The advantages of moving a portfolio of companies or domain names outside the United States

Some courts have refused to exercise actual jurisdiction when there is no registrar, registry, or other authority associated with domain names. This is particularly important to keep in mind when making a determination on the best way 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 sue domain name registrants when the complainant can establish that the registrant;

(1) has the bad faith intention to profit from the brand,

(2) register, traffic or use a domain name,

(3) that is identical or confusingly similar to a distinctive mark or is identical, confusingly similar or diluent of a famous mark

Second, 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 ). Importantly, domain registrars provide little or no oversight to make sure consumer registrants are not registering domain names that infringe on the rights of a trademark or trademark owner. However, any entity that registers a domain name automatically must represent and guarantee that such registration does not affect the rights of any third party (trademark owner). Additionally, 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 asserting 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 to which the claimant has rights;

(2) The registrant does not have any right or legitimate interest in the domain name; Y

(3) The registrant registered the domain name and is using it in “bad faith”.

The UDRP allows you to file a lawsuit 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 file 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 authorize 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, poignantly serves to illustrate this point. Deborah Logan wrote in her article “Moving Offshore Jurisdiction in a Borderless Internet World” summarizing the World Class Tennis Stars attempt to derail third-party cybersquatters who had registered domain names with the Stars’ personal names;

“There was no registrar, registry, or other authority associated with domain names in Nevada, and the court found that no actual jurisdiction could be exercised over domain names. It appears that the plaintiffs intended to file the complaint with the registrars. of domain names in the hope that registrars will sign Registrar Certificates for deposit with the Nevada district court, thus establishing jurisdiction over domain names. However, this strategy failed. “

However, it is important to note that this Nevada decision is not representative of a national position on jurisdiction over foreign defendants. As opposed 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 registrant or registrar.

It is also important to note that any domain name or website owner who has direct contact with people in the US (For example: trade flow: sale and export of items from a foreign source to the US). .), You are probably susceptible to personal jurisdiction in any US state.

To further muddy the waters, the act of moving a portfolio of domain names to a registrar outside the U.S. is sometimes considered by the courts to be evidence of bad faith, which when taken into account in rendering the ruling It can have a very damaging effect on a domain name or the website owner’s prospects of winning a UDRP or ACPA dispute.

In short, a UDRP proceeding against an infringing domain name is likely always available. The lawsuit filed 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 within the same judicial district in which the lawsuit was filed. Selling Items to US Consumers You will likely subject that website or its owner to personal US jurisdiction, and be careful when moving a domain portfolio overseas to avoid giving evidence of bad faith.

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