In a recent decision, a federal court in Washington, D.C. dismissed a trademark owner’s in rem action under the Anticybersquatting Consumer Protection Act (“ACPA”), finding that the presence of an Internet Corporation for Assigned Names and Numbers (“ICANN”) office in that district was insufficient to give the court in rem jurisdiction.
The ACPA allows trademark owners to file in rem actions against a domain name when the owner cannot obtain personal jurisdiction over a person who would have been a defendant or cannot find that person after due diligence. Trademark owners may file the in rem action “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.”
Last year, Marius Vizer filed an in rem action under the ACPA against the domain name http://www.vizernews.com in the U.S. District Court for the District of Columbia. Although Vizer conceded that neither the domain name registrar or registry were located within the court’s jurisdiction, he argued that he properly filed his in rem action in that district because ICANN, which has an office in Washington D.C., is an “other domain name authority” that registers and assigns domain names under the meaning of the ACPA.
The court disagreed, ruling that ICANN’s D.C. office was insufficient to give the court in rem jurisdiction over the action. First, the court found that ICANN, which coordinates and administers the domain name system, does not “register” or “assign” domain names under the plain meaning of the words or as they have been interpreted by case law. Second, the court found that ICANN is not a “domain name authority” under the ACPA. According to the court, the plain language of the statute and the legislative history indicate that “domain name authority” refers to only those entities that actually offer the domain name, place it in a registry, or operate the registry.
The court’s decision could have significant implications for the ability of trademark owners to pursue in rem actions against domain names with new generic top-level domains (“gTLDs”) that ICANN will approve over the next year. Many of the new gTLD registries will be located outside of the United States, as are many domain name registrars. Although the court stated in a footnote that its ruling does not address whether ICANN’s role in approving new gTLDs would make ICANN a domain name authority under the ACPA for those gTLDs, it is far from clear that ICANN’s approval of “new gTLDs” is meaningfully different from its approval of and relationship with the existing gTLDs. Nonetheless, trademark owners who intend to file in rem actions on the basis of ICANN’s presence in a particular jurisdiction should be prepared to distinguish their facts from the court’s analysis in Vizer. This decision raises the possibility that it may ultimately become necessary to amend the ACPA to avoid any doubt that ICANN is an “other domain name authority” for purposes of in rem jurisdiction.