When a cybersquatter hides behind a privacy service, lives overseas, or simply cannot be found, the Anticybersquatting Consumer Protection Act (ACPA) lets a trademark owner sue the domain name itself. Under 15 U.S.C. § 1125(d)(2), an in rem action may be filed in the judicial district where the domain name registrar, registry, or other domain name authority is located, but only if the mark owner cannot obtain personal jurisdiction over the registrant or cannot find the registrant through the statute’s notice procedure. The trade-off is that the only available remedies are forfeiture, cancellation, or transfer of the domain name.
What In Rem Jurisdiction Means for a Domain Name
Most lawsuits are brought in personam, meaning against a person or company that the court has power over. An in rem action is brought against property, and the court’s power comes from the property’s location. When Congress enacted the ACPA in 1999, it recognized that many cybersquatters are anonymous or located outside the United States, where U.S. courts cannot reach them. The in rem provision solves that problem by treating the domain name as property located in a specific judicial district.
Under § 1125(d)(2)(C), a domain name is deemed to have its situs in the judicial district where the registrar, registry, or other domain name authority that registered or assigned it is located, or where documents sufficient to establish control and authority over the domain name are deposited with the court.
When You Can File an In Rem ACPA Action
A mark owner may file an in rem civil action against a domain name under § 1125(d)(2)(A) when two conditions are met.
First, the domain name must violate a right of the owner of a mark registered with the U.S. Patent and Trademark Office, or a mark protected under § 1125(a) (unregistered marks) or § 1125(c) (dilution of famous marks).
Second, the court must find that the mark owner either:
- Cannot obtain personal jurisdiction over the person who would have been a defendant in an ordinary ACPA lawsuit, or
- Cannot find that person through due diligence, after sending notice of the alleged violation and the intent to proceed in rem to the registrant’s postal and email addresses on file with the registrar, and publishing notice of the action as the court directs promptly after filing
Under § 1125(d)(2)(B), those notice steps constitute service of process.
Courts take the prerequisites seriously. In Lucent Technologies, Inc. v. Lucentsucks.com, 95 F. Supp. 2d 528 (E.D. Va. 2000), the court dismissed an in rem complaint after the plaintiff waited only eight days after sending notice before filing. It found that was not a reasonable amount of time, and it described the in rem provision as a last resort for cases where personal jurisdiction is impossible. Because in rem jurisdiction depends on personal jurisdiction being unavailable, a registrant who can be sued in personam in a U.S. court may be able to defeat an in rem filing.
Where to File: The Registrar’s or Registry’s District
Venue is not flexible. In Mattel, Inc. v. Barbie-Club.com, 310 F.3d 293 (2d Cir. 2002), the Second Circuit held that in rem jurisdiction exists only in the judicial district where the registrar, registry, or other domain name authority that registered or assigned the disputed domain name is located. The court also held that the “documents deposited with the court” language in § 1125(d)(2)(C) does not create a separate basis for filing somewhere else.
In practice, that means a mark owner has two main options:
- The registrar’s district. File where the company through which the domain name was registered is located.
- The registry’s district. File where the registry operator for the top-level domain is located. Verisign, which operates the .com registry, is headquartered in Reston, Virginia, within the Eastern District of Virginia.
That is why the Eastern District of Virginia is a frequent forum for in rem domain name cases. In Cable News Network L.P. v. CNNews.com, 162 F. Supp. 2d 484 (E.D. Va. 2001), the court exercised in rem jurisdiction over a .com domain name registered by a Chinese company with no U.S. contacts because the registry was located in the district. More recently, Prudential’s action over PRU.COM was filed in the Eastern District of Virginia, and the Fourth Circuit affirmed the order transferring the domain name in Prudential Insurance Co. of America v. Shenzhen Stone Network Information Ltd., 58 F.4th 785 (4th Cir. 2023). For domain names in other extensions, confirm where the relevant registry operator and registrar are located before filing. We discuss this strategy further in our article on cybersquatting enforcement through in rem proceedings.
What Claims Can Be Brought In Rem?
The text of § 1125(d)(2)(A) refers to a domain name that violates “any right” of the owner of a registered mark or a mark protected under § 1125(a) or (c). In Harrods Ltd. v. Sixty Internet Domain Names, 302 F.3d 214 (4th Cir. 2002), the Fourth Circuit held that the in rem provision is not limited to bad faith cyberpiracy claims. It reversed the dismissal of Harrods’ in rem trademark infringement and dilution claims.
Even so, evidence of bad faith often drives the outcome, particularly when the registrant appears and contests the case. The same cybersquatting bad faith factors that apply in an ordinary ACPA lawsuit are frequently central in in rem litigation.
Remedies Are Limited to the Domain Name
An in rem action is powerful but narrow. Under § 1125(d)(2)(D):
- Relief is limited to a court order for forfeiture or cancellation of the domain name, or its transfer to the mark owner. There are no money damages against the absent registrant.
- The domain name is frozen. After receiving written notice of the filing, the registrar or registry must promptly deposit documents with the court sufficient to establish the court’s control and authority over the domain name. It may not transfer, suspend, or otherwise modify the domain name while the action is pending, except by court order.
- Registrars have limited exposure. A registrar, registry, or other domain name authority is not liable for injunctive or monetary relief in an in rem action except in the case of bad faith or reckless disregard, including a willful failure to comply with the court’s order.
Under § 1125(d)(3) and (d)(4), in rem actions are in addition to any other civil action, remedy, or jurisdiction that otherwise exists. If you later identify a reachable defendant, other claims may remain available.
In Rem ACPA Action vs. UDRP Complaint
For many brand owners, the first alternative to consider is a complaint under ICANN’s Uniform Domain-Name Dispute-Resolution Policy (UDRP). WIPO reports that a UDRP case without procedural issues should normally be completed within about two months, and a UDRP filing does not require locating the registrant or establishing jurisdiction. But the UDRP has its own limits. The complainant must prove the domain name was both registered and used in bad faith, the only remedies are transfer or cancellation, and a losing registrant can block implementation by filing a court challenge within ten business days.
An in rem ACPA action produces a federal court order directed at the domain name. It can also be the right tool when a UDRP complaint has failed or is likely to be challenged. For a side-by-side comparison, see the Anticybersquatting Consumer Protection Act vs. the UDRP. In rem actions are also an important option when a valuable domain name has been stolen and moved to an unknown holder, one of several legal options for recovering a stolen domain.
Practical Checklist Before Filing
- Identify the current registrar and the registry operator for the domain name’s extension.
- Document every attempt to identify and locate the registrant, including requests to any privacy or proxy service.
- Send notice of the alleged violation and your intent to proceed in rem to the postal and email addresses the registrant provided to the registrar.
- Allow a reasonable period for a response, and be prepared to publish notice as the court directs.
- Evaluate whether personal jurisdiction over the registrant exists anywhere in the United States.
- Assemble evidence of your trademark rights and of how the domain name violates them.
Getting Your Domain Name Back
The ACPA’s in rem provision gives trademark owners a way to recover infringing domain names even when the person behind them is anonymous or overseas. Success depends on careful attention to due diligence, notice, and venue, and on realistic expectations about the remedies.
If a cybersquatter you cannot identify is holding a domain name that uses your brand, the domain dispute attorneys at Revision Legal can evaluate whether an in rem action, a UDRP complaint, or another strategy is the best way to recover it. Contact us through the form on this page or call (855) 473-8474.
[Picture credit to Tim Evanson, shared under a Creative Commons license.]
