In the recent past, several courts have declined to exercise in rem jurisdiction. This means; there is zero presence of registrar, registry and no other authority that is linked to domain names. This is an important thing to have in mind as you determine the most effective way to determine the best ways of enforcing Intellectual Property Rights.
Two main procedures for enforcing these rights are as follows;
First Right: ACPA (Anti-Cybersquatting Protection Act) the act makes it possible for litigation to be surged forth by a trademark owner against domain name registrants. The complainant can argue that the registrant has;
- Bad intention/faith and the intent of profiting from the mark
- Registers, makes use of the domain name and traffics in
- The domain name is identical or to a wide extent quite similar to a certain distinctive degree or its dilutive of a famous mark.
Second Right: UDRP (Uniform Domain Name Dispute Resolution Policy) that has seamlessly been introduced and sucked in the global domain name registration market by the Internet Corporation for ICANN.
It’s critical to note that domain registrars provide very minimal oversight that sees consumer registrants refrain from registering Domain names that would rather encroach upon the rights of a brand owner or trademark.
That said; any individual or person registering a domain name should automatically represent and guarantee that such registration doesn’t impose on the rights of any brand owner. The UDRP also sees to it that all domain registrants conform to participating in arbitration like proceedings should there be a case in which a third party disputes the registrant or domain name.
Anybody or group disputing a registrant or domain name is required to produce the following things if they want to be successful in their endeavors:
- Prove that the domain name in question is either identical of disturbingly similar to a trademark or service marking that they possess rights about.
- The registrants is not in possession of any rights or genuine interests in the domain name
- The registrant registered the domain for the purpose of using it in bad faith
UDRP makes it possible for the suit to be filled against a domain name that has been registered anywhere on planet earth due to the obligatory opt-in to arbitration as a Domain name is being registered.
Its more beneficial that a suit can be successfully filed under the ACPA. Reason being that not all courts deal with jurisdiction over foreign registered domain names equally, Case in point; there are state jurisdictions that don’t authorize jurisdiction exercise over domains that lack registrant, registrar, registry and any other authority linked with domain names in the State where the case has been brought about.
The Nevada State is part of these jurisdictions. An ACPA lawsuit that was filed just the other day in Nevada by Andre Agassi together with his wife Steffi Graf is the perfect example that will best illustrate this point.
In the lawsuit, no registrar, registry or any other authority that was linked with the domain names was situated in Nevada and the court ruled that no in rem jurisdiction would have been exercised over the domain names.
It looked as if the accusers were intending on serving the complaint on the domain name registrars wishing that the registrars would proceed and sign Registrar Certificates that were supposed to be next deposited with the Nevada district court thus establishing authority over the domain names. However, this endeavor failed miserably.
It is also critical to note that the Nevada decision doesn’t prove that the country’s stance on jurisdiction over foreign defendants. In contradiction there have were a number of court cases just recently and that prove that US courts are able to claim authority over domain name no matter the location of the domain name registrar or location.
It is also critical that any domain name or a website owner that has direct contact with people in the United States and will be likely vulnerable to personal influence in the US State.
To make the waters more murky, at times the act of moving a domain name portfolio to a US non registrar is perceived by court of law as bad faith that when taken into account that an entire ruling can be viewed by courts as bad faith evidence when taken into account the ruling will cause harmful effect on website owner’s prospective of winning ACPA or UDRP dispute.
URDP proceeding will at most instances be available against an infringing domain name. A suit that is filed under the ACPA has a higher chance of survival and establishes some form of authority over the defendant should the registrant, registrar, and registry or perhaps any other authority mandated that the domain is located in the same judicial boundary that is found within the same judicial district according to the manner of the suit filing.
Selling products to US consumers likely submits that websites or the owner to personal authority in the USA. Take precaution before moving domain portfolio overseas to refrain from showing and bad faith evidence.