1:12-cv-01498
E.D. Va.Feb 25, 2013Background
- HSC filed an in rem action under the ACPA against the domain hsc.com to obtain transfer and ownership relief.
- The domain was hijacked by unknown hackers and registered through a Chinese registrar eName after being under HSC via GoDaddy.
- A preliminary injunction required VeriSign to restore the registrar to GoDaddy and to have the domain registered in HSC’s name; bond set at $500.
- Default was entered against the defendant domain name after no responsive pleading was filed by LinYu or others.
- The court granted a final default judgment posture consistent with the preliminary injunction relief, and ordered the $500 bond returned to HSC.
- Notice and service were completed via registrar addresses, publication in The Washington Post, and email to relevant recipients; subsequent appearance by HSC at hearing confirmed registrar restoration to HSC’s control.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether the court has in rem jurisdiction over the domain | HSC established protection under §1125(a) and §1125(d)(2)(A)(i) | No active defendant appeared to contest jurisdiction | Yes; in rem jurisdiction established under Lanham Act provisions |
| Whether service of process complied with §1125(d)(2) requirements | Notice given to LinYu via registrar addresses and published notice satisfied due process | No responsive pleading; no explicit challenge | Service completed and proper under statute |
| Whether default judgment is appropriate under Rule 55 and the pleadings | Default admits factual allegations, seeking transfer of domain and bond return | No opposition filed | Default judgment warranted consistent with the complaint and relief sought |
| Whether the relief should include transfer of the domain to HSC and bond return | ACPA in rem remedy permits transfer of domain; bond should be released | Not applicable due to lack of defense | Recommend transfer of domain to HSC and return of the $500 bond |
| Whether the defendant domain name should remain with HSC | Registrant hijacked domain and harmed mark; transfer appropriate | N/A | Yes; domain remains with HSC per preliminary injunction relief and findings |
Key Cases Cited
- Washington Speakers Bureau, Inc. v. LeadingAuthorities, Inc., 33 F. Supp. 2d 488 (E.D. Va. 1998) (Lanham Act relief for unregistered marks may be actionable under § 43(a))
- Perini Corp. v. Perini Constr., Inc., 915 F.2d 121 (4th Cir. 1990) (distinctiveness and likelihood of confusion considerations in trademark)
- International Bancorp, LLC v. Societe Des Baines De Mer et du Cercle des Estrangers a Monaco, 192 F. Supp. 2d 467 (E.D. Va. 2002) (unregistered mark protection and commerce use required for §1125(a))
- Lone Star Steakhouse & Saloon, Inc. v. Alpha of Virginia, Inc., 43 F.3d 922 (4th Cir. 1995) (dominant elements of a mark are identical to domain name for confusion analysis)
- Harrods Ltd. v. Sixty Internet Domain Names, 302 F.3d 214 (4th Cir. 2002) (in rem domain actions and transfer/remedy under §1125(d)(2))