In Domain law show number 128, we talk about subject matter jurisdiction under the ACPA after a foreign trademark holder wins a UDRP against a domain registered in the USA. Magistrate Judge McCarthy is not sure that there’s any federal jurisdiction after the Abitron v Hetronic SCOTUS decision.
SHOW #128 (SHOW LINK)
Tuesday, August 1, 2023 on Clubhouse @ 3pm PST/6pm EST
Show Outline
A. Show Intro by Todd
1. Greet Audience and Introduce Co-Hosts
2. Make General Announcements
3. Share Show Agenda
B. Domain Name Legal News
1. ICANN Board Accepts Next Round Implementation Plan from ICANN Org
2. Dan.com Holding Up LTO Payouts (domaininvesting.com)
3. Namecheap Release Insight Report for First Half of 2023
4. Domain King Schwartz Calls Out CEOs (ricksblog.com)
5. Berryhill Speaks On iwoman.com UDRP Filing @berryhill
C. Featured Topics
1. Legitimate Interest in a Domain Name
2. Subject Matter Jurisdiction Under the ACPA:
Magistrate Judge McCarthy issued a request for additional briefing on subject matter jurisdiction in my ACPA case that is pending in the WDNY after reading Abitron Austria GmbH v. Hetronic International, Inc., 600 U.S.___, 2023 WL 4239255 (2023) and Yegiazaryan v. Smagin, 599 U.S.___, 143 S. Ct. 1900 (2023).
Essentially, Judge McCarthy doesn’t think that a foreign mark is a mark within the meaning of 15 U.S.C. § 1114(2)(D)(iv)-(v) and therefore doesn’t see how the court has subject matter jurisdiction under the ACPA when a winning UDRP Complainant doesn’t have a matching US trademark.
The result would be a disaster for US-based domain registrants who lose a UDRP due to a foreign trademark registration. Eg. airzone.com, Lottosport.com, Lambo.com, visitqatar.com, sesamesnap.com, and any number of US based business owners, regardless of whether they have USPTO registered trademarks.
My initial thoughts are that US courts retain federal jurisdiction under 15 U.S.C. § 1114(2)(D)(iv) “if a registrar, registry, or other registration authority takes an action described under clause (ii) based on a knowing and material misrepresentation by any other person that a domain name is identical to, confusingly similar to, or dilutive of a mark, …”
(ii)An action referred to under clause (i)(I) is any action of refusing to register, removing from registration, transferring, temporarily disabling, or permanently canceling a domain name:
https://www.law.cornell.edu/uscode/text/15/1114
- (I) in compliance with a court order under section 1125(d) of this title; or
- (II) in the implementation of a reasonable policy by such registrar, registry, or authority prohibiting the registration of a domain name that is identical to, confusingly similar to, or dilutive of another’s mark.
Essentially, when a registrar takes an action based on an ICANN approved UDRP provider’s decision based on the domain being identical to, confusingly similar to any mark in the world, it’s the action that was taken that’s key and not whether the mark is a mark under US law. This is how Dent v Lottosport Italia and
Jurisdiction Statement in Michaels v Unitop (Agros) re sesamesnaps.com, etc
Pursuant to 28 U.S.C. §§ 2201(a) and 2202, Michaels seeks a declaration and judgment regarding his rights and obligations in an actual controversy within this Court’s jurisdiction between Michaels and Agros Confectionery concerning Michaels’ rights in and to
the Domain Names. Subject matter jurisdiction exists in this case pursuant to 28 U.S.C. § 1331, giving this Court original jurisdiction in a civil action raising a federal question, and 28 U.S.C. §1338(a), giving this Court original and exclusive jurisdiction in a civil action arising under the trademark laws of the United States.
Jurisdiction Statement in Dent v Lotto Sport Italia re lottosport.com
This Court has subject matter jurisdiction over this action because it
involves a federal question, and because it requires a declaration of rights and other legal relations. More specifically, this Court has jurisdiction pursuant to 28 U.S.C. 1331 (because this cause arises under 15 U.S.C. 1114 in that Plaintiff is the registrant of a domain name which has been suspended, disabled, or transferred under a policy provided by the registrar thereof relating to alleged conflict with a trade or service mark claimed by the Defendant), and under 28 U.S.C. 2201(a) (“In a case of actual controversy within its jurisdiction, . . . any court of the United States, upon the filing of an appropriate pleading, may declare the rights and other legal relations of any interested party seeking such declaration, whether or not further relief is or could be sought.”)
Jurisdiction Statement in Blair v Automobili Lamborghini S.p.A.
This Court has subject matter jurisdiction over this action pursuant to 28 U.S.C. § 1331, 15 U.S.C. § 1114(2)(D)(v), and 28 U.S.C. § 2201 that Plaintiff’s acquisition and use of the Disputed Domain is not unlawful under the Anticybersquatting Consumer Protection Act (ACPA), 15 U.S.C. § 1125(d).
D. UDRP Reviews
(Gathered through InternetCommerce.org, UDRP.tools and DNdisputes.com)
1. varlans.com
Varian Medical Systems owns the domain name varian.com and alleged that the person running varlans.com was intercepting their emails and took money from one or more of their customers. There was no response to the complaint.
The Disputed Domain Name appears identical to the VARIAN mark when in lower case form. Indeed, when the Disputed Domain Name is written out in lowercase, the “L” appears identical to the “I” in the VARIAN mark. Additionally, the Disputed Domain Name is a plural of Complainant’s domain name
2. leumas.com
3. ampol.com
E. Audience Comments and Questions
F. Close the Show
2023 Past Special Guests:
• February 28, 2023 – Howard M. Neu PA (Neu Law – NeuLaw.com, NeusNews.com) LISTEN TO REPLAY
• March 7, 2023 – Zak Muscovitch (Muscovitch.com, ICA General Counsel, CIIDRC Panelist) LISTEN TO REPLAY
• April 11, 2023 – Marc Trachtenberg (Greenberg Traurig – GTlaw.com) LISTEN TO REPLAY
• April 25, 2023 – Stevan Lieberman (Greenberg & Lieberman – APlegal.com, WilyFish.com, EscrowDomains.com)
• May 9, 2023 – Jonathan Tenenbaum (Media Options – mediaoptions.com) LISTEN TO REPLAY
• June 13, 2023 – Mike Mann (MikeMann.com, DomainMarket.com) LISTEN TO REPLAY