Some courts have refused to exercise actual jurisdiction where there is no associated registrar, registry, or other authority associated with the domain names. It is particularly important to keep this in mind when making a decision about the best way to enforce your intellectual property rights. There are two main methods of enforcing these rights;
One, the Anti-Cybersquatting Act (ACPA) allows a trademark owner to initiate litigation against domain name registrants where the complainant can establish that the registrant;
(1) has a bad faith intent to profit from the mark,
(2) register, traffic or use a domain name,
(3) that is identical or confusingly similar to a distinctive mark or that is identical, confusingly similar or diluent to a famous mark
Two, the Uniform Domain Name Dispute Resolution Policy (UDRP) has been seamlessly integrated into the global domain name registration market by the Internet Corporation for Assigned Names and Numbers (ICANN). Importantly, domain registrars provide little or no oversight to ensure that registered consumers do not register domain names that infringe the rights of a registered trademark or trademark owner. However, any entity that registers a domain name automatically must declare and guarantee that such registration does not affect the rights of any third party (brand owner). In addition, the UDRP ensures that all domain registrants agree to participate in an arbitration-like proceeding in the event a third party brings a claim against the domain name or the registrant.
Any third party bringing a claim against a domain name or registrant must prove the following to be successful in a UDRP proceeding;
(1) The domain name is identical or confusingly similar to a trademark or service mark in which the claimant has rights;
(2) the registrant has no right or legitimate interest in the domain name; and
(3) The holder registered the domain name and is using it in “bad faith”.
The UDRP allows a claim to be brought against a domain name, registered anywhere in the world, due to the mandatory arbitration option when registering a domain name. Somewhat more situational is the ability to file a successful lawsuit under the ACPA. This is because not all courts handle jurisdiction over foreign registered domain names equally. For example, some state jurisdictions do not allow the exercise of jurisdiction over domains where there is no registrant, registrar, registry, or other authority associated with the domain names in that state.
The state of Nevada is among those jurisdictions. The recent ACPA lawsuit filed in Nevada by Andre Agassi and his wife, Steffi Graf, poignantly illustrates this point. Deborah Logan wrote in her article “Moving Offshore Jurisdiction in an Internet World Without Borders,” that she outlines the World Class Tennis Stars’ attempt to derail third-party cybersquatters who had registered domain names with the personal names of the stars;
“No registrar, registry, or other authority associated with the domain names was located in Nevada, and the court found that no actual jurisdiction could be exercised over the domain names. It appears that the plaintiffs intended to sue the registrars of domain names in the hope that registrars would sign Registrar Certificates to be deposited in the Nevada district court, thus establishing jurisdiction over the domain names. However, this strategy failed.”
However, it is important to note that this Nevada decision does not represent a national position on the jurisdiction of foreign defendants. Contrary to Nevada, there have been several court cases in recent years that have held that US courts can still claim jurisdiction over a domain name, regardless of the location of the domain name registrant or registrant.
It is also important to note that any domain name or website owner who has direct contact with people in the US (for example, flow of trade, sale and export of items from a foreign source to the US). US), you will likely be subject to personal jurisdiction in any US state.
To further muddy matters, courts sometimes consider the act of transferring a portfolio of domain names to a non-US registrar as domain name or website owner prospects of winning a UDRP or ACPA dispute.
To summarize, a UDRP procedure is probably always available against an offending domain name. A lawsuit filed under the ACPA is more likely to succeed in establishing some form of jurisdiction over the defendant if the registrant, registrar, registry, or other authority associated with the domain is located within the same judicial district in which it is filed. filed the claim. Selling items to US consumers is likely to subject that website or its owner to personal US jurisdiction, and be careful moving a domain portfolio overseas so you don’t give evidence of bad faith.