IP Law Daily, TRADEMARK—W.D. Okla.: An internet company was subject to specific personal jurisdiction in a state where it had sent marketing emails, (Mar 25, 2026)

By Kevin M. Finson, J.D.

The sending of emails to potential clients knowing the clients were located in Oklahoma was sufficient to show purposeful availment in the specific personal jurisdiction analysis.

A payroll company brought claims for trademark infringement against a company using similar or identical marks. The U.S. District Court in Oklahoma City found that specific personal jurisdiction was appropriate because the competitor had directed emails to specific customers in the forum state (Paycom Payroll LLC v. Pay.Com US Inc., No. 5:23-cv-00735-G (W.D. Okla. Mar. 24, 2026)).

Paycom Payroll, LLC (Paycom) was an Oklahoma company in the business of payroll and human capital management solutions using the PAYCOM family of trademarks and website “paycom.com.” Pay.com U.S., Inc. and Paycomcy Limited (collectively, Pay.com) were related entities that sold marketing and sales services through the website “pay.com.” Paycom brought suit against Pay.com for trademark infringement, false designation of origin, trademark dilution, cybersquatting under the Digital Millenium Copyright Act (DMCA), and Oklahoma common law and statutory claims. Pay.com moved to dismiss for lack of personal jurisdiction and failure to state a claim as to the DMCA claim.

Personal jurisdiction. Noting that Oklahoma’s long-arm statute extended to the full reach allowed by the Constitution, the court found that Pay.com had sent marketing emails directly to Oklahoma residents after they had inquired about Pay.com’s service. This counted as directing activities to the forum state. The alleged harm arose from the use of identical or confusing marks to those owned by Paycom in those marketing emails, so specific personal jurisdiction was appropriate.

DMCA. Pay.com argued that it was improper for the court to consider the “.com” portion of the mark, but only the name portion. The court found that while it was generally true that a top level domain such as “.com” would not be relevant to the cybersquatting analysis, this was not a hard rule. Where, as here, the “.com” made up a portion of the mark in question, Paycom could properly rely on it. Pay.com’s arguments about the relative timing of its registration of its website and Paycom’s trademark registrations were not resolvable on a motion to dismiss because they involved matters outside the pleadings.

The court denied the motion to dismiss.

The Case is No. 5:23-cv-00735-G.

Judge: Goodwin, C.

Attorneys: Jason P. Bloom (Haynes and Boone, LLP) for Paycom Payroll LLC. Joshua Wolkoff (Baker & McKenzie LLP) for Pay.com US Inc. d/b/a Pay.com.

Companies: Paycom Payroll LLC; Pay.com US Inc. d/b/a Pay.com

Cases: Trademark OklahomaNews