In the

United States Court of Appeals

For the Seventh Circuit

No. 09-2658

MOBILE ANESTHESIOLOGISTS CHICAGO, LLC,

an Illinois limited liability company,

Plaintiff-Appellant,

v.

ANESTHESIA ASSOCIATES OF HOUSTON METROPLEX, P.A.,

a Texas professional association,

Defendant-Appellee.

Appeal from the United States District Court 

for the Northern District of Illinois, Eastern Division.

No. 1:09-cv-00941—Charles R. Norgle, Sr., Judge.

ARGUED APRIL 2, 2010—DECIDED OCTOBER 1, 2010

Before FLAUM, WOOD, and HAMILTON, Circuit Judges.

HAMILTON, Circuit Judge. Plaintiff Mobile Anesthesiologists Chicago is a company based in Chicago that contracts with medical offices to provide on-site anesthesia

services. Defendant Anesthesia Associates of Houston

Metroplex is a much smaller operation consisting of one

doctor providing similar services in Houston, Texas. We
2 No. 09-2658

refer to the parties as Mobile/Chicago and Mobile/Houston.

Mobile/Chicago brought suit against Mobile/Houston

in federal court in Illinois claiming that Mobile/Houston violated the federal anti-cybersquatting statute

by registering a domain name confusingly similar to

Mobile/Chicago’s registered trademark. The district

court dismissed the suit for lack of personal jurisdiction.

We affirm. First, we conclude that Mobile/Houston

did not waive its personal jurisdiction defense by asking

to delay a preliminary injunction hearing or by asking

for expedited discovery to prepare for that hearing.

Second, we agree with the district court that Mobile/

Houston lacked the required “minimum contacts” with

Illinois to support personal jurisdiction there. Mobile/

Chicago relies principally on the inference that Mobile/

Houston expressly aimed its conduct in Texas at

harming Mobile/Chicago in Illinois. That inference is

based on two inadequate connections between Mobile/Houston and Illinois: (1) Mobile/Houston’s creation

of a website accessible in Illinois but aimed only at the

Houston market, combined with Mobile/Houston’s constructive notice of Mobile/Chicago’s trademark via federal registration of that mark; and (2) Mobile/Houston’s

receipt of Mobile/Chicago’s cease-and-desist letter. These

contacts are not sufficient to establish that Mobile/Houston’s activities in Texas were calculated to cause

harm in Illinois.

I. Factual and Procedural Background

Mobile/Chicago has been operating in the Chicago area

since 1996. The company has affiliated offices in other
No. 09-2658 3

cities, including Houston. The record does not reveal

exactly when Mobile/Chicago’s Houston affiliate began

operations, but Mobile/Chicago alleges that it advertised

its services in Houston in 2008.

In 2003, Mobile/Chicago registered the website

<www.mobileanesthesiologists.com>, which it continues

to operate today. Mobile/Chicago also owns a federally

registered trademark in the words MOBILE ANESTHESIOLOGISTS. It obtained the trademark registration in 2005.

Mobile/Houston was established by Dr. Eric Chan, its

sole member, in 2007. On August 22, 2008, Dr. Chan

registered the website <www.mobileanesthesia.com>.

Working under Mobile/Houston’s name, Dr. Chan operates as an independent contractor providing anesthesia

services for patients in clinics and medical offices throughout the Houston area.

Dr. Chan’s professional activities are limited entirely

to the state of Texas. He is licensed as an anesthesiologist

by the State of Texas but has not been licensed in any

other state. He has never advertised his services other

than on his website (which offers anesthesia services

“in the greater Houston area” and provides a Houstonarea phone number) and in a printed advertisement

published in Texas.

Dr. Chan has visited Illinois just once, on vacation in

2003. He has never visited Illinois for business, has

never conducted business in Illinois, and has no agent

or offices in Illinois. He has never attended events or

performed duties in Illinois for any of the professional

associations to which he belongs. And although he

surely knew there were anesthesiologists in Illinois too,
4 No. 09-2658

Dr. Chan was unaware that Mobile/Chicago, its trademark, or its website existed until he received a cease-anddesist letter from its lawyer in December 2008. There is

no evidence that anyone else associated with Mobile/

Houston has any relevant contacts with Illinois.

The district court dismissed Mobile/Chicago’s suit for

lack of personal jurisdiction. The court pointed out that

Mobile/Houston lacks any meaningful contacts with

Illinois and that its website, though bearing a name

similar to Mobile/Chicago’s, is not directed at Illinois in

any way. The assertion that Dr. Chan, sitting in Houston,

knew about Mobile/Chicago and intended to do it harm

in Illinois, was “entirely unsupported” and an “empty

conclusion.”

II. Waiver

Mobile/Chicago begins with the bold argument that

Mobile/Houston waived its right to argue lack of personal jurisdiction when it asked for a continuance of the

preliminary injunction hearing and an expedited discovery schedule. We disagree.

Mobile/Chicago filed its lawsuit in the Northern

District of Illinois on February 13, 2009 and requested a

preliminary injunction to stop Mobile/Houston’s use of

its domain name. The court scheduled a hearing for

March 6, 2009. On March 3rd, Mobile/Houston’s counsel

filed a motion to continue the preliminary injunction

hearing, which Dr. Chan could not attend because he

was scheduled to see patients in Texas that day. The

motion also requested expedited discovery to prepare
No. 09-2658 5

for the hearing. Thirteen days later, on March 16, 2009,

Mobile/Houston filed its Rule 12(b)(2) motion to

dismiss for lack of personal jurisdiction.

These preliminary actions do not come close to what

is required for waiver or forfeiture. To waive or forfeit a

personal jurisdiction defense, a defendant must give a

plaintiff a reasonable expectation that it will defend the

suit on the merits or must cause the court to go to some

effort that would be wasted if personal jurisdiction is

later found lacking. See, e.g., American Patriot Ins. Agency,

Inc. v. Mutual Risk Management, Ltd., 364 F.3d 884, 887-88

(7th Cir. 2004) (Rule 12(b)(3) defense of improper venue

was not waived or forfeited when defendant engaged

in preliminary pretrial litigation activity; plaintiff

should have anticipated defendant’s objection, and defendant was not “testing the wind” or causing “wasted

motion by the court”). Faced with an impending preliminary injunction hearing and unable to produce its key

witness, Mobile/Houston had the right to ask for more

time to learn who was suing it and why without losing

its right to object to personal jurisdiction. The district

court did not err in proceeding to the substance of the

personal jurisdiction defense.

III. Specific Jurisdiction

In a federal question case such as this one, a federal court

has personal jurisdiction over the defendant if either

federal law or the law of the state in which the court sits

authorizes service of process to that defendant. Omni

Capital International, Ltd. v. Rudolf Wolff & Co., Ltd., 484 U.S.
6 No. 09-2658

97, 104-05 (1987) (federal court should look to a federal

statute or to the state long-arm statute to determine defendant’s amenability to service, which is “a prerequisite

to its exercise of personal jurisdiction”). The federal

statutes on which Mobile/Chicago is suing do not authorize nationwide service. Mobile/Houston is amenable

to service (and hence subject to personal jurisdiction)

only if it could be served in Illinois under Illinois law.

Illinois’s long-arm statute permits the exercise of

personal jurisdiction if it would be allowed under either

the Illinois Constitution or the United States Constitution. See 735 Ill. Comp. Stat. 5/2-209(c). We have held

that there is no operative difference between these two

constitutional limits. See Tamburo v. Dworkin, 601 F.3d

693, 700 (7th Cir. 2010); Hyatt International Corp. v. Coco,

302 F.3d 707, 715 (7th Cir. 2002). We proceed to the question whether the exercise of personal jurisdiction would

violate federal due process.

Under the Supreme Court’s well-established interpretation of the Fourteenth Amendment’s due process

clause, a defendant is subject to personal jurisdiction in

a particular state only if the defendant had “certain

minimum contacts with it such that the maintenance of

the suit does not offend ‘traditional notions of fair play

and substantial justice.’ ” International Shoe Co. v. Washington, 326 U.S. 310, 316 (1945), quoting Milliken v. Meyer,

311 U.S. 457, 463 (1940). It is unconstitutional to force

a defendant to appear in a distant court unless it has

done something that should make it “reasonably anticipate being haled into court there.” Burger King Corp. v.

Rudzewicz, 471 U.S. 462, 474 (1985), quoting WorldWide Volkswagen Corp. v. Woodson, 444 U.S. 286, 295 (1980).
No. 09-2658 7

The Court has also framed the constitutional inquiry

in terms of whether the defendant “purposefully avails

itself” of the benefits and protections of conducting

activities in the forum state. See Hanson v. Denckla, 357

U.S. 235, 253 (1958).

Personal jurisdiction can be general or specific, depending on the extent of the defendant’s contacts. See

Tamburo, 601 F.3d at 701. Mobile/Chicago does not

assert, and the evidence does not support, a claim of

general jurisdiction over Mobile/Houston in Illinois, so

Mobile/Chicago must show that Illinois can exercise

specific jurisdiction over Mobile/Houston for this particular claim. Specific personal jurisdiction is appropriate when the defendant purposefully directs its activities at the forum state and the alleged injury arises out

of those activities. See, e.g., Burger King, 471 U.S. at 472.

Mobile/Houston did not purposefully direct its

activities at Illinois. It has formed no contracts in Illinois

and has had no physical presence there. Mobile/Chicago points to the fact that Dr. Chan is a member of

two professional associations headquartered in Illinois,

but those are the kinds of fortuitous contacts that the

Supreme Court has repeatedly held do not support personal jurisdiction where the contacts bear no relationship to the lawsuit. See, e.g., Burger King, 471 U.S. at 475;

World-Wide Volkswagen, 444 U.S. at 295. Mobile/Houston

simply has nothing to do with the state where it is being

called to appear in court.

But Mobile/Chicago contends that Mobile/Houston

has done two things in Texas to subject itself to suit

in Illinois. First, Mobile/Houston has maintained a
8 No. 09-2658

In the past, the reasoning in Calder has been called the “effects 1

test.” We believe the phrase “express aiming test”—adopted

(continued...)

website with a name similar to Mobile/Chicago’s trademark, with constructive notice of that trademark thanks

to Mobile/Chicago’s federal registration. Second, after

receiving the cease-and-desist letter, Mobile/Houston

has maintained its website with actual notice of Mobile/

Chicago’s identity, location, and ownership of a similar

mark. From these facts, Mobile/Chicago argues, we

should infer that Mobile/Houston intended to injure

Mobile/Chicago in Illinois, and from that intent we

should find the contacts needed to satisfy due process.

This argument is not persuasive.

The Supreme Court has held that constitutionally

sufficient contacts can be imputed to a defendant if

the defendant is accused of committing an intentional

tort by actions that are “expressly aimed” at the forum

state. See Calder v. Jones, 465 U.S. 783, 789-90 (1984). The

outcome in Calder was tied closely to its facts: Florida

citizens who lacked sufficient contacts with California

were nonetheless subject to personal jurisdiction in California because they published an allegedly libelous

story about a California resident where the sources were

all in California and “the brunt of the harm” was suffered by the plaintiff in California. Id. The Supreme

Court emphasized that the defendants’ actions were not

the product of “mere untargeted negligence,” id. at 789,

but rather were “calculated to cause injury to respondent

in California,” id. at 791.1
No. 09-2658 9

(...continued) 1

by this court in Tamburo, 601 F.3d at 697—is more faithful to

Calder. It properly focuses attention on whether the defendant

intentionally aimed its conduct at the forum state, rather than

on the possibly incidental and constitutionally irrelevant

effects of that conduct on the plaintiff.

As we recognized in Tamburo, 601 F.3d at 704, this

court’s application of Calder has not been entirely consistent. In Wallace v. Herron, 778 F.2d 391 (7th Cir. 1985), we

rejected the contention that Calder meant “any plaintiff may hale any defendant into court in the plaintiff’s

home state, where the defendant has no contacts, merely

by asserting that the defendant has committed an intentional tort against the plaintiff.” Id. at 394. Calder’s

“express aiming” requirement, we held, was merely

one means of satisfying the traditional due process standard set out in International Shoe and its familiar

progeny, not an independent path to jurisdiction that

allowed a defendant to avoid “minimum contacts” altogether. Id. at 395; accord, Keeton v. Hustler Magazine, Inc.,

465 U.S. 770, 780-81 (1984) (“The victim of a libel, like

the victim of any other tort, may choose to bring suit

in any forum with which the defendant has certain minimum contacts . . . such that the maintenance of the

suit does not offend traditional notions of fair play and

substantial justice.”) (citation and quotation marks omitted).

Our decision in Indianapolis Colts, Inc. v. Metropolitan

Baltimore Football Club Ltd. P'ship, 34 F.3d 410, 411-12
10 No. 09-2658

(7th Cir. 1994), suggested a somewhat broader test, but

did not actually adopt it. There we suggested that the

state in which the alleged victim of a tort suffers the

injury of that tort may automatically obtain personal

jurisdiction over the defendant. We went on, however,

to hold that we “need not rest on so austere a conception

of the basis of personal jurisdiction.” The defendant—a

Canadian Football League team in Baltimore—had

planned to actually “enter” the forum state of Indiana

via national broadcasts of its games, and the combination of that planned entry and the expected harm in

Indiana was enough to support personal jurisdiction. Id.

at 412.

Janmark, Inc. v. Reidy, 132 F.3d 1200 (7th Cir. 1997),

appeared to extend the reach of Calder even further.

We wrote in Janmark that “there can be no serious doubt

after Calder v. Jones that the state in which the victim of

a tort suffers the injury may entertain a suit against the

accused tortfeasor.” Janmark, 132 F.3d at 1202, citing

Indianapolis Colts, 34 F.3d at 411-12. In Janmark, there

was no “entry,” actual or imputed, into the forum

state. Moreover, we did not discuss whether the defendants in that case had expressly aimed their conduct at

the forum state, or even whether the defendants knew

the plaintiff was located there or had suffered harm there.

We view Wallace as a correct statement of the standard

set down by the Supreme Court. As in Tamburo, we

do not read Indianapolis Colts or Janmark to conflict with

Calder, which made clear that a defendant’s intentional

tort creates the requisite minimum contacts with a state
No. 09-2658 11

only when the defendant expressly aims its actions at

the state with the knowledge that they would cause

harm to the plaintiff there. Tamburo, 601 F.3d at 703.

One can certainly read Indianapolis Colts and Janmark to

arrive at that conclusion by another road, see Tamburo,

601 F.3d at 705-06, but “express aiming” remains the

crucial requirement when a plaintiff seeks to establish

personal jurisdiction under Calder.

Mobile/Chicago’s evidence that Mobile/Houston

took express aim at Illinois is inadequate. Mobile/

Chicago first contends that we should infer express

aiming at Illinois from the fact that Mobile/Houston

operates a website whose domain name is similar to

Mobile/Chicago’s trademark. We disagree. A plaintiff

cannot satisfy the Calder standard simply by showing

that the defendant maintained a website accessible

to residents of the forum state and alleging that the defendant caused harm through that website. See, e.g.,

Panavision International, L.P. v. Toeppen, 141 F.3d 1316,

1322 (9th Cir. 1998) (“We agree that simply registering

someone else’s trademark as a domain name and

posting a web site on the Internet is not sufficient to

subject a party domiciled in one state to jurisdiction in

another.”); Young v. New Haven Advocate, 315 F.3d 256, 264

(4th Cir. 2002) (no express aiming where the defendant

newspapers’ only contacts with the forum state were

through websites aimed at an out-of-state audience).

Still less does Mobile/Houston’s website create constitutionally sufficient contacts with Illinois in the

absence of express aiming. A defendant’s deliberate and
12 No. 09-2658

continuous exploitation of the market in a forum state,

accomplished through its website as well as through

other contacts with the state, can be sufficient to establish specific personal jurisdiction. See, e.g., uBID, Inc. v.

The GoDaddy Group, Inc., No. 09-3927 (7th Cir. Sept. 29,

2010). Mobile/Houston’s relationship with Illinois stands

in stark contrast to such cases. Dr. Chan is not licensed

to practice medicine outside of Texas. His website does

not contain much, but it does contain a Houston-area

phone number, an e-mail address, and an invitation to

doctors in the “greater Houston area” to contract for

his services. If a doctor in Chicago stumbled upon

Dr. Chan’s website and called for an appointment, their

conversation would be very short.

Trying a second path to show “express aiming,” Mobile/

Chicago argues that its federal trademark registration

gave Mobile/Houston “constructive notice” that it was

infringing Mobile/Chicago’s trademark and could be

called to court in Illinois. This argument misunderstands the purpose of federal registration. The federal

trademark statute on which Mobile/Chicago sued does not

authorize nationwide service of process. See, e.g.,

Sunward Electronics, Inc. v. McDonald, 362 F.3d 17, 22 (2d

Cir. 2004). The statute provides that registration serves

as “constructive notice of the registrant’s claim of ownership,” 15 U.S.C. § 1072, but that provision is intended

to protect against users of the registrant’s trademark

who might otherwise raise a defense of innocent misappropriation. See In re International Flavors & Fragrances,

Inc., 183 F.3d 1361, 1367 (Fed. Cir. 1999). It does not
No. 09-2658 13

follow from the constructive notice statute that any

alleged infringer, despite its lack of any other contacts

with the forum state, may henceforth be sued in that

state. In other words, trademark owners cannot create

nationwide service of process by this theory of constructive notice.

Finally, Mobile/Chicago points out that Mobile/Houston

also had actual notice of Mobile/Chicago’s trademark

from the moment it received Mobile/Chicago’s cease-anddesist letter. From that time forward, Mobile/Chicago

argues, Mobile/Houston was intentionally directing its

tortious activities at Illinois in the same way that the

defendants in Calder intentionally directed their tortious

activities at California. This argument finds no support

in the case law. The cases that have found express

aiming have all relied on evidence beyond the plaintiff’s mere residence in the forum state. See, e.g., Calder,

465 U.S. at 789-90 (defendants drew allegedly libelous

story from forum state sources and newspaper had its

largest circulation in the forum state); Tamburo, 601 F.3d

at 697 (defendants listed plaintiff’s forum state address

online and encouraged readers to harass him); Panavision,

141 F.3d at 1319, 1322 (defendant’s intent to harm

plaintiff in forum state could be inferred from his broader

scheme of registering prominent trademarks as domain

names for the purpose of extorting money from the

marks’ owners). Here, by contrast, there is only the ceaseand-desist letter. To find express aiming based solely

on the defendant’s receipt of that letter would make

any defendant accused of an intentional tort subject to

personal jurisdiction in the plaintiff’s home state as soon
14 No. 09-2658

as the defendant learns what that state is. Calder requires

more.

AFFIRMED.

10-1-10