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Case 2:11-cv-01055-FJM Document 6

Filed 06/22/11 Page 1 of 11

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GINGRAS LAW OFFICE, PLLC 3941 E. CHANDLER BLVD., #106-243 PHOENIX, AZ 85048

David S. Gingras, #021097 Gingras Law Office, PLLC 3941 E. Chandler Blvd., #106-243 Phoenix, AZ 85048 Tel.: (480) 668-3623 Fax: (480) 248-3196 David@GingrasLaw.com Attorney for Plaintiff Xcentric Ventures, LLC

UNITED STATES DISTRICT COURT DISTRICT OF ARIZONA

XCENTRIC VENTURES, LLC, an Arizona limited liability company, Plaintiff, vs. KARSEN, LTD., a foreign entity of unknown origin d/b/a Scaminformer.com; DOES 1-10, inclusive, Defendants.

Case No: 11-cv-1055-FJM MOTION TO DETERMINE SUFFICIENCY OF SERVICE OR FOR LEAVE TO PERFORM ALTERNATIVE SERVICE

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Plaintiff Xcentric Ventures, LLC (“Xcentric”) respectfully moves this Honorable Court for an order determining whether Xcentric has effectively accomplished service of process upon the Defendant Karsen, Ltd. (“Karsen”) in this matter and, if not, Xcentric respectfully seeks leave of Court to perform service via alternative means. The basis for this request is explained fully herein. I. INTRODUCTION

This is a relatively straightforward action seeking monetary damages and injunctive relief for various acts of copyright infringement under the copyright laws of the United States (17 U.S.C. § 101 et seq.) and for various acts of trademark infringement in violation of the Lanham Act, 15 U.S.C. § 1051, et seq., and related state law claims. In short, Xcentric is the operator of a consumer complaint website located at
MOTION TO DETERMINE SUFFICIENCY OF SERVICE

Xcentric discovered that the site contains tens of thousands of unlawfully copied pages pirated from the Ripoff Report website.Case 2:11-cv-01055-FJM Document 6 Filed 06/22/11 Page 2 of 11 1 2 3 4 5 6 7 8 9 10 11 12 13 GINGRAS LAW OFFICE.ComplaintsBoard. 2008) which eventually resulted in a judgment awarding damages in favor of Xcentric and a permanent injunction against the defendant. For example. During more than a decade in operation.com (the “Ripoff Report”) which was founded in December 1998. AZ 85048 www. As of June 2011.RipoffReport. CHANDLER BLVD. Ltd. 2 MOTION TO DETERMINE SUFFICIENCY OF SERVICE . in 2008 Xcentric discovered that a new competing website – www. Although the Scam Informer site was first recently created on January 31.000 original consumer complaints.com – had stolen large amounts of content from the Ripoff Report site. the Ripoff Report has grown to become one of the most popular and frequently visited sites of its kind. the Ripoff Report’s popularity and high levels of traffic are largely based on the massive volume of information contained on the site. Elizabeth Arden d/b/a ComplaintsBoard. LLC v.. Case No. Xcentric has spent millions of dollars compiling and defending this vast database of valuable content. but also material generated by Xcentric such as the site’s Terms of Service and various related trademarks.com. Xcentric discovered yet another competing website – www. 2011. 2011. #106-243 PHOENIX. Just as Facebook’s popularity arises from its vast membership of more than 500 million active users. the Ripoff Report site has in excess of 600.1 1 As alleged in Paragraphs 16 & 20 the Complaint filed in this matter on May 26. This 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 resulted in Xcentric commencing a federal copyright and trademark infringement action in this court in Xcentric Ventures. and in recent years Xcentric has been the victim of various forms of piracy by competitors who have copied vast amounts of information from the Ripoff Report website in an effort to “pre-populate” their competing sites with content. In the spring of 2011. including not only user-submitted complaints. and many millions upon millions of responses/rebuttals/replies.com (“Scam Informer”) which is allegedly owned and operated by the defendant in this matter—Karsen. Xcentric is the owner of two registered copyrights for material appearing on the Ripoff Report website. 08-cv-2299 (D. Over the past decade. PLLC 3941 E.Ariz. many of which include Xcentric’s registered trademarks and registered copyrighted works.ScamInformer.

17 U.S.C.Case 2:11-cv-01055-FJM Document 6 Filed 06/22/11 Page 3 of 11 1 2 3 4 5 6 7 8 9 10 11 12 13 GINGRAS LAW OFFICE. Shortly thereafter.S. Declaration of David S.”) submitted herewith. § 512(g)(3) requires that counter-notice must contain each of the following things: (A) A physical or electronic signature of the subscriber. For the Court’s information. CHANDLER BLVD. § 512(c)(i)(C). 2011. it had received a DMCA counter-notice from Defendant Karsen. Google contacted Xcentric and stated that pursuant to 17 U. and the notices demanded that Google remove the infringing content from its search index as required by 17 U. 2011. Inc. these notices informed Google that Defendant Karsen was infringing Xcentric’s exclusive rights under the Copyright Act. § 512. See Gingras Decl. (B) Identification of the material that has been removed or to which access has been disabled and the location at which the material appeared before it was removed or access to it was disabled.C. et seq.S. PLLC 3941 E. AZ 85048 Immediately upon discovering this. (the “DCMA”). See Gingras Decl. Gingras (“Gingras Decl.C. pursuant to the Digital Millennium Copyright Act. #106-243 PHOENIX. Russia. 17 U. On May 11. the responding party (generally the alleged infringer) may serve a counter-notice on the third party which contests the accuracy of the initial notice. Exhibit C. Google responded by stating that it had substantially complied with Xcentric’s notices by disabling access to each infringing page located on the Scam Informer site as identified in the notices. In short. See Exhibit A. Exhibit B. In order to be effective. Xcentric attempted to remedy the unlawful conduct by sending a series of take-down notices to non-party Google. 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 Petersburg.S. when a copyright owner demands that a third party (such as Google) remove or disable infringing material under the provisions of the DMCA.. (C) A statement under penalty of perjury that the subscriber has a good faith belief that the material was removed or disabled as a result of mistake or misidentification of the material to be removed or disabled. the counter-notice was written in English and signed on behalf of Defendant Karsen by an individual using the name “Irakly Brodskih”. on May 24. § 512(g)(3). 3 MOTION TO DETERMINE SUFFICIENCY OF SERVICE . Although it listed an address in St..C.

and that the subscriber will accept service of process from the person who provided notification under subsection (c)(1)(C) or an agent of such person. 2010) (describing DMCA counter-notice provisions). Google informed Xcentric that it intended to restore the previously-disabled material within 10 days unless Xcentric commenced litigation against Karsen as contemplated by the counter-notice provisions of 17 U. 1106 n. CHANDLER BLVD. 17 U. See Gingras Decl. Google’s webform result contained two responses which indicated that Karsen had. Exhibit E. 2011 undersigned counsel sent an email to Google seeking clarification. § 512(g)(2)(C).C. it was unclear whether the counter-notice provided by Defendant Karsen to Google contained each of the required elements..3d 1102. In addition. and a statement that the subscriber consents to the jurisdiction of Federal District Court for the judicial district in which the address is located. checked boxes giving such consent: “dmca_consent_statement: checked”. 4 MOTION TO DETERMINE SUFFICIENCY OF SERVICE 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 checked dmca_consent_statement two: . Google represented that Mr. See Gingras Decl. See Gingras Decl. AZ 85048 (D) The subscriber's name.4 (9th Cir. Google explained that it offers users a “webform” which produces a counter-notice based on input from the user.C. Autodesk. Exhibit D. See Gingras Decl. Exhibit E. and telephone number. In subsequent correspondence. 2011 and provided notice to Google that same day.Case 2:11-cv-01055-FJM Document 6 Filed 06/22/11 Page 4 of 11 1 2 3 4 5 6 7 8 9 10 11 12 13 GINGRAS LAW OFFICE.S. § 512(g)(3)(D). In its response. § 512(g)(3) (emphasis added).C. 621 F. Initially. As a result. With regard to the question of whether Defendant Karsen had agreed to jurisdiction in the United States and had agreed to accept service of process as required by 17 U. on May 24. in fact. PLLC 3941 E. See Gingras Decl. Brodskih had agreed to accept service on behalf of Defendant Karsen and that Google provided copies of the Summons and Complaint to him via email. Xcentric commenced this action two days later on May 26. As such. address. see also Vernor v.S. Inc. #106-243 PHOENIX..S. Based on Google’s determination that it believed Defendant Karsen had submitted a valid DMCA counter-notice (including affirmatively agreeing to accept service of process and to be subject to jurisdiction in the United States). Exhibits G–I. or if the subscriber's address is outside of the United States. Exhibit F. for any judicial district in which the service provider may be found. Google responded later that same day.

Defendant Karsen sent another email apparently attempting to revoke its representations to Google regarding its submission to jurisdiction in the United States and its willingness to accept service of process. on June 14. 2011 by virtue of the pleadings sent to Defendant by both Xcentric and Google. 2011. II. In the alternative and in the event the Court does not find that Defendant Karsen’s agreement to accept service was effective. see Gingras Decl. on June 13. and related documents to Mr. Brodskih via email. this case initially began as a result of Xcentric’s efforts to obtain relief from Defendant’s unlawful actions using the takedown provisions provided by the DMCA. In addition. Exhibits L and M. ARGUMENT a. PLLC 3941 E. Petersburg. Summons.Case 2:11-cv-01055-FJM Document 6 Filed 06/22/11 Page 5 of 11 1 2 3 4 5 6 7 8 9 10 11 12 13 GINGRAS LAW OFFICE. Based on these events. Exhibit O. By design. CHANDLER BLVD. See Gingras Decl. 2011. because the address is “incorrect”. 2011.. Xcentric requests that the Court issue an order finding that effective service of process was completed as to Defendant Karsen as of June 13. The following day. Defendant Karsen Has Waived Any Right To Personal Service As explained above. but was unsuccessful because “customer not available or business closed”. then Xcentric respectfully requests leave to perform service of the Complaint and Summons via alternate means. AZ 85048 Xcentric subsequently provided copies of the Complaint.” Gingras Decl. Exhibit J. According to FedEx’s website. written in English) which purported to include a “brief reply to frivolous lawsuit your [sic] bought [sic] against our website. According to tracking information provided by FedEx. a DMCA removal notice such as that sent by Xcentric is not 5 MOTION TO DETERMINE SUFFICIENCY OF SERVICE 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 . as of June 22 the package was not delivered to the Russian address provided in Defendant Karsen’s DMCA counter-notice. Defendant Karsen set an email to undersigned counsel (again. delivery of the Complaint and Summons at the Russian address provided by Defendant was attempted on June 20. By Expressly Agreeing To Accept Service. See Gingras Decl. #106-243 PHOENIX. Russia. See Gingras Decl. Exhibit N. Exhibit K and via Federal Express delivery to the address provided by Karsen in St.

In response. When. for any judicial district in which the service provider may be found. a defendant is always free to waive/accept service of process. the Court should find that by agreeing to accept service of process as a condition to its right to provide a DMCA counter-notice to Google. 100 L. Defendant Karsen invoked the counter-notice provisions of the DMCA on May 24. Although no published decision has ever interpreted the specific counter-notice service provisions of the DMCA. Specifically.S. PLLC 3941 E. statements expressly consenting to personal jurisdiction in the United States and agreeing to accept service of process. among other things. and that the subscriber will accept service of process from the person who provided notification under subsection (c)(1)(C) or an agent of such person. AZ 85048 necessarily the final step in the process. “consent[] to the jurisdiction of Federal District Court for the judicial district in which the address is located.S. Google would have restored the infringing content to its index within 10 days. § 512(g)(3)(D). Co. Defendant Karsen has waived the right to personal service and that as a result. Jur. because Google stated that it viewed Defendant’s counter-notice as valid. a party has agreed to 6 MOTION TO DETERMINE SUFFICIENCY OF SERVICE 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 . Xcentric had no choice but to promptly commence litigation.C. Ct. Xcentric relied on these representations when it decided to commence litigation in this Court. but the right to use this challenge comes at a price and with specific strings attached. Ed.S. “As a rule. 639 (1956)). 76 S. the alleged infringer is required to. Under these circumstances. Xcentric has effectively served Karsen pursuant to 17 U. Indeed. Civ. § 512(g)(3)(D).C. Rather. or if the subscriber’s address is outside of the United States. 350 U. Process § 103 (citing Petrowski v. 490. as here.. R. a party may waive the service of process.” 62B Am. as a long-standing rule courts have always recognized that despite the mandatory requirement of personal service under Fed.” 17 U.C. Hawkeye-Security Ins. among other things. If it had failed to do so. 2011 when it submitted a counter-notice to Google which contained. 495. in order to invoke the counter-notice provisions of the DMCA. § 512(g)(2)(C). CHANDLER BLVD. #106-243 PHOENIX. P.Case 2:11-cv-01055-FJM Document 6 Filed 06/22/11 Page 6 of 11 1 2 3 4 5 6 7 8 9 10 11 12 13 GINGRAS LAW OFFICE. In this matter..S. the DMCA allows alleged infringers to “challenge” the accuracy of a DMCA takedown notice. as permitted by 17 U. 4.

the Court should find that 7 MOTION TO DETERMINE SUFFICIENCY OF SERVICE . although Defendant Karsen agreed to accept service of process. it has apparently attempted to renege on that agreement. no legitimate reason exists to permit Karsen to later withdraw its agreement to accept service. Jones. AZ 85048 waive personal service and accept service via other means. Process § 103 (explaining. “If the court has jurisdiction over the subject matter.M. Process § 100 (citing State Sav. a defendant who has accepted service waives objection to personal jurisdiction and cannot afterwards object to the proceedings. Had Karsen not submitted a DMCA 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 counter-notice to Google. Here.” 62B Am. #106-243 PHOENIX. Defendant Karsen plainly invoked the counter-notice provisions of the DMCA in order to force Xcentric to commence litigation. if the acknowledgment states that he or she waives all other and further service. due process does not require personal service. Anderson. the question becomes: what happens if a party makes a written agreement to accept service but then subsequently refuses to do so? Case law on this issue is surprisingly sparse and. The unique facts of this matter. 861.E. the infringing material removed by Google would have remained de-listed from Google’s index. and Loan Ass'n of Lubbock v. PLLC 3941 E.Case 2:11-cv-01055-FJM Document 6 Filed 06/22/11 Page 7 of 11 1 2 3 4 5 6 7 8 9 10 11 12 13 GINGRAS LAW OFFICE. Thus.2d 253 (1987)). By invoking the DMCA’s unique statutory scheme to its advantage. 76 S. Defendant Karsen was required to submit itself to jurisdiction in the United States and it was required to agree to accept service of process. Jur.2d 801 (1953)). the plaintiff’s remedy would normally be to simply effect personal service via standard means. which it promptly did. 106 N. Xcentric might concede that if a party makes an agreement to execute a waiver service but then later reneges. 607. Xcentric recognizes that a party’s agreement to accept service may not necessarily equate to an actual acceptance of service. 747 P. present several strong justifications for a different result. See 62B Am. effectively minimizing the damage to Xcentric.”) (citing Jones v. First and foremost. however. “A defendant may waive service of process by signing an acknowledgment that he or she received a copy of the petition starting an action against him or her. Jur. Given that Xcentric relied on these facts when it commenced this action. 209 Ga. CHANDLER BLVD. On the contrary. Of course. in most normal instances..

PLLC 3941 E. 4(f)(3).3d 1007. Given the ex parte nature of this motion. 4 and that Xcentric’s efforts to provide copies of the Complaint and Summons via email and FedEx were sufficient to effect service on Karsen as of June 13. as noted above. First. R. 284 F. Rio International Interlink. 2011 – the date that Karsen was last provided copies of the pleadings in this matter via email – and that Karsen is therefore obligated to answer and defend within 90 days from that day (meaning by Sept. P. in an abundance of caution. R.3d at 1015 n.Case 2:11-cv-01055-FJM Document 6 Filed 06/22/11 Page 8 of 11 1 2 3 4 5 6 7 8 9 10 11 12 13 GINGRAS LAW OFFICE. Petersburg. 2011).php?act=states.hcch. because Karsen agreed to accept service.details&sid=64. Defendant Karsen initially provided Google with an address in St. Of 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 course. Xcentric offers the following information. v. Inc. CHANDLER BLVD. Here. the Ninth Circuit has determined that District Courts have broad discretion to determine whether and how to permit service via alternative means under Fed. If Karsen Has Not Already Been Served. See generally Rio Properties. b. assuming the Court does not agree that Karsen has waived the right to any further service. 4. Leave To Serve Via Alternate Means Should Be Granted As the Court is likely aware.net/index_en. #106-243 PHOENIX. Civ. Civ. 12. email service is permissible under Rule 4(f)(3) provided that it does not contravene an international agreement such as the Hague Convention. “we hold that Rule 4(f)(3) is an equal means of effecting service of process under the Federal Rules of Civil Procedure. in order to ensure that the Court is provided with all relevant information necessary to make that determination. AZ 85048 Karsen has waived any right to personal service under Fed. and unlike the country at issue in Rio Properties (Costa Rica) Russia is a signatory to the Hague Convention. Xcentric respectfully requests leave to serve Karsen via the only known medium available—email. See Rio Properties. Russia. 284 F.”) Here. 1016 (9th Cir. See http://www. and we commit to the sound discretion of the district court the task of determining when the particularities and necessities of a given case require alternate service of process under Rule 4(f)(3). as explained in Rio Properties. this point should be irrelevant. P.. 2002) (explaining. 8 MOTION TO DETERMINE SUFFICIENCY OF SERVICE .

unless and until Defendant crawls out from the shadows and reveals its true location. Indeed. #106-243 PHOENIX. See Gingras Decl. leave to serve Defendant via email should be granted. according to a WHOIS search. “Indeed.com website is exclusively written in English) and which stated as follows: “As far as we are located in Russia and do not have any assets in US we request all documents to be served in compliance [sic] and authorized by Hague Service Convention.Case 2:11-cv-01055-FJM Document 6 Filed 06/22/11 Page 9 of 11 1 2 3 4 5 6 7 8 9 10 11 12 13 GINGRAS LAW OFFICE. ¶¶ 19–20. On the other hand..com – lists no physical address whatsoever. substantial reasons exist to believe that Defendant is lying as to its true whereabouts. including the United States. PLLC 3941 E. a FedEx delivery to the Russian address provided by Defendant reflected that the address is apparently invalid or that Defendant is simply not located at such address. there is no reason to conclude that Karsen is actually located outside the U.3d at 1018. Under these circumstances. See Gingras Decl. but which purports to refuse to accept correspondence at the only address provided (a PO box in Australia). Finally. on June 14. ¶ 17. Exhibit N.ScamInformer. Among other things. Defendant’s website – www. or in a Hague Convention signatory country.S. ¶ 18. No legitimate business would undertake such extensive efforts to conceal its true location. As such. playing hide-and-seek with the federal court.com is an Australian entity which claims to be based in Queensland. Exhibit O. 284 F. Exhibit P. See Gingras Decl. CHANDLER BLVD. 2011.” Rio Properties.” Gingras Decl. Defendant sent an email to undersigned counsel which feigned ignorance of the English language (a dubious point given that the email was written in English and all content located on the ScamInformer.ScamInformer. 9 MOTION TO DETERMINE SUFFICIENCY OF SERVICE 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 . the true owners of the site could be located anywhere. after agreeing to accept service. Each of these points suggests that Karsen may not actually be located in Russia. email may be the only means of effecting service of process. Australia. AZ 85048 In addition. indeed. the current registered owner of the from the domain name www. when faced with an international ebusiness scofflaw. such actions make it readily apparent that Defendant knows its conduct is illegal and that Defendant has no respect for the law or for the legal rights of Xcentric. Next.

LLC 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 10 MOTION TO DETERMINE SUFFICIENCY OF SERVICE . CONCLUSION For the reasons stated herein.. 2011 or. 2011. Xcentric respectfully seeks leave of Court to perform service via alternative means including via email or any other such method as the Court may direct. Xcentric respectfully requests an order determining that Xcentric has effectively accomplished service of process upon the Defendant Karsen. AZ 85048 Here. GINGRAS LAW OFFICE. CHANDLER BLVD. because email appears to be the only reliable means for communicating with Karsen. DATED June 22. III. PLLC /S/ David S. 2011). and because both Google and Xcentric have provided Karsen with copies of the Summons and Complaint (most recently on June 13.Case 2:11-cv-01055-FJM Document 6 Filed 06/22/11 Page 10 of 11 1 2 3 4 5 6 7 8 9 10 11 12 13 GINGRAS LAW OFFICE. #106-243 PHOENIX. Xcentric will also provide service via any other means as directed by the Court. in the alternative. PLLC 3941 E. as of June 13. Gingras David S. Ltd. Gingras Attorneys for Plaintiff XCENTRIC VENTURES. the Court should permit service via email. Of course.

2011 I electronically transmitted the attached document to the Clerk’s Office using the CM/ECF System for filing. SPC 62 Phoenix. CHANDLER BLVD. MARTONE United States District Court Sandra Day O’Connor U. bronskihirixaty@mail.S.Case 2:11-cv-01055-FJM Document 6 Filed 06/22/11 Page 11 of 11 1 2 3 4 5 6 7 8 9 10 11 12 13 GINGRAS LAW OFFICE. #106-243 PHOENIX.. AZ 85048 CERTIFICATE OF SERVICE I hereby certify that on June 22. Courthouse. Gingras 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 11 MOTION TO DETERMINE SUFFICIENCY OF SERVICE .ru scaminformer@yandex. PLLC 3941 E. AZ 85003-215 /s/David S. Ltd.ru And a courtesy copy of the foregoing delivered to: HONORABLE FREDERICK J. Suite 526 401 West Washington Street. and for transmittal of a Notice of Electronic Filing to the following: Irakly Brodskih Karsen.