Appeals Court Considers Jurisdictional Issues Under ACPA

The U.S. 2nd Circuit Court of Appeals upheld a lower courts decision dismissing claims brought under the Anticybersquatting Consumer Protection Act ("ACPA") for lack of in rem jurisdiction. The court ruled that: (a) section 1125(d)(2)(A) of ACPA provides that a trade-mark owner may file an in rem action against a domain name only in the judicial district in which the registrar, registry, or other domain-name authority that registered or assigned the disputed domain name is located; and, (b) section 1125(d)(2)(C), which sets out the procedure for the deposit of domain name registrar's certificates with the courts, does not provide an additional basis for in rem jurisdiction. Mattel, the registered trade-mark owner of "Barbie" and "Hot Wheels", commenced an in rem action against fifty-seven different domain names in the District Court for the Southern District of New York in order to protect their marks from allegedly unlawful domain name registration. The impugned Internet addresses were registered with various domain name registrars across the U.S. Mattel used the in rem provisions of the ACPA to commence the action, arguing that section 1125(d)(2)(C) provided a basis for in rem jurisdiction. In dismissing Mattel's argument, the appellate court held that both the language of the statute and its legislative history demonstrated that in rem jurisdiction is solely determined by the location of the disputed domain name's registrar. Concerned about your company's trade-marks? Contact Marijo Coates (mcoates@dww.com) or Hung Nguyen (hnguyen@dww.com) of DWW.