110 F. Supp. 2d 420 (E.D. Va. 2000)
Harrods Limited is a private company organized under the laws of England that has operated the Harrods Department Store in London since 1849, serving approximately 35,000 customers each day.1 In February 1999, the company launched an Internet site at www.harrods.com.2 Later that year, through a licensee, it instituted Harrods Online allowing consumers in the United States and Canada to purchase products through the Internet.3 Harrods Limited owns twenty-three valid United States Trademark Registrations for the Harrods mark along with pending applications for Harrods Online and Harrods Direct.4
In 1912, Harrods Limited incorporated Harrods South America Limited as a wholly-owned subsidiary and opened a store in Argentina under the name Harrods. The following year it established Harrod's (Buenos Aires) Limited as an independent English company to operate the subsidiary.5 In the 1920s Harrods South America Limited ceased doing business and Harrod's (Buenos Aires) Limited took over all of its rights, subsequently registering the mark in several South American countries. In 1963 Harrods Limited sold its remaining shares in Harrod's (Buenos Aires) Limited, after which there has been no further ownership connection between the two companies.6
On February 16, 2000, Harrods Limited filed this in rem action relating to the improper registration and use of sixty Internet domain names containing marks belonging to the plaintiff.7 The domain names, registered by Network Solutions, Inc. to Harrod's (Buenos Aires) Limited, include examples such as cyberharrods.com, HARRODS-buenosaires.net, harrodsamerica.com, harrodsargentina.org, harrodsbank.net, harrodsbashopping.net, harrodsbrazil.com, harrodsshopping.com, harrodssouthamerica.org, harrodsstore.net, harrodsservices.org, and shoppingharrods.com.8 The complaint advances four causes of action: Federal Trademark Infringement, Trademark Dilution, violation of the Anti-Cybersquatting Consumer Protection Act, and Federal Unfair Competition, seeking transfer of the domain names to the plaintiff.9
All sixty domain names were registered to Harrod's (Buenos Aires) Limited, a foreign corporation with its principal place of business in Buenos Aires, Argentina, through Network Solutions, Inc. located in Herndon, Virginia.10 On March 27, 2000, Network Solutions, Inc. executed a Registrar Certificate indicating Harrod's (Buenos Aires) Limited as the registrant.11 Harrods Limited deposited the certificate into the Registry of the Court on April 6, 2000, and sent copies of the complaint and notice to Harrod's (Buenos Aires) Limited by Federal Express and email.12 By order of April 28, 2000, the court determined that actual notice had been received and directed the domain names to appear by June 15, 2000.13 On June 5, 2000, the sixty Internet domain names filed the Motion to Dismiss.14
Whether bad faith intent to profit is a required element that must be alleged in an in rem action under the Anti-Cybersquatting Consumer Protection Act?15
Under 15 U.S.C. § 1125(d)(1), liability in a civil action requires that a person has a bad faith intent to profit from the mark. The person must also register, traffic in, or use a domain name that is identical or confusingly similar to a distinctive or famous mark.16 Paragraph (2) of the same subsection authorizes an in rem action only if the court finds that the owner cannot obtain in personam jurisdiction over a person who would have been a defendant in a civil action under paragraph (1).17 This structure incorporates the bad faith element by explicit statutory reference.18
Yes. The text of 15 U.S.C. § 1125(d)(2)(A)(ii) requires a judicial finding that in personam jurisdiction cannot be obtained over a person who would have been a defendant under paragraph (1).19 Paragraph (1) expressly defines such a defendant as one possessing bad faith intent to profit. Harrods Limited filed its in rem action against the sixty domain names because Harrod's (Buenos Aires) Limited, the foreign registrant located in Buenos Aires, Argentina, was not subject to personal jurisdiction in this district.20
Yet the complaint contained no allegation of bad faith intent to profit.21 Instead, it asserted only that the domain names were confusingly similar to or dilutive of the Harrods marks.22
Bad faith intent to profit is a required element that must be alleged in an in rem action under the Anti-Cybersquatting Consumer Protection Act.23
Whether claims for federal trademark infringement, trademark dilution, and federal unfair competition may be advanced in an in rem action under the Anti-Cybersquatting Consumer Protection Act when the domain name registrant is not subject to personal jurisdiction?24
An in rem action under the Anti-Cybersquatting Consumer Protection Act is brought against the domain name itself.25 It does not confer personal jurisdiction over the registrant.26 Therefore, any cause of action that would impose personal liability on the owner cannot proceed.27 The Lanham Act provisions for trademark infringement under 15 U.S.C. § 1114, dilution under 15 U.S.C. § 1125(c), and unfair competition under 15 U.S.C. § 1125(a) each impose civil liability on a person. They therefore require in personam jurisdiction.28
No. Harrods Limited brought this proceeding as an in rem action against the sixty domain names.29 The domain names are registered to Harrod's (Buenos Aires) Limited.30 The court determined that the Argentine corporation was not subject to personal jurisdiction.31 The court therefore lacks authority to adjudicate claims that would impose personal liability.32
The complaint's counts for federal trademark infringement, trademark dilution, and federal unfair competition each seek remedies against a person.33 They cannot be maintained in an in rem proceeding.34 Such a proceeding is limited to forfeiture, cancellation, or transfer of the domain names themselves.35
Claims for federal trademark infringement, trademark dilution, and federal unfair competition may not be advanced in an in rem action under the Anti-Cybersquatting Consumer Protection Act when the domain name registrant is not subject to personal jurisdiction.36