NOT FOR PUBLICATION

UNITED STATES COURT OF APPEALS

FOR THE NINTH CIRCUIT

DEL MONTE INTERNATIONAL GMBH, 

Plaintiff-Appellant,

 v.

DEL MONTE FOODS, INC., 

Defendant-Appellee.

No. 14-55908

D.C. No.

2:13-cv-05912-RSWL-MAN

MEMORANDUM*

Appeal from the United States District Court

for the Central District of California

Ronald S.W. Lew, District Judge, Presiding

Argued and Submitted July 8, 2016

Pasadena, California

Before: CLIFTON, and FRIEDLAND, Circuit Judges, and CHEN,** District 

Judge.

Plaintiff-Appellant Del Monte International (“DMI”) appeals the district 

court’s dismissal pursuant to Federal Rule of Civil Procedure 12(b)(6) for failure to 

state a claim of DMI’s lawsuit against Del Monte Foods (“Del Monte”). We hold 

 

* This disposition is not appropriate for publication and is not precedent 

except as provided by Ninth Circuit Rule 36-3.

** The Honorable Edward M. Chen, United States District Judge for the 

Northern District of California, sitting by designation.

FILED

AUG 1 2016

MOLLY C. DWYER, CLERK

U.S. COURT OF APPEALS
 2 

that the case is moot, and we therefore vacate the district court’s decision and 

remand with instructions to dismiss the complaint without prejudice. 

This lawsuit arose following a dispute between DMI and Del Monte over 

DMI’s application for the Top Level Domain name (“TLD”) <.delmonte>. As 

alleged in the Complaint, after DMI filed its application for the TLD with the 

Internet Corporation for Assigned Names and Numbers (“ICANN”), Del Monte 

filed a Legal Rights Objection (“LRO”) asserting that the applied-for TLD would 

impinge upon its trademark rights. A panel from the World Intellectual Property 

Organization (“WIPO”) held that Del Monte’s objection should be sustained. 

ICANN, the entity responsible for administering the TLD program, accepted 

WIPO’s determination and denied DMI the TLD <.delmonte>. DMI then filed 

suit in district court against Del Monte requesting injunctive relief in the form of 

an order compelling Del Monte to withdraw its LRO, and declaratory relief in the 

form of a declaration that DMI has bona fide rights in the DEL MONTE 

trademark, that it is not in violation of the Anti-cybersquatting Consumer 

Protection Act (“ACPA”), and that registration of <.delmonte> will not create an 

impermissible likelihood of confusion.

This case is moot—and was moot at the time it was before the district 
 3 

court—because ICANN had already made a final determination in the action and 

denied DMI the TLD <.delmonte>. See Seven Words LLC v. Network Sols., 260 

F.3d 1089, 1095 (9th Cir. 2001) (“‘Where the activities sought to be enjoined have 

already occurred, and the appellate courts cannot undo what has already been done, 

the action is moot,’ and it must be dismissed.” (quoting Friends of the Earth, Inc. 

v. Bergland, 576 F.2d 1377, 1379 (9th Cir. 1978)). There does not appear to be 

any mechanism for reopening a final ICANN decision.

1

Nor does this case fall into the “established exception to mootness for 

disputes capable of repetition, yet evading review.” Fed. Election Comm’n v. Wis.

Right To Life, Inc., 551 U.S. 449, 462 (2007). That exception applies when, “(1) 

the challenged action is in its duration too short to be fully litigated prior to 

cessation or expiration, and (2) there is a reasonable expectation that the same 

 

1

ICANN allows for an appeal of its decisions, but such a request for 

reconsideration must be filed within fifteen days. Bylaws for Internet Corporation 

for Assigned Names and Numbers, ICANN, Art. IV, Sec. 2 ¶ 5 (amended February 

11, 2016), https://www.icann.org/resources/pages/bylaws-2012-02-25-en#IV. 

There is no indication that this requirement was any different at the time ICANN 

denied DMI the TLD. The obvious implication of this requirement is that if no 

request for reconsideration is filed within fifteen days, the ICANN decision

becomes final. DMI did not file such a request. DMI asserts that there is “no bar 

to ICANN reconsidering and/or reversing its ‘acceptance’ of the WIPO panel’s 

finding,” but DMI provides no supporting citation, and we have found no support 

for this proposition. 
 4 

complaining party will be subject to the same action again.” Id. (quoting Spencer 

v. Kemna, 523 U.S. 1, 17 (1998)). The second requirement is not met in this case. 

Although ICANN has stated an intention to open a second TLD application 

process, ICANN, gTLD Applicant Guidebook at 1-20 (2012), and DMI has stated 

its intention to reapply for the TLD <.delmonte> if ICANN does so, these 

expectations, even if they come to fruition, do not mean that DMI will again be 

subject to a WIPO proceeding in the same posture as it was in the proceeding 

disputed here. For instance, if Del Monte applies for the TLD <.delmonte>, as 

appears somewhat likely given its investment in fighting DMI’s application, this 

would change the posture of the proceeding considerably. There is therefore no

“reasonable expectation that the same complaining party will be subject to the 

same action again.” Wis. Right To Life, Inc., 551 U.S. at 462 (quoting Spencer, 

523 U.S. at 17).

2

Because the case is moot, the federal courts lack Article III jurisdiction to 

 

2 For similar reasons, to the extent that the relief DMI seeks concerns a future 

event, this case is not ripe for adjudication. See Name.Space, Inc. v. Internet 

Corp. for Assigned Names & Numbers, 795 F.3d 1124, 1133 (9th Cir. 2015)

(explaining that a claim is ripe and fit for decision “when it can be decided without 

considering contingent future events that may or may not occur as anticipated, or 

indeed may not occur at all.” (quoting Addington v. U.S. Airline Pilots Ass’n, 606 

F.3d 1174, 1179 (9th Cir. 2010)).
 5 

hear the case. See Chafin v. Chafin, 133 S. Ct. 1017, 1023 (2013) (holding that 

when a case becomes moot, there is no case or controversy remaining, and thus no 

Article III jurisdiction). However, we may exercise appellate jurisdiction “for the 

purpose of correcting the error of the lower court in entertaining the suit” despite a 

lack of jurisdiction. In re Di Giorgio, 134 F.3d 971, 974 (9th Cir. 1998) (quoting 

United States v. Corrick, 298 U.S. 435, 440 (1936)). We do so by vacating the 

judgment below and remanding with instructions to dismiss the action. See In re 

Di Giorgio, 134 F.3d at 975 (vacating the district court’s judgment and remanding 

with instructions to dismiss after holding that the case was moot before the district 

court). Such dismissal is without prejudice to refiling. See Segal v. Am. Tel. & 

Tel. Co., 606 F.2d 842, 844 (9th Cir. 1979) (per curiam) (“Although a judgment of 

dismissal for lack of jurisdiction is valid and final, the judgment does not bar 

another action by the plaintiff on the same claim.”).

3

For the foregoing reasons we VACATE and REMAND with instructions to 

dismiss the complaint without prejudice. 

 

3 Because we remand with instructions to dismiss the complaint without prejudice, 

we need not consider DMI’s argument that the district court erred by denying it 

leave to amend.