Cybersquatting Enforcement and In Rem Proceedings

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).

The ACPA’s In Rem Provision: How It Works

The ACPA’s in rem jurisdiction provision, codified at 15 U.S.C. § 1125(d)(2), was specifically designed to address the jurisdictional gap that arises when a cybersquatter is located overseas or cannot be identified. The statute provides that a mark owner may file an in rem civil action against a domain name in the judicial district in which the domain name registrar, registry, or other domain name authority that registered or assigned the domain name is located, if the owner cannot obtain in personam jurisdiction over the registrant through good faith efforts.

Because VeriSign—the registry for .com and .net domain names—maintains its principal offices in the Eastern District of Virginia, that court has become the de facto venue of choice for in rem ACPA actions against .com and .net domain names worldwide. The Public Interest Registry, which manages .org domains, was also historically located in Virginia, reinforcing the Eastern District’s role as the center of gravity for domain name enforcement litigation in the United States.

In an in rem proceeding, the plaintiff need not serve the registrant personally—service may be accomplished by sending notice to the registrant at the postal and email addresses provided to the registrar, and by publication. The court’s jurisdiction runs against the domain name itself, and a successful judgment results in an order directing the registry to transfer the domain name to the plaintiff. This mechanism is particularly powerful against anonymous cybersquatters who use privacy protection services to conceal their identities—even if the registrant cannot be found, the domain name can be recovered.

In Personam vs. In Rem: Choosing the Right Strategy

Trademark owners confronting a cybersquatting problem must choose between in personam and in rem actions—or both. In personam jurisdiction requires the plaintiff to establish that the defendant has sufficient minimum contacts with the forum state under the due process standards of International Shoe Co. v. Washington, 326 U.S. 310 (1945). When the cybersquatter is a domestic actor who can be identified and served, in personam litigation is typically preferred because it allows the plaintiff to seek monetary damages—up to $100,000 per domain name under the ACPA—in addition to transfer or cancellation of the offending domain.

In rem proceedings, by contrast, are limited in their remedies to transfer or forfeiture of the domain name. No money damages are available in a pure in rem action. However, in rem proceedings are available in a broader range of circumstances: the plaintiff does not need to establish personal jurisdiction over the registrant. This makes in rem the preferred vehicle when the cybersquatter is overseas, anonymous, or otherwise beyond the reach of personal jurisdiction. For trademark owners whose primary goal is simply to recover their domain name rather than to obtain compensation, in rem proceedings provide an efficient path to that outcome.

Practical Guidance for U.S. Trademark Owners

The Eastern District of Virginia’s in rem jurisdiction over major gTLD registries gives U.S. trademark owners a practical enforcement mechanism that most foreign infringers do not anticipate when they register infringing domain names. The message of cases like America Online, Inc. v. Aol.Org and Globalsantafe Corp. v. Globalsantafe.Com is clear: registering an infringing domain name overseas does not place the registrant beyond the reach of U.S. trademark law.

For trademark owners dealing with cybersquatting, the UDRP offers a faster and less expensive administrative remedy for straightforward cases. The ACPA—whether in personam or in rem—provides a federal court remedy with broader relief options, including damages, for cases requiring more robust enforcement. Experienced internet law counsel can evaluate which vehicle is most appropriate for the specific facts and help the trademark owner pursue the most efficient path to recovery.

Revision Legal handles ACPA litigation, UDRP proceedings, and domain name dispute resolution for trademark owners. If someone has registered a domain name that incorporates your trademark, contact us at 855-473-8474 or through the contact form on this page.