Vizer v. vizernews.com

UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF COLUMBIA
MARIUS VIZER,
Plaintiff,
v. Civil Action No. 11-00864 (BAH)
Judge Beryl A. Howell
VIZERNEWS.COM,
Defendant.
MEMORANDUM OPINION
On May 5, 2011, the plaintiff Marius Vizer brought this in rem action under the Anti-
Cybersquatting Consumer Protection Act, 15 U.S.C. § 1125(d) (“ACPA”), seeking transfer of
the domain name “VIZERNEWS.COM” to the plaintiff. Complaint, ECF No. 1 (“Compl.”), at
1, 5. The website corresponding to VIZERNEWS.COM features the plaintiff’s name and
photograph and is seemingly dedicated to providing news about the plaintiff. See Pl.’s Mot. for
Default J., ECF No. 8 (“Pl.’s Mot.”) at 5-6; Compl. ¶¶ 18, 21. Since the plaintiff allegedly has
not been able to identify the registrant of the domain name, the plaintiff brought this in rem
action in Washington, D.C., believing that jurisdiction is proper because the Internet Corporation
for Assigned Names and Numbers (“ICANN”) maintains an office here. 1 See Pl.’s Mot. at 2-3;
Compl. ¶¶ 4-7. No person claiming an ownership interest in the defendant domain name
appeared. Pending before the Court is the plaintiff’s Motion for Default Judgment against
defendant domain name VIZERNEWS.COM pursuant to Rule 55(b) of the Federal Rules of
1
Plaintiff claims to have “personal jurisdiction” in this matter, but cites the statutory provision, 15 U.S.C. §
1125(d)(2)(A), allowing for in rem jurisdiction. See Pl.’s Mot. at 2. Furthermore, the plaintiff states that this is an
in rem action. See id. at 3. The Court’s analysis thus focuses on whether in rem jurisdiction is satisfied.
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Civil Procedure. See Pl.’s Mot. For the reasons explained below, the Court finds that it lacks in
rem jurisdiction over this matter on the basis of ICANN’s office in this judicial district.
Accordingly, the plaintiff’s motion will be denied and this action will be dismissed.
I. BACKGROUND
A. Statutory Framework
The Anti-Cybersquatting Consumer Protection Act, 15 U.S.C. § 1125(d) (“ACPA”),
signed into law in 1999, prohibits the bad faith registration of trademarks as domain names. See
15 U.S.C. § 1125(d); S. REP. NO. 106-140, at 4 (1999) (describing the purpose of the bill as
“prohibiting the bad-faith and abusive registration of distinctive marks as Internet domain names
with the intent to profit from the goodwill associated with such marks—a practice commonly
referred to as ‘cybersquatting.’”). An example of “cybersquatting” is the registration of a brand
name as a domain name with the intent to sell that domain name to the owner of the mark or the
highest bidder. See S. REP. NO. 106-140, at 5 (1999). The ACPA provides for in rem
jurisdiction, in certain circumstances, to address the problem of cybersquatters registering
domain names with false information, including aliases. See 15 U.S.C. § 1125(d)(2)(A); see also
S. REP. NO. 106-140, at 10 (1999).
Under 15 U.S.C. § 1125(d)(2)(A), if certain conditions are met, 2 “[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 name registry, or other domain name authority that registered or assigned
the domain name is located . . . .” 15 U.S.C. § 1125(d)(2)(A). Thus, ACPA provides for in rem
jurisdiction based on the location of three entities: the “domain name registrar,” “domain name
registry,” or “other domain name authority that registered or assigned the domain name.” A
2
These conditions are outlined infra.
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threshold issue in this case is whether ICANN is one of the three entities which confer in rem
jurisdiction over the defendant domain name under ACPA.
B. The Role of ICANN in the Domain Name System
ICANN is a not-for-profit corporation formed in 1998 and selected by the U.S.
Department of Commerce to administer the internet domain name system, which links user-
friendly names, such as “uscourts.gov,” to unique numeric addresses that identify servers
connected to the internet. 3 See Balsam v. Tucows Inc., 627 F.3d 1158, 1159 (9th Cir. 2010)
(“ICANN is a private, non-profit corporation that administers the registration of internet domain
names.”); see also Domain Name System, National Telecommunications & Information
Administration, U.S. Department of Commerce, http://www.ntia.doc.gov/category/domain-
name-system (last visited June 19, 2012) (describing the domain name system and ICANN).
ICANN administers the domain name system with input from a Governmental Advisory
Committee, in which the U.S. Department of Commerce participates. See ICANN, National
Telecommunications & Information Administration, U.S. Department of Commerce,
http://www.ntia.doc.gov/category/icann (last visited June 19, 2012) (“The Internet Corporation
for Assigned Names and Numbers (ICANN) is the not-for-profit entity responsible for the
technical coordination of the Internet’s domain name system (DNS) . . . [The National
Telecommunications & Information Administration] represents the U.S. government in
ICANN’s Governmental Advisory Committee (GAC), which is structured to provide advice to
the ICANN Board on the public policy aspects of the broad range of issues pending before
ICANN.”); see also What Does ICANN Do?, ICANN,
3
The Court may take judicial notice of a fact, such as the role of ICANN, which is not subject to “reasonable
dispute because it: (1) is generally known within the trial court’s territorial jurisdiction; or (2) can be accurately and
readily determined from sources whose accuracy cannot reasonably be questioned.” FED. R. EVID. 201(b); see also
United States v. Philip Morris USA, Inc., No. 99-2496, 2004 WL 5355971, at *1-2 (D.D.C. Aug. 2, 2004).
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http://www.icann.org/en/about/participate/what (last visited June 19, 2012) (stating that ICANN
plays a “coordination role of the Internet’s naming system . . . .”).
As part of its coordination of the domain name system, ICANN maintains a relationship
with key actors in the system, including registries, which operate top-level domains (“TLDs”)
such as “.com” or “.org” and maintain information on all domain names registered within a
particular top-level domain, and registrars, which make domain names available to customers
and register domain names with a registry. See, e.g., Office Depot, Inc. v. Zuccarini, 596 F.3d
696, 699 (9th Cir. 2010); Dotster, Inc. v. Internet Corp. For Assigned Names and Numbers, 296
F. Supp. 2d 1159, 1160 (C.D. Cal. 2003). The customer and owner of the domain name is the
“registrant.” See Office Depot, Inc., 596 F.3d at 699. ICANN does not deal directly with
registrants but has a contractual relationship with registries and accredits registrars. Dotster, 296
F. Supp. 2d at 1160 (“ICANN accredits companies known as ‘registrars’ that make Internet
domain names available to consumers . . . . Registrars, in turn, accept requests for domain names
from their customers and register those domain names with the appropriate Internet registry.
ICANN also enters into separate Registry Agreements with Internet registries.”); see also What
Does ICANN Do?, ICANN, http://www.icann.org/en/about/participate/what (last visited June 19,
2012) (“ICANN draws up contracts with each registry. It also runs an accreditation system for
registrars.”) (internal citations omitted).
C. Factual and Procedural Background
The plaintiff, who lives in Budapest, Hungary, has been the president of the International
Judo Federation since 2007 and has long been associated with the sport. Compl. ¶¶ 1, 13-14.
The plaintiff’s prominence in the judo community has allegedly led to regular coverage of him in
the press. Id. at ¶ 15. According to the Complaint, the plaintiff “has achieved extensive name
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recognition in the world judo community and built a brand around his name, expertise, and
reputation,” such that the plaintiff’s name qualifies for trademark protection under the Lanham
Act. Id. at ¶ 16.
In August 2007, the domain name VIZERNEWS.COM, which contains the plaintiff’s last
name, was registered without the plaintiff’s consent. Id. ¶ 17. The website corresponding to
VIZERNEWS.COM features the plaintiff’s photograph and name. Id. ¶ 18. Furthermore, given
the use of the word “news” in the defendant domain name, it purports to offer timely information
about “Vizer.” Pl.’s Mot. at 5. 4
The plaintiff has not been able to identify the person or entity responsible for registering
VIZERNEWS.COM. Compl. ¶ 7. The plaintiff claims to have used due diligence to find the
registrant, to no avail. See id. As part of that effort, the plaintiff searched the domain name’s
“WHOIS” record, and found that the domain name is registered to “Luther Blissett,” a “multiple
use name” used to hide a registrant’s identity. Id. ¶ 8; ECF No. 8, Ex. 1 (“WHOIS search results
for: VIZERNEWS.COM”). 5 “WHOIS” is a database consisting of, inter alia, a registrant’s
name and address. See, e.g., CNN L.P. v. CNNews.com, 162 F. Supp. 2d 484, 488 (E.D. Va.
2001), aff’d in part and vacated in part, 56 F. App’x 599 (4th Cir. 2003). The registrant also
employed a “privacy service” used to hide a registrant’s contact information. Compl. ¶ 9.
4
The plaintiff urges the Court that “[t]he content of the website is no defense” and “[a]nalysis of the content of the
[website] hosted at VIZERNEWS.COM is not necessary. . . .” Pl.’s Mot. at 5. Presumably, this argument is
asserted to avoid application of the statutory exclusions, including the exclusion for “[a]ll forms of news reporting
and news commentary.” 15 U.S.C. § 1125 (c)(3)(B). The Court need not reach this issue since this case is resolved
on other grounds.
5
The plaintiff submitted “WHOIS” search results from the website “who.godaddy.com,” which is an example of an
accredited registrar. See ECF No. 8, Ex. 1. According to that website, “WHOIS database is a searchable list of
every single domain currently registered in the world . . . . The Internet Corporation of Assigned Names and
Numbers (ICANN) requires accredited registrars . . . to publish the registrant’s contact information, domain
creation and expiration dates and other information in the WHOIS listing as soon as a domain is registered.” See
http://who.godaddy.com/ (last visited June 19, 2012).
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On May 5, 2011, plaintiff Marius Vizer filed this in rem action under ACPA, 15 U.S.C. §
1125(d), against the defendant domain name VIZERNEWS.COM, claiming that the unknown
registrant of VIZERNEWS.COM “anonymously registered the domain name with the bad faith
intent to profit or otherwise trade on Plaintiff’s rights in his name.” Compl. ¶ 21. The plaintiff
has made efforts to notify possible defendants of this case, but no defendant has appeared. 6
On October 11, 2011, the plaintiff filed an Affidavit in Support of Default and the Clerk
of this Court entered Default against the defendant on the following day. See Aff. in Supp. of
Default, ECF No. 5; Clerk’s Entry of Default, ECF No. 6. The plaintiff subsequently filed the
pending motion for default judgment. Pl.’s Mot.
II. LEGAL STANDARD FOR DEFAULT JUDGMENT
Under Federal Rule of Civil Procedure 55(b)(2), the Court may consider default
judgment when a party applies for that relief. See FED. R. CIV. P. 55(b)(2). This Court “strongly
favor[s] resolution of disputes on their merits, but default judgment is available when the
adversary process has been halted because of an essentially unresponsive party . . . .” Cumis Ins.
Soc’y, Inc. v. Billups, No. 10–1478, 2010 WL 4384228, at *2 (D.D.C. Nov. 4, 2010) (internal
citations and quotation marks omitted). A default judgment is appropriate when a defendant is
“a ‘totally unresponsive’ party and its default plainly willful, reflected by its failure to respond to
6
On May 30, 2011, the plaintiff filed notice with the Court that he had complied with statutory notice obligations,
including notifying (a) the domain name registry, VeriSign Inc., (b) the domain name registrar, Melbourne IT, LTD.
d/b/a Internet Names Worldwide, and (c) the web host, Yahoo, Inc. of this matter by providing “written notification
of a filed, stamped copy of a complaint filed by the owner of a mark in a United States district court,” pursuant to 15
U.S.C. § 1125(d)(2)(D)(i). See Notice Re. Service, ECF No. 2, at 1. The plaintiff also claims to have notified the
defendant of this matter by sending a “Waiver of the Service of Summons” pursuant to FED R. CIV. P. 4. Id.Counsel of record for the plaintiff also declares that he sent notice on May 31, 2011 to the registrant of
VIZERNEWS.COM, pursuant to 15 U.S.C. § 1125(d)(2)(A)(ii)(II)(aa). See Affidavit of Eric Menhart (“Menhart
Aff.”), Sept. 1, 2001, ECF No. 3, Ex. 1, ¶ 2. When no person claiming an ownership interest in the defendant
domain name appeared, the plaintiff sought to serve notice of this action via publication in order to satisfy the
service of process requirements under 15 U.S.C. § 1125(d)(2)(B). Pl.’s Mot. for Service by Publication, ECF No. 3,
at 2; see also “Menhart Aff.” ¶¶ 2-3. Pursuant to the Court’s Order of September 7, 2011, the plaintiff published
notice of this action in The Washington Post on September 15, 2011. See Notice Re Service by Publication, ECF
No. 4. No person has responded to any notice concerning this action. See, e.g., Clerk’s Entry of Default, ECF No.
6.
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the summons and complaint, the entry of default, or the motion for default judgment.” Hanley-
Wood LLC v. Hanley Wood LLC, 783 F. Supp. 2d 147, 150 (D.D.C. 2011) (citing Gutierrez v.
Berg Contracting Inc., No. 99–3044, 2000 WL 331721, at *1 (D.D.C. March 20, 2000)). In the
absence of a “request to set aside the default or suggestion by the defendant that it has a
meritorious defense,” the standard for default judgment has been satisfied. Id. (internal citations
and quotation marks omitted); see also Int’l Painters & Allied Trades Indus. Pension Fund v.
Auxier Drywall, LLC, 531 F. Supp. 2d 56, 57 (D.D.C. 2008).
Entry of default judgment is not automatic, however. See Mwani v. bin Laden, 417 F.3d
1, 6 (D.C. Cir. 2005) (noting that “entry of a default judgment is not automatic . . .”); Peterson v.
Islamic Republic of Iran, 515 F. Supp. 2d 25, 46 (D.D.C. 2007) (quoting Mwani, 417 F.3d at 6).
Before entering judgment against an absent defendant, the Court must assure itself that it has
both subject matter jurisdiction and personal, or, in this case, in rem jurisdiction. See Enterprise
Holdings, Inc. v. Enterprisecarrentals.com, No. 11-1152, 2012 WL 527355, at *3 (E.D. Va. Jan.
30, 2012) (noting that “[a] court must have both subject matter and personal or in rem
jurisdiction over a defaulting defendant before it can render a default judgment.”), adopted by
2012 WL 527353 (E.D. Va. Feb. 16, 2012). This Court has subject matter jurisdiction under 28
U.S.C. § 1331 and the Lanham Act, codified at 15 U.S.C. § 1125(d), but the question remains
whether the Court has in rem jurisdiction. See, e.g., McNeil v. Whipple, 720 F. Supp. 2d 73, 77
(D.D.C. 2010) (dismissing the complaint for lack of subject matter jurisdiction and failure to
state a claim, and denying the plaintiff’s motion for default judgment); see also Jin v. Ministry of
State Sec., 557 F. Supp. 2d 131, 134 (D.D.C. 2008) (rejecting plaintiffs’ motion for default
judgment on one of the plaintiffs’ claims because the court lacked subject matter jurisdiction and
dismissing the other claim for failure to state a claim).
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III. DISCUSSION
The plaintiff contends that his well-pled allegations and the defendant’s failure to respond
make entry of default judgment proper. See Pl.’s Mot. at 1. The Court finds, however, that it
does not have jurisdiction over this in rem action. The plaintiff claims that this Court has
jurisdiction because ICANN maintains an office in Washington, D.C., and is a “domain name
authority” as contemplated by ACPA’s in rem jurisdiction provisions. See id., at 2-3; Compl. ¶¶
4-6. The Court disagrees, finding that it does not have jurisdiction based on ICANN’s location
in this judicial district because ICANN did not “register” or “assign” the challenged domain
name as required by 15 U.S.C. § 1125(d)(2)(A). The Court first reviews the plaintiff’s claims
regarding in rem jurisdiction, and then explains the statutory requirements for in rem jurisdiction
and the reasons why ICANN does not provide a basis for in rem jurisdiction in this case.
A. Plaintiff claims that ICANN is a domain name authority as
contemplated by 15 U.S.C. § 1125(d)(2)(A).
The plaintiff claims he may bring suit in this judicial district under ACPA because
ICANN, which maintains an office in Washington, D.C., “is a ‘domain name authority’ as
contemplated under 15 USC 1125(d)(2)(A).” Pl.’s Mot. at 3. The plaintiff reasons that:
Washington, D.C. is the home of the “mothership” of domain name authority: the
Internet Corporation for Assigned Names and Numbers (ICANN). ICANN
maintains an office at 1101 New York Avenue, NW in Washington, D.C.
ICANN is the supreme domain name system (DNS) authority that “draws up
contracts with each registry. It also runs an accreditation system for registrars.”
Accordingly, ICANN is a “domain name authority” as contemplated under 15
USC 1125(d)(2)(A).
Id. at 2-3 (internal citations omitted). The plaintiff does not seek to establish jurisdiction based
on the location of either the domain name registrar (Melbourne IT, LTD. d/b/a Internet Names
Worldwide) or the domain name registry (VeriSign, Inc.). See Compl. ¶ 11.
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B. In Rem Jurisdiction Requirements Under 15 U.S.C. § 1125(d)(2)(A)
As noted, 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 name registry, or other domain name authority that registered or assigned the
domain name is located” upon satisfaction of two conditions. Those conditions are, first, that
“the domain name violates any right of the owner of a mark registered in the Patent and
Trademark Office, or protected under subsection (a) or (c) of this section,” 15 U.S.C. §
1125(d)(2)(A)(i), and, second, under 15 U.S.C. § 1125(d)(2)(A)(ii), the court finds that the
owner either is not able to obtain in personam jurisdiction over a person who would have been a
defendant (15 U.S.C. § 1125(d)(2)(A)(ii)(I)) or was not able to find a person who would have
been a defendant after due diligence (15 U.S.C. § 1125(d)(2)(A)(ii)(II)).
Before considering the plaintiff’s claim that he has met the two conditions for the
exercise of in rem jurisdiction, the Court must first determine whether the civil action was
properly filed in this judicial district. ICANN is not the “domain name registrar” or “domain
name registry” for the defendant domain name because the plaintiff identifies “Melbourne IT,
LTD d/b/a Internet Names Worldwide” as the domain name registrar and “VeriSign, Inc.” as the
domain name registry. Compl. ¶ 11. Thus, for this Court to exercise in rem jurisdiction, ICANN
must satisfy the first criterion under section 1125(d)(2)(A) by operating as a “domain name
authority that registered or assigned the domain name.” See 15 U.S.C. § 1125(d)(2)(A). As the
Court explains below, ICANN is not a “domain name authority that registered or assigned the
domain name” and thus its office in this judicial district does not fulfill ACPA’s initial
requirement for the exercise of in rem jurisdiction.
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By the plain language of the statute, “domain name authority that registered or assigned
the domain name” requires the authority to have “registered” or “assigned” the challenged
domain name in order to trigger in rem jurisdiction under 15 U.S.C. § 1125(d)(2)(A). Therefore,
in order for ICANN to qualify as a domain name authority under 15 U.S.C. § 1125(d)(2)(A) for
the purposes of this action, ICANN must have “registered” or “assigned” the domain name
VIZERNEWS.COM.
The statute does not define the terms “register,” “assign,” or “domain name authority.”
The legislative history, case law, dictionaries, and other statutory provisions, however, offer
clues as to the meaning of those terms. First, the verb “register” may be defined as to “enter in a
public registry,” “enroll formally,” or “make a record of.” BLACK’S LAW DICTIONARY 1396 (9th
ed. 2009). The statute itself makes clear that a person can “register” a domain name. See 15
U.S.C. § 1125(d)(1)(A)(ii) (establishing liability for a person who “registers, traffics in, or uses”
a domain name in the manner prohibited by 15 U.S.C. § 1125(d)(1)(A)). Courts have construed
“register[ing]” to cover the initial contract between a customer and registrar. In GoPets Ltd. v.
Hise, the court examined 15 U.S.C. § 1125(d)(1), finding that “[i]t is obvious that, under any
reasonable definition, the initial contract with the registrar constitutes a ‘registration’ under
ACPA,” and concluding that the re-registration of a domain name was not a “registration” within
the meaning of 15 U.S.C. § 1125(d)(1). GoPets Ltd. v. Hise, 657 F.3d 1024, 1030, 1032 (9th
Cir. 2011). The initial contract between the customer and the registrar requires the registrar to
register the customer’s domain name with a registry, which maintains a list of all domain names
within its domain. See, e.g., Dotster, 296 F. Supp. 2d at 1160; see also Office Depot, Inc. v.
Zuccarini, 621 F. Supp. 2d 773, 778 (N.D. Cal. 2007) (“the registry maintains the records that
ultimately determine the existence and ownership of domain names.”), aff’d, 596 F.3d 696 (9th
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Cir. 2010); GlobalSantaFe Corp. v. Globalsantafe.com, 250 F. Supp. 2d 610, 620 n.26 (E.D. Va.
2003) (noting that “in order to register a new domain name for an individual end user, the
registrar sends to the registry the ADD command as well as the information the registry needs to
populate its database, namely the domain name, the IP addresses of the local name servers for
that domain name, the registrar, and the expiration date for the registration.”). While ICANN
has contractual relationships with registries, it does not “make a record” itself of any domain
name registered by a registrant.
Second, “assign[ing]” refers to the allocation of the domain name or its subsequent
transfer from one owner to another. Black’s Law Dictionary defines the verb “assign” as “[t]o
convey; to transfer rights or property.” BLACK’S LAW DICTIONARY 135 (9th ed. 2009). In the
domain name context, a domain name is “assigned,” and the registry places the name into its
database. See, e.g., CNN L.P. v. CNNews.com, 56 F. App’x 599, 601 (4th Cir. 2003) (“When a
company wants the rights to a new domain name, it contacts a registrar. The registrar submits
the domain name to a registry, which enters the assigned domain name into a database.”)
(emphasis added). Furthermore, under 15 U.S.C. § 1125(d)(1)(B)(i)(VI), a court may consider,
in its determination of whether a person has bad faith intent, the “person’s offer to transfer, sell,
or otherwise assign the domain name to the mark owner or any third party for financial gain
. . . .” See 15 U.S.C. § 1125(d)(1)(B)(i)(VI); see also Mashantucket Pequot Tribe v. Redican,
403 F. Supp. 2d 184, 199 (D. Conn. 2005) (ordering the defendant “to assign the registration of
the domain name Foxwood.com to Mashantucket upon condition that Mashantucket compensate
Redican for his out-of-pocket costs in obtaining and maintaining the registration and in assigning
the registration.”). ICANN does not itself assign specific domain names to numeric internet
protocol addresses or to registrants.
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Third, the plain language of the statute suggests that the term “domain name authority”
refers to the “domain name registrar,” the “domain name registry,” and other entities that have
some authority over the domain name. See 15 U.S.C. § 1125(d)(2)(A). While the statute is
silent as to the specific definition of domain name authority, the statute itself makes clear that the
phrase “other domain name authority that registered or assigned the domain name,” covers only
entities that perform the functions of the registrar and registry by registering or assigning domain
names. The legislative history further confirms this limitation. Senator Patrick Leahy, a co-
sponsor of ACPA, stated that 15 U.S.C. § 1125(d)(2)(A) covers only those entities that “actually
offer the challenged name,” “actually place the name in a registry,” or “operate the registry.”
145 Cong. Rec. 31,017 (1999). As explained above, these tasks constitute the functions of the
registrar and registry, which are overseen and coordinated but not performed by ICANN. In fact,
Senator Leahy explicitly noted that the provision does not cover ICANN or its constituent units,
stating:
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.
Id. The legislative history thus supports a reading of the statutory provision at issue that
forecloses the plaintiff’s argument that ICANN is a “domain name authority” in this context, an
argument which suggests the provision should be read more broadly to cover any entity with
some authority within the domain name system. Simply put, ICANN’s role within the domain
Page 12 of 14
name system did not give it the “hands-on” role in “register[ing]” or “assign[ing]” the defendant
domain name sufficient to confer in rem jurisdiction in this Court over this defendant. 7
Furthermore, looking to other courts that have construed their jurisdiction over ACPA
claims, this Court has not found any cases which base in rem jurisdiction on the location of an
“other domain name authority that registered or assigned the domain name” under 15 U.S.C. §
1125(d)(2)(A). By contrast, numerous cases suggest that the location of a domain name registrar
or registry fulfills the first requirement for in rem jurisdiction under 15 U.S.C. § 1125(d)(2)(A).
See, e.g., Mattel, Inc. v. Barbie-Club.com, 310 F.3d 293, 302 (2d Cir. 2002) (stating that “it is the
presence of the domain name itself – the ‘property [that] is the subject of the jurisdiction’ – in the
judicial district in which the registry or registrar is located that anchors the in rem action”);
Porsche Cars N. Am., Inc. v. Porsche.net, 302 F.3d 248, 259 (4th Cir. 2002) (stating that
“[b]ecause the registrar with which Holmgreen registered the British domain names is based in
the Eastern District of Virginia, jurisdiction is proper in that district”); GlobalSantaFe Corp., 250
F. Supp. 2d at 614-15 (finding that 15 U.S.C. § 1125(d)(2)(A) is satisfied because the registry is
located in the district); America Online, Inc. v. AOL.org, 259 F. Supp. 2d 449, 451 (E.D. Va.
2003) (in rem jurisdiction is proper because of the location of the registry within the district);
Gen. Nutrition Inv. Co. v. GNC-China.com, No. 09-989, 2010 WL 2640226, at *1-3 (E.D. Va.
June 09, 2010) (finding that the court had in rem jurisdiction based on the location of the registry
and recommending that default judgment be entered against domain names), adopted by, No. 09-
7
ICANN is also responsible for approving top-level domains (“TLDs”) such as “.com” and “.org.” In 2011,
ICANN approved a significant expansion in the number of TLDs, starting a process that would allow “almost any
word in any language” to be a TLD. Press Announcement, ICANN, ICANN Approves Historic Change to Internet’s
Domain Name System: Board Votes to Launch New Generic Top-Level Domains (June 20, 2011), available at
http://www.icann.org/en/news/announcements/announcement-20jun11-en.htm (last visited June 20, 2012). For
example, the top-level domain in VIZERNEWS.COM is “.com,” which is not at issue here. The Court’s findings do
not address ICANN’s approval of new top-level domains or determine whether any of ICANN’s activities in the
TLD approval process would make ICANN, with respect to TLDs, a “domain name registrar, domain name registry,
or other domain name authority that registered or assigned the domain name” under 15 U.S.C. § 1125(d)(2)(A).
Page 13 of 14
989, 2010 WL 2640223 (E.D. Va. June 28, 2010); see also Office Depot, Inc., 596 F.3d at 702(stating that “[a]lthough the current proceeding is not an action under the ACPA, the statute is
authority for the proposition that domain names are personal property located wherever the
registry or the registrar are located.”); Office Depot, Inc., 621 F. Supp. 2d at 778 (noting that the
court “will follow Congress’ suggestion in ACPA that a domain name exists in the location of
both the registrar and the registry” and concluding that “[a]s such, this is the appropriate Court to
oversee levy upon domain names”), aff’d, 596 F.3d 696 (9th Cir. 2010).
Given the plain language of the statute, the legislative history, the guidance from case law
construing the scope of in rem jurisdiction over ACPA claims, and the role of ICANN, the Court
concludes that ICANN is not a “domain name authority that registered or assigned” the
challenged domain name, as required by 15 U.S.C. § 1125(d)(2)(A). Thus, the Court finds that
the plaintiff fails to establish in rem jurisdiction on the basis of ICANN’s office in this judicial
district.
IV. CONCLUSION
For the foregoing reasons, the Court finds that it lacks in rem jurisdiction over this action
on the basis of ICANN’s office in this judicial district. Accordingly, this Court denies the
plaintiff’s Motion for Default Judgment and dismisses this action. An Order accompanies this
Memorandum Opinion.
DATED: June 22, 2012
/s/ Beryl A. Howell
BERYL A. HOWELL
United States District Judge
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