United States District Court, W.D. Washington, Seattle
ULYSSES GMBH & CO. KG, a German limited partnership, Plaintiff,
ULYSSESWINDOWS.COM, an unknown entity, SUNISOFT, an unknown entity, SHEN MIN, an individual, CATALINA DEL CASTILLO, an individual aka “Catalina DC, ” MERA INC., an unknown entity, and DOES 1-5 Defendants.
ORDER DENYING PLAINTIFF'S MOTION FOR FOREIGN
SERVICE OF PROCESS UNDER FRCP(F)(2)(C)(II) AND
Honorable Richard A. Jones United States District Judge.
matter comes before the Court on Plaintiff's Motion for
an Order Directing Foreign Service of Process under Rule
4(f)(2)(C)(ii) and Rule 4(f)(3) of the Federal Rules of Civil
Procedure (Dkt. # 12). For the reasons discussed below, this
motion is DENIED without prejudice.
February 8, 2018, Plaintiff, Ulysses GMBH & CO. KG
(“Ulysses” or “Plaintiff”) brought
this action against Defendants, ULYSSESWINDOWS.COM, an
unknown entity, and DOES 1-5, asserting trademark
infringement, cybersquatting, and false advertising claims.
Dkt. #1. Plaintiff alleges that Defendants sold and marketed
a software application “Ulysses for Windows”
using the domain name “UlyssesWindows.com” and
falsely represented that the app was the “genuine
Ulysses App.” Dkt. #1 ¶ 18-31. Early discovery
served upon Domain Protection Services, the privacy
registration service used to register the allegedly
infringing domain, revealed that the domain was registered by
the account “sunisoft.” Dkt. #12.
According to records obtained by Plaintiff, the
“sunisoft” account was used by two individuals,
Defendant Shen Min (“Defendant Min”) and
Defendant Catalina Del Castillo (“Defendant Del
Castillo”) to register and renew the allegedly
infringing domain. Id. Plaintiff also obtained
contact information for each defendant, including postal
addresses for Defendant Min in China and Defendant Del
Castillo in Brazil, and e-mail addresses for both Defendants.
Id. Plaintiff now seeks leave to serve Defendant Del
Castillo by e-mail and private courier and Defendant Min by
Rule of Civil Procedure 4(h)(2) allows service of process
upon a foreign corporation to be effected “in any
manner prescribed for individuals by subdivision (f)
except personal delivery.” Rule 4(f) authorizes several
methods for service of process including, an
“internationally agreed means of service, ” or,
if there is no “internationally agreed means, ” a
method that is reasonably calculated to give notice.
Service by private courier is prohibited by international
Rule 4(f)(2)(C)(ii) a foreign defendant may be served
“by a method that is reasonably calculated to give
notice[, ] unless prohibited by the foreign country's
law, by … using any form of mail that the clerk
addresses and sends to the individual and that requires a
signed receipt.” Plaintiff asks the Court for leave to
serve Defendant Del Castillo by private courier in Brazil at
the address associated with the “sunisoft”
account used to register the allegedly infringing domain.
Dkt. #12 at 7.
noted by Plaintiff, Brazil and the United States are both
signatories to the Inter-American Convention on Letters
Rogatory and Additional Protocol (“Inter-American
Convention”), which provides a mechanism for service of
documents by a foreign central authority. Id.
Plaintiff argues that service by private courier to Defendant
Del Castillo's address in Brazil does not conflict with
the Inter-American Convention. Id. Effective June 1,
2019, however, Brazil is also a signatory to the Hague
Convention on the Service Abroad of Judicial and
Extrajudicial Documents (“Hague Convention”).
See Hague Convention, Nov. 15, 1965, 20 U.S.T. 361,
T.I.A.S. No. 6638; Hague Conference on Private International
Law, Status Table, available at:
(last visited Jul. 15, 2019). China and the United States are
also signatories. See Melnichuk v. Fine Hau Indus.
Co., 2019 WL 2515181, at *1 (W.D. Wash. June 18, 2019)
(internal citation omitted). As a result, the Court must
consider whether Plaintiff's proposed method of service
violates the Hague Convention.
Hague Convention requires signatory countries to establish a
Central Authority to receive requests for service of
documents from other countries and to serve those documents
by methods compatible with the internal laws of the receiving
state. See Volkswagenwerk Aktiengesellschaft v.
Schlunk, 486 U.S. 694, 698-99 (1988). Service through a
country's Central Authority is the principal means of
service under the Hague Convention. Id. Article X of
the Convention preserves the ability of parties to effect
service through means other than a recipient-nation's
Central Authority as long as the recipient-nation has not
objected to the specific alternative means of service used.
See Hague Convention, art. 10, Feb. 10, 1969, 20
U.S.T. 361, T.I.A.S. No. 6638. In signing the Convention,
however, Brazil expressly rejected service through means
enumerated in Article X, including service through postal
channels and through its judicial officers. See
Declaration of Brazil in Connection with the Convention,
Hague Convention, Nov. 15, 1965, 20 U.S.T. 361, T.I.A.S. No.
6638, available at: https://www.hcch.net/en/
(last visited Jul. 15, 2019). Accordingly, Plaintiff's
proposed method of serving Defendant Del Castillo by private
courier under Fed.R.Civ.P. 4(f)(2)(C)(ii) is prohibited by
Plaintiff has not shown sufficient cause to merit
Fed.R.Civ.P. 4(f)(3), courts have discretion to allow service
by alternative means provided the court's method of
service comports with constitutional notions of due process
and is not prohibited by international agreement. Rio
Properties, Inc. v. Rio Int'l Interlink, 284 F.3d
1007, 1016 (9th Cir. 2002). A method of service comports with
due process if it is “reasonably calculated, under all
the circumstances, to apprise interested parties of the
pendency of the action and afford them an opportunity to
present their objections.” Rio Properties,
Inc., 284 F.3d at 1016, 1017 (quoting Mullane v.
Cent. Hanover Bank & Trust, 339 U.S. 306, 314
(1950)). Courts have authorized numerous methods of
alternative service under Rule 4(f)(3), including service by
publication, mail, and e-mail. Id. at 1016
(citations omitted). Parties are not required to attempt
service by other methods before petitioning the court for
alternative service of process, instead it is within the
discretion of the district court to determine “when the
particularities and necessities of a given case require
alternate service of process under rule 4(f)(3).”
Id. at 1016.
have considered a variety of factors when evaluating whether
to grant relief under Rule 4(f)(3) including whether the
plaintiff identified a physical address for the defendant,
whether the defendant was evading service of process, and
whether the plaintiff had previously been in contact with the
defendant. See e.g. Rio Properties, Inc. v. Rio Int'l
Interlink, 284 F.3d 1007 (9th Cir. 2002) (authorizing
alternative service where the plaintiff made multiple good
faith yet unsuccessful attempts to serve the defendant and
the defendant was “striving to evade service of
process”); Liberty Media Holdings, LLC v.
Vinigay.com, 2011 WL 810250 (D. Ariz. Mar. 3, 2011)
(allowing alternative service by e-mail where the plaintiff
was unable to identify a physical address for the defendant
and the plaintiff had previously communicated with the
defendant by ...