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Court Finds Domain Names are Located Where Registry and Registrar are Located

In December 2000, Office Depot, Inc., obtained a judgment against John Zuccarini under the Anticybersquatting Consumer Protection Act (ACPA) arising out of Mr. Zuccarini’s registration of offic-depot.com as a domain name. Office Depot was unable to collect on its judgment and eventually assigned it to DS Holdings, LLC.

DS Holdings sought to levy upon 190 “.com” domain names that Mr. Zuccarini had registered. To this end, it registered Office Depot’s judgment in the Northern District of California, where Verisign, Inc., the registry for “.com” and “.net” top-level domain names, is located. After some procedural jockeying, it moved for the appointment of a receiver under California law to obtain and sell the domain names and use the proceeds to satisfy the judgment.

The Northern District granted the motion. Mr. Zuccarini appealed, arguing the district court lacked personal jurisdiction to enter the order.

On Feb. 26, the Ninth Circuit affirmed, finding that for purposes of establishing quasi in rem jurisdiction, domain names are located both where the registry and the relevant registrar are located. It took its cue from the ACPA, which it deemed to be persuasive authority.

The court found: “Under the ACPA, a trademark owner in a civil cybersquatting action can proceed in personam against the cybersquatter. If there is no in personam jurisdiction in any judicial district of the United States, the owner may proceed in rem against the allegedly infringing domain name. The ACPA provides that in rem jurisdiction over these domain names shall be ‘in the judicial district in which the domain name registrar, domain name registry, or other domain name authority that registered or assigned the domain name is located….’ The ACPA also provides for the legal situs of the domain name once a lawsuit has been filed….”

Given the ACPA’s persuasive authority and the practicalities involved in bringing suit to execute judgments against owners of domain names, the court found “under California law that domain names are located where the registry is located for the purpose of asserting quasi in rem jurisdiction. Although the question is not directly before us, we add that we see no reason why for that purpose domain names are not also located where the relevant registrar is located.”

This led the court to affirm the district court’s order appointing the receiver.

The case cite is Office Depot, Inc. v. Zuccarini, __ F.3d __, 2010 WL 669263, No. 07-16788 (9th Cir. Feb. 26, 2010).

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  • Response
    Michael Atkins - Seattle Trademark Lawyer - Court Finds Domain Names are Located Where Registry and Registrar are Located

Reader Comments (1)

Michael,

Hello,

The geographic location of the registry and whether it constitutes proper jurisdiction is one issue, but the major part of the case for me and one the ninth circuit in it's decision did not address, although it was a significant part of the appeal, is the third circuit finding that the majority of the domain names which were the subject of the ninth circuit case, fraudulently redirected Internet consumers away from their intended destinations.

Most people are unaware of the original intent of the case filed against me in 2001 by the ftc. The first page of the lawsuit filed stated the reason for doing so.

The ftc sited the domain name I owned - vedio.com -, that it was clear to the ftc that the domain was registered as a misspelling of the correctly spelled domain name - video.com -, that it was registered for the purpose of redirecting consumers away from the correctly spelled website to my web site for the purpose of obtaining Internet traffic.

It would seem to me a concept as general as this would apply to everyone, in the eyes of the law, not just to me, as this was the logic behind the third circuit decision.

The finding of the third circuit was that the domain names under the ftc act, fraudulently redirected Internet consumers.

I asked the ninth circuit to consider the third circuit decision, and therefore find jurisdiction for the case must be in the third circuit, as the plaintiff would need to petition the third circuit and present reasons why the domain names do not fraudulently redirect Internet users.

To convince the third circuit to reverse their finding of fraudulent use before the domain names could legally be used.

The ninth circuit chose not to address this issue in their decision, which I believe was incorrect.

Thank you.
March 2, 2010 | Unregistered CommenterJohn Zuccarini

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