Some courts have refused to exercise actual jurisdiction when there is no associated registrar, registry, or other authority associated with domain names. It is particularly important to keep this in mind when making a decision about how best to enforce your intellectual property rights. There are two main methods of enforcing these rights;
One, the Cybersquatting Protection Act (ACPA) allows a trademark owner to bring litigation against domain name registrants where the complainant can establish that the registrant;
(1) intends in bad faith 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 to, confusingly similar to, or dilutive of a famous mark
Two, the Uniform Domain Name Dispute Resolution Policy (UDRP) has been uniformly integrated into the global domain name registration market by the Internet Corporation for Assigned Names and Numbers (ICANN). It is important to note that domain registrars provide little or no oversight to ensure that registered consumers do not register domain names that infringe the rights of a trademark or brand owner. However, any entity that automatically registers a domain name must represent and warrant 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 procedure in the event that a third party files a claim against the domain name or 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 complainant has rights;
(2) the registrant has no right or legitimate interest in the domain name; Y
(3) The owner registered the domain name and is using it in “bad faith.”
The UDRP allows a lawsuit to be filed against a domain name, registered anywhere in the world, due to the mandatory option of arbitration when registering a domain name. Something more situational is the ability to bring 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 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, serves poignantly to illustrate this point. Deborah Logan wrote in her article “Moving Offshore Jurisdiction in an Internet World Without Borders” that she summarizes 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 actual jurisdiction over the domain names could not be exercised. It appears that the plaintiffs intended to sue the registrars in the hope that registrars would sign Registrar Certificates to be deposited in the Nevada district court, thereby 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 stance on the jurisdiction of foreign defendants. In contrast 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’s registrant or registrar.
It is also important to note that any domain name or website owner that has direct contact with persons in the US (for example, flow of trade, sale, and export of items from a foreign source to the US). USA), you will likely be subject to personal jurisdiction in any US state.
To muddy things up further, courts sometimes consider the act of transferring a domain name portfolio to a registrar outside of the US domain name or the website owner’s prospects of winning a UDRP or ACPA dispute.
To summarize, a UDRP proceeding is probably always available against an offending domain name. A lawsuit brought under the ACPA is more likely to be successful 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 the domain name is registered. filed the claim. Selling items to US consumers likely subjects that website or its owner to personal US jurisdiction, and be careful moving a portfolio of domains overseas so you don’t give evidence of bad faith.