## Facts

- GlobalSantaFe Corporation resulted from a merger between Global Marine Inc. and Santa Fe International Corporation, both contract drilling companies with long-standing marks (GLOBAL MARINE federally registered; SANTA FE protected at common law).
- After the companies publicly announced the merger and the name “GlobalSantaFe,” a registrant in Korea registered the domain name `globalsantafe.com` within a day and later transferred it to a Korean corporation; there was no evidence of any legitimate interest in the name.
- GlobalSantaFe filed an in rem action under the Anticybersquatting Consumer Protection Act (ACPA) against the domain name because the foreign registrant was not subject to personal jurisdiction.
- The registrant did not appear; the court entered a default judgment finding the registration violated the ACPA and ordered the Korean registrar to transfer the domain name to GlobalSantaFe.
- A Korean court later enjoined the registrar from transferring the domain name, and the registrar refused to comply with the U.S. transfer order.
- GlobalSantaFe moved for a second amended judgment seeking an order directing the U.S.-based “.com” registry (VeriSign) to cancel or disable the domain name (e.g., place it on “hold” status) until transfer could occur.

## Issues

1. Whether, in an in rem ACPA action, a federal court may order the U.S.-located “.com” registry to cancel or disable a domain name adjudicated to violate the ACPA when a foreign court has enjoined the foreign registrar from transferring it.

## Decision

- The court granted the requested relief.
- The court held it could direct VeriSign, the “.com” registry located within the district, to cancel or disable `globalsantafe.com` (including by placing it on “hold” status), notwithstanding the foreign injunction against the registrar.
- The court issued a second amended judgment to enforce its prior ACPA judgment after the registrar refused to transfer the domain.

## Legal Principles

- Under 15 U.S.C. § 1125(d)(2), an in rem ACPA action may be brought in the judicial district where the domain name registrar or registry is located.
- Remedies in an in rem ACPA action include forfeiture, cancellation, or transfer of the domain name to the mark owner.
- When transfer is blocked by a registrar outside the court’s practical reach, the court may effectuate statutory relief by ordering the in-district registry to implement cancellation or disablement of the domain name.
- A foreign injunction against a foreign registrar does not negate a U.S. court’s in rem jurisdiction over a domain name when the registry maintaining the relevant registration authority is located within the court’s territorial jurisdiction.

## Conclusion

The court enforced its ACPA default judgment by ordering the U.S.-based “.com” registry to cancel or disable an infringing domain name after a foreign court order prevented the foreign registrar from completing the transfer.


GlobalSantaFe Corp. v. Globalsantafe.com, 250 F. Supp. 2d 610 (E.D. Va. 2003)