Jurisdictional concerns with trademarks in non-US domain names from Trademark Protection on the Internet in for Non Top-Level Domains Used as Top-level Domains

By Owen Smigelski, Esq.

© 2001-2003, All rights reserved.

This Comment is provided as educational material, and should not be utilized as legal advice. Reproduction is authorized with proper citation to this original source. For a free trademark consultation, please contact the author.

1. Preface
2. Introduction
3. Overview of Trademark Law
4. Overview of the Internet
   1. Internet History
   2. TCP/IP
   3. Domain Name System (DNS)
5. Internet Trademark Law
6. The non-US domains
   1. Introduction/Background
   2. Repurposed ccTLDs not currently accepting new registrations
   3. Repurposed ccTLDs with no trademark protection or dispute resolution procedure
   4. Repurposed ccTLDs with dispute resolution procedures based on old NSI examples
   5. Repurposed ccTLDs with dispute resolution procedures identical to ICANN's UDRP
7. Jurisdictional concerns with non-US domain names
8. Conclusion

VI.      Jurisdictional concerns with non-US domain names

            The Internet, by its distributed nature, is multijurisdictional. It can be accessed from any place on earth.  Due to the packet switching technology of TC/IP, information for a single email or web site may travel through various countries or jurisdictions.[227]  As described by WIPO, “[i]t is a global medium transposed on the historical system of separate physical jurisdictions.”[228] 

            Prior to 1999, the Lanham Act offered little protection of trademarks in domain name disputes.  Courts tended to exercise in personam jurisdiction over defendants, following language found in the Trademark Dilution Act.  Courts recognized that it might be difficult to identify a defendant sufficiently for service.[229]  The Consolidated Appropriations Act of 2000 added a “cyberpiracy protection” section to the Lanham Act.[230]  The section permits a cause of action arising from the bad faith registration of domain names that are “identical or confusingly similar to that mark,”[231] or in the situation of a famous mark, the disputed domain name is “identical or confusingly similar or dilutive of that mark,”[232] or is a an emblem, insignia or the like protected by federal law.[233]  If the owner of a mark is unable to obtain personal jurisdiction against the domain name registrant, the Lanham Act allows for in rem jurisdiction.  The owner may file in any judicial district in which the registrar of the domain name, the domain name registry, or “other domain name authority that registered or assigned the domain name is located.”[234]  With in rem jurisdiction, the owner of a mark is limited to “the forfeiture or cancellation of the domain name or the transfer of the domain name to the owner of the mark.”[235]  Absent recklessness or failure to comply with a court order, a registrar of a domain name is not liable for any damages arising under actions pursued under the cyberprivacy prevention amendment of the Lanham Act.[236]  In rem jurisdiction can be obtained even when a plaintiff and defendant have no presence in the United States, based solely upon the fact that the domain name was reserved through a registrar located in the United States.[237]  Achieving jurisdiction over registrants located outside the United States was a result intended by Congress.  This intent was indicated in the House Committee Report that was prepared for this amendment to the Lanham Act:

[I]n rem jurisdiction is also appropriate in instances where personal jurisdiction cannot be established over the domain name registrant.  This situation occurs when a non-U.S. resident cybersquats on a domain name that infringes upon a U.S. trademark.  This type of in rem jurisdiction still requires a nexus based upon a U.S. registry or registrar [and] would not extend to any domain name registries existing outside the United States.[238]       

            The Consolidated Appropriations Act of 2000 established in rem jurisdiction that allowed the owner of a trademark to file suit against the domain itself, in addition to any other potential actions against any alleged infringers.[239]  Of the eleven registries discussed in this Comment that are currently registering ccTLDs as an alternative to gTLDs, all but one, dot-am, fulfills these minimum contacts for in rem jurisdiction.  WIPO has suggested several methods of determining contacts with a jurisdiction, some which are in the Anti-Cybersquatting amendment to the Lanham Act, or are not in conflict with the intent of the law.  These include the “location of the registry, the location of the domain name database, the location of the registrar and the location of the ‘A' root server”[240]

            Dot-am's root zone whois information from Internet Assigned Numbers Authority (IANA), which maintains a listing of all the ccTLDs, lists the sponsoring organization, the administrative contact, and technical contact as having addresses located in Armenia.[241]  Dot-mu's legal notice states that all registrants consent to the jurisdiction of state or federal courts in Los Angeles County.[242]  The registrar itself states that it is “an American Company”[243] with servers located in the United States.[244]  Dot-to, although its servers are located within Tongan sovereign territory, maintains enough business contacts with the state of California to allow for suits under this section of the Lanham Act.  By providing a post office mailbox to receive payments that is located outside of San Francisco, where the Tongan Consulate General and the servers are located, Tonic receives revenue through the forum state, satisfying the minimum contacts necessary to pursue venue in the Northern District of California.  In Rayco Mfg. Co. v. Chicopee Mfg. Corp., the court held that the defendant satisfied minimum contacts through the “volume of its sales in this District, [and] the presence in this District of a Post Office box in which it receives payments for goods sold.”[245]  Tonic's minimum contacts within this district, coupled with Congress's intent to stifle cybersquatting should ensure protection of United States trademarks registered through Tonic.

            The registrar for dot-cc, eNIC, states that it is “a privately-held firm based in Seattle, Washington, USA.”[246]  The company also provides a mailing address for Seattle, WA.  While eNIC's dispute resolution process may not properly protect trademark holders, the above information is enough to satisfy the requirements for jurisdiction of a trademark suit pertaining to a dot-cc domain name as specified in the anti-cybersquatting section of the Lanham Act.[247] 

            Although dotMD subscribes to the UDRP, there are also several avenues of establishing jurisdiction over dot-md domain name disputes.  The technical contact for dot-md is located in Florida.[248]  The web site for the registrar of dot-md states that it is operated by “a privately held company based in Atlanta, GA.”[249]   Dot-nu's technical contact is located in Massachusetts,[250] and is overseen by Internet Users Society – Niue, a United States incorporated, tax exempt foundation.[251]  Their contact information only provides email addresses,[252] however it is evident that the registrar for the dot-nu domain, possibly along with its servers, are located in the United States. 

            The .tv Corporation International is located in Los Angeles, California,[253] and Website.ws is located in Carlsbad, California.[254]  Domain name disputes arising under the both dot-tv and dot-ws ccTLDs are thus subject to United States jurisdiction under the Lanham Act.

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