Use of Privacy Service Leads to In Rem Jurisdiction in Anticyberquatting Consumer Protection Act Case
On August 7, 2014, the U.S. District Court for the Eastern District of Virginia held that a cybersquatting complainant established that it could not obtain personal jurisdiction over a typosquatting registrant by showing that the true registrant was unknown due to the use of a privacy service, the U.S. District Court for August 7 (Central Source LLC v. Annualcreditreport.com, 2014 BL 222443, E.D. Va., No. 1:14-cv-00302-AJT-JFA, 8/7/14).
The Anticybersquatting Consumer Protection Act, 15 U.S.C. § 1125(d), permits trademark owners to assert in rem jurisdiction over infringing domain names, provided that the owner cannot obtain personal jurisdiction over, or through due diligence cannot find, the would-be defendant registrant. In rem jurisdiction refers to a lawsuit or other legal action directed toward property, rather than toward a particular person.
In Central Source, the plaintiff owns a federally registered trademark for AnnualCreditReport.com and has registered over 250 similar domain names to avoid typosquatting on very similar names. Plaintiff initiated the action against three such names that it did not register — annualcreditredport.com, annualcrfeditreport.com and annuaqlcreditreport.com. Each site displays third-party click-through advertising and does not reflect the true identity of the registrant.
Plaintiff sent a cease and desist letter, attaching a copy of the proposed complaint, to the e-mail and postal addresses listed in the WHOIS database. Privacy Protection responded that it would provide the true registrant with the correspondence but refused to reveal the identity or contact information of the true registrant.
Plaintiff also requested from the court and was granted permission to serve the complaint by newspaper publication. However, plaintiff received no further response to its correspondence or the newspaper publication.
Plaintiff moved for default judgment under the ACPA against the defendant domain names. No claimant responded or appeared at the hearing on plaintiff’s motion.
The court found that Central Source had established in rem jurisdiction over the defendant domain names. The first prerequisite for in rem jurisdiction is that the domain name violate the rights of a registered trademark owner, and plaintiff showed that AnnualCreditReport.com is a federally registered mark.
The court also found that plaintiff had shown an inability to establish personal jurisdiction over the domain name registrant. The only publicly available contact information for the defendant domain names was Privacy Protection’s contact information. Plaintiff contacted Privacy Protection but received no reply, and Privacy Protection would not reveal the true registrant’s identity. Thus, the court found this was sufficient to establish an inability to obtain personal jurisdiction.
Venue in the Eastern District of Virginia was also appropriate because it is the home judicial district of .com registry VeriSign, Inc.
The court also found that Central Source had established the necessary elements to make out an ACPA claim. The registered mark is famous, the defendant domain names are confusingly similar to its mark and the domain names were registered with bad faith intent to profit from them.
Therefore, the court granted plaintiff’s default judgment motion and ordered VeriSign to transfer the defendant domain names to Central Source’s GoDaddy registrar account and to take any necessary steps to list plaintiff as the registrant for the defendant domain names.
The proposed findings of fact and recommendation adopted by the court can be found here.
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