in rem – Attorney Evan Brown

September 21, 2010 Cybersquatting, Litigation

Domain name owner gets swift relief against impostor website

Starcom Mediavest Group v. Mediavestw.com, No. 10-4025, 2010 WL 3564845 (September 13, 2010)

In rem actions over domain names are powerful tools. A trademark owner can undertake these actions when it identifies an infringing domain name but cannot locate the owner of that domain name. In a sense, the domain name itself is the defendant.

The Anticybersquatting Consumer Protection Act (which is a part of the federal trademark statute dealing with the unauthorized registration of domain names) says that a court can enter ex parte orders requiring a domain name to be turned over when: (1) the plaintiff owns a registered trademark, (2) the domain name registry is located in the judicial district in which the action is being brought, (3) the domain name violates the plaintiff’s trademark rights, and (4) the plaintiff cannot locate the owner of the domain name even though it has diligently tried.

An “impostor” registered mediavestw.com, and “tricked” at least one of plaintiff’s business partners into signing up for advertising services. Plaintiff owns a trademark for MEDIAVEST and operates a website at mediavestww.com. Plaintiff filed an in rem action and sought a temporary restraining order (TRO).

The court granted the motion for TRO. It found that plaintiff had met its burden for a temporary restraining order in that it had shown that it was likely to succeed on the merits and that it would suffer irreparable harm in the absence of preliminary relief. As for the showing of harm to its trademark rights, the court noted the efforts on the part of the domain name registrant to fraudulently enter into business arrangements with plaintiffs’ business partners.

The court found that the TRO would serve the public interest because such interest favors elimination of consumer confusion. (Consider whether there really was any consumer harm that took place here if the alleged fraud was on a business-to-business level. Compare the findings in this case with the finding of no consumer nexus in the recent Reit v. Yelp case.)

The court found that plaintiff had made such a strong showing of the likelihood of success that it did not require plaintiff to post a bond. It ordered the domain name transferred into the court’s control immediately. Behold the power of in rem actions.

March 23, 2010 Litigation

Kentucky Supreme Court: gambling domain names did not have standing

Com. ex rel. Brown v. Interactive Media Entertainment and Gaming Ass’n, Inc., — S.W.3d —, 2010 WL 997104 (Ky. March 18, 2010)

Back in 2008 the Commonwealth of Kentucky took an extraordinary step in its battle against online gambling. It filed an action in state court seeking to take over 141 domain names that the Commonwealth believed were used for illegal gambling sites. The trial court ordered forfeiture of the domain names.

Kentucky

Lawyers arguing against the forfeiture of the domain names sought a “writ of prohibition” from the appellate court, asking that court to prevent the forfeiture of the domain names. The lawyers appearing before the appellate court fell into two categories: those purporting to actually represent certain domain names (not the domain names’ owners) and those representing gambling trade associations whose members purportedly included some of the registrants of the affected domain names.

The appellate court granted the writ of prohibition. The Commonwealth sought review with the state supreme court. The supreme court dismissed the writ because those arguing against it lacked standing.

Who’s interest was at stake?

The court noted that only a party with a “judicially recognized interest” could challenge the forfeiture of the domain names. The court rejected the notion that the domain names could represent themselves:

An internet domain name does not have an interest in itself any more than a piece of land is interested in its own use. Just as with real property, a domain name cannot own itself; it must be owned by a person or legally recognized entity.

As for the gambling associations, the court held that there could be no “associational standing” because none of the associations would identify any of their members. Associational standing is when an organization (say, for example, the NAACP or a labor union) files suit on behalf of its members. One of the fundamental requirements of associational standing a showing that members of the association would have the right to sue in their individual capacities. Since there was no evidence as to whose interests the associations represented, there was no basis to conclude that the associations’ members would have standing to sue in their own right.

So the court sent the matter back down to the appellate court with orders to vacate the writ of prohibition. But the supreme court also hinted that those affected by the forfeiture could get another bite at the apple: “If a party that can properly establish standing comes forward, the writ petition giving rise to these proceedings could be re-filed with the Court of Appeals.” One would think that at least one brave soul will step forward. Some in the industry seem to hope so.

Other accounts of this story:

Domain Names Can’t Defend Themselves (Freedom to Tinker)
Kentucky Supreme Court Reverses Ruling Challenging Domain Name Seizures, Tells Registrants to Try Again (EFF)
Kentucky Supreme Court Rules Against Domain Owners (Name Talent)

January 30, 2008 Cybersquatting, Trademarks

Finding ATLAS COPCO and ATLAS CASPIAN confusingly similar, court awards in rem ACPA relief to unopposed plaintiff

Atlas Copco AB v. Atlascopcoiran.com, No. 07-1208, 2008 WL 149128 (E.D. Va. January 8, 2008)

Unable to hail the overseas registrants of domain names, including atlascaspian.com and atlascopcoiran.com into a U.S. court, plaintiff Atlas Copco AB sought in rem relief against the domain names under 15 U.S.C. §1125(d)(2)(a). After the defendants failed to answer the complaint, Atlas Copco moved for summary judgment, relying on the allegations of its verified complaint.

The court granted the motion and ordered the domain names transferred.

In finding that the defendants had engaged in cyberpiracy, the court looked at the “dominant or salient portions of the marks” at issue – the plaintiff’s mark and the marks comprising the offending domain names.

For you trademark experts out there, query whether you might characterize the following analysis as a bit of a stretch:

The dominant portion of each of the Defendant Domain Names is “ATLAS COPCO” or “ATLAS.” These “dominant” terms are paired with the generic terms “CASPIAN” and “IRAN,” which are generic geographic terms that do not distinguish the Defendant Domain Names from the ATLAS COPCO trademark. An internet user might reasonably assume that the geographic term “CASPIAN” and “IRAN” were added to the ATLAS COPCO trademark by the Plaintiffs to identify its geographic location.

It looks like another motivation for the court’s finding was some of the subterfuge on the sites at the offending domain names. Turns out some of them pointed to “copycat” websites bearing “Atlas Caspian” logos confusingly similar to the plaintiff’s trademark, and linked to phishing sites bearing the actual Atlas Copco mark.