## Facts

- Northern Light Technology, Inc. registered **northernlight.com** in September 1996 and sought federal registration of the “Northern Light” service mark; it began operating a search engine using the mark by August 1997.
- Jeffrey K. Burgar (a Canadian resident) registered **northernlights.com** about one month after plaintiff’s registration; “Northern Lights Club” had no real members, and the domain was initially inactive.
- A **USA Today** article mistakenly identified plaintiff’s search engine as “northernlights.com,” directing users to defendants’ similar domain.
- Plaintiff attempted to buy **northernlights.com**; negotiations failed. Defendants later activated the site and at times listed **northernlight.com** as a “member” despite no affiliation.
- Plaintiff sent a cease-and-desist letter; defendants did not respond.
- Plaintiff sued in the District of Massachusetts asserting trademark claims and an Anticybersquatting Consumer Protection Act (ACPA) claim. Burgar voluntarily traveled to Massachusetts for a hearing and was personally served there.

## Issues

1. Whether personal jurisdiction was proper over foreign defendants based on personal service on Burgar while he was voluntarily present in Massachusetts.
2. Whether the district court clearly erred in finding plaintiff likely to succeed on trademark infringement/unfair competition and ACPA claims for purposes of preliminary injunctive relief.
3. Whether defendants’ First Amendment and overbreadth objections to a compelled website disclaimer were preserved for appellate review.

## Decision

- The First Circuit affirmed the district court’s exercise of personal jurisdiction based on in-forum personal service on Burgar while voluntarily present (“tag” jurisdiction), absent fraud or coercion.
- The court affirmed the preliminary injunction requiring a portal-page disclaimer, holding the district court did not clearly err in finding a likelihood of success on trademark and ACPA claims and that irreparable harm was adequately supported at this stage.
- The court declined to reach First Amendment/overbreadth arguments because they were not properly raised in the district court.

## Legal Principles

- Personal service on an individual voluntarily present in the forum state is a constitutionally sufficient basis for in personam jurisdiction, absent fraud or coercion.
- In assessing likelihood of confusion online, close similarity between marks and domains (including singular/plural variants) and evidence of actual confusion can support preliminary injunctive relief.
- ACPA liability may be supported at the preliminary injunction stage by evidence of a distinctive mark, a confusingly similar domain name, and indicia of bad faith such as mass domain registrations, lack of a bona fide business, and conduct suggesting intent to profit from confusion.
- Appellate review of preliminary-injunction merits findings is deferential; absent clear error, the trial court’s likelihood-of-success determinations are upheld.
- Arguments not adequately presented to the district court are generally forfeited on appeal.

## Conclusion

The First Circuit upheld jurisdiction obtained through in-state personal service on a defendant who voluntarily appeared in the forum and affirmed a preliminary injunction requiring a disclaimer where the plaintiff showed likely trademark confusion and likely ACPA bad-faith cybersquatting, while refusing to consider unpreserved First Amendment objections.


Northern Light Tech., Inc. v. N. Lights Club, 236 F.3d 57 (1st Cir. 2001)