Cybersquatting Enforcement and in Rem Proceedings

By Eric Misterovich

In rem jurisdiction is the concept that a court can gain jurisdiction over a claim involving a piece of property within its jurisdiction even if the owner of the property is not domiciled in the court’s personal jurisdiction area. This idea is particularly relevant in the online space, as domain names are technically “physically” registered somewhere, but accessed from everywhere.

Domain names are leased, not owned, from a registrar located in some physical location. That registrar can transfer the domain name to another registrar, including one outside of the United States. This presents a problem: if a domain name (the property at issue) is housed outside the U.S. and is violating U.S. law—like the ACPA—how can a U.S. court have jurisdiction over it and subsequently enforce its judgment?

The answer can be found in a 2003 Virginia case,[1] where America Online sued an infringer using aol.org as a domain name housed in China. However, the .com[2] and .org[3] gTLDs (generic top level domains) were both located in Renton, Virginia. The Eastern District of Virginia claimed in rem jurisdiction over the domain names in question because their gTLDs were located in Virginia. The court found that the .org located in China infringed on AOL’s trademark (see this post discussing domain name theft and trademarked domain names). To enforce the judgment on the foreign-based infringer, the court ordered the foreign registrar to transfer the aol.org domain name back to American Online. When the foreign registrar refused, the court ordered the gTLD registry in Renton to transfer the name back to American Online itself. The court wrote:

By choosing to register a domain name in the popular “.org” top-level domain, these foreign registrants deliberately chose to use a top-level domain controlled by a United States registry. They chose, in effect, to play Internet ball in American cyberspace. Had they wished to avoid an American ACPA suit and transfer order and American jurisdiction altogether, they might have chosen to register the infringing domain name in top-level domains with solely foreign registries and registrars, such as “.kr” . . . concerns of international comity do not counsel against issuing an order directing [the gTLD registry in Renton] to transfer the aol.org domain name to plaintiff as a remedy for the infringement of plaintiff’s registered trademarks. To conclude otherwise would render the Lanham Act[4] ineffective in an important commercial context, a result at odds with the Act’s terms and purpose.[5]

What this means is that the Eastern District of Virginia is in the interesting position of controlling many domain disputes because it can claim jurisdiction over the gTLD registry of.com and .org domain names (VeriSign) and it can order that registry to transfer domain names pursuant to its judgments. The Eastern District has even defied a foreign court that ruled a domain name registered in its jurisdiction did not have to transfer the name back to a U.S. plaintiff when the name violated U.S. law.[6] The court enforced its ruling that the foreign-based name violated U.S. law by ordering the gTLD registry to shut down the foreign-based, infringing domain name.

This is all to say that while it would seemingly be easy to infringe on a trademarked domain name by registering it overseas, the U.S. legal system has created a way to enforce violations of its laws. Potential cyber-squatters should be wary, and domain name owners in the U.S. should be aware of this powerful remedy.

[1] See America Online, Inc. v. Aol.Org, 259 F. Supp. 2d 449 (E.D. Va. 2003).

[2] Verisign manages all .com top level domains.

[3] The Public Interest Registry, created by the Internet Society, manages all .org top level domains.

[4] The Lanham Act is the United States statutory law that governs trademarks, and includes the ACPA.

[5] America Online, Inc., 259 F. Supp. 2d at 457.

[6] See e.g., Globalsantafe Corp. v. Globalsantafe.Com, 250 F. Supp. 2d 610 (E.D. Va. 2003).

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