ICANN not a “domain name authority” under ACPA; no in rem jurisdiction in district where ICANN is based — Vizer v. Vizernews.com, 2012 WL 2367130 (D.D.C. June 22, 2012)
First off, my apologies for writing two consecutive posts with headlines that play off the word “can’t.” Now on to more serious matters…
This case scuttles one way of getting a quick default judgment against a cybersquatter who is nowhere to be found. The plaintiff (Vizer) wanted to bring a cybersquatting suit against the registrant of a domain name that contained his last name and was linked to a website dedicated to providing news about him (Vizernews.com). Vizer couldn’t identify the registrant of the domain name; the domain was registered anonymously and the registrant used a privacy service to hide its contact information. Vizer therefore brought an in rem action under the Anti-Cybersquatting Consumer Protection Act (ACPA). Vizer is correct that the ACPA 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 is located.” The issue is, did Vizer file in the correct judicial district?
Vizer filed the in rem action in Washington, D.C. on the theory that the Internet Corporation for Assigned Names and Numbers (ICANN) maintains an office there. The court dismissed the case because ICANN didn’t fit into any category of entities who can be sued in rem under the ACPA. ICANN is not the domain name registrar (in this case, Melbourne IT, LTD d/b/a Internet Names Worldwide) nor the registry (in this case, VeriSign, Inc.). Vizer argued that ICANN is a “domain name authority,” but the court rejected that suggestion. According to the court, the term “domain name authority” refers to an entity that has some authority over the domain name, i.e., it plays a role in registering or assigning domain names. ICANN doesn’t do either of those things. Although ICANN coordinates the global domain name system, it doesn’t actually assign specific domain names or maintain a registry of such names. The court also found persuasive legislative history of the ACPA stating that the in rem provision was not meant to cover ICANN.
LegalTXT Lesson: It looks like Vizer’s attorneys did their homework before going the in rem route. I’m not sure what they could’ve done differently, except one wonders why they didn’t file in where the registrar (VeriSign) is located. Verisign is based in Reston, Virginia, just a short distance far from D.C.