT OF MOTION TO DISMISS

8 Case :-cv-0-cjc-kes Document Filed 0/0/ Page of Page ID #: WILSHIRE BLVD PH BEVERLY HILLS, CA 0-0 this issue. Finally, Plaintiff offers no justification for its delay in prosecuting this action and cannot make any good faith argument that the original summons did not expire before it was served on PBCI. It is clearly not the intent of the UDRP to allow Plaintiff to unilaterally and indefinitely extend the stay through dilatory prosecution of this action. Plaintiff s efforts to avoid the controlling law regarding sovereign immunity and personal jurisdiction are perhaps not surprising. The owner of Plaintiff has been described by this Circuit as a repeat cybersquatter who has registered hundreds of domain names resembling distinctive or famous trademarks and has been admonished by judicial bodies for doing so, and whose behavior shows the sort of misconduct that Congress sought to discourage by enacting the ACPA. Lahoti v. Vericheck, Inc., F.d 0, (th Cir. 0). This Court has reached a similar conclusion. E- Stamps Corp. v. Lahoti, :-cv-0-gaf-man (C.D. Cal. 00) [Dkt. No. at (identifying Lahoti as a cybersquatter, one who registers and traffics in domain names confusingly similar or identical to valid, legitimate marks and tries to sell them to their rightful owners. ). His conduct has been characterized as reflecting a pattern and practice of registering domain names that incorporate the trademarks of others, indicating an intent to extort thousands of dollars in exchange for [the] transfer of [a] Domain Name and engaging in a pattern and practice of abusive litigation practices as a means to convince trademark owners to drop their domain name claims or to pay for domain names. Lahoti v. Vericheck, Inc., 0 F. Supp. d 0, 0 (W.D. Wash. 0), aff d, F.d 0 ( th Cir. ). The filing of an independent action which disregards the limited consent to jurisdiction provided Previous arbitration decisions have identified Dave Lahoti as the owner of Plaintiff, to which he has transferred his domain name registrations. See, e.g., Certipost, N.V. v. Virtual Point, Inc., D0- (WIPO Sept., 0) located at REPLY IN SUPPORT OF MOTION TO DISMISS

9 Case :-cv-0-cjc-kes Document Filed 0/0/ Page of Page ID #: WILSHIRE BLVD PH BEVERLY HILLS, CA 0-0 under the UDRP is consistent with such past conduct. It should not be further countenanced. Plaintiff s Complaint should be dismissed and the stay of the domain name transfer should be lifted immediately. ARGUMENT I. Plaintiff s putative factual background is misleading. Before turning to the actual merits of PBCI s Motion, Plaintiff disparages PBCI through a misleading recitation of the background regarding PBCI s trademark registrations, suggesting that PBCI made intentional misrepresentations during that process. (Pl. s Resp. at -, ). Although PBCI regrets wasting the Court s time on an issue that is irrelevant to the pending Motion, correction of the record is necessary. As Plaintiff is abundantly aware from the UDRP proceeding, members of PBCI are descendants of the original Creek Nation which once covered significant portions of the states of Georgia and Alabama. The Creek Indians were divided into various Clans, each of which was composed of all persons who were matrilineal descendants of the same ancestral grouping. One of the oldest and most prominent Clans was the Wind Clan (Hutalgalgi). Wind Creek is therefore not a geographic term but a phrase of ethnic and cultural significance to members of the PBCI. It has no relationship to a minor creek located over 0 miles from the Tribe s headquarters. This hardly reflects the conscious effort by PBCI to obtain a trademark registration to which it was not entitled, which is essential to sustain Plaintiff s allegations. In re Bose Corp., 0 F.d 0, (Fed. Cir. 0). PBCI will respond to these issues further when, and if, they are ripe for decision See See Etheridge, Creek Country: The Creek Indians and Their World, p. 00 (Univ. of N.C. Press 0). Plaintiff incorrectly asserts that PBCI operates a casino in Georgia near a Wind Creek State Park in that state. (Pl. s Br. at ). PBCI s casinos are all located within the exterior geographic boundaries of Alabama, although there is a Wind Creek State Park in that state. REPLY IN SUPPORT OF MOTION TO DISMISS

10 Case :-cv-0-cjc-kes Document Filed 0/0/ Page 0 of Page ID #: WILSHIRE BLVD PH BEVERLY HILLS, CA 0-0 by the Court. However, Plaintiff s attempt to confuse the issues only highlights the flaws in Plaintiff s subject matter and personal jurisdiction arguments. II. Plaintiff s subject matter jurisdiction arguments fail. When Plaintiff finally turns to PBCI s Motion, it spends most of its Response discussing the Lanham Act and the claims that may often be pursued following the UDRP process when sovereign immunity is not an issue. (Pl. s Resp. at -). Plaintiff contends that by agreeing to participate in the UDRP proceedings, PBCI waived immunity for any and all claims under the Lanham Act despite the fact that () the Act is neither referenced nor encompassed within PBCI s narrow consent to jurisdiction with respect to claims mounting challenges to a decision in the administrative proceeding and () Plaintiff s claims were not part of the UDRP proceedings. This argument is without merit for several reasons. A. Well-settled precedent bars implied waivers of tribal sovereign immunity. Plaintiff s principal argument is that, regardless of the express terms of PBCI s limited consent to jurisdiction, PBCI s participation in the UDRP process implicitly waived the Tribe s immunity from any suit by Plaintiff under U.S.C. (a) and U.S.C. ()(D)(v). Indeed, given its refusal to acknowledge any effect of the language limiting PBCI s consent to challenges to a decision in the administrative proceeding cancelling or terminating the domain name, Plaintiff appears to believe PBCI s participation in the UDRP proceedings implicitly waived the Tribe s sovereign immunity from any claim that Plaintiff might wish to bring in this Court. This is so, Plaintiff contends, despite the fact that Plaintiff s claims were admittedly not part of the UDRP proceedings and are not mentioned in any way in the consent Of Plaintiff s + page Response, less than two pages actually address PBCI s subject matter jurisdiction arguments. (See Pl. s Resp. at 0-). REPLY IN SUPPORT OF MOTION TO DISMISS

11 Case :-cv-0-cjc-kes Document Filed 0/0/ Page of Page ID #:0 WILSHIRE BLVD PH BEVERLY HILLS, CA 0-0 stipulation under the UDRP Rules and Procedures. Plaintiff s argument runs afoul of numerous authorities. The baseline position is tribal immunity. Michigan v. Bay Mills Indian Cmty., S.Ct., (). As explained in PBCI s Opening Memorandum, the results of this baseline are a strong presumption against waiver of tribal sovereign immunity, and mandates that () any waiver of sovereign immunity be strictly construed, () any doubts or ambiguities regarding the scope of a waiver be resolved in favor of retaining immunity, and () a waiver of tribal sovereign immunity cannot be implied but must be unequivocally expressed. [See Dkt. - at - (citing Demontiney v. United States, F.d 0, ( th Cir. 0), Mo. River Servs., Inc. v. Omaha Tribe of Neb., F.d, ( th Cir. 0), Clifford v. United States, No. SACV -0-CJC(DFMx), WL, at * (C.D. Cal. Jan., ), and Santa Clara Pueblo v. Martinez, U.S., ()) (emphasis added)]. Plaintiff s argument also disregards this Circuit s precedent providing that a Tribe s voluntary participation in an administrative proceeding does not constitute the express and unequivocal conduct necessary to waive sovereign immunity from a subsequent court action. Quileute Indian Tribe v. Babbitt, F.d, 0 ( th Cir. ); Pit River Home and Agr. Co-op Ass n. v. United States, 0 F.d 0, 00 ( th Cir. ). Plaintiff never confronts any of the other sovereign immunity cases cited in PBCI s Memorandum, likely because it cannot distinguish them in any meaningful way. Moreover, it cites no authority holding that a Tribe waives sovereign immunity for claims under the Lanham Act merely by participating in UDRP proceedings. No such authority exists. // Plaintiff does not dispute that Congress did not abrogate PBCI s sovereign immunity when it passed the Lanham Act. (See PBCI s Opening Mem. [Dkt. -] at -). Thus, subject matter jurisdiction in this case depends exclusively on the scope of PBCI s limited consent to jurisdiction. REPLY IN SUPPORT OF MOTION TO DISMISS

12 Case :-cv-0-cjc-kes Document Filed 0/0/ Page of Page ID #: WILSHIRE BLVD PH BEVERLY HILLS, CA 0-0 B. PBCI s limited consent to jurisdiction does not encompass Plaintiff s claims. Plaintiff s only effort to avoid the controlling precedent PBCI cites is to argue that PBCI s cases all relate to situations where a tribe controlled the scope of the immunity waiver by way of an agreement between the tribe and another party. (Pl. s Resp. at ). This putative distinction is specious. The controlling question in this and all tribal sovereign immunity cases is whether Plaintiff s claims come within the express terms of PBCI s limited consent to jurisdiction, strictly construed, and with any doubts or ambiguities resolved in favor of preserving the Tribe s sovereign immunity. See McClendon v. United States, F.d, 0 (th Cir. ) (the terms of [a sovereign s] consent to be sued in any court define that court s jurisdiction to entertain the suit ) (citing Jicarilla Apache Tribe v. Hodel, F.d, (0th Cir. )). Under this analysis, it is evident that PBCI did not waive its immunity from Plaintiff s Lanham Act claims. First, the limited consent at issue states that PBCI will submit, with respect to any challenges to a decision in the administrative proceeding cancelling or transferring the domain name, to the jurisdiction of the courts in at least one specified Mutual Jurisdiction. UDRP Rule (b)(xii) [Dkt. - at ] (emphasis added). This is not a general waiver of tribal sovereign immunity, or even a waiver of immunity from any claim brought under the Lanham Act. Rather, it encompasses only challenges to a decision in the administrative proceeding. Plaintiff s concession that its claims are independent of the UDRP proceedings, (Pl. s Resp. at (citing Hawes, F.d at )), confirms that those claims are outside the scope of PBCI s limited consent and by itself requires that PBCI s Rule (b)() Motion be granted. Second, the definition of Mutual Jurisdiction in UDRP Rule does not support Plaintiff s waiver argument. Rule simply defines where permissible challenges to a decision in the administrative proceeding may be brought; it does not address what claims may be pursued. It certainly does not expand the scope of the REPLY IN SUPPORT OF MOTION TO DISMISS

13 Case :-cv-0-cjc-kes Document Filed 0/0/ Page of Page ID #: WILSHIRE BLVD PH BEVERLY HILLS, CA 0-0 forum selection clause in Rule (b)(xii) or the terms of PBCI s limited consent. And even if Rule created any ambiguity in the scope of PBCI s jurisdictional consent, which it does not, that ambiguity would have to be resolved in favor of PBCI. Clifford, WL, at *. Third, UDRP Policy (k), which Plaintiff cites in passing but does not address in any detail (Pl. s Resp. at 0), is irrelevant. This provision only states that the UDRP proceeding shall not prevent either party from proceeding separately in a court of competent jurisdiction either before or after the UDRP proceedings conclude. [Dkt. - at 0]. Because this Court lacks jurisdiction over Plaintiff s claims against PBCI in the absence of an express waiver of PBCI s tribal sovereign immunity, Policy (k) is inapplicable on its face. Finally, Plaintiff once again ignores this Circuit s precedent that a Tribe may institute a proceeding to protect its interests without subjecting itself to ancillary claims such as Plaintiff s. Even where a Tribe brings an action in a federal forum it consents to judicial resolution of only the issues essential to decide the action it brought. It does not consent to the litigation of related matters, even if those matters arise from the same set of underlying facts. McClendon, F.d at 0; see also Okla. Tax Comm n v. Citizen Band Potawatomi Indian Tribe of Okla., U.S. 0, 0-0 () (holding that tribal sovereign immunity bars even compulsory counterclaims in a suit initiated by a tribe). PBCI s limited consent to jurisdiction certainly does not encompass the broad claims that Plaintiff now seeks to assert, all of which are wholly independent of the underlying administrative decision. Fairly read, the UDRP Rules and Policies on which Plaintiff relies merely confirm that Plaintiff s claims are beyond the scope of the Tribe s limited consent. Dismissal for lack of subject matter jurisdiction is required. REPLY IN SUPPORT OF MOTION TO DISMISS

14 Case :-cv-0-cjc-kes Document Filed 0/0/ Page of Page ID #: WILSHIRE BLVD PH BEVERLY HILLS, CA 0-0 C. The only case Plaintiff cites to support its subject matter jurisdiction arguments actually supports PBCI s motion. Plaintiff cites only one case ostensibly supporting its position on subject matter jurisdiction United States v. Oregon, F.d 00 (th Cir. ). (Pl. s Resp. at 0-). Plaintiff s reliance on this decision is misplaced. Oregon involved a dispute between the United States and the state of Oregon regarding treaty fishing rights in the Columbia River Basin. The Confederated Tribes and Bands of the Yakima Indian Nation ( Yakima Tribe ) and the state of Washington intervened in the litigation after it was filed. Oregon, F.d at 00-. The initial suit was resolved pursuant to a settlement and conservation agreement, which provided that [in] the event that significant management problems arise from this agreement that cannot be resolved by mutual agreement, the parties agree to submit the issues to federal court for determination. Id. at 0, 0. When a dispute later arose over the Yakima Tribe s rights to fish spring chinook, the state of Washington sought injunctive relief from the court, invoking this provision of the settlement agreement. In that second phase of litigation, the Yakima Tribe unsuccessfully argued that its tribal sovereign immunity prevented the District Court from entering an injunction that affected its fishing rights. Id. at 0. While Plaintiff cites the Ninth Circuit s rejection of the Yakima Tribe s sovereign immunity argument, it does not discuss the basis for that decision. This is because the Ninth Circuit explicitly premised its decision on the existence of a clear and unequivocal waiver that is not present here. The Ninth Circuit held that the Yakima Tribe expressly consented to the District Court s resolution of disputes under the conservation agreement as part of the original settlement. Id. at 0. Specifically, the Ninth Circuit stated: Here Washington and the tribe have a definite dispute over the management of anadromous fisheries; Washington believes that complete cessation of fishing is necessary to preserve the spring chinook and the REPLY IN SUPPORT OF MOTION TO DISMISS

15 Case :-cv-0-cjc-kes Document Filed 0/0/ Page of Page ID #: WILSHIRE BLVD PH BEVERLY HILLS, CA 0-0 tribe believes the opposite. This is exactly the type of dispute envisioned in when the Yakimas agreed to submit any dispute to the Oregon district court. Id. Oregon demonstrates the kind of clear and unequivocal waiver that is necessary to overcome a tribe s sovereign immunity defense. Unlike the Yakima Tribe, PBCI never expressly consented to waive its immunity for the type of claims at issue here i.e., all issues related to its trademark registrations or for any claims under the Lanham Act. Hence, instead of supporting Plaintiff s arguments, Oregon actually demonstrates why PBCI s Motion to Dismiss should be granted. The Ninth Circuit s subsequent decision in McClendon v. United States, F.d th Cir ) distinguishes Oregon and is instructive here. In McClendon, the Ninth Circuit rejected the argument that the Colorado River Indian Tribal Council, by participating in an earlier lawsuit over the ownership of real property, waived sovereign immunity for a later suit brought by a lessee of that property. Distinguishing the settlement and conservation agreement in Oregon, the Ninth Circuit found that the settlement documents from the first lawsuit in McClendon did not indicate an intent to waive sovereign immunity with respect to any further disputes arising between the Tribe and [the lessees]. McClendon, F.d at. The McClendon court also held that [b]y initiating the [first] action, the Tribe accepted the risk that it would be bound by an adverse determination of the ownership of the disputed land. Id. at 0. However, the Court went on to find that initiation of the suit, in itself, does not manifest broad consent to suit over collateral issues arising out of the settlement of the litigation, such as the interpretation and enforcement of the lease agreement. Id. at ; see also Jicarilla Apache Tribe v. Hodel, F.d, -0 (0th Cir. ) (finding that by filing suit over certain oil and gas leases the Tribe did not waive sovereign immunity for suit by the lessee over those same leases). REPLY IN SUPPORT OF MOTION TO DISMISS

16 Case :-cv-0-cjc-kes Document Filed 0/0/ Page of Page ID #: WILSHIRE BLVD PH BEVERLY HILLS, CA 0-0 Similarly, PBCI s consent to suit for a challenge to the UDRP decision was not consent for it to be sued on the collateral issues regarding its trademark registrations that underlie Plaintiff s current claims. McClendon also disposes of Plaintiff s suggestion that it is unfair to allow PBCI to institute a UDRP proceeding against it, but to not allow it to pursue (much broader) Lanham Act claims against the Tribe. As the Ninth Circuit explained, any perceived inequity of permitting the Tribe to recover from a non-indian for civil wrongs in instances where a non-indian allegedly may not recover against the Tribe simply must be accepted in view of the overriding federal and tribal interests in these circumstances. McClendon, F.d at (quoting Three Affiliated Tribes v. Wold Eng g, U.S., ()). Plaintiff may perceive this result as unfair, but it is nevertheless settled law. Plaintiff cannot avoid PBCI s sovereign immunity. Therefore, PBCI s Motion to Dismiss for lack of subject matter jurisdiction should be granted. III. Plaintiff s claims are not within the scope of PBCI s consent to personal jurisdiction in this forum. Just as with subject matter jurisdiction, Plaintiff s personal jurisdiction arguments are based on a flawed reading of UDRP Rule. For personal jurisdiction, the issue is not where PBCI agreed suit could be brought, but rather for what claims PBCI agreed to submit to personal jurisdiction in the Central District of California. In other words, personal jurisdiction is coextensive with subject matter jurisdiction in this case. Plaintiff argues that because PBCI consented to personal jurisdiction in this Court for a challenge to the UDRP decision, PBCI is subject to personal jurisdiction here for any other claims that Plaintiff now wishes to bring. Once again, Plaintiff s sweeping argument is contrary to the authorities cited in PBCI s Opening Memorandum [Dkt. - at ] which Plaintiff does not address and to the concept of specific jurisdiction, which requires that the claims at issue arise out of or 0 REPLY IN SUPPORT OF MOTION TO DISMISS

17 Case :-cv-0-cjc-kes Document Filed 0/0/ Page of Page ID #: WILSHIRE BLVD PH BEVERLY HILLS, CA 0-0 relate to the agreement to which the forum selection clause applies. See Traton News, LLC v. Traton Corp., F. App x,, - (th Cir. ) (granting motion to dismiss for lack of personal jurisdiction because plaintiff s anti-cybersquatting and other Lanham Act claims did not arise out of or relate to the contract containing the forum selection clause); Coalition for ICANN Transparency, Inc. v. Verisign, Inc., F. Supp. d, - (N.D. Cal. 0) (finding that plaintiff s antitrust, cybersquatting, unfair competition and tortious interference claims were not within the scope of the forum selection clause in the Registry-Registrar Agreement). Plaintiff cites U.S.C. ()(D)(v) and Swenson v. T-Mobile USA, Inc., F. Supp. d 0, 0 (S.D. Cal. 0), for the proposition that [f]orum selection clauses are necessary to determine the proper venue for Plaintiff to file suit to derail the implementation of the UDRP decision[;] however, neither the statute nor Swenson suggests that the forum selection clause in UDRP Rule covers Plaintiff s Lanham Act claims. U.S.C. ()(D)(v) simply states that a domain name registrant may, upon notice to the mark owner, file a civil action to establish that the registration or use of the domain name by such registrant is not unlawful. It does not address where that suit may be brought, or otherwise alter the personal jurisdiction Due Process requirements. Swenson holds that forum selection clauses are generally enforceable unless they are contrary to a strong public policy of the forum state. Swenson, F. Supp. d at 0. It is inapplicable to Plaintiff s Motion, which turns on the scope, not the enforceability, of UDRP Rule as a forum selection clause. Simply put, Plaintiff s claim does not present a challenge[] to a decision in the administrative proceeding the only claim for which PBCI consented to personal jurisdiction in this Court. Accordingly, Plaintiff s claims against PBCI should be dismissed for lack of personal jurisdiction. Plaintiff does not, and cannot in good faith argue that PBCI is subject to general personal jurisdiction in California. REPLY IN SUPPORT OF MOTION TO DISMISS

18 Case :-cv-0-cjc-kes Document Filed 0/0/ Page of Page ID #: WILSHIRE BLVD PH BEVERLY HILLS, CA 0-0 IV. The stay should be lifted. PBCI s position on lifting the stay is stated in its Opening Memorandum. Plaintiff never disputes that it failed to obtain service before the original summons expired under Federal Rule of Civil Procedure (m) and has offered no justification for its delay in prosecuting this action in a timely fashion. While Plaintiff relies on FRCP, that must be read harmoniously with FRCP, which requires service of the summons and complaint within 0 days. Wright & Miller, Federal Practice & Procedure, 0 ( th ed. ). Plaintiff never requested an extension to serve its original complaint and, in fact, never properly served that Complaint. The excuse provided for failure to serve the short period of time provided to file an action after an adverse UDRP decision to stay a transfer of the domain name [Dkt. No. at ], and the need to prepare an amended complaint - is suspect in light of the experience of Plaintiff in filing identical actions with similar allegations. Rather than request an extension on the original summons, Plaintiff abandoned its original complaint and summons, caused a new summons to be issued, and served that on PBCI. Under these circumstances, this action should not be deemed commenced within ten days of entry of the UDRP decision. Alternatively, PBCI requests that the Court expedite ruling on its Motion to Dismiss so that the stay may be lifted contemporaneously with the Court s ruling in the event the Court grants this Motion. Plaintiff is incorrect when it states in its response that this objection was not raised in the parties meet and confer. The deficiency in service waw the first matter identified in those discussions. Plaintiff requested an extension until March to serve Defendant National Arbitration Forum, Inc. [Dkt. No. at ]( Plaintiff requests that the Court set a deadline for service of Defendant NAF of March,. ) REPLY IN SUPPORT OF MOTION TO DISMISS

19 Case :-cv-0-cjc-kes Document Filed 0/0/ Page of Page ID #: WILSHIRE BLVD PH BEVERLY HILLS, CA 0-0 CONCLUSION For the foregoing reasons, and as stated in its Motion and Opening Memorandum of Points and Authorities, PBCI respectfully requests that its Motion to Dismiss be granted and that the stay of the transfer of the domain names be lifted. Respectfully submitted this nd day of May,. /s/ Dennis L. Wilson DENNIS L. WILSON (Cal. Bar No. 0) KOLLIN J. ZIMMERMANN (Cal. Bar No. 0) LLP Wilshire Blvd PH Beverly Hills, CA 0 Telephone: (0) -0 Facsimile: (0) 0-0 DAVID C. SMITH (D.C. Bar No. ) DCSmith@kilpatricktownsend.com Pro Hac Vice Application to be submitted LLP 0 th Street, N.W., Suite 00 Washington, D.C. 00 Telephone: () 0-00 Facsimile: () 0- // // // // // // REPLY IN SUPPORT OF MOTION TO DISMISS

20 Case :-cv-0-cjc-kes Document Filed 0/0/ Page of Page ID #: WILSHIRE BLVD PH BEVERLY HILLS, CA 0-0 US0 0 MARK H. REEVES (Ga. Bar No. ) mreeves@kilpatricktownsend.com Pro Hac Vice Application to be submitted LLP Enterprise Mill 0 Greene Street, Suite Augusta, GA 00 Telephone: (0) - Facsimile: (0) - Attorneys for Defendant Poarch Band of Creek Indians, dba PCI Gaming Authority REPLY IN SUPPORT OF MOTION TO DISMISS