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Anticybersquatting Consumer Protection Act’s In Rem Jurisdiction

An owner of a trademark registered in any jurisdiction or whose unregistered right is recognized under any national law satisfies the threshold requirements for standing in a UDRP proceeding. The UDRP and Rules provide for a simplified procedure for obtaining personal jurisdiction, but whether the registrant/respondent answers the complaint or not the Panel is authorized to determine the rights to the disputed domain name. Because the procedure for obtaining personal jurisdiction in federal court is not simple the Anticybersquatting Consumer Protection Act (ACPA) grants both subject matter jurisdiction where in personam jurisdiction can be obtained as well as in rem jurisdiction where it cannot. 15 U.S.C. §1125(d)(2)(A) provides that “[t]he owner of a mark may file an in rem civil action against a domain name in the judicial district in which the domain name registrar, domain registry, or other domain name authority that registered or assigned the domain name is located.”

Only certain district courts have in rem jurisdiction to enter defaults in an ACPA case, and none other. The plaintiff in Vizer v., 11-00864 (BAH) (N.D. Dist. of Columbia, June 22, 2012) alleged that the court had in rem jurisdiction because ICANN which maintains an office in Washington, D.C. is a “domain name authority.” The court pointed out that the statute qualifies “domain name authority” as an authority “that registered or assigned the [disputed] domain name.” ICANN may be loosely regarded as a domain name authority but it neither registers nor assigns domain names so is not a “domain name authority” as contemplated under the statute.

While the U.S. District Court for the District of Columbia would have subject matter jurisdiction in an ACPA case in which a resident defendant in the judicial district had been properly served it did not have in rem jurisdiction where the registering and assigning authorities were located in another judicial district. Setting aside counsel’s misconstruction of the third basis for in-rem jurisdiction, the Vizer decision deserves a footnote for explaining what is not meant by “domain name authority.” Although plaintiff could easily have obtained jurisdiction at the location of the registry (Virginia for VeriSign) and less easily at the location of the registrar (Australia) it chose not to do so.

The statute does not define “domain name authority.” However, the court drew clues to its meaning in “legislative history, case-law, dictionaries, and other statutory provisions.” It concluded that it refers to “other entities that have some authority over the domain name … that perform the function of the registrar and registry by registering or assigning domain names.” This limitation is confirmed in legislative history. Senator Patrick Leahy, a co-sponsor of the ACPA stated

The terms “domain name registrar, domain name registry, or other domain name authority that registered or assigned the domain name” in Section 3002(a) of the Act, amending 15 U.S.C. 1125(d)(2)(a), is intended to refer only to those entities that actually place the name in a registry, or that operate the registry, and would not extend to other entities, such as the ICANN or any of its constituent units, that have some oversight or contractual relationship with such registrars and registries. Only these entities that actually offer the challenged name, placed it in a registry,or operate the relevant registry are intended to be covered by those terms.

Read in context plaintiff’s argument that the statute should be read more broadly “to cover any entity with some authority” is unpersuasive; in fact, “foreclosed.” While ICANN certainly maintains a relationship with the key actors in the system it is only as part of its coordination of the domain name system.

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