Answering an In Rem Action Against a Domain Name under the ACPA

The Anti-cybersquatting Consumer Protection Act, 15 U.S.C. § 1125(d) allows a trademark owner to “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” where personal jurisdiction over the accused domain name infringer cannot be established, or where that party cannot be found.  15 U.S.C. § 1125(d)(2).  However, the statute does not specify procedures for responding to an in rem complaint.  In Saurikit, LLC v. Cydia.com, No. 1:11cv888 (N.D. Va. April 17, 2012), the Court held that an Answer on behalf of the domain name was acceptable where it identified “the owner of the domain name, and earlier pleadings explicitly state[d]" that the domain name owner had engaged the signing counsel “to represent its interest in this in rem action.”

The plaintiff had filed a motion for judgment on the pleadings under Federal Rule of Civil Procedure 12(c), arguing “that it [was] entitled to judgment because there is no Answer on file by a 'claimant.'”  An earlier Eastern District of Virginia case, Caesars World, Inc., v. Caesars-Palace.com, 112 F. Supp. 2d 505 (E.D. Va. Aug. 25, 2000), had “found that 'the answer should have been filed on behalf of claimant or claimants seeking to assert their interests in the domain name.'”

However, the Caesars “Court's rationale was grounded in a concern about its ability to 'determine if the interests of certain persons to [the] res.”  In contrast, the defendant here had “continuously taken the steps required of it in order to come forward and argue its ownership interest in the res.”  There was no question about who owned the domain name, as the court had confirmed earlier in setting aside a default judgment.  Therefore, the domain name owner's answer was sufficient, and in the plaintiff's motion for judgment on the pleadings was denied.

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