Intellectual Property Law

In Rem Jurisdiction in Anticybersquatting Cases: Good Solution against Foreign Cybersquatters

By IBLS Editor

A recent decision by the United States District Court for the District of Virginia held it had 'In Rem Jurisdiction' over domain name registrants that were located in a foreign country and had been accused of Cyber squatting in Virginia.  Even though this was not a contested case and the plaintiff was granted summary judgment, this decision is a great precedent on the interpretation of the US Anti-cybersquatting Act and US Courts" jurisdiction on foreign cybersquatters.  This article briefs the case of Atlas Copco  v. AtlasCopcoiran.com, et all. 

The US AntiCybersquatting Consumer Protection Act ("ACPA") if found in 15 U.S.C.S. §1125 at seq.  Under 15 U.S.C.S. § 1125(d)(2)(A), the owner of a mark can file an In Rem Civil action against a domain name registrant 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:

1. The domain name violates the rights of a mark registered in the US Patent and Trademark Office; and
2. The court cannot assert in personam jurisdiction over the defendant or registrant of the domain name that is violating the rights of the mark owner.   15 U.S.C.S. § 1125(d)(2)(A).

In the Atlas Copco  case, the plaintiff (Atlas Copco AB and Atlas Copco North America LLC) was the owner of a US registered trademark.  Atlas Copco filed a lawsuit under the US Anticybersquatting Consumer Protection Act ("ACPA") against defendants domain names: Atlascopcoiran.com, Atlascaspian.com, Atlascaspian.net, Atlascaspian.org, Atlascaspian.biz, Atlascapianir.com,  Atlascaspianiran.com, Atlascap1an.us, Atlascapian.cc, Atlascaspian.tv, and Atlas-caspian.com.

The registrants of these domain names appeared to be located in Iran, Afghanistan, or India.  Yet, the registries of the domain names were located in Virginia and were under this Court's jurisdiction.  The registrants did not have enough contacts with the state to trigger long-arm jurisdiction.  Thus, the Court reasoned, it had In Rem jurisdiction over the defendants, and cited Continental Airlines Inc. v. ContinentalAirlines.com, 390 F. Supp2d, 507 (E.D. Va. 2005). 

The complaint was properly notified to the defendant according to the information found in ?WHOIS' service (which turned out to have some untrue information). Defendant did not reply to the complaint.  Then, Plaintiff filed a request for summary judgment and it was granted after the court found that each of the elements required for summary judgment under ACPA were proved.

Under ACPA, a person may be liable to the owner of mark if, ?without regard to the goods or services of the parties, that person-- (i) has a bad faith intent to profit from that mark...; and (ii) registers, traffics in, or uses a domain name that-- (I) in the case of a mark that is distinctive at the time of registration of the domain name, is identical or confusingly similar to that mark...." 15 U.S.C. § 1125(d)(1)(A). 

The court found that the use of plaintiff's trademark in defendant's phishing scams proved defendant's bad faith and intention to profit from plaintiff's trademark.  It was proven that plaintiff's trademark had a long history and use in the US and around the world.  Additionally, the court found, defendant used its domain names to purposefully deceive Internet users that were looking for Atlas Copco brand.  Adding the word ?Iran" and ?Caspian' to the main word ?Atlas' could be interpreted by users as a simple addition of the geographical location of Atlas brand, the Court added.  The court further said: "the fact that the Defendant Domain Names consisting of terms "Atlas" or "Atlas Copco" and "Caspian" or "Iran", as discussed in greater detail by Plaintiffs in the Verified Complaint, display (or displayed) a copy-cat website containing an infringing "Atlas Caspian" logo confusingly similar to the ATLAS COPCO trademark and linking to a "phishing site" containing the actual ATLAS COPCO trademark."

Although this not a complex or sophisticated case in terms of its facts and legal analysis, it is definitely an interesting case to show that the Antycybersquatting Act does have tentacles to catch cyber squatters that seek heaven in foreign jurisdictions.  In Rem jurisdiction over these criminals is an excellent legal tool to bring justice to mark owners. Does the international community join this tendency?  Better yet.        

Full post as published by IBLS Internet Law Blog on March 25, 2008 (boomark / email).