MEMORANDUM OPINION AND ORDER I. INTRODUCTION Defendant Park Avenue Wholesale, Inc. seeks to transfer this trademark infringement case to the United States District Court for the Western District of New York, where Defendant is located. Plaintiff 1724982 Alberta ULC, a Montreal-based company that does not operate in the Southern District of New York, opposes transfer. Because Plaintiff’s choice of forum is entitled to little deference given Plaintiff’s lack of meaningful presence in this District, and the convenience of the parties and witnesses weigh in favor of a transfer to the Western District of New York, Defendant’s motion to transfer is GRANTED. II. BACKGROUND a. Facts1 Plaintiff 1724982 Alberta ULC (“Alberta” or “Plaintiff”) was incorporated in Canada and has its principal place of business in Montreal. Compl. at 4, Dkt. No. 8. Plaintiff, which does business as “Buffalo,” “Buffalo Jeans,” and/or “Buffalo David Bitton,” owns the family of trademarks (the “Buffalo Marks”) that are at issue in this case. Id. at 2. The Buffalo Marks include the “Buffalo” trademark, the “Buffalo David Bitton” trademark, and the buffalo logo design trademark:. Id. at 10. Since 1979, Plaintiff has sold men’s and women’s apparel and accessories bearing the Buffalo Marks. Id at 11. Plaintiff has registered the Buffalo Marks with the U.S. Patent and Trademark Office (“PTO”) and acquired U.S. Trademark Registration Nos. 1,185,897; 2,155,119; 3,561,672; and 1,319,493. Id. at 13. Plaintiff is the exclusive owner of the trademarks. Id. In broad strokes, the trademarks cover the use of the Buffalo Marks on various items of men’s and women’s apparel and accessories. Id. Plaintiff has invested substantially in marketing and promoting its brand using the Buffalo Marks. Id. at 16. The Buffalo Marks are managed by brand manager Iconix Brand Group, Inc. (“Iconix”), which performs brand licensing, brand management, and marketing functions in New York City. Pl.’s Opp’n to Def.’s Mot. to Transfer (“Opp’n”) at 1, Dkt. No. 20. Iconix has a controlling ownership interest in Plaintiff through its wholly owned subsidiary Iconix CA Holdings, LLC (“ICA Holdings”). Id. at 2. The principal third-party licensee of the Buffalo Marks, Centric Brands (“Centric”), is also headquartered in New York City. Id. at 4. Neither Iconix nor Centric are parties to this suit. Defendant Park Avenue Wholesale, Inc. (“Park Avenue” or “Defendant”) is a New York corporation with its principal place of business in Lackawanna, New York. Compl. at 5. In this suit, Plaintiff alleges that Defendant is infringing its trademarks by selling men’s apparel using identical or confusingly similar imitations of the Buffalo Marks (the “Infringing Marks”). Id. at 19. Defendant is currently the owner of U.S. Trademark Registration No. 5,399,112 for the “BUFFALO OUTDOORS” mark for use in connection with various items of men’s apparel. Id. at 35. Defendant has also filed a trademark application to register BUFFALO OUTDOORS for use in connection with other products. Id. at 37. Plaintiff alleges that these trademarks fully incorporate the Buffalo Marks and has initiated proceedings before the PTO’s Trademark Trial and Appeal Board (“TTAB”). Id. at
39-40. Plaintiff stated that it would move to suspend the TTAB proceedings simultaneously with the filing of this case. Id. b. Procedural History Plaintiff initiated this action on May 13, 2021. Dkt. No. 1. Plaintiff filed the operative complaint on May 14, 2021, asserting claims under the Lanham Act, 15 U.S.C. §1114(1)(a), and claims of trademark infringement, unfair competition, dilution, injury to business reputation and deceptive trade practices under New York law. On June 8, 2021, Defendant moved to transfer this case to the United States District Court for the Western District of New York pursuant to 28 U.S.C. §1404(a). Dkt. No. 13. Plaintiff filed its opposition on June 22, 2021, Dkt. No. 20, and Defendant filed its reply on June 29, 2021, Dkt. No. 23. III. LEGAL STANDARD Section 1404(a) allows a district court to transfer a case for the convenience of parties and witnesses to “any other district or division where it might have been brought” if doing so is “in the interest of justice.” 28 U.S.C. §1404(a). The Court evaluates a potential transfer in two steps. “The initial inquiry is whether the case could have been brought in the proposed transferee district….” Herbert Ltd. P’ship v. Elec. Arts Inc., 325 F. Supp. 2d 282, 285 (S.D.N.Y. 2004). “An action might have been brought in the forum to which the movant seeks to transfer it if subject matter jurisdiction, personal jurisdiction, and venue would have been proper in the transferee court at the time of filing.” City of Pontiac Gen. Employees Ret. Sys. v. Dell Inc., No. 14-cv-3644 (VSB), 2015 WL 12659925, at *2 (S.D.N.Y. Apr. 30, 2015) (internal quotation marks omitted). If that threshold inquiry is satisfied, the Court proceeds to the second step. See id. at *3. At step two, the Court considers the following factors to determine whether to grant the requested transfer: (1) the convenience of the witnesses; (2) the convenience of the parties; (3) the location of relevant documents and the relative ease of access to sources of proof; (4) the locus of operative facts; (5) the availability of process to compel the attendance of unwilling witnesses; (6) the relative means of the parties; (7) the forum’s familiarity with the governing law; (8) the weight accorded the plaintiff’s choice of forum; and (9) trial efficiency and the interests of justice. Multiwave Sensor Inc. v. Sunsight Instruments, LLC, No. 1:16-cv-1361-GHW, 2017 WL 1498058, at *6 (S.D.N.Y. Apr. 26, 2017). “These factors are not an exhaustive list and instead ‘serve as guideposts to the Court’s informed exercise of discretion.’” Pausch Med. GmbH v. Pausch LLC, No. 14-cv-1945 PAC, 2015 WL 783365, at *1 (S.D.N.Y. Feb. 24, 2015) (quoting Albert Fadem Trust v. Duke Energy Corp., 214 F. Supp. 2d 341, 343 (S.D.N.Y. 2002)). “There is no rigid formula for balancing these factors and no single one of them is determinative.” Citigroup Inc. v. City Holding Co., 97 F. Supp. 2d 549, 561 (S.D.N.Y. 2000). “District courts have broad discretion in making determinations of convenience under Section 1404(a) and notions of convenience and fairness are considered on a case-by-case basis.” D.H. Blair & Co., Inc. v. Gottdiener, 462 F.3d 95, 106 (2d Cir. 2006). Put differently, “weighing the balance is essentially an equitable task left to the Court’s discretion.” Citigroup Inc., 97 F. Supp. 2d at 561 (internal citation and quotation marks omitted). The movant bears the burden of establishing that transfer is warranted by clear and convincing evidence. See New York Marine & Gen. Ins. Co. v. Lafarge N. Am., Inc., 599 F.3d 102, 114 (2d Cir. 2010) (“It is…appropriate that the district courts in our Circuit have consistently applied the clear and convincing evidence standard in determining whether to exercise discretion to grant a transfer motion.”). Plaintiff has alleged violations of the Lanham Act. The Lanham Act “impose[s] liability for unpermitted ‘use in commerce’ of another’s mark which is ‘likely to cause confusion, or to cause mistake, or to deceive’ ‘as to the affiliation…or as to the origin, sponsorship or approval of his or her goods or services…by another person.’” Rescuecom Corp. v. Google, Inc., 562 F.3d 123, 128 (2d Cir. 2009) (quoting 15 U.S.C. §1114; id.; §1125(a)(1)(A) (brackets omitted)). “The Lanham Act was intended to make ‘actionable the deceptive and misleading use of marks,’ and ‘to protect persons engaged in…commerce against unfair competition.’” Dastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23, 28 (2003) (citing 15 U.S.C. §1127) (omission in original). The Lanham Act’s trademark infringement provision creates a cause of action against: [a]ny person who…use[s] in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered mark in connection with the sale, offering for sale, distribution, or advertising of any goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive. 15 U.S.C. §1114(1)(a). To prevail on a trademark infringement claim under the Lanham Act, “a plaintiff must show (1) that it has a valid mark that is entitled to protection under the Act, and (2) that use of the defendant’s mark infringes, or is likely to infringe, the mark of the plaintiff,” meaning that use of the mark “creates a likelihood of confusion.” Estee Lauder Inc. v. The Gap, Inc., 108 F.3d 1503, 1508-09 (2d Cir. 1997). “In order to be confused, a consumer need not believe that the owner of the mark actually produced the item and placed it on the market. The public’s belief that the mark’s owner sponsored or otherwise approved the use of the trademark satisfies the confusion requirement.” Star Indus., Inc. v. Bacardi & Co., 412 F.3d 373, 383 (2d Cir. 2005) (internal quotation marks omitted). To determine likelihood of confusion, courts in this Circuit consider the factors established in Polaroid Corp. v. Polarad Elec. Corp., 287 F.2d 492 (2d Cir. 1961): (1) strength of the trademark; (2) similarity of the marks; (3) proximity of the products and their competitiveness with one another; (4) evidence that the senior user may “bridge the gap” by developing a product for sale in the market of the alleged infringer’s product; (5) evidence of actual consumer confusion; (6) evidence that the imitative mark was adopted in bad faith; (7) respective quality of the products; and (8) sophistication of consumers in the relevant market. See Starbucks Corp. v. Wolfe’s Borough Coffee, Inc., 588 F.3d 97, 115 (2d Cir. 2009). “The application of the Polaroid test is not mechanical, but rather, focuses on the ultimate question of whether, looking at the products in their totality, consumers are likely to be confused.” Id. (internal quotation marks omitted). IV. DISCUSSION The parties do not dispute the fact that this action might have been brought in the Western District. See Opp’n at 7. The Court therefore turns to the second step of the transfer inquiry. A. The Convenience of the Witnesses Favors Transfer “Courts typically regard the convenience of witnesses as the most important factor in considering a §1404(a) motion to transfer.” Sentegra, LLC v. ASUS Computer Int’l, No. 1:15-CV-3768-GHW, 2016 WL 3093988, at *2 (S.D.N.Y. June 1, 2016). In conducting this analysis, the Court “weighs more heavily the convenience of non-party witnesses than party witnesses.” McGraw-Hill Companies Inc. v. Jones, No. 12-cv-7085 (AJN), 2014 WL 988607, at *7 (S.D.N.Y. Mar. 12, 2014). The party requesting transfer “must provide the Court with a detailed list of probable witnesses who will be inconvenienced if required to testify in the current forum.” Kiss My Face Corp. v. Bunting, No. 02-CIV-2645, 2003 WL 22244587, at *2 (S.D.N.Y. Sept. 30, 2003). The Court “does not merely tally the number of witnesses who reside in the current forum in comparison to the number located in the proposed transferee forum,” but rather “must qualitatively evaluate the materiality of the testimony that the witnesses may provide.” Herbert, 325 F. Supp. 2d at 286. “In a trademark infringement action, the most critical witnesses may be those officers and employees who were involved in…[the] sale of the [allegedly] infringing products.” Everlast World’s Boxing Headquarters Corp. v. Ringside, Inc., 928 F. Supp. 2d 735, 743 (S.D.N.Y. 2013) (quotation omitted) Defendant has identified eleven key witnesses that it may call in this case, six of whom are party witnesses and five of whom are non-party witnesses. Decl. of Todd Andolino (“Andolino Decl.”) 6, Dkt. No. 15. The six party witnesses include Defendant’s President and CEO, Vice President, e-commerce manager, supervisor, marketing supervisor, and a senior salesperson. Id. The five non-party witnesses are two former managers, an e-commerce retailer and customer, and two local customers. Id. All of those witnesses reside in the Western District of New York except for the senior salesperson, Jack Titus, who resides in the Northern District of New York, close to the Western District. Opp’n at 3; Andolino Decl.
