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Designer Skin LLC v. S & L Vitamins, Inc., et al.
Unauthorized internet reseller of plaintiff’s products is not guilty of trademark infringement, and does not cause actionable initial interest confusion, by using plaintiff’s trademarks in meta tags of website at which plaintiff’s and its competitors’ products are sold, and in...

Anticybersquatting Consumer Protection Act - In Rem - Internet Library of Law and Court Decisions - Updated February 23, 2008

112 F. Supp. 2d 502, Civil Action No.99-550-A (E.D.Va., March 3, 2000)

The court holds that the provisions of the Anticybersquatting Consumer Protection Act that permit a trademark holder to proceed with an in rem action against a domain name do not violate the Due Process clause of the United States Constitution.

250 F.Supp.2d 610 (E.D. Va., Feb. 5, 2003)

In this in rem action commenced under the Anticybersquatting Consumer Protection Act, the Court holds that it can direct a top level domain registry – here Verisign – located in Virginia to cancel the domain registration of a domain found to be registered in violation of the ACPA.  In this case, the Court directed that such cancellation be effected unilaterally by the domain registry, which was directed to place the domain name on ‘hold’ status, thereby rendering it inactive, until such time as it is transferred to the trademark holder.

The Court holds that such relief is appropriate here, given the fact that the Korean domain name registrar with whom the domain name at issue was registered refused to transfer the domain as directed in a prior judgment issued by the Court.  After the Court issued this order, the domain registrant obtained an injunction from a Korean court, enjoining the registrar from transferring the domain.  The Korean registrar, in the face of this subsequent order, refused to comply with the US Court’s direction to transfer the domain to plaintiff.

The Court, on default, found that the domain registrant had violated the ACPA by registering the domain name at issue – globalsantafe.com – one day after Global Marine and SantaFe announced their agreement to merge into an entity to be called GlobalSantaFe.

378 F. Supp.2d 715 (E.D. Va., July 14, 2005)

Court denies motion to dismiss made by foreign domain name registrant, and allows trademark owner to proceed with in rem action, seeking relief under both the Anticybersquatting Consumer Protection Act, and the Lanham Act for trademark infringement.  The ACPA gives a trademark holder the right to proceed in rem to have a domain name transferred to it, or its registration cancelled, and allows a United States court to exercise jurisdiction over a res – the domain name – where the registry or registrar for such domain name is located in the United States.  This is true notwithstanding the fact that the United States court lacks personal jurisdiction over the domain name registrant.

Quick Hits

America Online Inc. v. AOL.org
259 F.Supp.2d 449 (E.D. Va., April 23, 2003)

In this in rem action commenced under the Anticybersquatting Consumer Protection Act (“ACPA”), the Court modifies its previously issued judgment, and directs a Virginia based domain registry – Public Interest Registry – to unilaterally cancel the registration of the domain name AOL.org and transfer it to plaintiff America Online.  The Court had previously found that this domain had been registered in violation of the ACPA, and had issued a judgment directing it domain registrar to transfer it to America Online.  The domain registrar, a Chinese entity, refused to comply, instead permitting the domain registrant to transfer the domain to another domain registrar, this time located in Korea.  This registrar too refused to transfer the domain to America Online.  Accordingly, the Court held that under the ACPA it was empowered to unilaterally direct a domain registry to cancel a domain, and transfer it to the trademark holder.

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Hartog & Co., AS v. Swix.com and Swix.net
2001 U.S. Dist Lexis 3568, Civ Act. No. 99-1788-A (E.D. Va., March 16, 2001)

In this in rem action brought under the Anticybersquatting Consumer Protection Act (“ACPA”), court holds that registrant of the domain names at issue did not register or use them with a bad faith intent to profit therefrom, and that plaintiff trademark holder is therefore not entitled to relief under the ACPA. Plaintiff holds a United States trademark registration in the mark “Swix” which it has used since 1949 to market ski waxes, in the United States and abroad. Pedram Burgin (“Burgin”) provides Internet services to the public as a sole proprietorship under the name “Swix Internet Dienste” and holds a Swiss trademark in the mark “Swix” for use in connection with that business. Burgin’s clientele is located in Switzerland – he neither does business in the United States, nor does he sell ski wax or any related products. Under these circumstances, the Court held that Burgin’s registration and use of the domains swix.com and swix.net in connection with his Internet business was not undertaken in bad faith. Among other things, Burgin has intellectual property rights in the Swix mark by virtue of his Swiss registration, the domain is part of the name by which he does business, he has made a bona fide use of the mark in the sale of internet related services, he had no intent to divert plaintiff’s customers, as his business is wholly unrelated to plaintiff’s sale of ski wax, he never offered to sell the domains at issue to plaintiffs, and he was unaware of plaintiff’s mark at the time he commenced his use. As a finding of bad faith is a prerequisite to in rem relief under the ACPA, the Court determined that plaintiff’s claim failed.  

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