UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF VIRGINIA
ALEXANDRIA DIVISION
INTERNATIONAL OLYMPIC COMMITTEE, )
SALT LAKE ORGANIZING COMMITTEE )
FOR THE OLYMPIC WINTER GAMES OF )
2002, )
) CIVIL ACTION NO. 00-1018-A
Plaintiffs, )
)
v. )
)
2000OLYMPIC.COM, et al., )
)
Defendants. )
I. SUMMARY
This in rem case, which is based on the Anticybersquatting Consumer Protection Act (“ACPA”), 15 U.S.C. § 1125(d), was filed by the Olympic Plaintiffs [the United States Olympic Committee (“USOC”), the International Olympic Committee (“IOC”) and Salt Lake Organizing Committee for the Olympic Winter Games of 2002 (“SLOC”)] against the 1,800 domain names listed in the Complaint, which are owned by 732 persons located in 54 countries outside the United States. The domain names contain the distinct, famous and world-renowned trademarks OLYMPIC and OLYMPIAD (the “OLYMPIC Marks”) and simulations thereof, such as misspellings and foreign equivalents.
The Olympic Plaintiffs have today also filed a Notice of Dismissal of 553 domain name defendants owned by the registrants that have entered into settlement agreements with the Olympic Plaintiffs and certain other domain names that the Olympic Plaintiffs have decided to dismiss from this suit. In addition, the Olympic Plaintiffs have filed a concurrent motion to have the Court permit the Olympic Plaintiffs to request that the registrars of 356 domain names owned by 183 registrants, who have apparently provided inaccurate contact information to the registrars, to initiate their false contact procedures for such domain names.
In this Memorandum, the Olympic Plaintiffs seek an order from the Court setting a time certain for the 322 registrants (the “Registrants”), who are residents of 36 countries, of the remaining 891 domain names (“Domain Names”)[1], all of whom have received a copy of the Complaint, to answer the Complaint or otherwise plead within thirty (30) days of this Court’s Order granting the Olympic Plaintiffs’ Motion To Set a Time Certain by Which Registrants of the Defendant Domain Names Must Respond to the Complaint.[2]
The Domain Names were registered with 20 registrars[3], whose registrar certificates granting this Court dominion and control over the Domain Names have been filed with the Court. See Exhibit 1, Declaration of John T. Parker, at Paragraph 3, Attachment 1, which lists the registrars, the Domain Names associated with each registrar and the dates when the registrar certificates were filed with the Court.
The ACPA, 15 U.S.C. § 1125(d), provides that:
(1) an in rem case may be filed if the domain names violate
(a) the rights of the owners of trademarks protected by 15 U.S.C. §§ 1125(a)(c) and/or
(b) the rights of owners of trademarks registered in the Patent and Trademark Office (“PTO”), 15 U.S.C. § 1125(d)(2)(A)(i) [4]; and
(2) if the Court finds that the trademark owner is unable to obtain in personam jurisdiction over a person who would have been a defendant under Paragraph 1 of the ACPA, 15 U.S.C. § 1125(d)(2)(A)(ii)(I), this constitutes service of process. 15 U.S.C. § 1125(d)(2)(B).
As shown below, the Olympic Plaintiffs have trademark rights in and to the OLYMPIC Marks that are (1) protected by 15 U.S.C. §§ 1125(a)(c) [respectively, the trademark infringement and trademark dilution portions of the Lanham Act] and (2) have been registered by the PTO, and have been violated by the bad faith registration, trafficking in or use of the Domain Names. This Court lacks personal jurisdiction over the Registrants who would have otherwise been defendants under the ACPA. The Olympic Plaintiffs have provided the Registrants with a copy of the Complaint and it is thus appropriate for this Court to set a time for the Registrants to answer or otherwise plead.
II.
The Olympic Plaintiffs’ Trademark Rights
The USOC satisfies the ACPA requirement, 15 U.S.C. § 1125(d)(2)(A)(i), of owning trademarks protected by 15 U.S.C. §§ 1125(a)(c) since the Ted Stevens Olympic and Amateur Sports Act (“OASA”), 36 U.S.C. §§ 220506(a)(1)(4), grants the USOC exclusive rights to the OLYMPIC Marks and empowers it to file civil actions for unauthorized use of the OLYMPIC Marks under the Lanham Act, which includes 15 U.S.C. §§ 1125(a)(c).[5] See Paragraphs 23-24 and 31-32 of the Complaint.
The ACPA also covers trademarks registered with the PTO, 15 U.S.C. § 1125(d)(2)(A)(i) The USOC owns trademark registrations for the OLYMPIC Marks that have been issued by the PTO. See Paragraphs 25-30 and 33-34 and Exhibits 1-5 to the Complaint for copies of the USOC’s PTO trademark registrations.
Thus, the USOC’s OLYMPIC Marks are covered by the ACPA due to the USOC’s exclusive rights under the OASA and the USOC’s ownership of the OLYMPIC Marks that have been registered with the PTO.
The IOC, which is organized and existing under the laws of Switzerland, seeks relief under Section 44(h) of the Lanham Act. 15 U.S.C. § 1126(h). Section 44(h) provides that citizens of foreign nations with which the United States has a trademark, trade name or unfair competition treaty “shall be entitled to effective protection against unfair competition, and the remedies provided in this chapter [the Lanham Act, 15 U.S.C. § 1051 et seq.] for infringement of marks shall be available so far as they may be appropriate in repressing acts of unfair competition.” 15 U.S.C. § 1126(h).
The United States and Switzerland are parties to the International Convention for the Protection of Intellectual Property (the “Paris Convention”), 21 U.S.T. 1583, T.I.A.S. No. 6923.[6] The Paris Convention defines unfair competition broadly: “Any act of competition contrary to honest practices in industrial or commercial matters constitutes an act of unfair competition.” Art. 10bis(2) of the Paris Convention. Unauthorized use of a trademark in a domain name is “contrary to honest practices in industrial or commercial matters . . . .” Id.
The provisions of the ACPA, a part of the Lanham Act, consequently protect the IOC’s marks to the same extent as they protect U.S. marks. Therefore, the IOC is entitled to a remedy against the unfair competition caused by the Registrants of the Domain Names, based on the IOC’s ownership of the Swiss trademark registrations for the OLYMPIC Marks listed in Paragraphs 37-40 of the Complaint. See Exhibits 6-9 to the Complaint for copies of the IOC’s Swiss trademark registrations.
SLOC is a licensee of the USOC and is authorized to use and license others to use the OLYMPIC Marks. SLOC has used several OLYMPIC Marks to identify its goods and services, each of which serves as a source identifier for SLOC and relates to the Salt Lake City 2002 Olympic Winter Games, such as 2002 OLYMPIC WINTER GAMES and SALT LAKE CITY OLYMPIC WINTER GAMES OF 2002. See Paragraphs 44-45 of the Complaint. Consequently, SLOC’s OLYMPIC Marks are covered by the ACPA.
III. The Registrants Would Have Been Defendants under the ACPA If There Were Personal Jurisdiction over Them
The Olympic Plaintiffs did not need to establish that the Registrants would have violated their rights under the ACPA before the filing of this in rem ACPA action, as “to force plaintiff[s] to prove [their] case before filing would stand the Act [the ACPA] on its head.” See Caesars World, Inc. v. Caesars-Palace.com, 112 F. Supp. 2d 502, 505 (E.D. Va. 2000) (Bryan, J.). All that Plaintiffs in an in rem ACPA case must do is to comply with Rule 8(a) of the Fed. R. Civ. P. by pleading a statement of the grounds (1) upon which the court’s jurisdiction depends (2) of the claim upon which relief may be granted and (3) of a demand for judgment for the relief sought. [7]
Proving a violation of the ACPA requires showing, pursuant to 15 U.S.C. § 1125(d)(1)(A), that (1) the domain name is identical, confusingly similar to or dilutive of the mark, or is protected by 36 U.S.C. § 220506, and (2) defendant had a bad faith intent to profit from the use of the marks through the registration, trafficking in and/or use of the marks. 15 U.S.C. § 1125(d)(1)(A).
of the Olympic Marks and Contain Marks Protected by the OASA
All of the Registrants’ Domain Names contain the OLYMPIC Marks or simulations thereof, such as misspellings, e.g. “olympik.com” (see Paragraph 89 of the Complaint) and foreign equivalents, e.g., “juegosolimpicos2008.com”, the Spanish equivalent of “2008 Olympic Games” (see Paragraph 88 of the Complaint). See Exhibit 10 to the Complaint. Thus, the Olympic Plaintiffs have shown that the Domain Names are identical to, confusingly similar to or dilutive of the OLYMPIC Marks.
B. The Registrants Have Engaged in Bad
Faith Registration,
Trafficking in and/or Use of the Domain Names
There are conflicting decisions in this District and no decision by the Fourth Circuit regarding whether plaintiffs in an in rem ACPA case must prove bad faith intent to profit from the goodwill of plaintiff’s mark. In Jack In The Box, Inc. v. Jackinthebox.org, et al., 143 F. Supp. 2d 590 (E.D. Va. 2001) (Hilton, C.J.), the court found that the ACPA bad faith intent provisions, 15 U.S.C. § 1125(d)(1)(B)(i), only apply to in personam cases and that plaintiffs in in rem cases need only prove a violation of 15 U.S.C. 1125(a) (false designation of origin, false or misleading description of fact, or false or misleading representation of fact) or 15 U.S.C. § 1125(c) (trademark dilution).
On the other hand, another court, also in this District, found that bad faith intent is required in in rem ACPA cases. Harrods Limited v. Sixty Internet Domain Names, 110 F. Supp. 2d 420, 423-27 (E.D. Va. 2000) (Brinkema, J.).
The Olympic Plaintiffs satisfy the requirements under either interpretation of the in rem provisions of the ACPA. First, under the assumption that bad faith is unnecessary and that a proof of a violation of either 15 U.S.C. § 1125(a) or 15 U.S.C. § 1125(c) is necessary, the Complaint contains allegations supporting a prima facie violation of those statutes. The Complaint in this case contains allegations that the domain names contain the famous OLYMPIC Marks (or simulations of the OLYMPIC Marks), to which Congress has granted the USOC exclusive rights under the OASA, 36 U.S.C. § 220506(a)(1)(4), which authorizes the USOC to file civil actions to enforce its rights under the Lanham Act, which includes 15 U.S.C. §§ 1125(a)(c). See Paragraphs 3, 23-24, 73 and Exhibit 10 to the Complaint.
Second, regarding the bad faith requirements
under the ACPA, the ACPA lists nine, non-exhaustive factors that courts may
consider in determining whether there has been a bad faith intent to profit
from the goodwill of plaintiff’s mark. 15 U.S.C. § 1125(d)(1)(B)(i). The first
four factors tend to indicate an absence of bad faith intent and the latter
five tend to show bad faith intent to use a plaintiff’s mark. The Registrants
do not have a good faith basis for their registration, trafficking in or use of
the OLYMPIC Marks. See
Paragraphs 73-102 of the Complaint. The Registrants’ conduct shows bad faith
intent to profit from the OLYMPIC Marks. Id.
In sum, under either interpretation of the ACPA, the Olympic Plaintiffs have shown a violation of the ACPA by the Domain Names. Under Jack In The Box, the Complaint shows a violation of the ACPA, by showing a violation of 15 U.S.C. §§ 1125(a)(c). Under Harrods, the Complaint shows that, if there had been personal jurisdiction over the Registrants of the Domain Names, they would have been defendants in civil actions under Paragraph 1 of the ACPA, 15 U.S.C. § 1125(d)(2)(A)(ii)(I), as they had a bad faith intent to profit from the registration, trafficking in and/or use of the OLYMPIC Marks.
The ACPA provides that in rem jurisdiction is proper in two instances: (1) where it is not possible to locate the registrant of the domain name or (2) where personal jurisdiction cannot be established over the domain name registrant. 15 U.S.C. § 1125(d)(2)(A)(ii). The Olympic Plaintiffs have alleged in their Complaint that the only basis for in rem jurisdiction in this case is the lack of personal jurisdiction by this Court over the Registrants, all of whom reside outside the United States. Thus, the due diligence procedures for establishing in rem jurisdiction due to an inability to locate a would-be defendant by 15 U.S.C. § 1125(d)(2)(A)(ii)(II)[8] are inapplicable to this case as it involves Domain Names registered by foreign persons.
Regarding the lack of jurisdiction over a domain name registrant, this occurs “when a non-U.S. resident cybersquats on a domain name that infringes a U.S. trademark.” H.R. Rep. 106-412, at 14 (1999). See Lucent Technologies v. Lucentsucks.com, 95 F. Supp. 2d 528, 532, n. 5 (E.D. Va. 2000) (Brinkema, J.) (where the court relied on the legislative history in finding that 15 U.S.C. § 1125(d)(2)(A)(ii)(I) was enacted by Congress to provide remedies to trademark owners where domain names infringing their marks are registered by foreign entities over whom personal jurisdiction is not possible).
Showing that the Registrants of the Domain Names are residents of some 36 countries satisfies the requirement of making a prima facie case of a lack of personal jurisdiction by this Court under Rule 8(a) of the Fed. R. Civ. P. See Alitalia-Linee Aeree Italiane S.p.A. v. Casinoalitalia.com, et al., 128 F. Supp. 2d 340, 348 (E.D. Va. 2001) (Ellis, J.), (at the threshold stage of an ACPA case, plaintiff “need only make a prima facie showing of a sufficient jurisdictional basis on the basis of the complaint and supporting affidavits”), citing America Online v. Chih-Hsien Huang, 106 F. Supp. 2d 848, 853 (E.D. Va. 2000) (Ellis, J.). In addition, the Olympic Plaintiffs show that they have exercised due diligence in analyzing whether the Court could obtain personal jurisdiction over them.
As
of August 16, 2001, the Olympic Plaintiffs reviewed all of the Domain Names to
determine whether they have web sites and have determined that 826 Domain Names
do not have web sites[9].
See Exhibit 1 at Paragraph 4. There is no basis for the Court asserting
personal jurisdiction over those Registrants of the Domain Names that do not
have web sites because mere domain name registrations are not a sufficient
basis for asserting personal jurisdiction over the registrant of a domain name.
America Online, 106 F. Supp. 2d at 854.
The review of the Domain Names indicated that 65 have web sites. See Exhibit 1 at Paragraph 5. In analyzing whether any of those web sites provide a basis for the Court asserting personal jurisdiction, the Olympic Plaintiffs have applied the “sliding scale” criteria of Zippo Manufacturing Co. v. Zippo Dot Com, 952 F. Supp. 2d 1119, 1124 (W. D. Pa. 1997), that posits a continuum of three types of Internet jurisdiction cases. This is the approach followed by the majority of the courts that have considered this issue. See Alitalia, 128 F. Supp. 2d at 349. This issue has not yet been decided by the Fourth Circuit. See Christian Science Bd. of Dirs. of the First Church of Christ, Scientist v. Nolan, 259 F. 3d 209, 218 (4th Cir. 2001).
At
one end of the continuum are persons that clearly conduct business over the
Internet through an interactive web site and have frequent contacts with the
forum state thereby making personal jurisdiction appropriate. At the other end are passive web sites that
do little more than make information available to interested persons and thus
do not provide an appropriate basis for the exercise of personal
jurisdiction. In the middle are
interactive web sites where a user can exchange information with the host
computer and determining whether a court can exercise jurisdiction depends on
the level of interactivity and commercial nature of the exchange of
information. Zippo, 952 F. Supp. 2d at 1124.
A review of the Registrants’ web
sites shows either (1) that they are not interactive web sites that would
provide a basis for this Court, or a court in any other judicial district[10],
to obtain personal jurisdiction over those Registrants of the Domain Names or
(2) that the extent of their interactivity with the residents of Virginia can
only be determined by learning from the Registrants, themselves, the extent of
contact, if any, with the State of Virginia. See Exhibit 1 at Paragraph
5. The Olympic Plaintiffs cannot
conclusively determine the extent of contacts that the two web sites that
appear to be interactive have had with the State of Virginia as the Registrants
“typically control much of the information needed to determine the existence
and/or magnitude of its contacts with any given jurisdiction.” United States v. Swiss Bank Am., Ltd.,
191 F. 3d 30, 40 (1st Cir. 1999). As
such, the Olympic Plaintiffs have made a prima facie case of a lack of personal
jurisdiction over the Registrants of the Domain Names.
In
conclusion, the Court lacks personal jurisdiction over Registrants of the
Domain Names, who are residents of 36 countries, because the Registrants either
do not have web sites, their web sites are not sufficiently interactive to
provide a basis for obtaining personal jurisdiction over such Registrants, or
the Olympic Plaintiffs have no basis for believing that the Registrants have
had contacts with the State of Virginia.
The ACPA does not require serving a complaint on owners of domain names in an in rem case where personal jurisdiction is not possible. The ACPA provides that if the court finds that the trademark owner cannot obtain in personam jurisdiction over a person who would have been a defendant under 15 U.S.C. § 1125(d)(1), this “shall constitute service of process.” 15 U.S.C. § 1125(d)(2)(B). Consequently, the Fed. R. Civ. P. Rule 4(f) procedures for service of a complaint on an individual in a foreign country are inapplicable to this matter. Cable News Network v. CNNews.com, U.S. Dist. LEXIS 149693 *12, n. 26 (E.D. Va. Sept 18, 2001) (Ellis, J.) (Finding Rule 4(f) inapplicable).
Procedural due process, however, requires that an attempt be made to provide owners of the Domain Names with notice of the action and give them an opportunity to appear and present their objections. Mullane v. Central Hanover Bank & Trust Co., 339 U.S. 306, 312 (1950) (notice was required to beneficiaries on judicial settlement of accounts by the trustee of a common trust fund).
In this District, the Courts have held that where a registrant of a domain name in an in rem proceeding has received actual notice of the complaint, this satisfies service of process under the ACPA. Banco Inverlat v. WWW.Inverlat.Com, 112 F. Supp. 2d 521, 523 (E.D. Va. 2000) (Ellis, J.); Harrods Limited, 110 F. Supp. 2d at 422; Sri Ram Chandra Mission v. Saharjmarg.org, 139 F. Supp. 2d 721, 723, n. 3 (E.D. Va. 2001) (Hilton, C.J.).
The plain meaning of the ACPA publication procedure is that it applies to cases where plaintiffs are unable to locate the registrant of the domain names. It but does not apply to this case, where the registrants have been located, but are nonetheless outside the jurisdiction of the Court, 15 U.S.C. § 1125(d)(2)(A)(ii)(I). Thus, the publication procedure does not apply to this in rem case, involving an inability to obtain in personam jurisdiction. 15 U.S.C. § 1125(d)(2)(A)(ii)(II).
In any
event, providing a copy of the Complaint to the Registrants is also a basis for
waiving publication, when the registrants have received a copy of the
complaint, as have the Registrants that are the subject of this motion. Banco Inverlat, 112 F. Supp. 2d at
523.
E.
The Olympic Plaintiffs’ Program for Providing a Copy of
the Complaint to the Registrants
In this case, the Plaintiffs took comprehensive steps to ensure that the 322 Registrants of the Domain Names received a copy of the Complaint. All of the Registrants that are the subject of this Motion have received a copy of the Complaint.
First, a copy of the Complaint was sent to the e-mail addresses that the 322 Registrants provided to their Registrars and which are listed in a Whois database. The domain name registration agreements require that registrants provide their registrars with accurate contact information, i.e., an e-mail and postal address that must be kept current. While there is no requirement that registrants provide their registrars with facsimile numbers, some registrants do provide them. The contact information is available in the Whois database that can be found on the Internet at, e.g., www.betterwhois.com. Ninety-four (94) of the Registrants replied to the Olympic Plaintiffs’ e-mails. See Exhibit 1 at Paragraphs 6-8.
Second, for those Registrants that did not respond to the e-mails, but which had a facsimile number in the Whois database, the Olympic Plaintiffs sent a facsimile notifying them of the filing of the Complaint and providing them with a web site address that contains the Complaint, i.e., www.sgbdc.com. Twenty-three (23) of the Registrants received the notification by facsimile. See Exhibit 1 at Paragraph 9.
Third, for the 205 Registrants that had not (1) responded to the e-mails or (2) did not have a facsimile number in the Whois database or whose facsimile number was incorrect, the Olympic Plaintiffs sent letters, return receipt requested, addressed to the postal addresses in the Whois database notifying them of the filing of the Complaint and providing them with the complaint that contains the Complaint. To date, the Olympic Plaintiffs have received return receipt postcards indicating that 175 Registrants received the notifications. See Exhibit 1 at Paragraph 10.
There are also Registrants that were sent letters, but the return receipt postcards were not returned to the Olympic Plaintiffs. On June 6, 2001, the Olympic Plaintiffs sent that group e-mail letters regarding the complaint that listed the web site address at which the Complaint is posted via the United States Postal Service’s (“USPS”) Electronic Courier Service, known as “PosteCS.” This service is an Internet-based document delivery service that allows a user “to send any type of electronic file over the Internet in a fast, reliable and secure method to anyone with an email account and a Web browser” and receive an electronic return receipt notification. See Exhibit 1 at Paragraph 11.
Upon sending documents via PosteCS, the recipient is notified that it has been sent documents by a notification e-mail from PosteCS. The recipient can then “receive” the documents by accessing the PosteCS web site via the unique Web address sent in the PosteCS e-mail. The PosteCS system provides a return receipt notification that the recipient has viewed the document. See Exhibit 1 at Paragraph 12.
PosteCS indicated that thirty (30) of those Registrants received the letter. See Exhibit 1 at Paragraph 13.
In sum, the Olympic Plaintiffs have sent a copy of the Complaint to the 322 Registrants via the e-mail, facsimile number or postal address that the Registrants provided to their registrars as they are obligated to do under their registration agreements.
F.
The Notice Requirements
The Supreme Court has held that notice of an in rem action must be “reasonably calculated under all of the circumstances, to apprise interested parties of the pendency of the action and afford them an opportunity to present their objections.” Mullane, 339 U.S. at 314. Whether a method of notice in an in rem case is so “reasonably calculated” is determined by the nature of the action, the circumstances of the case and the availability of alternative reliable, cost-effective forms of service. Greene v. Lindsey, 456 U.S. 444, 451-54 (1982). As the Court held: “in arriving at the constitutional assessment [of the adequacy of notice], we look at the realities of the case before us.” Id. at 451.
The “realities” of this case is that the Registrants and their Registrars rely heavily on e-mail for all aspects of the registration process. The registration agreements require that the Registrants provide their Registrars with current e-mail addresses at the time of registration and that the Registrants provide Registrars with changes in the e-mails as they occur. Changes in Contact Information (the accurate and current e-mail and postal addresses and, where available, facsimile numbers), reminders of account passwords, renewals of the domain name registrations, and transfers of the domain name registrations generally take place through e-mails.
Many of the Registrars send notices of changes in the registration agreements and promotional offers to the Registrants via e-mail. Registrants may contact some Registrars with technical or account questions only by e-mail, and are encouraged to use e-mail by most of the other Registrars. The Registrars generally use e-mail in reminding the Registrants when their Domain Names will expire and when investigating a suspicion of false Contact Information. In sum, e-mails are used in every aspect of the domain name registration, renewal and transfer processes. See Exhibit 1 at Paragraph 14.
Not only is e-mail communication commonplace in domain name registration matters, providing notice by e-mail is the most economical method of providing such service. It also has the advantage of providing essentially instantaneous communication, as does providing a copy of the notice by facsimile.
The Olympic Plaintiffs propose that the Court Order be sent by PosteCS to the current e-mail addresses of the Registrants, which the Olympic Plaintiffs shall determine by reviewing the Whois database for the Domain Names. Unlike the e-mails that were originally sent, the PosteCS system provides an indication of whether the e-mails have been received. The Olympic Plaintiffs believe that many of the Registrants who received the original e-mails decided not to respond to them.
Sending e-mail notice is consistent with the ACPA because it provides that in in rem cases where jurisdiction is based upon the fact that a defendant cannot be located, notice of the alleged violation and intent to proceed under the ACPA can be sent to the registrant of the domain name at the postal and e-mail address supplied by the domain name owner to its registrar. 15 U.S.C. § 1125(d)(2)(A)(ii)(II)(aa).
In addition, the Olympic Plaintiffs will send facsimiles to those Registrants to whom facsimiles were previously delivered.
The “realities” of this case show that e-mails and facsimiles are the most economical, immediate and reliable means of notifying the Registrants that can be notified by these means. See Greene, 456 U.S. at 451-54. Since this Motion and the Memorandum in support thereof will be sent to the Registrants by e-mail and facsimile, prior to the hearing on this Motion, we will be able to report to the Court by the time of the hearing on the efficacy of e-mail and facsimile service of the Court’s Order, based on the service of these documents. To the extent that the Olympic Plaintiffs are unable to provide Notice of this Motion and Memorandum in support thereof by e-mail or facsimile they will send it by international mail, return receipt requested.
G. Thirty Days Is an Appropriate Time To
Answer
In Banco Inverlat v. WWWInverlat.com, Civ Act. No. 00-640-A, the Court issued an order which required defendant, located in Mexico, to answer the Complaint within thirty (30) days of the issuance of the order, in an in rem ACPA case where defendant had received a copy of the complaint by courier and by e-mail.
It would be consistent with Banco Inverlat to require that Registrants who have received a copy of the Complaint, to be required to file an answer within thirty (30) days of this Court’s Order.
IV. CONCLUSION
The Olympic Plaintiffs respectfully request that the Court issue an Order providing that:
(1) the Court has dominion and control over the Domain Names due to the deposit with the Court of the Registrar Certificates granting such dominion and control;
(2) the Olympic Plaintiffs have been unable to obtain in personam jurisdiction over Registrants who would have otherwise been defendants under paragraph (1) of the ACPA, 15 U.S.C. § 1125(d)(1);
(3) Registrants have thirty (30) days to answer the Complaint or otherwise plead;
(4) a failure to respond may result in the transfer of the Domain Names to the Olympic Plaintiffs, or their cancellation or forfeiture; and
(5) to the extent that the Olympic Plaintiffs cannot serve this order on a Registrant at any of the addresses shown on the "Whois" database, the Olympic Plaintiffs may request the initiation of false contact information procedures by the registrars pursuant to the False Contact Information Order issued this day.
A draft order to the above effect is attached.
Respectfully submitted,
SILVERBERG GOLDMAN & BIKOFF, L.L.P.
______________________________________
Robert Patterson
Virginia Bar No. 31349
James L. Bikoff
David I. Wilson
Suite 120
1101 30th Street, N.W.
Washington, D.C. 20007
Date: November _____, 2001
[1] See Exhibit 1, Declaration of John T. Parker, at Paragraph 2, for schedule showing dispersion of domain names amongst the various Motions.
[2] To the extent that the Olympic Plaintiffs are unable to serve this Motion on particular registrants due to false contact information, we request that the Court permit the Olympic Plaintiffs to request that the registrars initiate the false contact procedure as discussed in the accompanying Motion that the Court Order Initiation of Cancellation Procedures by the Registrars Against the Registrants Who are Believed to have Provided False Contact Information.
[3] Domain names registered with three additional registrars that have filed registrar certificates have settled or are otherwise being dismissed.
[4] See discussion, infra at pp. 7-8, regarding the issue of whether plaintiffs in an in rem ACPA case must prove bad faith registration, trafficking in and/or use of the marks contained in the domain names in issue.
[5] The ACPA provides that marks protected by 36 U.S.C. § 220506(a)(4), a part of the Ted Stevens Olympic and Amateur Sports Act that grants the USOC exclusive rights to the OLYMPIC Marks, are covered by the ACPA. 15 U.S.C. § 1125(d)(1)(A)(ii)(III).
[6] See Laboratorios Roldan C. Por A. v. Tex. Intern., 902 F. Supp. 1555, 1568 (S.D. Fla. 1995), (holding that plaintiff, which owned a trademark registration in the Dominican Republic, was entitled to protect its mark in the U.S. courts, pursuant to 15 U.S.C. § 1126(h), and granted a preliminary injunction enjoining the unauthorized use of the mark, because the Dominican Republic is a party to the Paris Convention).
[7] Plaintiffs’ claim for relief is limited to the remedies permitted in in rem actions under the ACPA, i.e., the transfer of the Domain Names to the Plaintiffs, or their forfeiture or cancellation. 15 U.S.C. § 1125(d)(2)(D)(i).
[8] Plaintiffs proceeding under 15 U.S.C. § 1125(d)(2)(A)(ii)(II) must show their due diligence in attempting to locate a person who would have been a defendant by:
“(aa) sending a notice of the alleged violation and intent to proceed under this paragraph to the registrant of the domain name at the postal and e-mail address provided by the registrant to the registrar; and
(bb) publishing notice of the action as the court may direct promptly after filing the action.”
[9] Domain Names linked to “Under Construction” or “Coming Soon” web sites (“Coming Soon Domain Names”), i.e., they merely indicate a web site is “Under Construction” or is “Coming Soon,” were not included in the number of Domain Names that have actual web sites because the Coming Soon Domain Names have merely been registered with Registrars that provide this type of web page service and are not necessarily going to be linked to web pages. The Coming Soon Domain Names were thus included in the group of Domain Names that are mere registrations.
[10] In dictum, the court in Alitalia, 128 F. Supp. 2d at 347, n. 14, suggested that a mark owner in an ACPA case must disprove the existence of in personam jurisdiction in any judicial district in the United States.