Heathmount A.E. Corp. v. Technodome.com, 60 U.S.P.Q. (BNA) 2018 (2000)

Facts

  • Heathmount A.E. Corp. (Heathmount) was a Canadian entertainment company claiming trademark rights in “TECHNODOME” and “DESTINATION: TECHNODOME.”
  • Elliot Salmons, a resident of Ontario, Canada, registered the domain names technodome.com and destinationtechnodome.com.
  • The domain names were registered through Network Solutions, Inc. (NSI), a domain-name registrar located in Herndon, Virginia.
  • Heathmount alleged the domain names were registered in bad faith to profit from Heathmount’s marks and filed an in rem action against the domain names under the Anticybersquatting Consumer Protection Act (ACPA), 15 U.S.C. § 1125(d)(2).
  • Heathmount moved for (1) an order directing interested persons to appear or plead under 28 U.S.C. § 1655 and Federal Rule of Civil Procedure 4(n), and (2) an order requiring deposit of the domain names into the court’s registry.
  • The defendant (appearing through counsel for the domain names) sought dismissal, arguing that the ACPA’s in rem provisions were unconstitutional when used against a registrant with no U.S. ties, and also disputed that the court lacked personal jurisdiction over Salmons.

Issues

  1. What must a trademark plaintiff show to establish that personal jurisdiction over the registrant cannot be obtained, so that an ACPA in rem action may proceed?
  2. Does registration of a domain name with a Virginia-based registrar, without more, create sufficient minimum contacts to support personal jurisdiction over a foreign registrant?
  3. Do the ACPA’s in rem provisions violate due process by allowing a federal court to exercise jurisdiction over a domain name where the registrant allegedly lacks contacts with the United States?

Decision

  • The court held that Heathmount made an adequate, good-faith, fact-based showing that personal jurisdiction over Salmons was not available, satisfying the statutory precondition to proceed in rem under 15 U.S.C. § 1125(d)(2).
  • The court held that registering a domain name with NSI in Virginia, standing alone, did not amount to sufficient minimum contacts to support personal jurisdiction over a Canadian registrant.
  • The court rejected the constitutional challenge to the ACPA’s in rem procedure as applied in this case and concluded that proceeding against the domain names in the district where the registrar was located did not offend due process.
  • The court granted Heathmount’s motion for an order to appear or plead under 28 U.S.C. § 1655 and Rule 4(n).
  • The court granted Heathmount’s motion to deposit the domain names into the registry of the court.

Legal Principles

  • ACPA in rem jurisdiction under 15 U.S.C. § 1125(d)(2) is available when the plaintiff shows that personal jurisdiction over a proper defendant cannot be obtained (or the defendant cannot be located despite due diligence), and statutory notice steps are followed.
  • A foreign registrant’s act of registering a domain name with a registrar located in the forum, without additional forum-directed conduct, does not by itself establish purposeful availment or minimum contacts for personal jurisdiction.
  • The ACPA’s in rem mechanism permits a court to proceed against the domain name in the judicial district where the registrar or registry is located when the statute’s conditions are met, even if the registrant lacks contacts sufficient for in personam jurisdiction.
  • Due process in an ACPA in rem case focuses on (1) the forum’s connection to the res as defined by Congress (registrar/registry location) and (2) the availability of notice and an opportunity to be heard for interested parties.

Conclusion

Heathmount A.E. Corp. v. Technodome.com held that a trademark owner could proceed in rem under the ACPA against domain names registered by a Canadian resident because the plaintiff sufficiently showed personal jurisdiction over the registrant was unavailable; mere registration with a Virginia registrar did not create minimum contacts for personal jurisdiction; and the ACPA’s in rem procedure, coupled with statutory notice and a forum tied to the domain name’s registrar, satisfied due process, so the court granted orders to proceed in rem and to deposit the domain names with the court.