Opinion
00 CIV. 8705 (DLC)
May 1, 2001
For Plaintiff Mattel, Inc.: William Dunnegan, Perkins Dunnegan New York, NY.
For Defendant "captainbarbie.com": Michael Aschen Abelman, Frayne Schwab, New York, NY.
MEMORANDUM OPINION AND ORDER
On November 15, 2000, plaintiff filed this in rem action under the Anticybersquatting Consumer Protection Act of 1999 ("ACPA") 15 U.S.C. § 1125 ("Section 1125") to enforce its trademarks against the registration and use of certain second level Internet domain names. One of the defendants, "captainbarbie.com," has raised the issue of whether this Court has subject matter jurisdiction over this in rem action.
In 1999, Section 1125 was amended to provide various remedies for what the statute describes as "cyberpiracy." In subsection (d)(2), Congress provided jurisdiction over in rem actions against a domain name, and allowed for the forfeiture, cancellation, or transfer of the domain name through such actions. 15 U.S.C. § 1125(d)(2)(D). The statute further provides that such actions may be filed in the district where the domain was registered or assigned if the plaintiff is an owner of a registered mark and is either unable to obtain personal jurisdiction over the person using the infringing domain name or through due diligence is unable to find that person. Section 1125(d)(2)(A) provides as follows:
The owner of a mark may 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 that registered or assigned the domain name is located if
(i) the domain name violates any right of the owner of a mark registered in the Patent and Trademark Office, or protected under subsection (a) or (c); and
(ii) the court finds that the owner —
(I) is not able to obtain in personam jurisdiction over a person who would have been a defendant in a civil action under paragraph (1); or
(II) through due diligence was not able to find a person who would have been a defendant in a civil action under paragraph (1) by —
(aa) sending a notice of the alleged violation and intent to proceed under this paragraph to the registrant of the domain name at the postal and email address provided by the registrant to the registrar; and
(bb) publishing notice of the action as the court may direct promptly after filing the action.15 U.S.C. § 1125(d)(2)(A).
The parties agree that captainbarbie.com was registered with Bulkregister.com in Baltimore, Maryland. Because its registrar is not located in New York, and plaintiff has identified no other domain name authority that regulated or assigned captainbarbie.com in New York, Section 1125(d)(2)(A) does not confer in rem jurisdiction over captainbarbie.com in the present action.
Plaintiff argues that in addition to the registrar's location, an in rem action can also be filed pursuant to Section 1125(d)(2)(c)(ii) in any district where the plaintiff deposits with the court documents establishing control over the registration and use of the domain name. This section provides that:
In an in rem action under this paragraph, a domain name shall be deemed to have its situs in the judicial district in which
(i) the domain name registrar, registry, or other domain name authority that registered or assigned the domain name is located; or
(ii) documents sufficient to establish control and authority regarding the disposition of the registration and use of the domain name are deposited with the court.15 U.S.C. § 1125(d)(2)(C).
In interpreting a statute, the first step is to "determine whether the language at issue has a plain and unambiguous meaning." Disabled in Action of Metro. N.Y. v. Hammons, 202 F.3d 110, 119 (2d. Cir. 2000). The inquiry "must cease if the statutory language is unambiguous and the statutory scheme is coherent and consistent." Id. Section 1125(d)(2)(A) explicitly describes in which judicial district an in rem action can be brought. In contrast, Section 1125(d)(2)(C) defines the "situs" for "an in rem action under this paragraph." Nothing in Section 1125(d)(2)(C) suggests that the section provides an alternative basis for in rem jurisdiction.
It appears that only one other court has analyzed this issue. Following a thorough and well reasoned analysis, the court in Fleetboston Financial Corp. v. Fleetbostonfinancial.com, 2001 WL 360592 (D.Mass. Mar. 27, 2001), held that the "ACPA does not provide for in rem jurisdiction except in the judicial district in which the domain name registry, registrar, or other domain name authority is located, as provided in 15 U.S.C. § 1125 (d)(2)(A)." Id. at *12. It found that Section 1125(d)(2)(C), in contrast, "exists to facilitate the continuation of litigation in one of the districts identified in subparagraph (2)(A)." Id. at *3. Subparagraph (D) of Section 1125(d)(2) dictates the mechanism by which the deposit described in subparagraph (C) can occur, and, together, these subparagraphs indicate that the "situs of the domain name can only be transferred after a complaint has been filed." Id. at *4 (emphasis in original). Following a description of the legislative history of these provisions, the court found that this reading of the statute was consistent with its legislative history. Id. at *6. Fleetboston concluded that interpreting Section 1125(d)(2)(C) as a basis for in rem jurisdiction, as plaintiff here suggests, would run "afoul [of] the due process clause of the Fifth Amendment of the United States Constitution." Id. at *6; see also id. at *12. Forcing an alleged cybersquatter to litigate in a forum where it has never been and could not be expected to be haled into court would "permit a procedure that plainly offends traditional notions of fair play and justice." Id. at *11. See also APC Commodity Corp. v. Ram DisTicaret A.S., 965 F. Supp. 461, 465-66 (S.D.N.Y. 1997). Applying well established canons of statutory construction, the court in Fleetboston noted that "courts should avoid adopting a construction of the statute that raises such a serious constitutional question." Fleetboston Financial Corp., 2001 WL 360592 at *6.
For the reasons articulated in FleetBoston, this Court lacks in rem jurisdiction under 15 U.S.C. § 1125(d) over captainbarbie.com, and all other defendants in this action that do not have a domain name registrar, domain name registry, or other domain name authority that registered or assigned the domain name located within this district. Accordingly, it is hereby ORDERED that plaintiff's claims against captainbarbie.com be dismissed.
IT IS FURTHER ORDERED that plaintiff inform the Court by May 11, 2001, whether this Court has subject matter jurisdiction over this in rem action as to any remaining defendants pursuant to Section 1125(d)(2)(A).
IT IS FURTHER ORDERED that plaintiff show cause, by May 11, 2001, why the Partial Final Judgment and Permanent Injunctions — entered as to defendants matellsoftware.com, matellsoftware.net, and mattelsoftware.org, on January 5, 2001, and entered as to defendant mastertheuniverse.com, on April 2, 2001 — should not be vacated.
IT IS FURTHER ORDERED that plaintiff send copies of this Order to defendants matellsoftware.com, matellsoftware.net, mattelsoftware.org, and mastertheuniverse.com.
SO ORDERED.