In Rem Jurisdiction for Domain Names under the ACPA

By Eric Misterovich

Eastern District of VAWhen domain name owners are faced with litigating against an unknown cybersquatting defendant, the chances of recovery can seem low. However, due to the in rem provisions of the Anti-Cybersquatting Consumer Protection Act (ACPA), domain name owners have a powerful tool to protect their investments.

In 1999, Congress passed the ACPA that established in rem jurisdiction for domain names under the federal trademark statute, The Lanham Act. In rem jurisdiction allows a court to gain jurisdiction over “a thing,” as opposed to a person, which allows the court to enforce a valid judgment without personal jurisdiction. As the Internet grew, and domain name registrars grew in number, it became apparent that in rem jurisdiction was required in order to protect trademark owners from cyber squatters spread across the globe where U.S. courts would not have personal jurisdiction.[1]

Two elements are required in pleading in rem jurisdiction. The pleader must show (1) a substantive case and (2) a lack of personal jurisdiction. Substantive actions under the Lanham Act include infringement, dilution, or cyberpiracy of a registered or unregistered trademark.[2] Lack of personal jurisdiction can be established in one of two ways: (1) by showing the mark owner was not able to obtain personal jurisdiction over a proper defendant or (2) by showing the mark owner through due diligence was not able to find the person identified in part one by (a) sending a notice to the registrant of the domain name at the postal and e-mail address listed with the registrar and (b) publishing notice of the lawsuit as ordered by the court. While there is no time limit a plaintiff must wait under part two, to comport with constitutional due process, the plaintiff must wait a “reasonable time.”[3]

There are limitations to the in rem jurisdiction option, however. For instance, the provision has been interpreted by courts to be a “last resort” for cases in which personal jurisdiction would be impossible due to unknown defendants and/or defendants located outside of the U.S.[4] Also, a timely answer to an in rem filing by the named owner of the accused infringing mark can establish personal jurisdiction, thereby eliminating in rem jurisdiction.[5] Finally, the remedy for in rem cases is limited to a court order for the forfeiture or cancellation of the domain name or a transfer of the name back to the owner of the trademark.[6]

In a groundbreaking decision, the Eastern District Court of Virginia essentially gave itself the authority to hear almost every in rem case.[7] The court held that because the .com top-level domain name registry Verisign was located in the court’s jurisdiction, and because all .com domain names “reside” at Verisign—no matter where the domain name registrar is located—the court had in rem jurisdiction over those “things” in its jurisdiction. Therefore, any infringement claim involving a .com domain name can be filed in the Eastern District of Virginia as an in rem case, if personal jurisdiction cannot be established elsewhere.

Litigating domain-related issues, including instances of domain theft, requires a comprehensive understanding of the Lanham Act and its jurisdictional provisions.

[Picture credit to Tim Evanson shared under a creative commons license.]

[1] Also, even if the cyber squatters were located in the U.S., requiring personal jurisdiction would force the plaintiff-trademark owner to file lawsuits all over the country.

[2] See Lanham Act § 32(1) codified as 15 U.S.C. § 1114(1); § 1125(a)-(d).

[3] In Lucent Technologies, Inc. v. Lucentsucks.com, 95 F. Supp. 2d 528, 534 (E.D. Va. 2000) the court held that eight days was not enough time to qualify as reasonable.

[4] See Lucent Technologies, Inc. v. Lucentsucks.com, 95 F. Supp. 2d 528, 534 (E.D. Va. 2000) (“The legislative history clearly shows that Congress enacted the provision to provide a last resort where in personam jurisdiction is impossible, because the domain name registrant is foreign or anonymous. Congress did not intend to provide an easy way for trademark owners to proceed in rem after jumping through a few pro forma hoops.”).

[5] The in rem complaint must be served via a known address for the domain name holder and posted notice as required by the court. Courts are split on whether or not posting is required in all cases, or just when the court explicitly requires it.

[6] Attorney fees and courts costs may also be recovered.

[7] See Cable News Network L.P., L.L.L.P. v. CNNews.com, 162 F. Supp. 2d 484, 288 (E.D. Va. 2001).

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