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    Highlights of the ICANNWatch Archive
    (June 1999 - March 2001)

    Lawsuits and Judicial Decisions The Reach of ACPA
    posted by DavidP on Monday November 11 2002, @08:19AM

    The 2d Circuit Court of Appeals has narrowed the jurisdictional provisions of the Anti-Cybersqatting Protection Act, holding that Mattel, Inc. can only sue for cancellation of domain names that use the term "Barbie" where the registrar or registry of those domains are located. [See a story about the case here , and the full opinion can be found at the Second Cirtuit website (search for case 01-7680).

    When Congress passed ACPA several years ago, it included a somewhat unusual provision allowing courts to exercise ?in rem? jurisdiction over cyber-squatting claims. Instead of requiring (as in the ordinary case) that courts hearing ACPA claims establish personal jurisdiction over the defendant owner of the challenged name, the statute allows the court to proceed "in rem," i.e. against the "thing" itself -- against the domain name without regard to the location of, or even the identity of, the domain name registrant. The statute reads:

    "The owner of a [trademark] may file an in rem civil action against a domain name in the judicial district in which the domain name registrar, domain name registry, or other domain name authority that registered or assigned the domain name is located," provided that the court finds that the plaintiff trademark owner is unable to obtain personal jurisdiction over the owner of the domain name.

    Mattel, Inc., which is nothing if not highly protective of its "Barbie" trademark, filed suit under ACPA in New York federal court against several dozen allegedly infringing domains: barbie-club.com, barbie21.com, barbieborza.com, barbiedoll-a.com, barbiegallery.com, etc. One of the defendants -- the Australian owner of the captainbarbie.com domain -- challenged the court's authority to hear the case. Captainbarbie.com, which is, apparently, registered with BulkRegistrar.com, located in Maryland, argued that the suit had to be dismissed because New York was not the "judicial district in which the domain name registrar, domain name registry, or other domain name authority that registered or assigned the domain name is located."

    Mattel, though, pointed to different language in the statute which states that "in an in rem action under this paragraph, a domain name shall be deemed to have its situs in the judicial district in which

    (i) the domain name registrar, registry, or other domain name authority that registered or assigned the domain name is located; or

    (ii) documents sufficient to establish control and authority regarding the disposition of the registration and use of the domain name are deposited with the court.?

    In Mattel's eyes, the italicized language expands the court's jurisdiction and permits an ACPA suit to be brought in any court in which documents evidencing the disputed domain name are deposited.

    The Second Circuit, however, rejected Mattel?s reading. The "plain language" of the statute, the court held, shows that ACPA suits cannot be brought in any court other than the one in which the registrar or registry is located. The "situs" provisions to which Mattel pointed do not expand this jurisdictional reach; they only provide for the court to take "possession" of the disputed property -- the challenged domain name -- once an ACPA suit was properly filed in the proper district.

    It's a small point, perhaps. But not an insignificant one for the Mattels of the world. If Mattel had been successful here, it could thereafter simply file a single ACPA suit, consolidating lots of claims against different domains, each of which may have been registered with different registrars, as long as it deposited documents from the relevant registrars with the court. It would have amounted to the creation of a kind of class-action in rem action -- allowing the court to proceed against domain names registered anywhere in the country (or, for that matter, anywhere in the world). But unless Congress changes the language of the statute, Mattel is going to have to plod along from court to court, registrar by registrar, if it wants to purge these domains from the DNS -- a far less attractive proposition (from its point of view).

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    The Reach of ACPA | Log in/Create an Account | Top | 11 comments | Search Discussion
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    Re: The Reach of ACPA
    by Grumpy on Tuesday November 12 2002, @02:57AM (#10117)
    User #2759 Info
    > I'm confused - Why doesn't Matel simply re-file in
    > Virginia where the Mother of all Registries
    > (Verisign) is located?

    They probably will... but that means getting local counsel (i.e. lawyers in licensed in Virginia and familiar with the rocket docket E.D. Va.) to join in the festivities. Corporations do like to conserve money now and then.

    Mattel could also re-file in each jurisdiction where a registrar is located... but the registry angle means Mattel can pursue hundreds of domain names at once, regardless of where the registrars are located.

    > (By-the-way, Verisign is a California corporation,
    > so why do people keep referring to "the registry"
    > as being in Virginia?)

    Corporations can have multiple homes - their state of incorporation and their principal place of business.

    Network Solutions, Inc. is a Delaware corporation with its primary place of business in Virginia.

    Verisign, Inc., a Delaware corporation with its primary place of business in California, owns all of NSI's stock.

    Even if the NSI legal entity is not responsible for the registry function, it (along with its corporate parent, Verisign) has publicly acknowledged that its registry functions are performed in Virginia. So, until Verisign relocates registry services, in rem actions against com/net domain names will always be proper in Virginia.

    - Grumpy
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