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ICANN not a “domain name authority” under ACPA; no in rem jurisdiction in district where ICANN is based — Vizer v. Vizernews.com, 2012 WL 2367130 (D.D.C. June 22, 2012)

First off, my apologies for writing two consecutive posts with headlines that play off the word “can’t.”  Now on to more serious matters…

This case scuttles one way of getting a quick default judgment against a cybersquatter who is nowhere to be found.  The plaintiff (Vizer) wanted to bring a cybersquatting suit against the registrant of a domain name that contained his last name and was linked to a website dedicated to providing news about him (Vizernews.com).  Vizer couldn’t identify the registrant of the domain name; the domain was registered anonymously and the registrant used a privacy service to hide its contact information.  Vizer therefore brought an in rem action under the Anti-Cybersquatting Consumer Protection Act (ACPA).  Vizer is correct that the ACPA allows a trademark owner to file an in rem civil action against a domain name in the judicial district in which the “domain name registrar, domain name registry, or other domain name authority is located.”  The issue is, did Vizer file in the correct judicial district?

Vizer filed the in rem action in Washington, D.C. on the theory that the Internet Corporation for Assigned Names and Numbers (ICANN) maintains an office there.  The court dismissed the case because ICANN didn’t fit into any category of entities who can be sued in rem under the ACPA.  ICANN is not the domain name registrar (in this case, Melbourne IT, LTD d/b/a Internet Names Worldwide) nor the registry (in this case, VeriSign, Inc.).  Vizer argued that ICANN is a “domain name authority,” but the court rejected that suggestion.  According to the court, the term “domain name authority” refers to an entity that has some authority over the domain name, i.e., it plays a role in registering or assigning domain names.  ICANN doesn’t do either of those things.  Although ICANN coordinates the global domain name system, it doesn’t actually assign specific domain names or maintain a registry of such names.  The court also found persuasive legislative history of the ACPA stating that the in rem provision was not meant to cover ICANN.

LegalTXT Lesson: It looks like Vizer’s attorneys did their homework before going the in rem route.  I’m not sure what they could’ve done differently, except one wonders why they didn’t file in where the registrar (VeriSign) is located.  Verisign is based in Reston, Virginia, just a short distance far from D.C.

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Only owner of a mark can sue for cybersquatting — Garruto v. Longo, 2012 WL 1981838 (D.N.J. June 1, 2012)

Say a disgruntled customer of your business decides to complain to the world about how dissatisfied he is with the product you sold him.  He writes scathing online reviews.  He even goes so far as to register a domain name that includes part of your company’s name.  What can you do?

At first glance, one solution might be to sue under the Anticybersquatting Consumer Protection Act (ACPA).  But not so fast.  First, you need to be the legal owner of the trademark that’s part of the offending domain name.  The plaintiff in Garruto v. Longo apparently overlooked that step.

A pet store (Fancy Pups, Inc.) sold a German Shepherd puppy to the defendant (Longo).  Immediately after the sale, the puppy contracted the parvo virus and died.  Longo claimed the puppy contracted the virus at Fancy Pups.  According to the complaint, Longo then “began an internet crusade to run Fancy Pups out of business.”   Longo allegedly posted photos of the dead puppy on the Internet, called the owner of Fancy Pups a “puppy killer,” and labeled Fancy Pups a “puppy mill.”  Longo voiced her complaints on online review websites like Yelp! and published advertisements in a local newspaper.  Longo also created a company profile for Fancy Pups on Manta.com.  In the profile heading “About Fancy Pups,” Longo stated: “We sell sick puppies at top dollar that will die.  I am an unscuplious [sic] man who will take your money and leave you with a dead dog.  I am evil LIAR.”

Fancy Pups and its owner sued Longo under the ACPA.  Notably missing in the complaint was an allegation that “Fancy Pups” was registered as a trademark by the plaintiffs or that it is a famous mark that everyone knows.  This omission proved fatal to the ACPA claim.  A cybersquatting claim must be brought by the “owner of a mark,” and the plaintiffs failed to establish that “Fancy Pups” was entitled to trademark protection.  The court also noted that there was no allegation that Longo registered a domain name that included “Fancy Pups.”  The court concluded without much discussion that posting a fake profile on an online business directory like Manta.com does not constitute cybersquatting.

LegalTXT Lesson: Register your trademarks.  The ACPA won’t help you if you can’t establish you own the marks you’re trying to protect.