No.

01-1153
________________________________
In the

United States Court of Appeals
for the Fourth Circuit
________________________________

Heathmount A.E. Corporation, a Canadian corporation,
Plaintiff-Appellee,
- against -

Technodome.com, an Internet Domain Name, and
DestinationTechnodome.com, an Internet
Domain Name,
Defendants-Appellants.

________________________________

Appeal Certified Under 28 U.S.C. § 1292(b) by the United States
District Court for the Eastern District of Virginia
________________________________

Brief of Appellants
Eric C. Grimm
CYBERBRIEF, PLC
320 South Main Street
P.O. Box 7341
Ann Arbor, Michigan 48107-7341
734.332.4900

Cindy Cohn
ELECTRONIC F RONTIER F OUNDATION
454 Shotwell Street
San Francisco, California 94110
415.436.9333 x 108
Fax: 415.436.9993

OWNERSHIP DISCLOSURE STATEMENT
Defendants-Appellants are not natural persons, “legal persons,”
corporations, government bodies, organizations, or any other legal “entities.” They
are something else entirely. For disclosure purposes, exactly what they are requires
explanation,1 which we summarize here and elaborate upon in the Statement of
Facts, below. The Domain Name System (“DNS”) is somewhat technical and
requires new vocabulary unfamiliar to most people who are expert in law and not
computer science. Mastery of the technical details of the DNS is essential, however,
to resolve this appeal.
“Even assuming that a domain name registration is a ‘thing’2 . . . in
terms of [hypothetical] physical or electronic presence, it is merely ‘“a reference
point in a computer database.”’” America Online, Inc. v. Huang, 106 F. Supp. 2d
848, 858 (E.D. Va. 2000) (“AOL”) (Ellis, J.) (quoting Network Solutions, Inc. v.
Umbro, Inc., 259 Va. 759, 769, 529 S.E.2d 80, 85 (2000) (“NSI”)). “[A] ‘domain
name’ is a means of determining a particular computer[’s] IP [Internet Protocol]

1

Accordingly, Defendants-Appellants (which did not name themselves as
litigants) will include this Disclosure Statement for word count purposes.
2

Under Virginia law, a Domain Name registration is not “property” subject to
an in rem garnishment proceeding, but “the product of a contract for services,”
similar but not identical to a telephone number. NSI, 259 Va. at 764-70, 529 S.E.2d
at 83-86 (quoting Dorer v. Arel, 60 F. Supp. 2d 558, 561 (E.D. Va. 1999)).
Appellants' Brief -- Page i

address3 by way of a process that includes . . . the operation of DNS name servers
scattered across the Internet, almost all of which are operated and controlled by
entities other than NSI or any other registrar.” AOL, 106 F. Supp. 2d at 853.
Domain Names, therefore, are nothing more than data records – “bits” (ones and
zeros) – that facilitate an address-lookup function which is not centralized, but “is
distributed across the Internet on a multitude of name servers.” Id.; note 2, supra.
The “registrant” for Defendants is an individual, Mr. Elliott Salmons of
Ontario, Canada. He has never been a party to this litigation. Mr. Salmons,
however, remains Real Party in Interest, and respectfully discloses that Defendants
are not owned or controlled by any entity with shares traded on a public exchange.

3

“[A] domain name does not replace the IP address. Instead, [it] is an
alphanumeric means of determining the . . . IP address by way of the DNS. . . . But
this simple description incorrectly suggests that the DNS is a central database . . .
when the DNS is instead a decentralized, albeit hierarchical, process for correlating
a domain name [and the] IP address.” AOL, at 851 (emphasis added).
Appellants' Brief -- Page ii

TABLE OF CONTENTS

TABLE OF CONTENTS . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . -iiiTABLE OF AUTHORITIES . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . -vJURISDICTIONAL STATEMENT . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . -1Trial Court Jurisdiction: . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . -1Appellate Jurisdiction: . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . -3ISSUES PRESENTED FOR REVIEW . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . -4STATEMENT OF THE CASE . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . -5Nature and Scope of Dispute: . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . -5Course of Proceedings Below: . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . -6STATEMENT OF FACTS . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . -9The Internet and the Domain Name System: . . . . . . . . . . . . . . . . . . -15SUMMARY OF ARGUMENT . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . -24Due Process / Shaffer: . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . -25Federalism: . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . -26Comity / Forum Non Conveniens: . . . . . . . . . . . . . . . . . . . . . . . . . . . -27ARGUMENT . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . -28-

Appellants' Brief -- Page iii

I.

ASSERTION OF JURISDICTION UNDER 15 U.S.C. § 1125(d)(2)(A)(ii)(I)
VIOLATES DUE PROCESS BOTH
FACIALLY AND AS APPLIED IN THIS CASE. . . . . . . . . . . . . . . . . . -30A.

Section 1125(d)(2)(A)(ii)(I) Is Facially Unconstitutional. . . . . . . -30-

B.

Plaintiff’s “In Rem Civil Action” Should Be Rejected On An AsApplied Basis, Because “Minimum Contacts” Do Not Exist and
Jurisdiction Would Offend “Fair Play And Substantial Justice.” . -33-

C.

The Trial Court Mischaracterized Defendants’ Argument
Concerning The Absence of Minimum Jurisdictional Contacts. . . -37-

D.

This Case Involves No “True In Rem” Claim. . . . . . . . . . . . . . . . -391

“True In Rem” Jurisdiction Is Not Available Over
Something Intangible Like a Domain Name. . . . . . . . . . . . -42-

2.

A Domain Has No Concrete Situs in Virginia
and Cannot be Sued In Rem. . . . . . . . . . . . . . . . . . . . . . . . -43-

3.

Plaintiff has No Antecedent Lien on Any Virginia “Res.” . -45-

4.

Paper Evidence of an Intangible Right Is No
Surrogate for the Right Itself. . . . . . . . . . . . . . . . . . . . . . . -46-

II.

THE ACPA, 15 U.S.C. § 1125(d)(2) VIOLATES PRINCIPLES
OF FEDERALISM BECAUSE DOMAIN NAMES ARE NOT
PROPERTY UNDER VIRGINIA STATE LAW.. . . . . . . . . . . . . . . . . . . -48-

III.

THIS DISPUTE SHOULD BE DISMISSED IN FAVOR
OF A CANADIAN FORUM UNDER THE FORUM NON
CONVENIENS DOCTRINE OR IN THE INTEREST OF
INTERNATIONAL COMITY.. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . -51-

CONCLUSION . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . -57-

Appellants' Brief -- Page iv

TABLE OF AUTHORITIES
CASES

Allen v. Lloyd’s of London,
94 F.3d 923 (4th Cir. 1996). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . -55-56America Online, Inc. v. Huang,
106 F. Supp. 2d 848 (E.D. Va. 2000) . . . . . . . . . . . . . . . . . . . . . . . . . passim.
American Surety Co. v. Edwards & Bradford Lumber Co.,
57 F. Supp. 18 (D. Iowa 1958) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . -43Amoco Overseas Oil Co. v. Compagnie Nationale Algerienne de Navigation,
605 F.2d 648 (2nd Cir. 1979). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . -34Amstar Corp. v. M/V Alexandros T.,
431 F. Supp. 328 (D. Md. 1977),
aff’d, 664 F.2d 904 (4th Cir. 1981) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . -2Armstrong v. DeForest,
13 F.2d 438 (2d Cir. 1926). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . -42Asahi Metal Indus. Co. v. Superior Ct. Of Cal.,
480 U.S. 102 (1987) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . -51Automotive Prods Co. v. Wolverine Bumper & Specialty Co.,
15 F.2d 745 (6th Cir. 1926) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . -42Banco Inverlat, S.A. v. Inverlat.com,
112 F. Supp. 2d 521 (E.D. Va. 2000). . . . . . . . . . . . . . . . . . . . . . . . . . . -31Bendix Aviation Corp v. Kury,
88 F. Supp. 243 (E.D.N.Y. 1950) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . -42-

Appellants' Brief -- Page v

CASES
Bishop v. Wood,
426 U.S. 341 (1976). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . -49-, -50Board of Regents v. Roth,
408 U.S. 564 (1972). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . -49-, -50Burger King Corp. v. Rudzewicz,
471 U.S. 462 (1985). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . -12Burnham v. Superior Court of Cal.,
495 U.S. 604 (1990). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . -37BroadBridge Media, LLC v. HyperCD.com,
106 F. Supp. 2d 505 (S.D.N.Y. 2000). . . . . . . . . . . . . . . . . . . . . . . . . .

-36-

Caesars World, Inc. v. Caesars-Palace.com,
112 F. Supp. 2d 502 (E.D. Va. 2000) . . . . . . . . . . . . . . . . . . . . . . . . . . . . -8Caesars World, Inc. v. Caesars-Palace.com,
112 F. Supp. 2d 505 (E.D. Va. 2000) . . . . . . . . . . . . . . . . . . . . . . . . . . . . -2Chase v. Wetzlar,
225 U.S. 79 (1912) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . -43City of Boerne v. Flores,
521 U.S. 507 (1997) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . -26-, -35Cleveland v. United States,
___ U.S. ___, 121 S. Ct. 365 (2000) . . . . . . . . . . . . . . . . . . . . . . . . . . . -49-

Appellants' Brief -- Page vi

CASES
College Sav. Bank v. Florida Prepaid Postsecondary Educ. Expense Bd.,
527 U.S. 666 (1999). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . -9-, -48-49Continental Trust Co. v. Shunck Plow Co.,
263 F. 873 (5th Cir. 1920). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . -46Dan Cohen Realty Co. v. National Sav. & Trust Co.,
125 F.2d 288 (6th Cir. 1942). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . -46Dickerson v. United States,
530 U.S. 428 (2000) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . -25-, -35Dorer v. Arel,
60 F. Supp. 2d 558 (E.D. Va. 1999) . . . . . . . . . . . . . . . . . . . . . . . . . . -i-, -50Erie R.R. v. Tompkins,
304 U.S. 64 (1938) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . -48FleetBoston Financial Corp. v. FleetBostonFinancial.com,
No. 00-10176-DPW,
(D. Mass. Mar. 27, 2001) . -7-, -14-, -24-, -28-, -31-, -34-, -40-41-, -44-, -46-,
Fuentes v. Shevin,
407 U.S. 67 (1972) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . -39Gage v. Riverside Trust Co.,
156 F. 1002 (C.C. Cal. 1906) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . -43Gillmore v. Robillard,
44 F.2d 295 (9th Cir. 1930) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . -43-44-

Appellants' Brief -- Page vii

CASES
Goss v. Lopez,
419 U.S. 565 (1975) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . -49-, -50Greenpoint Financial Corp. v. Sperry & Hutchinson Co., Inc.,
___ F. Supp. 2d ___, 2000 WL 1370835 (S.D. N.Y. Sept. 19, 2000). . . -36Hanson v. Denckla,
357 U.S. 235 (1958) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . -40Harrison v. Prather,
404 F.2d 267 (5th Cir. 1968) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . -45-46Harrods, Ltd. v. Sixty Internet Domain Names,
110 F. Supp. 2d 420 (E.D. Va. 2000). . . . . . . . . . . . . . . . . . . . . . . . . . . -36Hasbro v. Clue Computing,
66 F. Supp. 2d 117 (D. Mass. 1999),
affd, 232 F.3d 1 (1st Cir. 2000) . . . . . . . . . . . . . . . . . . . . . . . . . . . . -9-, -11Heathmount A.E. Corp. v. Technodome.com,
106 F. Supp. 2d 860 (E.D. Va. 2000) . . . . . . . . . . . . . . . . . . . . . . . . . passim.
Hegarty v. Luff, 169 F. Supp. 873 (D.D.C. 1958). . . . . . . . . . . . . . . . . . . . . . . -44Helicopteros Nacionales de Colombia v. Hall,
466 U.S. 408 (1984) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . -34-, -55Hudson Nav. Co. v. Murray, 233 F. 466 (D.N.J. 1916). . . . . . . . . . . . . . . . . . . -47-

Appellants' Brief -- Page viii

CASES
Industria E. Commercio De Minieros, S.A. v. Nova Genuesis Societia,
310 F.2d 811 (4th Cir. 1962) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . -56Interstellar Starship Servs. v. Epix,
125 F. Supp. 2d 1269, 1280 (D. Or. 2001). . . . . . . . . . . . . . . . . . . . . . . -11Jones v. United States,
529 U.S. 848, 120 S. Ct. 1904 (2000) . . . . . . . . . . . . . . . . . . . . . . . . . . . -48Kleinschmidt v. Kleinschmidt Labs,
89 F. Supp. 869 (N.D. Ill. 1950) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . -42Kohagen v. Harwood,
185 F.2d 276 (7th Cir. 1950) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . -42Lawrence v. Times Printing Co.,
90 F.24 (C.C. Wash. 1898) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . -42Lefcourt Realty Co. v. Sands,
113 A.2d 428 (Del. Ch. 1955),
aff’d 117 A.2d 365 (Del Ch. 1955). . . . . . . . . . . . . . . . . . . . . . . . . . . . . -46Lindsey v. Greene,
649 F.2d 425 (6th Cir. 1981) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . -34Lockheed Martin Corp. v. Network Solutions, Inc.,
985 F. Supp. 949 (C.D. Ca. 1997). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . -47Lucent Tech., Inc. v. Lucentsucks.com,
95 F. Supp. 2d 528 (E.D. Va. 2000). . . . . . . . . . . . . . . . . . . . . . . . -32-, -37-

Appellants' Brief -- Page ix

CASES
Marbury v. Madison,
5 U.S. 137 (1803). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . -35Mattel, Inc. v. MCA Records, Inc.,
28 F. Supp. 2d 1120 (C.D. Cal. 1998) . . . . . . . . . . . . . . . . . . . . . . . . . . -52McQuillen v. National Cash Register Co.,
112 F.2d 877 (4th Cir. 1940). . . . . . . . . . . . . . . . . . . . -3-, -8-, -10-, -45-, -46Mid-Allegheny Corp v. Pittsburgh Terminal Corp.,
831 F.2d 522 (4th Cir. 1987). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . passim.
M/S Bremen v. Zapata Offshore,
407 U.S. 1 (1972). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . -55Mullane v. Central Hanover Trust Co.,
339 U.S. 306 (1950) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . -49-, -50Name.Space, Inc v. Network Solutions,
202 F.3d 573 (2d Cir. 2000) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . -17National Elec. Serv. Co. v. Acton,
59 F. Supp. 637 (S.D. N.Y. 1945) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . -34Network Solutions, Inc. v. Umbro, Int’l, Inc.,
529 S.E.2d 80 (Va. 2000). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . passim.
Network Solutions, Inc. v. Clue Computing, Inc.,
946 F. Supp. 858 (D. Colo. 1996). . . . . . . . . . . . . . . . . . . . . . . . . . -47-, -48-

Appellants' Brief -- Page x

CASES
Nintendo of Am., Inc. v. Aeropower Co.,
34 F.3d 246 (4th Cir. 1994) . . . . . . . . . . . . . . . . . . . . . . . . . . . -27-, -51-, -52Nonmagnetic Watch Co. v. Association Horlogere Suisse,
44 F. 6 (2nd Cir. 1890) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . -42Nowell v. Nowell,
296 F. Supp. 640 (D. Mass. 1968),
aff’d, 417 F.2d 902 (1st Cir. 1969) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . -43Pennoyer v. Neff, 95 U.S. 714 (1878). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . -50Piper Aircraft Co. v. Reyno,
454 U.S. 235 (1981). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . -55Pittsburgh Terminal Corp. V. Mid Allegheny Corp.,
831 F.2d 522 (4th Cir. 1987) . . . . . . . . . . . . . . . . . . . . . . -8-, -25-, -30-, -34Pizani v. M/V Cotton Blossom,
669 F.2d 1084 (5th Cir. 1982) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . -2Playboy Enters., Inc. v. Netscape Comm’n Corp.,
55 F. Supp. 2d 1070 (C.D. Cal. 1999), aff’d,
202 F.3d 278 (9th Cir. 1999) (table) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . -9Porsche Cars N. Am. v. Porsch.com,
51 F. Supp. 2d 707 (E.D. Va. 1999), vacated and remanded
sub nom. Porsche Cars N. Am v. AllPorsche.com,
215 F.3d 1320 (4th Cir. 2000) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . -38-

Appellants' Brief -- Page xi

CASES
Rainbow Rubber Co. v. Holite Mfg. Co.,
20 F. Supp 2d. 913 (D. Md. 1937) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . -42Reno v. ACLU,
521 U.S. 844 (1997). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . -16Republic of Argentina v. Weltover, Inc.,
504 U.S. 607 (1992) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . -29Ringling Bros.-Barnum & Bailey Combined Shows, Inc. v. Utah Div. of
Travel Development, 170 F.3d 449 (4th Cir. 1999),
cert. denied, 528 U.S. 923 (1999) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . -9Rush v. Savchuk,
444 U.S. 320 (1980) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . passim.
Savage v. First Nat’l Bank & Trust Co.,
413 F. Supp. 447 (N.D. Okla. 1976) . . . . . . . . . . . . . . . . . . . . . . . . . . . -43Shaffer v. Heitner,
433 U.S. 186 (1977) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . passim.
Standard Stoker Co. v. Lower,
46 F.2d 678 (D. Md. 1931) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . -42-, -46Standard Gas Power Co. of Ga. v. Standard Gas Power Co. of De.,
224 F. 990 (D. Ga. 1915) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . -42Sterling Consulting Corp. v. The Indian Motorcycle Trademark,
1997 WL 827450 (D. Colo. Sept. 5, 1997) . . . . . . . . . . . . . . . . . . . -39-, -42-

Appellants' Brief -- Page xii

CASES
Sterling Drug, Inc. v. Bayer, A.G.,
14 F.3d 733, 745 (2d Cir. 1994) . . . . . . . . . . . . . . . . . . . . . . . . . . . -27-, -51Tyler v. Court of Registration,
175 Mass. 71, 55 N.E.2d 814 (1900) . . . . . . . . . . . . . . . . . . . . . . . . . . . . -28United States v. $84,740.00 in U.S. Currency,
900 F.2d 1402 (9th Cir. 1990) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . -2United States v. Banco Cafatero Int’l,
608 F. Supp. 1394 (S.D.N.Y. 1985),
aff’d, 797 F.2d 1154 (2nd Cir. 1986) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . -2United States v. Lopez,
514 U.S. 549 (1995). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . -48-, -49United States v. Morrison,
529 U.S. 598, 120 S. Ct. 1740 (2000). . . . . . . . . . . . . . . . . . . . . . . . . . . -48Vanity Fair Mills v. T. Eaton Co.,
234 F.2d 633 (2nd Cir. 1956) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . -27-, -51Vidal v. South Am. Securities Co.,
276 F. 855 (2d Cir. 1922). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . -46Wilson v. Beard,
26 F.2d 860 (2d Cir. 1928) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . -43Winter v. Koon, Schwartz & Co.,
132 F.273 (C.C. Or. 1904) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . -42-

Appellants' Brief -- Page xiii

STATUTES, RULES and U.S. CONSTITUTION
U.S. CONST . Amend X. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . -48U.S. CONST . Art. III. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . -615 U.S.C. §§ 1051-1129 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . -115 U.S.C. § 1125(d)(2) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . -4-, -715 U.S.C. § 1125(d)(2)(A) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . -31-, -32-, -4115 U.S.C. § 1125 (d)(2)(A)(ii)(I). . . . . . . . . . . . . . . . -4-, -8-, -11-, -25-, -31-, -3228 U.S.C. § 1292(b) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . -3-, -9-,
28 U.S.C. § 1331 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . -128 U.S.C. § 1338(a) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . -128 U.S.C. § 1655 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . -8FED. R. CIV. P. 12(b)(6) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . -33FED. R. CIV. P. 12(b)(2). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . -33FED. R. CIV. P. 19(b). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . -36FED. R. CIV. P. 69(a). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . -50Supplemental Rules for Admiralty and Maritime Claims, Rule B(1) . . . . . . . . . -2Supplemental Rules for Admiralty and Maritime Claims, Rule C(2) . . . . . . . . . -2-

Appellants' Brief -- Page xiv

OTHER AUTHORITIES
Lawrence Lessig, CODE AND OTHER LAWS OF CYBERSPACE (1999) . . . . . . . . . . -15U.S. Department of Commerce, NTIA, Improvement of Management
of Internet Names and Addresses, 63 Fed. Reg. 8825
(Feb. 20, 1998) (“Green Paper”) . . . . . . . . . . . . . . . . . . . . . . . . . . -20-, -22U.S. Department of Commerce, NTIA, Management of
Internet Names and Addresses, 63 FED. REG. 31,741
(June 5, 1998) (“White Paper”) . . . . . . . . . . . . . . . . . . . . . . . -17-, -20-, -22-

Appellants' Brief -- Page xv

JURISDICTIONAL STATEMENT
Trial Court Jurisdiction: The trial court’s subject-matter jurisdiction was
based on a federal question. 28 U.S.C. §§ 1331, 1338(a). Specifically, Plaintiff
relied on the Lanham Trademark Act (as amended), 15 U.S.C. §§ 1051-1129.
But Plaintiff has no American trademark.4 Plaintiff’s Canadian
“trademarks” (actually, not marks but applications) apparently refer to hypothetical
entertainment complexes that are not even under construction.5
4

Plaintiff, which bears the burden of proof on this issue, failed to introduce
any evidence below of any U.S.-registered trademark whatsoever. See also note 12,
infra (Plaintiff has not proven unregistered U.S. trademark rights). Plaintiff’s
failure to meet this burden is not surprising because none of Plaintiff’s U.S. Patent
& Trademark Office applications has been allowed. See Serial No. 78026115
(“Technodome,” filed Sept. 15, 2000 – “A non-final action has been mailed. This is
a letter from the examining attorney requesting additional information and/or
making an initial refusal. However, no final determination as to the registrability of
the mark has been made.”); Serial No. 75359996 (“Destination Technodome,” filed
Sept. 18, 1997 – as of Feb. 2, 2001, “Letter of suspension mailed.”); Serial No.
75613735 (“WWW.TECHNODOME.CA,” filed Dec. 30, 1998 – as of Nov. 22, 2000,
“An office action suspending further action on the application has been mailed.”);
Serial No. 75359998 (“Destination Technodome,” filed Sept. 19, 1997 – as of Mar.
13, 2000, “An office action with a suspension inquiry has been mailed.”). Unless
and until Plaintiff actually commences operations, neither Canada nor the U.S. will
register the trademarks for which Plaintiff has applied.
See Merle English, City Seeks Developers for Averne Plan, NEWSDAY at A-4
(Jan. 21, 2001) (“With the $1-billion Technodome sports and recreation project
sidelined, the city is now searching nationwide for developers to build a new
community where the giant complex was to have been built in the Rockaways.”);
Downsview Park lands to be developed without Destination: Technodome (Apr.
1999), < http://www.newswire.ca/releases/April1999/13/c2106.html >; see also Jared
Mitchell, Hubris Alert: Big Time, ROB Magazine (Mar. 2000), <
5

Appellants' Brief -- Page 1

Another issue of subject-matter jurisdiction that remains unresolved is
whether the Complaint was defective for lack of verification, see J.A. 6-10, as is
required for in rem claims, in accordance with Rules C(2) and/or B(1) of the
Supplemental Rules for Admiralty and Maritime Claims.6
The trial court also lacked jurisdiction because the Real Party in
Interest, a Canadian, was not and could not be made a party. Heathmount A.E.
Corp. v. Technodome.com, 106 F. Supp. 2d 860, 864 & n.6, 865-68 (E.D. Va.
2000). Defendants maintain and the trial court agreed that (1) “minimum contacts,”
and (2) “fair play and substantial justice,” were absent. Id. at 865-67, The trial court
therefore erred by entertaining this dispute in violation of the Due Process clauses
of the Fifth and Fourteenth Amendments. Shaffer v. Heitner, 433 U.S. 186, 207,

http://www.robmagazine.com/archive/2000ROBmarch/htmlann_bigtime.html >.
Failure, in an in rem proceeding, to provide proper verification deprives the
trial court of subject-matter jurisdiction to entertain the in rem claims. United States
v. $84,740.00 in U.S. Currency, 900 F.2d 1402, 1405-06 (9th Cir. 1990); Pizani v.
M/V Cotton Blossom, 669 F.2d 1084, 1090 (5th Cir.1982) ("Supplemental Rule C(2)
of the Federal Rules of Civil Procedure ... requires the filing of a verified complaint
as a prerequisite to obtaining in rem jurisdiction."); Amstar Corp. v. M/V
Alexandros T., 431 F. Supp. 328, 334 (D. Md.1977), aff'd, 664 F.2d 904 (4th
Cir.1981); see also United States v. Banco Cafetero Int'l, 608 F. Supp. 1394, 1400
n.3 (S.D.N.Y. 1985), aff'd, 797 F.2d 1154 (2d Cir.1986). The Supplemental Rules
have been held to apply in in rem cases filed under the ACPA. Caesar’s World,
Inc. v. Caesars-Palace.com, 112 F. Supp. 2d 505, 508 (E.D. Va. 2000) (“Although
the ACPA has no explicit analogous provisions . . . the general procedures for in
rem actions [the Supplemental Admiralty Rules] should apply.”).
6

Appellants' Brief -- Page 2

212 (1977).
Appellate Jurisdiction: Appellate jurisdiction stems from 28 U.S.C.
1292(b). Shortly after its December 29, 2000 decision,7 J.A.183-201, the trial court
on January 10, 2001, certified an interlocutory appeal. J.A.204. On February 2,
2001, this Court, consistent with Section 1292(b), granted the Petition of
Defendants-Appellants to appeal. J.A.212. Subsequently, both parties filed their
papers consistent with timetables established by this Court. J.A.213, 216.

7

The ruling rested only on 15 U.S.C. § 1125(d)(2), not on the alternate
ground Plaintiff asserted – 28 U.S.C. § 1655. The trial court declined to exercise
jurisdiction under Section 1655, in light of this Court’s decision in McQuillen v.
National Cash Register Co., 112 F.2d 877, 880 (4th Cir. 1940).
Appellants' Brief -- Page 3

ISSUES PRESENTED FOR REVIEW
I.

II.

Whether an “in rem civil action” under 15 U.S.C. § 1125(d)(2),
violates the Due Process Clauses of the Fifth and/or Fourteenth
Amendments, which prohibit the exercise of U.S. jurisdiction (whether
labeled in rem or in personam – see Shaffer, 433 U.S. at 207, 212) in
the absence of (a) “minimum contacts,” or (b) “fair play and
substantial justice,” either:

Facially, because § 1125(d)(2)(A)(ii)(I) (emphasis added)
purports to authorize tort-based infringement or dilution claims
under U.S. trademark law, but only on the explicit condition that
the forum “is not able to obtain in personam jurisdiction over
a[ny] person who would have been a defendant in [such] a
[trademark] civil action;” or

As applied, because the district court specifically found that
“minimum contacts” among the Real Party in Interest, the
forum, and the cause of action were lacking, and that “[s]uch an
expansive exercise of judicial power would push the limits of
due process beyond the breaking point?”

Whether an “in rem civil action” under 15 U.S.C. § 1125(d)(2)
violates principles of federalism, either

Facially; or

As applied;

because, under Virginia law, see note 2, supra, Domain Names are not
property, but “the product of a contract for services,” and they are not
a proper subject for in rem garnishment proceedings?
III.

Whether this dispute (among Canadians about an alleged Canadian
trademark) should be dismissed, in favor of the Canadian forum in
which this dispute belongs, either (1) in the interest of international
comity, or (2) on forum non conveniens grounds?

Appellants' Brief -- Page 4

STATEMENT OF THE CASE
Nature and Scope of Dispute: This is a tort lawsuit by a foreign
(Canadian) Plaintiff. The alleged tortfeasor, also Canadian, never has been a party
to this litigation. The named “Defendants” are something else – surrogates for a
Defendant who cannot be sued in the United States. The tort that Plaintiff alleges is
a kind of trademark infringement. Nevertheless, Plaintiff’s Canadian marks8 have
not been infringed and Plaintiff is not entitled to any remedy under Canadian law,
U.S. law, or the law of any other country9 for that matter.
However, the issue of alleged trademark infringement is immaterial for
present purposes. Instead, the narrow and specific issue presented here, which is
one of jurisdiction, is independent of the merits: Whether a dispute among
Canadians about a Canadian trademark should be resolved in Canada or the U.S.
Plaintiff’s litigation-by-proxy strategy improperly seeks to circumvent
the Due Process clauses of the U.S. Constitution and to export the laws and policy
preferences of the United States extraterritorially into Canada. In this way, Plaintiff
proposes to transform U.S. Federal courts seated in Virginia into a haven for

See note 4, supra.

8
9

Plaintiff also has filed trademark applications in additional countries, the
laws of which presumably are not identical to U.S. or Canadian law. All these
(including U.S.) applications are derivative of Plaintiff’s Canadian applications.
Appellants' Brief -- Page 5

thousands of foreign trademark disputes from all over the world: a role that clearly
exceeds the limited Constitutional mandate of Article III courts. Plaintiff’s
jurisdiction theory should therefore be rejected.
Course of Proceedings Below: On March 16, 2000, Plaintiff initiated
arbitration under the Uniform Dispute Resolution Policy (“UDRP”) of the Internet
Corporation for Assigned Names and Numbers (“ICANN”). J.A.61-65, 85-98. The
international UDRP arbitration policy seeks to resolve trademark disputes involving
Domain Names efficiently, as well as to minimize inter-jurisdictional problems such
as forum-shopping, or questions of comity and sovereignty, through accredited
special-purpose arbitral tribunals.
On May 11, 2000, Plaintiff unilaterally dismissed its UDRP Complaint.
J.A.120. Instead of completing the UDRP process, Plaintiff – for reasons of its
own, see J.A.101-117 – on April 28, 2000, chose to switch fora to the Eastern
District of Virginia. J.A.6-10. There is no evidence that Plaintiff has any Virginia
contacts. In contrast, there is no dispute that Canadian courts have jurisdiction
over both Mr. Salmons and the Plaintiff.
The Complaint was filed ex parte. J.A.27, 36. Elliott Salmons, the
alleged tortfeasor and registrant of the Domain Names, was neither served nor
named as a Defendant. The Complaint specifically alleged that Mr. Salmons could

Appellants' Brief -- Page 6

not be sued in the Eastern District of Virginia. Compl. ¶¶ 4,6, J.A.7.
Plaintiff cited 15 U.S.C. § 1125(d)(2) – the so-called “in rem civil
action” provision of the Anticybersquatting Consumer Protection Act of 1999
(“ACPA”), cf. FleetBoston Financial Corp. v. FleetBostonFinancial.com, No. 0010176-DPW (D. Mass. Mar. 27, 2001), Tab 2 (discussing ACPA and its history) –
not in spite of Virginia’s lack of jurisdiction, but precisely because of the lack of
sufficient jurisdictional contacts among the registrant, the cause of action, and the
forum. Heathmount, 106 F. Supp. 2d at 865-66, J.A. 7, 33-34.
Next, in an ex parte proceeding, the District Court turned Shaffer v.
Heitner on its head and agreed with Plaintiff that it could, through the artifice of
suing intangible surrogates in lieu of the Real Party in Interest, proceed in Virginia
precisely because the Constitutional requirements of Due Process were not satisfied.
Heathmount, 106 F. Supp. 2d at 863-67 & n.6.
After the District Court’s first ruling, notice of the proceeding was
finally given to Elliot Salmons in Canada. Salmons then secured U.S. counsel to
represent him pro bono publico, promptly filed dismissal papers and, based on Due
Process, challenged section 1125(d)(2)(A)(ii)(I) “in rem” jurisdiction both facially
and on an as-applied basis. Under Shaffer v. Heitner, 433 U.S. at 207, 212; Rush v.
Savchuk, 444 U.S. 320, 327-33 (1980), and this Court’s decision in Pittsburgh

Appellants' Brief -- Page 7

Terminal Corp. v. Mid Allegheny Corp., 831 F.2d 522, 526 & n.4 (4th Cir. 1987), the
assertion of any jurisdiction (in rem or in personam) always requires “minimum
contacts” among the registrant, the forum, and the cause of action. Because this
mandatory precondition for in rem jurisdiction clearly is not satisfied, Defendants
sought dismissal in favor of a Canadian or ICANN forum.
Based on longstanding precedent in this jurisdiction – see J.A.193-95
(citing McQuillen v. National Cash Register Co., 112 F.2d 877, 880 (4th Cir. 1940)),
the District Court held that Plaintiff’s trademark claim – which sounds in tort and
seeks transfer of another’s so-called “property” only as a remedy – involves no preexisting claim or lein. Id. Thus, in the absence of a pre-existing claim of title
against all the world (in other words, a ‘true in rem’ claim), the trial court declined
to entertain jurisdiction under 28 U.S.C. § 1655. Id.
Other aspects of the December 29 ruling, however, see J.A.186-92,
were inexplicably inconsistent. Relying principally on Judge Bryan’s decision in
the Caesar’s World case, 112 F. Supp. 2d 502 (see J.A. 189-91), the court concluded
– even despite McQuillen and other Due Process problems with Plaintiff’s
jurisdiction theory – that “in rem” jurisdiction over an intangible Domain Name
could be exercised on the sole basis of 15 U.S.C. § 1125(d)(2)(A)(ii)(I). Id. It also
declined to dismiss the action in the interest of international comity, or based upon

Appellants' Brief -- Page 8

forum non conveniens. The parties’ subsequent joint motion for an interlocutory
appeal under 28 U.S.C. § 1292(b), J.A.202-03, was granted on January 10, 2001.
J.A.204. This Court granted Defendants’ 1292(b) Petition on February 2, 2001.
J.A. 212
STATEMENT OF FACTS
The facts material to the resolution of this appeal, many of which are
reflected in properly-supported findings, are (with few exceptions, see note 4,
supra; note 12, infra) either uncontested or entitled to great deference. Of course,
the parties vigorously dispute the merits: Plaintiff’s Canadian “trademarks”10 have

See note 7, supra; note 12, infra. Plaintiff has sought (unsuccessfully, so
far) to register marks both in Canada and the United States. Defendants respectfully
note that the word “technodome” itself is not exclusive to Heathmount. Hasbro v.
Clue Computing, 66 F. Supp. 2d 117, 133 (D. Mass. 1999) (even for famous TM,
“trademark law does not support such a monopoly”), aff’d, 232 F.3d 1, 3 (1st Cir.
2000); see also Ringling Bros.-Barnum & Bailey Combined Shows, Inc. v. Utah
Div. of Travel Development, 170 F.3d 449, 459 (4th Cir. 1999), cert. denied, 528
U.S. 923 (1999) (Dilution Act “famous” status inapplicable to “technodome”);
College Sav. Bank v. Florida Prepaid Educ. Fund, 527 U.S. 666, 672-73 (1999)
(TM, in Lanham Act § 1125 suit against state government, do not “qualif[y] as a
property right protected by the [14th Amendment] Due Process Clause” because TM
“bear no relationship to any right to exclude.”); Playboy Enters., Inc. v. Netscape
Comm’n Corp., 55 F. Supp. 2d 1070, 1074 (C.D. Cal. 1999) (TM cannot remove
word from language), aff’d, 202 F.3d 278 (9th Cir. 1999) (table). In fact, the word
“technodome” is presently in actual bona fide use by entities other than Plaintiff,
e.g., for exhibitions of dance music mixing competitions, and recordings thereof <
http://www.saifam.com/ technodome1.html >. Mr. Salmons’s Website also
infringes no right of Plaintiff.
10

Appellants' Brief -- Page 9

not been infringed and Plaintiff is entitled to no remedy under the law of any
nation.11 But on the issue of jurisdiction, the facts are largely undisputed.
Most importantly, the parties and the trial court all agree that Elliott
Salmons, and not Heathmount A.E. Corp., is presently the registrant of the two
Domain Names in question. Plaintiff (Heathmount) asserts no pre-existing claim it
possesses title or ownership as the “real registrant” of the Defendants:
Plaintiff has no legal claim to the domain names at issue. It did
not register the names nor pay the registration fee for them.
Plaintiff’s legal right to bring this suit instead stems from
[alleged] U.S. trademarks12 [allegedly] infringed by the name[s].
The ACPA gives plaintiff the right to challenge the [tortious]
infringement of its intellectual property rights . . . but it does not
give the Plaintiff the sort of legal or equitable lien on the domain
names equivalent to that envisioned in McQuillen [v. National
Cash Register Co., 112 F.2d 877, 880 (4th Cir. 1940)].
J.A.194-95. In short, Heathmount’s prayer (contingent upon the merits) for a post-

11

Plaintiff also has applied for trademarks in the European Union and China,
each of which presumably has trademark laws that are not entirely identical to the
laws of either the U.S. or Canada. See note 9, supra.
12

As noted above in note 4, the trial court’s reference to “U.S. trademarks” is
in error. The record is devoid of evidence either (1) of any registration with the
United States Patent and Trademark Office or (2) of any unregistered use of any
trademark at any time whatsoever in the Commonwealth of Virginia (as opposed to
Ontario and Quebec, Canada). Nor is there evidence of any unregistered use of
any trademark in commerce any place in the United States (as opposed to intent to
use in the future). Plaintiff may or may not have future plans, but it clearly is not
using trademarks in the United States to identify any theme park that customers
presently can visit or use, or any related goods or services.
Appellants' Brief -- Page 10

judgment “transfer” to a new registrant, clearly is different – fundamentally so13 –
from a claim that Plaintiff already is the pre-lawsuit registrant.
Second, as the District Court found, “[T]he registrant . . . has no
connection with the Eastern District of Virginia – other than registering the domain
names [through the Network Solutions, Inc., Website] – and he is not subject to this
court’s in personam jurisdiction.” J.A.192 (slip op.10). Indeed, Plaintiff sought to
proceed “in rem, pursuant to subpart (I), 15 U.S.C. § 1125(d)(2)(A)(ii)(I), [by]
alleging that personal jurisdiction cannot be obtained over [Mr.] Salmons.” J.A.31;
Heathmount, at 862.
Additional findings that (1) “minimum contacts” are lacking, id., (2)
“serious doubts” concerning “fair play and substantial justice” counsel against
adjudicating Salmons’s rights in Virginia, id. at 867 (J.A.35), and (3) “purposeful
availment” of Virginia jurisdiction is absent, id. at 866-67 (J.A.34-35) (and likewise
for any other U.S. forum, id., at 864 n.6),14 are undisputed.
Concerning the Virginia Long-Arm statute, the trial court found
13

Even assuming Plaintiff has a Canadian trademark (which has not been
proven), see notes 4, 12, supra, U.S. courts repeatedly have held that mark owners
(e.g., CLUE®, EPIX®, UNITED®, BASS®, or APPLE®) are not automatically
entitled to demand possession and control of the corresponding “.com” Domain
Name. See note 10, supra (citing Hasbro, 66 F. Supp. 2d at 133); see also
Interstellar Starship Servs. v. Epix, 125 F. Supp. 2d 1269, 1280 (D. Or. 2001).
14

J.A.32, n.6 (specifically ruling out jurisdiction anyplace in the U.S.).
Appellants' Brief -- Page 11

“Salmons’ brief interaction with NSI’s website seems to stretch the scope of the
subsection (A)(1) beyond any manageable limit,” and concluded that any state law
inquiry ultimately required a Due Process analysis. Id. at 864 (J.A.32-33).
Next, it recognized that “[t]o satisfy due process . . . the nature and
quality of the nonresident defendant's contacts with the forum must be significant in
relation to the specific cause of action.”15 Id. at 865 (J.A.33) (citing Burger King
Corp. v. Rudzewicz, 471 U.S. 462, 472 (1985)). This requires “a showing that the
defendant purposefully directed his activities at residents of the forum.”
Heathmount, at 865 (J.A.33). Applying this standard (which, under Shaffer, is
equally applicable to in rem proceedings as to in personam jurisdiction, see note 15,
supra), Judge Cacheris found the evidence persuasively demonstrated the absence
of purposeful availment:16 “Salmons did not purposefully direct his activities to
Virginia.” Id. at 865-66 (J.A.33-34).
Evidence introduced by Salmons reaffirms the trial court’s findings.
15

See also Shaffer, 433 U.S. at 204 (“[T]he relationship among the defendant,
the forum, and the litigation . . . [has] bec[o]me the central concern of the inquiry”
both for personal and in rem jurisdiction) (emphasis added) (cited in Burger King,
471 U.S. at 472)
16

“ The act of registration required only that Salmons visit NSI's website from
his computer . . . in Canada. In general, the entire process of registration is
relatively brief.” Id. at 866 (J.A. 35). Findings concerning the NSI Registration
Agreement itself are fully consistent with Salmons’s testimony J.A.69-70; J.A.34,
n.7 (citing AOL, 106 F. Supp. 2d at 857 n. 26).
Appellants' Brief -- Page 12

Salmons has lived in Ontario, Canada his entire life. Salmons Decl., J.A.66, ¶ 1.
When he registered the Domain Names on June 2, 1998, Salmons filled out the
application on his computer in Ontario, Canada. J.A.66-67, ¶ 3.
Salmons has registered the business name “Technodome.com” under
the laws of the Province of Ontario, Canada. Id. ¶ 7. Salmons also has applied for
a trademark registration in the name “Technodome.com” with the Canadian
Trademarks Office in Ottawa. Id. The Technodome Website is related to his
vocation as a theater arts professional. Id. ¶ 6. Salmons uses it to “provide a forum
for Canadian residents and businesses” about “technical aspects of theater arts and .
. . employment opportunities for theater arts professionals.” Id.
The “defendant domain names and [Salmons] have virtually no
contacts with Virginia or anywhere else in the United States..” J.A.69-70 ¶ 16. At
the time of registration, “[he] never for a moment contemplated that by registering .
. . [he] would be subject to the jurisdiction of a Virginia court in this type of
proceeding.” Id. He had “no idea that NSI was located in Virginia.” Id.
The Domain Names are not “property located in the United States.”
J.A.70 ¶ 16; see also Memorandum Opinion and Order, at 34, FleetBoston Financial
Corp. v. FleetBostonFinancial.com, No. 00-10176-DPW (D. Mass. Mar. 27, 2001).
Even apart from the Domain Names, Mr. Salmons has no Virginia or U.S.

Appellants' Brief -- Page 13

jurisdictional contacts.17 J.A.69-71, ¶¶ 16-20.
Thus, the Domain Name registrations “created no ongoing relationship
of substance, any more than a magazine subscription creates an ongoing
relationship between the publisher and subscriber.” Heathmount, at 866-67, J.A.3435 (emphasis added) (citing AOL, 106 F. Supp. 2d at 848). “[T]he most that can be
inferred . . . is that NSI's services consist simply of maintaining a record of the
Defendant domain names in its databases.”18 Id. (citing Network Solutions, 529
S.E.2d at 85). In short, “[T]he services provided by NSI . . . do not establish a
sufficient relationship between Salmons and Virginia . . . .” Id. at 867.
Accordingly, the relationship among the defendant, the forum, and the
cause of action failed to satisfy the minimum requirements of Due Process:
Even in the aggregate, all of these considerations fail to
establish sufficient minimum contacts with the forum state.
In short, Salmons did not purposefully direct his activities to
Virginia or purposefully avail himself of the benefits of its laws.

Salmons’s testimony also shows – for forum non conveniens purposes –
that relevant documents, witnesses, and other resources are uniformly located in
Canada, not Virginia, and that litigation in Virginia would impose an extreme and
unjustifiable hardship on Salmons. Id. ¶¶ 18-22 (J.A.70-72).
17

18

Indeed, the registration agreement with NSI may not even signify this
minimal information. The DNS is more distributed and (other than the bi-annual
billing relationship analogous to a “magazine subscription”) much less Virginiaspecific seems to have been assumed. See note 3, supra.
Appellants' Brief -- Page 14

Heathmount, at 867 (emphasis added) (Court “has serious doubts that traditional
notions of fair play and substantial justice” would permit the exercise of
jurisdiction) (emphasis added). “Such an expansive exercise of judicial power
would push the outer limits of due process beyond the breaking point.” Id.
The Internet and the Domain Name System: Courts discussing the
Domain Name System (“DNS”) have had varying degrees of difficulty accurately
explaining its operation and the functions it performs.19 Presumably, most lawyers
(on whom courts must rely) are equally uncomfortable fielding questions whose
answers are found in lines of computer software “code” – an expressive medium at
least as mysterious in legal circles as most legal texts would be impenetrable among
software engineers. See Lawrence Lessig, CODE AND OTHER LAWS OF CYBERSPACE
6, 19-29, 53-60, 84-99 (1999) (contrasting computer “code” and legal “code,” and
their respective regulatory roles).
In this case, two specific computer programs require special attention:
(1) BIND,20 which defines and regulates the distributed operation of the DNS with a
19

The cogent and lucid explanations in Judge Ellis’s AOL opinion are among
the best written by any court to date. AOL, 106 F. Supp. 2d 848.
20

See Paul Albitz & Cricket Liu, DNS and BIND (3d ed., O’Reilly ed. 1998)
(helpful overview of how DNS works and the role of BIND); see also <
http://www.isc.org/products/BIND/ > (home of a collaborative BIND project).
Currently, the latest version of BIND is version 9.1.0 – meaning that there have
been eight MAJOR revisions of the program.
Appellants' Brief -- Page 15

mathematical exactitude that legal “code” not infrequently fails to match, and (2) the
NSI Registry Application Programming Interface21 – computer commands that
ICANN-authorized “registrars” use to manage the shared “Zone file” databases for
the “global Top Level Domains” (“gTLDs”) “.com,” “.net,” and “.org”.
The Internet is a global meta-network of computer networks, Reno v.
ACLU, 521 U.S. 844, 849-53 (1997), defined by the “Internet Protocol”22 that
enables networked computers to exchange information. AOL, at 851. No two
computers are permitted to have the same “IP address” simultaneously. Every IP
address is a 32-bit23 number, such as CF29117016 in Base-16 notation, often
expressed as four Base-10 numbers between 010 and 25510, separated by “dots,” –
hence, 207.41.17.112 (the Fourth Circuit Website “server’s” IP address).
If IP addresses are about as memorable as Lattitude and Longitude
coordinates, then “Domain Names” are somewhat more memorable in a sense not
21

See NSI Registry C API, Version 1.1.0 (Mar. 16, 2000), <
http://www.nsiregistry.net/opensrc/sdks/registry_c_api.pdf >; Verisign GRS,
Network Solutions’ Shared Registration System (undated), <
http://www.nsiregistry.com/registrar/SRS_Overview_02.pdf >.
22

An IP network differs from “circuit-switched” networks, like old-time
telephone systems, which employed dedicated end-to-end connections. “IP,” in
contrast, is “packet switched,” which is much more efficient.
Bit (n.) – A binary numeral, a one or a zero. A “32-bit number” can
represent any decimal number from 0 to 4,294,967,295. In hexadecimal (Base-16)
notiation, F16 = 1510 = 11112; AC16 = 17210 = 101011002; 1516 = 2110 = 000101012.
23

Appellants' Brief -- Page 16

unlike street addresses. This is exactly why the DNS developed 24 – for the
convenience of users. Originally, only a relative handful of computers, whose
addresses were (in a list) distributed periodically to all users, were connected to
ARPANET (an ancestor of the Internet). White Paper, at 31,741 (Describing role of
Dr. John Postel, who “undertook the maintenance of a list of host names and
addresses and also a list of documents prepared by ARPANET researchers, called
Requests for Comments (RFCs).”).25 During the 1980s, however, “the task of
maintaining the name list became onerous, and the [DNS] was developed to
improve the process.” Id.
The DNS does not replace IP; it just (optionally) “lays on top” of IP,
making the network easier for people to navigate. Although IP is mandatory and
the DNS optional, for communications with people, the DNS (including one’s own
preferred Domain Name) is a practical necessity. 26 Domain Names have many
See U.S. Department of Commerce, NTIA, Management of Internet Names
and Addresses, 63 FED. REG. 31,741 (June 5, 1998) (“White Paper”); Name.Space
Inc. v. Network Solutions, 202 F.3d 573, 576-79 (2d Cir. 2000); John Postel,
Network Working Group RFC 1591: Domain System Structure and Delegation
(June 1994), < ftp://ftp.isi.edu/in-notes/rfc1591.txt >.
24

25

Archives of RFCs (including those chronicling the origin of the DNS) are
published on the Internet. E.g., < http://www.ietf.org/rfc.html >.
26

Realistically, nobody wants to publish a Website at an address like
http://207.41.17.112 (hardly intuitive to remember how to reach the Fourth Circuit
Website), without also securing an address like www.ca4.uscourts.gov.
Appellants' Brief -- Page 17

functions other than just Website27 addresses – e.g., electronic mail.
Every “Domain Name” consists of two or more strings of
alphanumeric characters separated by “dots” (e.g.: < ca4.uscourts.gov >). The
right-most portion (in this case “.gov”) is called the “top-level domain” (“TLD”).28
There are presently two kinds of TLDs – country code TLDs (“ccTLDs”) like “.ca”
(Canada), “.us,” or “.tv” (Tuvalu), and generic TLDs (“gTLDs”) like “.mil” (United
States military), “.gov,” or “.com.” Moving left from the TLD, the next text string
defines the “Second-Level Domain” (“SLD”). Examples of SLDs would include
“uscourts.gov” or “google.com.” Domain Names can be subdivided, in
hierarchical fashion, into Third Level Domains (“3LDs”) like “ca4.uscourts.gov” or
even into 4LDs or 5LDs. AOL, at 851 n.7 (discussing term "subdomain"); Albitz &
Liu, § 2.1.2.

27

The Internet and the World Wide Web are not the same thing.

28

See Albitz & Liu, at § 2.1 (describing DNS “root” and “inverted tree”
hierarchy); Nickolai Langfeldt, Jamie Norrish, et al, DNS HOWTO, § 2 (Version
3.1 Jan. 18, 2001). “The hierarchical nature of the DNS is reflected in the structure
of the ‘domain name space,’. . . . At the very top of the hierarchy is the otherwise
nameless ‘root,’ from which extend each of the various [TLDs], from each of
which extend a multitude of [SLDs’], and so on. . . . The term farthest to the left in
a domain name identifies a host computer within the domain, and is the hardware
to which the domain name refers.” AOL, 106 F. Supp. 2d at 851 & n.7
Appellants' Brief -- Page 18

Each Domain Name is unique.29 At least since Network Solutions,
Inc., under contract with the National Science Foundation, in 1992 assumed certain
com/net/org-related obligations these gTLDs explicitly have operated on a firstcome, all-you-can-eat basis. See White Paper, at 31742; note 10, supra.
Domain Names – “reference points”30 in a worldwide, distributed
addressing mechanism involving millions of computers – simply are not “located”
in some central file warehouse (or on any computer) in Herndon, Virginia31 – no
29

This statement is not necessarily true because the implicit assumption that
there exists only one unique “root” is not true in the real world. For example,
ICANN’s proposed inclusion of a “.biz” gTLD under the legacy (NSI) Root has
generated controversy because “.biz” is already available through Nameservers that
recognize (as is any user’s prerogative) an alternate Root, operated by the Open
Root Server Consortium, as authoritative. See Manager of “.biz” Top Level
Domain Name Demands Commerce Department Rulemaking (Dec. 18, 2000), <
http://www.biztld.net/press1a.html >. Moreover, Earthlink (a dominant ISP)
recently announced that its Nameservers will point customers by default to an
alternate “New.net” Root. See New.net Expands Internet Naming With Launch of
20 New Top-Level Domain Names, < http://www.new.net/ about_us_press.tp >.
This issue of alternate Roots could become even more interesting if, for example,
the People’s Republic of China or the European Union were to seek to encourage a
substantial number of users to abandon the ICANN legacy Root. Given the
dissatisfaction of many countries with ICANN’s management of ccTLDs, this is not
only possible, but likely. See Andrew Orlowski, Country Code Chiefs, Registrars,
Mull ICANN Breakaway, THE REGISTER (Nov. 25, 2000).
30

AOL, 106 F. Supp. 2d at 858 (quoting NSI, 529 S.E.2d at 85).

See pp. i-ii & n.3, supra. In the Department of Commerce documents that
led to the creation of ICANN, see U.S. Dept. of Commerce, NTIA, Improvement of
Management of Internet Names and Addresses, 63 Fed. Reg. 8825, 8826 (Feb. 20,
1998) (“Green Paper”); White Paper at 31,742 & n.6, the NTIA specifically noted
31

Appellants' Brief -- Page 19

matter how much violence one does to the meaning of “located.” AOL, 106 F.
Supp. 2d at 852 (“[T]here is no master directory . . . .”), 853 (“NSI operates only a
very small portion of the DNS.”), 852 (SLD and TLD nameservers “in most
instances, including . . . this case, [are] not controlled by the [same] entity”).
Indeed, with respect to the specific Domain Names named as
Defendants in this case, the “zone files”32 for these Domains are not hosted on any
NSI computers and are unlikely to be anyplace in Virginia. Technodome, 106 F.3d
at 867 (J.A.35). The Nameservers33 hosting Defendants’ “zone files,” instead, are
identified as (1) NS1.NAMSERVE.NET (IP: 207.159.128.3), and (2)
NS2.NAMESERVE.NET (IP: 207.159.128.11). Thus, one cannot reach the Domain
“technodome.com,” directly by querying an NSI computer. Instead,
NS1.NAMESERVE.NET is the authoritative “Nameserver” to which a query must
be directed (and to which the NSI computer, if queried, would redirect you).
Plaintiff has introduced no evidence to suggest that the NAMESERVE.NET

that even the most-centralized function of NSI under its contract with the National
Science Foundation (namely, maintenance of the “zone file” for the NSI legacy
“root”) is not and never has been centralized in one place only. Id.
32

See AOL, 106 F. Supp. 2d at 852 & n.8 (explaining the significance of
distribution of authoritative “zones”).
33

Nameservers are essentially network-connected computers running BIND.
Langfeldt, Norrish, et al., §§ 2,3.
Appellants' Brief -- Page 20

Nameservers are located anyplace in or even near Virginia.
The DNS does not necessarily represent (nor has it ever represented)
the best or the only way34 to solve the problems that led to its creation. Mostly, it
just worked well enough that most people felt little need to switch to another
process. That situation may be changing. The Internet user population has
changed considerably since 1980. Most importantly, the majority of users no longer
reside in the United States. The Internet is evolving into a global medium in which
the United States has no justifiable claim that its perceived interests somehow
predominate over others’. The Commerce Department, in the creation of the
Internet Corporation for Assigned Names and Numbers (“ICANN”), expressly
emphasized this dramatic shift. Green Paper, at 8827; White Paper, 31,742, 31,748.
Of course, aspirations are not always equaled by the concrete reality of action. For
example, certain legacy conventions of the DNS (e.g., artificial scarcity of gTLDs,
or the role of Network Solutions35 – none of which are inherent in the software that

34

Other approaches, too numerous to list here, are in development or have
been proposed to supplant the DNS with something offering higher functionality.
35

The history of NSI’s role is chronicled in the Department of Commerce
“Green Paper” and “White Paper,” that preceded the creation of ICANN. See White
Paper, at 31,742, 31,745-48; Green Paper, at 8825-33.
Appellants' Brief -- Page 21

governs the DNS)36 have not changed so quickly or dramatically as the Commerce
Department originally suggested. The United States is largely responsible for this
failure, some argue, because the U.S. government and domestic political
constituencies built too much parochial focus on the U.S. into the ICANN
organization when they created it. Cf. note 29, supra.
The advent of ICANN has brought about some additional
developments relevant to this case. For example, several dozen ICANN-authorized
registrars from around the world now have the shared capacity, using the NSI
Registry C API, see note 21, supra, to make changes to the legacy “Zone files” for
the “.com,” “.net,” and “.org” Domains. In practical terms, this means the “Zone
files” for these gTLDs are administered just as much from Germany, Australia,
Canada, and Bermuda as they are from Virginia.
Next, ICANN has established a Uniform Dispute Resolution Policy
(“UDRP”) for many gTLD Domain Names. See J.A.155-59. It was under the
UDRP that Plaintiff originally sought to resolve the present dispute on March 16,
2000. J.A.95. It was also the ICANN policy (then under consideration) to which
the Clinton Administration expressly referred when it went on record opposing the

36

See Albitz & Liu, § 2.2 (conventions or “traditions” are “not rules, really” as
they “can be and have been broken”).
Appellants' Brief -- Page 22

ACPA. Specifically, the President said:
The Administration is also concerned that other countries may
view any legislation enacted in the United States as an
invitation to enact their own, potentially conflicting
approaches to cybersquatting. This could result in uncertainty
and additional expense for trademark owners attempting to
protect the value of their trademarks. During the past 14 months,
the World Intellectual Property Organization has undertaken an
extensive review of the cybersquatting problem, and it has
developed a body of recommendations that are being widely
reviewed by concerned parties.
Statement of Administration Policy, (Aug. 5, 1999), <
http://www.whitehouse.gov/OMB/legislative/sap/106-1/S1255-s.html >. This is
precisely the issue at stake here. If the U.S. courts and the U.S. Congress are too
eager to interject themselves extraterritorially into the business of other nations, it is
only reasonable for other governments (not all of them democratic) to begin
viewing our example of extraterritoriality as an invitation to begin attempting to
apply their laws, customs, and policy preferences extraterritorially to regulate
United States citizens, companies, and freedom -- remotely, via Internet.
SUMMARY OF ARGUMENT
This dispute – which is among Canadians and involves alleged
Canadian trademarks – does not belong in the United States. It belongs in Canada.
Canada has a well-developed body of law to address the exactly the kinds of issues
raised in this case. There is no legitimate reason for the United States to intervene
Appellants' Brief -- Page 23

extraterritorially on a make-believe theory about invisible “property” somehow
existing “in Virginia” on account of the mere presence of Network Solutions –
which has never been authorized to act as Elliott Salmons’s resident agent for
service of process, or as Salmons’s jurisdictional surrogate.
Plaintiff’s claims involve no property, nothing tangible, no pre-existing
claim of title, no effort to seek an adjudication “against all the world” (as opposed
to adjudication against Elliott Salmons only), and nothing physically located in the
Commonwealth of Virginia (unless one contends that a paper affidavit does the
trick). See FleetBoston Financial, No. 00-10176-DPW (D. Mass. Mar. 27, 2001),
Tab B (criticizing the fiction that intangible addressing rights can be converted to
“property” and assigned “situs” arbitrarily through nothing more than the
manufacture of symbolic affidavits).
Due Process/Shaffer: Under Shaffer v. Heitner, 433 U.S. at 207, 212; Rush
v. Savchuk, 444 U.S. 320, 327-33 (1980), and this Court’s decision in Pittsburgh
Terminal Corp. v. Mid Allegheny Corp., 831 F.2d 522 (4th Cir. 1987), the assertion
of any jurisdiction (in rem or in personam) always requires “minimum contacts”
among the registrant, the forum, and the cause of action. This is the very test that
the trial court held was not satisfied in this case.
Plaintiff specifically “filed its Complaint in rem, pursuant to subpart

Appellants' Brief -- Page 24

(I), 15 U.S.C. § 1125(d)(2)(A)(ii)(I), alleging that personal jurisdiction cannot be
obtained over Salmons.” Heathmount A.E. Corp. v. Technodome.com, 106 F.
Supp. 2d 860, 862 (E.D. Va. 2000). In short, this section only purports to grant
jurisdiction under circumstances (i.e., lack of “minimum contacts,” or “fair play and
substantial justice”) in which the U.S. Constitution affirmatively forbids the exercise
of jurisdiction. Therefore, this subparagraph is facially unconstitutional.
Next, even if 15 U.S.C. § 1125(d)(2)(A)(ii)(I) is not facially
unconstitutional, the requirements of Due Process certainly have not been fulfilled
in this case. Indeed, the trial court’s findings (which are entitled to deference)
demonstrate that minimum contacts do not exist.
To the extent that the trial court suggested that the “minimum contacts”
test applied “differently” in in rem cases, the trial court had no authority for the
proposition. It is contrary to the reasoning in Shaffer, as well as Rush v Savchuk.
Moreover, the trial court did not even explain what “contacts” among the forum, the
registrant and the dispute it believed satisfied the International Shoe / Shaffer
standard that applies equally in this in rem case as it does when personal
jurisdiction is asserted.
It is certainly not sufficient for the courts to refer to a pronouncement
of Congress as to whether Congress believes the “minimum contacts” standard is

Appellants' Brief -- Page 25

satisfied in circumstances such as these. The Due Process Clauses of the
Constitution trump the power of Congress every time.37
Federalism: The question whether something is or is not “property” is
ordinarily a question of state law. Shortly after the passage of the ACPA, the
Virginia Supreme Court handed down a decision which held squarely that a
Domain Name is not “property” that is subject to an in rem garnishment proceeding
under Virginia law.
In the ACPA, Congress did not purport to trump the prerogative of the
Virginia Supreme Court to address this issue. Thus, Domain Names are not a
proper subject (at least in Virginia) for any kind of in rem action unless Congress
both (1) expresses a clear intention to trump the Virginia Supreme Court and preempt Virginia law, and (2) has the power to do so. The question whether Congress
has the power is premature, however, because Congress has not acted.
Comity / Forum Non Conveniens:

This dispute, among Canadians about

a Canadian trademark, should be resolved in Canada. All the sources of evidence
are located in Canada. Litigation in Virginia would impose a severe logistical and
financial hardship on one or both parties. The trial court should have been much

37

See, e.g., Dickerson v. United States, 530 U.S. 428 (2000)“a constitutional
decision of this Court, may not be in effect overruled by an Act of Congress”); City
of Boerne v. Flores, 521 U.S. 507, 516-19 (1997).
Appellants' Brief -- Page 26

more circumspect about the extraterritorial application of U.S. law in the
circumstances of this case. Nintendo of Am., Inc. v. Aeropower Co., Ltd., 34 F.3d
246, (4th Cir. 1994); Sterling Drug, Inc. v. Bayer A.G., 14 F.3d 733, 745 (2d Cir.
1994); Vanity Fair Mills v. T. Eaton Co., 234 F.2d 633 (2d Cir. 1956)).
The trial court also applied the wrong standard for forum non
conveniens, claiming that “financial impossibility” would be required.
Finally, even if this court does not reverse the trial court outright, the
case should be remanded so the trial court can have the opportunity to perform the
required comity analysis under Nintendo and Vanity Fair.

ARGUMENT
“All proceedings, like all rights, are really against persons. Whether
they are proceedings or rights in rem depends on the number of persons affected.”
Shaffer v. Heitner, 433 U.S. at 207 n.22 (emphasis added) (quoting Tyler v. Court
of Registration, 175 Mass. 71, 76, 55 N. E. 812, 814 (Holmes, C. J.), appeal
dismissed, 179 U.S. 405 (1900)).
Although it is difficult not to admire the novelty of Plaintiff’s
worldview and the audacity of its arguments, it should also be evident enough –

Appellants' Brief -- Page 27

just by drafting a written description of the “things” Plaintiff has attempted to sue –
that this lawsuit is anything but routine. “[R]eference point[s] in . . . computer
database[s]” see AOL, 106 F. Supp. 2d at 858, or intangible addressing rights
distributed across a vast global computer network certainly are not the stuff of
traditional in rem jurisprudence. Such ephemera, see id.; FleetBoston Financial
Corp., No. 00-10176-DPW, at 34 (D. Mass. Mar. 27, 2001), certainly do not supply
a valid basis to adjudicate the rights of foreign persons in absentia, despite explicit
findings that no sufficient nexus among the Defendant, the forum, and the claim
exists to justify the assertion of jurisdiction.
Elliott Salmons never agreed or consented (in his NSI registrations or
otherwise) to permit Network Solutions (or, even more astonishingly, “reference
points” in a computer database that may or may not be found on an NSI computer
someplace) to act as his jurisdictional surrogate in the United States. See, e.g.,
Republic of Argentina v. Weltover, Inc., 504 U.S. 607, 619-20 (1992) (foreign
sovereign expressly appointed “financial representative” in New York).
Of course, Plaintiff contends the “in rem” label changes everything
and that the minimum contacts test of International Shoe “applies differently”
(translation: “does not apply here”). But Plaintiff’s approach is directly contrary to
both the reasoning and the holding of Shaffer. Briefly, “the phrase, ‘judicial

Appellants' Brief -- Page 28

jurisdiction over a thing,’ is a customary elliptical way of referring to jurisdiction
over the interests of persons in a thing,” Shaffer, 433 U.S. at 207 (emphasis added).
Therefore, for purposes of Due Process analysis under the Fifth and Fourteenth
Amendments, the assertion of jurisdiction on an in rem theory necessarily requires
sufficient “minimum contacts” with the person whose rights are to be adjudicated.
Shaffer, 433 U.S. at 207-08, 212 (“We therefore conclude that all assertions of state
court jurisdiction must be evaluated according to the standards set forth in
International Shoe and its progeny.”). “All assertions” means exactly that: All
assertions.
The “minimum contacts” that matter in an in rem situation are
“minimum contacts” calculated based on the tripartite relationship between (1) the
owner of the putative res (here, Elliott Salmons), (2) the cause of action, and (3) the
forum state. Shaffer, 433 U.S. at 204; see also Rush, 444 U.S. at 327-33; Pittsburgh
Terminal Corp., 831 F.2d at 526 & n.4. This tripartite relationship is exactly what
the trial court found was absent from this case: Sufficient contacts do not exist
between the registrant, the forum, and the cause of action. Heathmount, 106 F.
Supp. 2d at 865 (J.A.33-35). Therefore, it matters not what Latin label the Plaintiff
may choose employ.
I.

ASSERTION OF JURISDICTION UNDER 15 U.S.C. §
1125(d)(2)(A)(ii)(I) VIOLATES DUE PROCESS BOTH
Appellants' Brief -- Page 29

FACIALLY AND AS APPLIED IN THIS CASE.
A.

Section 1125(d)(2)(A)(ii)(I) Is Facially Unconstitutional.
The whole purpose, intent, and purported effect of Section

1125(d)(2)(A)(ii)(I) is to accomplish exactly what Shaffer affirmatively forbids.
If the tripartite relationship between the registrant, the forum, and the
controversy is absent, then Shaffer v. Heitner says the same minimum contacts test
applies even if one attempts to repackage the claim as an “in rem civil action.”
Shaffer, 433 U.S. 204, 207, 212. The mere incantation of a different Latin label
does not permit one to conjure minimum contacts that clearly do not exist. Id.
Courts repeatedly have acknowledged that the mere registration of a
Domain Name through Network Solutions does not qualify as a sufficient
relationship among the registrant, the forum, and the cause of action, to authorize
the Eastern District of Virginia to adjudicate a dispute between a trademark owner
and the registrant of such a Domain Name. AOL, 106 F. Supp. 2d at 856-60;
Heathmount, 106 F. Supp. 2d at 867; Banko Inverlat, S.A. v. Inverlat.com, 112 F.
Supp. 2d 521, 522 (E.D. Va. 2000); FleetBoston, Tab B. Nevertheless, the ACPA
purports to authorize jurisdiction over the very same disputes, based on the very
same alleged “contacts,” precisely because the “minimum contacts” necessary to
satisfy Due Process are not present.

Appellants' Brief -- Page 30

Indeed, one cannot invoke Section 1125(d)(2)(A)(ii)(I), unless
“minimum contacts” are absent and jurisdiction is forbidden. The specific
subsection in question purports to authorize an “in rem civil action” in exactly the
circumstance that the Constitution forbids it – namely, if:
(A)

(i)

the domain name violates any right of the owner of a mark
registered in the Patent and Trademark Office, or protected
under subsection (a) [“false designation of origin” trademark
infringement] or (c) [trademark dilution] of this section [15
U.S.C. § 1125]; and

(ii)

the court finds that the owner (I)

is not able to obtain in personam jurisdiction over a
person who would have been a defendant in a civil action
under paragraph [1125(d)] (1) . . .

15 U.S.C. § 1125(d)(2)(A). Interpreting this statute, the District Court specifically
concluded that “[S]ubpart (I) [of Section 1125(d)(2)(A)(ii)] was intended to apply
to all domain name registrants whose only contact with the United States is a
registration agreement with NSI or other domain name registrar,” J.A.35, even
though this was exactly the same “contact” that the trial court had already
acknowledged was not sufficient to comport with Due Process. 106 F. Supp. 2d at

Appellants' Brief -- Page 31

864-67. Likewise, as explained in Lucent Tech., Inc. v. Lucentsucks.com, 95 F.
Supp. 2d 528, 531-33 (E.D. Va. 2000) (emphasis added):
By the express terms of Section 1125(d)(2)(A)(ii) . . . a[n] in
rem action against a domain name [is permitted] if and only if
the Court finds either that the plaintiff is unable to obtain in
personam jurisdiction over the . . . registrant, or [the registrant
cannot be found]. . . . .
Lucent, 95 F. Supp. 2d at 531-33. 38 Since the “minimum contacts” test and Section
1125(d)(2)(A)(ii)(I) are mutually incompatible, this section should be struck down
as facially unconstitutional.
B.

Plaintiff’s “In Rem Civil Action” Should Be Rejected On An AsApplied Basis, Because “Minimum Contacts” Do Not Exist and
Jurisdiction Would Offend “Fair Play And Substantial Justice.”
The trial court treated the Defendants’ motion to dismiss as a Fed. R.

Civ. P. 12(b)(6) motion. However, a dismissal motion asserting lack of in rem
jurisdiction demands the same “minimum contacts” analysis as a Rule 12(b)(2)
personal jurisdiction dismissal motion. Shaffer, 433 U.S. at 212. The appropriate

38

Further:
The legislative history clearly shows that Congress enacted the
[in rem] provision to provide a last resort where in personam
jurisdiction is impossible, because the domain name registrant is
foreign or anonymous.

Lucent, 95 F. Supp. 2d at 531.
Appellants' Brief -- Page 32

standard to apply should be that for a Rule 12(b)(2) motion to dismiss on
jurisdictional grounds. However, because the trial court’s decision rested on its
interpretation of the law and the material facts are undisputed, the trial court’s legal
conclusions are subject to de novo review.
The trial court’s core mistake was to become so hypnotized by two
archaic labels – “in personam” and “in rem” – that it failed to apply the law of the
present. While these old categories may still exist for some purposes – state longarm, real property, and garnishment statutes, for example – when it comes to the
United States Constitution, there is only one category: Namely, “jurisdiction.”39
Mem. Op. at 20-31, FleetBoston Financial Corp., No. 00-10176-DPW (D. Mass.
2001) (describing various bases of “jurisdiction”). For all assertions of jurisdiction,
the Due Process Clauses of the U.S. Constitution always require “minimum
contacts.”40 Shaffer, 433 U.S. at 212; Pittsburgh Terminal Corp., 831 F.2d at 526.
39

Of course, there is no disagreement that the U.S. courts do recognize
“general jurisdiction” and “specific jurisdiction” as the relevant categories of
constitutional analysis when the rights to be adjudicated belong to a nonresident of
the forum. Helicopteros Nacionales de Colombia v. Hall, 466 U.S. 408, 414 & nn.8,
9 (1984). The trial court expressly recognized, however, that this is solely a
“specific jurisdiction” case and “general jurisdiction” is not at issue. Heathmount,
106 F. Supp. 2d at 865. There is also no dispute that the Shaffer standard defines
the “essential foundation” for U.S. jurisdiction in all specific jurisdiction cases.
Helocpoteros Nacionales, 466 U.S. at 414 & nn.8, 9.
40

See also Amoco Overseas Oil Co. v. Compagnie Nationale Algerienne de
Navigation, 605 F.2d 648, 654 (2nd Cir. 1979) (“Under . . . Shaffer, the test of ‘“fair
Appellants' Brief -- Page 33

Where, as, here, “jurisdiction would be specific because Plaintiff’s claim relates to
Salmons’ contacts with Virginia: the domain name registration with NSI,” see
Heathmount, at 865 (J.A. 33), Shaffer clearly supplies the controlling rule.
Rush,444 U.S. at 329-30; Shaffer, 433 U.S. at 212; Helicopteros Nacionales, 466
U.S. at 414 & nn.8, 9.
The applicable test for “minimum contacts” has two parts –
“purposeful availment” and “fair play and substantial justice,” neither of which is
satisfied here. Heathmount, at 865-67. Because U.S. Constitution forbids the
exercise of jurisdiction, Congress cannot do anything about it even if Congress
wants to do so.41 See, e.g., Dickerson v. United States, 530 U.S. 428, 120 S. Ct.
2326, 2332-33 (2000) (Rehnquist, J., for a 7-2 Court) (addressing self-incrimination
and Due Process clauses of Fifth and Fourteenth Amendments: “But Congress may
not legislatively supersede our decisions interpreting and applying the Constitution .

play and substantial justice”’ that governs in personam jurisdiction controls in rem
jurisdiction as well.”); Lindsey v. Greene, 649 F.2d 425, 427-28 (6th Cir. 1981)
(Shaffer “erased the former distinction between in rem and in personam”).
41

Whatever Congress’s views may be on whether Salmons’s “contact” with
Virginia (a registration through NSI) satisfies Due Process, this determination is not
for Congress to make. Rather, “It is emphatically the province and duty of the
judicial department to say what the law is.” Marbury v. Madison, 5 U.S. 137, 177
(1803) (emphasis added). Here, the “judicial department” has spoken. “Minimum
contacts” do not exist between the registrant, the forum, and the cause of action.
Heathmount, 106 F. Supp. 2d at 860.
Appellants' Brief -- Page 34

. . .”); City of Boerne v. Flores, 521 U.S. 507, 516-19 (1997). Congress is absolutely
forbidden from authorizing any court to exercise jurisdiction in contravention of the
Due Process decisions of International Shoe, Shaffer, and their progeny. E.g.,
Rush, 444 U.S. at 329-30.
Thus, because the Due Process clauses of the Constitution limit both
the jurisdiction of courts and the powers of Congress, it is simply immaterial when
either Judge Bryan (in the Caesars World case) or Judge Cacheris (in this case)
claims that Congress – either by “deeming” Domain names to have a make-believe
physical location that does not exist in reality, see Rush 444 U.S. at 330
(“intangible[s] . . . ha[ve] no actual situs) (emphasis added), or by “deeming”
intangible “reference points” in a computer database to constitute “property” by fiat
– somehow “intended” to authorize the assertion of jurisdiction under
circumstances in which the Constitution affirmatively forbids it. Simply put, if
“minimum contacts” sufficient to satisfy Due Process are not present, then
Congress’s intentions matter not. Congress cannot authorize the assertion of
jurisdiction that the Constitution forbids.
The Plaintiff’s in rem theory also violates Due Process by omitting
indispensable parties. Simply put, a Domain Name registrant is an indispensable
and necessary party, without whose presence, this Court cannot fairly adjudicate the

Appellants' Brief -- Page 35

Registrant’s mental state. FED. R. CIV. P. 19(b). The ACPA – including any in rem
cause of action, specifically requires proof of “bad faith” – making the Registrant’s
mental state a necessary element even in in rem proceedings. Harrods, Ltd. v. Sixty
Internet Domain Names, 110 F. Supp. 2d 420, 425-26 (E.D. Va. 2000); BroadBridge
Media, LLC v. HyperCD.com, 106 F. Supp. 2d 505, 511 (S.D. N.Y. 2000); see also
Greenpoint Financial Corp. v. Sperry & Hutchinson Co., Inc., ___ F. Supp. 2d ___,
2000 WL 1370835 (S.D. N.Y. Sept. 19, 2000). Since mental state is always a
necessary issue, no court can conduct an in rem civil action in absentia, omitting
the Registrant as an indispensable party.

C.

The Trial Court Mischaracterized Defendants’ Argument
Concerning The Absence of Minimum Jurisdictional Contacts.
According to Judge Cacheris, “The ACPA makes Defendants’ analysis

of the due process requirements for in personam jurisdiction unnecessary, because
it expressly establishes in rem jurisdiction . . . .” Slip op. at 5. Au contraire. An
analysis of “minimum contacts” is required, no matter which Latin label one may
choose to apply. Burnham v. Superior Court of Cal., 495 U.S. 604, 621 (1990)
(plurality opinion) (“The logic of Shaffer's holding . . . places all suits against
absent nonresidents on the same constitutional footing, regardless of whether a
separate Latin label is [used].”); Rush,444 U.S. at 327-33.
Appellants' Brief -- Page 36

Thus, when it argues, “Defendants’ constitutional argument rests on a
line of Supreme Court cases examining the minimum contacts required by due
process before a court can exercise in personam jurisdiction,” slip op. at 5, the trial
court is only half-right. The cases cited do apply in personal jurisdiction cases, but
the implicit assumption – that “in personam” cases and the “minimum contacts” are
somehow inapplicable here – is just simply wrong. In fact, Judge Cacheris himself,
in the Porsche case,42 directly questioned whether an NSI domain name registration
alone (or use of a domain name as a surrogate for jurisdiction over the registrant) is
sufficient to satisfy Due Process under Shaffer and International Shoe. Porsche
Cars N. Am. v. Porsch.com, 51 F. Supp. 2d 707 (E.D. Va. 1999), vacated and
remanded on other grounds, 215 F.3d 1320 (4th Cir. 2000). The only difference in
this case is that Congress has chosen with their eyes open to disregard “traditional
notions of fair play and substantial justice.” The Due Process Clauses exist for the
very purpose of preventing such abuses.
Shaffer did not create “first class” and “second class” tests of specific
jurisdictional contacts. Quite the contrary, Shaffer expressly held that one set of

42

Judge Brinkema, in the Lucent decision, explained that Congreess
specifically had Porsche in mind when it elected to attempt to authorize the theory
of jurisdiction that Judge Cacheris indicated was probably forbidden. Lucent
Tech., Inc. v. Lucentsucks.com, 95 F. Supp. 2d 528, 531 (E.D. Va. 2000).
Appellants' Brief -- Page 37

standards applies in all such cases. Id. Either the “minimum contacts” test is
satisfied, or it is not. There is no authority in this Circuit to support the strikingly
novel invention of some lower “second-class” test of jurisdictional contacts.
Here, the “nature and quality of the nonresident [registrant’s] contacts
with the forum” are not significant enough “in relation to the specific cause of
action” to warrant the exercise of jurisdiction. Heathmount, at 865; Rush, 444 U.S.
at 327 (In rem case) (“the inquiry must focus on “the relationship among the
defendant, the forum, and the litigation.”) (quoting Shaffer at 204).
The trial court also argues that “Cognizant of the requirements
imposed by due process, Congress struck a careful balance, limiting the victorious
plaintiff’s remedy to forfeiture or cancellation . . . .” Of course, the in rem theory
rejected in Rush was also presumably limited to the indemnity limits of the
insurance policy in question. Id. The trial court’s approach, therefore, is squarely
forbidden by the Shaffer decision: “It is true that the potential liability of a
defendant in an in rem action is limited by the value of the property, but that
limitation does not affect the argument. The fairness of subjecting a defendant to
state-court jurisdiction does not depend on the size of the claim being litigated.”
Shaffer, at 207 n.23 (citing Fuentes v. Shevin, 407 U.S. 67, 88-90 (1972)).
Ultimately, “the inquiry must focus on “the relationship among the

Appellants' Brief -- Page 38

defendant, the forum, and the litigation,” Rush, at 327, and Dismissal is clearly
required in favor of a Canadian forum.
D.

This Case Involves No “True In Rem” Claim.
The next fiction on which the District court seeks to rely is the puzzling

notion that the present case involves a so-called “true in rem claim.” Trademark
rights simply are not subject to “true in rem” adjudication. Sterling Consulting
Corp. v. The Indian Motorcycle Trademark, 1997 WL 827450 (D. Colo. Sept. 5,
1997).
Nobody doubts that real property, physically located in the
commonwealth of Virginia, often can be the subject of an in rem claim, and that “it
would be unusual for the state where the property [is] located not to have
jurisdiction” over such a claim. Shaffer v. Heitner, 433 U.S. at 207. Indeed, the
owner of real property in Virginia would presumably have great difficulty arguing
that he or she did not “purposefully avail” herself of Virginia law, thereby
establishing minimum jurisdictional contacts. Id. (“The presence of property in a
State may bear on the existence of jurisdiction by providing contacts among the
forum State, the defendant, and the litigation.”); see also FleetBoston.
However, all the dicta on pages 207-08 of the Shaffer case (speculating
about how “minimum contacts” might effect in rem jurisdiction in the abstract)

Appellants' Brief -- Page 39

assumes the physical existence and fixed location of certain kinds of “property.”
The Supreme Court was unlikely to have been using the ARPANET in 1977 and not
surprisingly, Shaffer does not specifically discuss Domain Names.
The Supreme Court categorized in rem in the following manner:
A judgment in rem affects the interests of all persons in
designated property. A judgment quasi in rem affects the
interests of particular persons in designated property. The latter
is of two types. In one, the plaintiff is seeking to secure a
preexisting claim in the subject property . . . . In the other, the
plaintiff seeks to apply what he concedes to be the property of
the defendant to the satisfaction of a claim against him.
Shaffer, 433 U.S. at 199 n.17 (citing Hanson v. Denckla, 357 U.S. 235, 246 n. 12
(1958)); see also Mem. Op. 24-31, FleetBoston Financial, No. 00-10176-DPW (D.
Mass. 2001) (analyzing categories of in rem jurisdiction). This case clearly does not
involve any “true in rem” claim – a “quiet title” action operating against all the
world. Instead, the whole basis of an ACPA claim is the notion that a “domain
name” (registered by somebody other than the trademark owner) causes tortious
injury the Plaintiff by infringing the Plaintiff’s trademark. The statute only comes
into play if “the domain name violates any right of the owner of a mark registered
in the Patent and Trademark Office, or protected under subsection (a)
[infringement] or (c) [dilution] of this section.” 15 U.S.C. § 1125(d)(2)(A). This
type of claim does not even qualify as the “first” sort of quasi in rem claim

Appellants' Brief -- Page 40

referenced in Shaffer:
Plaintiff has no legal claim to the domain names at issue. It did
not register the names nor pay the registration fee for them.
Plaintiff’s legal right to bring this suit instead stems from
[alleged] U.S. trademarks43 . . . .
J.A. 194-95. In short, this finding rules out any possibility that this case could be a
“true in rem” claim. Instead, this case involves an Internet Domain Name
registration – a “reference point” in a distributed computer database. A domain
name is not like a parcel of land and does not trigger in rem jurisdiction.

43

As noted above in note 4, the reference to “U.S. trademarks” is in error.
Appellants' Brief -- Page 41

1.

“True In Rem” Jurisdiction Is Not Available Over
Something Intangible Like a Domain Name.

Repeatedly, federal courts have declined to exercise “in rem”
jurisdiction over intangibles that cannot really be said to exist physically within the
forum. Thus, in rem jurisdiction has been declined over claims involving such
intangible forms of so-called “personal property” as patents,44 copyrights,45
trademarks,46 patent royalties,47 an Associated Press franchise,48 certificates of

44

Armstrong v. DeForest, 13 F.2d 438, 440-41 (2d Cir. 1926); Automotive
Prods. Co. v. Wolverine Bumper & Specialty Co., 15 F.2d 745, 746-47 (6th Cir.
1926); Nonmagnetic Watch Co v. Association Horlogere Suisse, 44 F. 6, 6-7 (2d
Cir. 1890) (no in rem jurisdiction over “such incorporeal and intangible property as
a patent-right”); Kleinschmidt v. Kleinschmidt Labs., 89 F. Supp. 869, 872-73 (N.D.
Ill. 1950); Bendix Aviation Corp. v. Kury, 88 F. Supp. 243, 249 (E.D.N.Y. 1950);
Rainbow Rubber Co. v. Holite Mfg. Co., 20 F. Supp. 913, 916 (D. Md. 1937);
Standard Stoker Co. v. Lower, 46 F.2d 678, 681-82 (D. Md. 1931); Standard Gas
Power Co. of Ga. v. Standard Gas Power Co. of De., 224 F. 990 (D. Ga. 1915)
(jurisdiction must “res[t] upon a real and not an imaginary or constructive basis”).
45

National Elec. Serv. Co. v. Acton, 59 F. Supp. 637, 639 (S.D.N.Y. 1945).

46

Winter v. Koon, Schwartz & Co., 132 F. 273, 274 (C.C. Or. 1904); Sterling
Consulting Corp. v. The Indian Motorcycle Trademark, 1997 WL 827450 (D. Colo.
Sept. 5, 1997).
47

Kohagen v. Harwood, 185 F.2d 276, 277-80 (7th Cir. 1950).

48

Lawrence v. Times Printing Co., 90 F. 24, 27-28 (C.C.. Wash. 1898).
Appellants' Brief -- Page 42

deposit, 49 the corpus of a trust,50 or a general creditor’s claims for money.51 The
same disposition is appropriate here.
2.

A Domain Has No Concrete Situs in Virginia
and Cannot be Sued In Rem.

Even if Network Solutions and the Virginia courts are wrong, see
Network Solutions, Inc. v. Umbro Int’l, Inc., 529 S.E.2d 80 (Va. 2000), and a
domain name registration could be treated as “property” of one form or another, it
still remains intangible property without a concrete situs. Therefore, it cannot be
the subject of an in rem suit in Virginia.
For example, in a case involving the purported “situs” of some bonds
that were the subject of a probate proceeding, the U.S. Supreme Court specifically
rejected a “constructive situs” theory that the bonds could be sued in rem. Chase v.
Wetzlar, 225 U.S. 79, 87-89, 32 S. Ct. 659 (1912); see also Gilmore v. Robillard, 44

49

See Savage v. First Nat’l Bank & Trust Co., 413 F. Supp. 447, 449-51 (N.D.
Okla. 1976).
50

Nowell v. Nowell, 296 F. Supp. 640 (D. Mass. 1968), aff’d, 417 F.2d 902
(1 Cir. 1969).
st

51

See Vidal v. South Am. Securities Co., 276 F. 855, 868-74 (2d Cir. 1922)
(“An important distinction exists between shares of stock and certificates for the
shares, the certificates being mere evidence of title.”); see also Wilson v. Beard, 26
F.2d 860, 862-64 (2d Cir. 1928); Gage v. Riverside Trust Co., 156 F. 1002 (S.C. Cal.
1906); American Surety Co. v. Edwards & Bradford Lumber Co., 57 F. Supp. 18,
28-29 (D. Iowa 1958).
Appellants' Brief -- Page 43

F.2d 295, 296 (9th Cir. 1930); Hegarty v. Luff, 169 F. Supp. 873, 875-76 (D.D.C.
1958)(fee action by an arbitrator for payment out of a fund deposited in registry of
U.S. District Court). Intangible rights such as trademarks, patents, and copyrights
simply have no concrete, physical situs to trigger in rem jurisdiction. See notes 4451, supra.
The Domain Name at issue here is directly analogous to the rights
under an insurance policy at issue in Rush v. Savchuk, 444 U.S. 320, 328-33 (1980):
“[Network Solutions]’s decision to do business in [Virginia] was completely
adventitious as far as [Salmons] is concerned.” Id. at 328-29. Accordingly
according to the Supreme Court, “it cannot be said that the defendant engaged in
any purposeful activity related to the forum that would make the exercise of
jurisdiction fair, just, or reasonable . . . merely because [NSI] does business there.”
Id. at 329. “[I]ntangible property has no actual situs.” Id. at 330. Likewise, the
fortuitous symbolic “deposit” of paper by Virginia-headquartered NSI into a court
registry cannot cure this problem of lack of a concrete situs. See Mem. Op. 4-17,
33, FleetBoston Financial, No. 00-10176-DPW (D. Mass. 2001) (“[A] statute that
creates a res out of a bundle of rights, and then gives to any plaintiff with a
colorable claim the right to transfer that res to the forum of its choice, anywhere in
the nation, offends notions of fair play.”).

Appellants' Brief -- Page 44

Finally, a Domain Name has no concrete situs in Virginia because any
time, day or night, a registrant can move the Nameserver and Zone file for any
Domain Name to a server halfway around the world. The command will travel at
the speed of light, and be propagated throughout the entire DNS within 48 hours.
Try that with a piece of land. Even more instantaneously, a Domain Name
registrant can change the identities of all the hosts included within a Domain.
In short, Domain Names are not physically present in Virginia. They
exist, if at all, in BIND and the distributed worldwide network of DNS
Nameservers. In fact, BIND essentially requires the DNS to be distributed all over
the world, by discouraging concentration in Herndon or anyplace else. An attempt
to “deem” a Domain Name to be property, or to “deem” the location of a data
record to be any particular place is nothing but a fiction. The reality is BIND.
3.

Plaintiff has No Antecedent Lien on Any Virginia “Res.”

The mere filing of a lawsuit itself does not create a lien or
encumbrance on property. Rather, a pre-existing (anterior) lien on specifically
identified property is required. McQuillen v. National Cash Register Co., 112 F.2d
877, 880 (4th Cir. 1940) (“the proceeding must be in aid of some pre-existing claim,
existing prior to the suit in question, and not a proceeding to create for the first time
a claim to the property as the effect of the proceeding itself”); Harrison v. Prather,

Appellants' Brief -- Page 45

404 F.2d 267, 269 (5th Cir. 1968); Dan Cohen Realty Co. v. National Sav. & Trust
Co., 125 F.2d 288, 289-90 (6th Cir. 1942); Lefcourt Realty Co. v. Sands, 113 A.2d
428 (Del. Ch. 1955), aff’d 117 A.2d 365 (Del Ch. 1955); see also Continental Trust
Co. v. Shunck Plow Co., 263 F. 873, 875-76 (5th Cir. 1920) (dismissal reversed
because lien was antecedent). In short, this is not a true in rem proceeding”
because it does not involve a pre-existing claim of title to specific property, as
opposed to a claim sounding in tort for which the “property” might hypothetically
be levied against if the Plaintiff prevails. McQuillen, 112 F.2d at 881; Vidal v.
South Am. Securities Co., 276 F. 855, 869-73 (2d Cir. 1922).
4.

Paper Evidence of an Intangible Right Is No
Surrogate for the Right Itself.

Certificates evidencing intangible rights cannot reduce the intangible
rights to tangible form. Indeed, contrary to Plaintiff’s position that a “Registry
Certificate” is a satisfactory substitute for the intangible rights of a Domain Name
registrant, on the day this Brief was due to be filed, the U.S. District Court for the
District of Massachusetts specifically rejected such a broad claim about the
significance of so-called “Registry Certificates.” FleetBoston Financial, supra.
Likewise, such arguments have been rejected since even before the turn of the
century. See Standard Stoker Co. v. Lower, 46 F.2d 678, 681 (D. Md. 1931); see
also Hudson Nav. Co. v. Murray, 233 F. 466, 469-70 (D.N.J. 1916) (location of
Appellants' Brief -- Page 46

stock certificates in New Jersey does not support personal jurisdiction when
corporation’s property was outside New Jersey).
A manufactured or contrived “placement” of an intangible Domain
Name (say, by way of a symbolic affidavit52– ministerially issued by Network
Solutions, Inc., every time it receives a copy of a Complaint filed with any court in
the world, and conveniently presented to a Virginia court (or any other court, for
that matter, into which a Plaintiff has forum-shopped a dispute)), cannot transform
a Domain Name into a tangible “thing” with its actual situs in Virginia. Further,
such an affidavit certainly would not serve as an acceptable substitute for actual
jurisdiction over NSI as a party.53 If, for example, NSI were to cease cooperating
with the courts voluntarily, the “affidavit” procedure presumably would prove
considerably less effective to confer control over a Domain Name than would be
52

Such an affidavit has no effect whatsoever on the operation of the
computer software called BIND that is responsible for the actual functioning of the
DNS. See pp. 16, 18, 21-24 & nn. 20, 28-29, 31-33, 36, supra. Indeed, in reality,
such affidavits are completely immaterial to the functioning of the DNS.
53

In fact, the imaginitive “domain name declaration” strategy was invented by
Network Solutions precisely because it did not want to be named as a party to
litigation (as it had in the Skunkworks and Oscars cases in California), but NSI had
been unsuccessful in its effort to persuade courts to adjudicate domain name
disputes by way of an interpleader action. See Lockheed Martin Corp. v Network
Solutions, Inc., 985 F. Supp. 949, 953 n.2 (C.D. Cal. 1997) (Network Solutions
tried several times to use interpleader strategy, but was unsuccessful), aff’d.194
F.3d 980 (9th Cir. 1999); Network Solutions, Inc. v. Clue Computing, Inc., 946 F.
Supp. 858, 860-61 (D. Colo. 1996 ).
Appellants' Brief -- Page 47

the “interpleader” theory rejected in Network Solutions, Inc. v. Clue Computing,
Inc., 946 F. Supp. 858, 860-61 (D. Colo. 1996).
II.

THE ACPA, 15 U.S.C. § 1125(d)(2) VIOLATES PRINCIPLES
OF FEDERALISM BECAUSE DOMAIN NAMES ARE NOT
PROPERTY UNDER VIRGINIA STATE LAW.
Plaintiff’s in rem theory also violates the fundamental constitutional

principle of federalism. Our Federal government was established as one of limited,
enumerated powers. See, e.g., United States v. Morrison, 529 U.S. 598, ___, 120 S.
Ct. 1740, 1744 (May 15, 2000); United States v. Lopez, 514 U.S. 549, 557 (1995).
All powers not specifically enumerated in the Constitution are reserved to the States
respectively, or to the people. U.S. CONST . Amend. X. Ordinary questions of tort,
contract, and property law are substantive issues reserved to the states, to be
addressed as a matter of state law (either by state courts, under the common law, or
by state legislatures, under the Police Power). See e.g., 28 U.S.C. § 1652; Erie R.R.
v. Tompkins, 304 U.S. 64 (1938). Congress cannot exercise a general police power
or intrude on matters that are within the traditional purview of state law. Morrison;
Lopez; Jones v. United States, 120 S. Ct. 1904, 1907, 529 U.S. 848 (May 22, 2000);
cf. College Sav. Bank v. Florida Prepaid Postsecondary Educ. Expense Bd., 527
U.S. 666, 672-75 (1999) (power of Congress to prohibit States from infringing
private “property” limited); Cleveland v. United States, ___ U.S. ___, 121 S. Ct. 365

Appellants' Brief -- Page 48

(2000) (defining “property” for purposes of wire fraud statute). “Were the Federal
Government to take over the regulation of entire areas of traditional state concern . .
. the boundaries between the spheres of federal and state authority would blur.”
Lopez, 514 U.S. at 577 (Kennedy, J., concurring).
Property interests protected by Due Process are “defined by existing
rules or understandings that stem from an independent source such as state law.”
Board of Regents v. Roth, 408 U.S. 564, 577 (1972) (emphasis added). Thus,
Federal courts typically look to state law to determine whether a “property” right
exists. Goss v. Lopez, 419 U.S. 565, 572-573 (1975); Bishop v. Wood, 426 U.S.
341, 344 (1976). Likewise, the Supreme Court, in Mullane v. Central Hanover
Trust Co., held that Fourteenth Amendment rights cannot depend on the
classification of an action as in rem or in personam, since that classification is “a
classification for which the standards are so elusive and confused generally and
which, being primarily for state courts to define, may and do vary from state to
state.” Mullane, 339 U.S. 306, 312 (1950); accord Shaffer, 433 U.S. at 206.
According to state law established by the Supreme Court of Virginia,
(the jurisdiction where Network Solutions is located), a Domain Name is a service
contract – not “property.” NSI, 529 S.E.2d at 86-88; accord AOL, 106 F. Supp.
2d 848 at 853 n.12; Dorer v. Arel, 60 F. Supp. 2d 558, 560-62 (E.D. Va. 1999).

Appellants' Brief -- Page 49

Moreover, the Virginia court in NSI/Umbro addressed the question of the status of
an Internet domain name under Virginia law in the specific context of the in rem
enforcement of judgments against property located in the state of Virginia.54 Even
though the NSI/Umbro decision post-dated the ACPA, the court did not consider its
prerogative pre-empted by Congress.
Because the individual states and not Congress – are charged with the
task of determining whether Domain Names are property, and Congress has not
attempted to pre-empt the power of states to speak to this issue, it is only proper to
resolve this issue by looking to state law. Board of Regents v. Roth, 408 U.S. at 577;
Goss, 419 U.S. at 572-573; Bishop, 426 U.S. at 344; Mullane, 339 U.S. at 312;
Umbro Int’l, Inc., 529 S.E.2d at 86-88.

54

Indeed, the exercise of jurisdiction over property in the context of enforcing
judgments is the paradigmatic illustration of traditional in rem jurisdiction. See,
e.g., Pennoyer v. Neff, 95 U.S. 714 (1878). Under Rule 69(a) of the Federal Rules
of Civil Procedure, federal courts employ the judgment enforcement processes of
the several states. See Dorer, 60 F. Supp. 2d at 559.
Appellants' Brief -- Page 50

III.

THIS DISPUTE SHOULD BE DISMISSED IN FAVOR
OF A CANADIAN FORUM UNDER THE FORUM NON
CONVENIENS DOCTRINE OR IN THE INTEREST OF
INTERNATIONAL COMITY.
Great circumspection is required before U.S. courts apply U.S. law to

disputes that have so little (if anything) to do with the United States. Under U.S.
law, including precedents specific to the Lanham Act, courts of this country are
supposed to give significant deference to the prerogatives of foreign sovereigns to
address alleged infringement of foreign marks by their own subjects.55 Sterling
Drug, Inc. v. Bayer A.G., 14 F.3d 733, 745 (2d Cir. 1994) (citing Vanity Fair Mills
v. T. Eaton Co., 234 F.2d 633 (2d Cir. 1956)); Nintendo of Am., Inc. v. Aeropower
Co., Ltd., 34 F.3d 246, (4th Cir. 1994) (Applying Vanity Fair factors and reversing
extraterritorial effect of Lanham Act injunction).
It is critically important when courts are asked to exercise judicial
power “with extensive extraterritorial effects,” to take extraordinary care
“adequately [to] conside[r] [U.S. courts’] power to do so.” Sterling Drug, at 746;
see also Asahi Metal Indus. Co. v. Superior Ct. of Cal., 480 U.S. 102, 115 (1987)

55

The three factors that require consideration are: (1) the extent of the effect
of foreign conduct (if any) upon the United States domestic market, and whether
that effect rises to the level of a “significant” detrimental effect; (2) whether the
defendant is a United States citizen, and (3) the possibility of conflict with
trademark rights under the relevant foreign law that might trigger concerns about
about international comity. See Nintendo, 43 F.3d at 250-51.
Appellants' Brief -- Page 51

(“Great care and reserve” required before extending U.S. legal system’s reach “into
the international field.”).
The trial court simply did not even attempt to perform the necessary
Vanity Fair extraterritoriality analysis. See Sterling Drug Co., at 745 (remanding
because failure to perform Vanity Fair analysis is reversible error); Nintendo, at 251
(same); see also Mattel, Inc. v. MCA Records, Inc., 28 F. Supp. 2d 1120, 1158 (C.D.
Cal. 1998) (right of foreign plaintiff to sue in U.S. for violation of U.S. law – as
opposed to violation of foreign law – is strictly limited). Frankly, the trial court’s
assertion that “Plaintiff may not be able to assert the same rights in Canada, which
lacks a body of law equivalent to the ACPA and whose enforcement of its
trademark laws cannot extend into the United States,” Slip op. at 17, makes no
sense whatsoever. Since this is a dispute among Canadians, it would be
extraordinarily peculiar to think that United States law, as opposed to Canadian law,
should apply to the matter in any way.
Similarly, the trial court’s assertion that “a trademark holder seeking to
enforce its U.S.-registered trademarks . . . should not be penalized in the exercise of
those rights merely because the parties involved are not United States citizens,”
assumes the existence of U.S. P.T.O. trademark registrations that just simply do not
exist. See note 4, supra.

Appellants' Brief -- Page 52

Canada, more than most countries, has a well-developed body of law
about trademark disputes involving Domain Names or trademarks on the Internet. 56
Many lawyers, in fact, believe that Canada is a more trademark-friendly jurisdiction
than the United States. In this case, it is in appropriate to project U.S. law into a
foreign country that has a demonstrated ability to handle Domain Name disputes
appropriately under its own domestic legal system.
Imagine if the courts of China, Cuba, or Afghanistan were to conclude
that trademark remedies in the United States differ in various ways from their own

56

E.g., British Columbia Automobile Assn. v. Office and Professional
Employees’ International Union, Local 378 [2001] B.C.J. No. 151 (B.C.S.C.), Tab 1;
Pro-C Ltd. v. Computer City Inc., [2000] 7 C.P.R. (4th) 193 (Ont. S.C.J.) Tab 2;
Innersense Int’l, Inc. v. Manegre, [2000] 7 C.P.R. (4th) 107 (Alta. Ct. of Q.B.), Tab
3; Airline Seat Co. v. 1396804 Ontario Inc., [2000] 8 C.P.R. (4th) 12 (Ont. S.C.J.);
Sprint Communications Co. v. Merlin International Communications Inc. [2000]
F.C.J. No. 1861, Tab 4; IMAX Corp. v. Showmax Inc., [2000], 5 C.P.R. (4th) 81
(F.C.T.D.), < http://www.fja.gc.ca/en/cf/2000/orig/html/2000fca25888 .o.en.html >;
Toronto.com v. Sinclair, [2000] 6 C.P.R. (4th) 487 (F.C.T.D.), Tab 5; Weight
Watchers International, Inc. v. Vale Printing Ltd. [2000], 7 C.P.R. (4th) 92
(F.C.T.D.), < http://www.fja.gc.ca/en/cf/2000/orig/html/ 2000fca26625.o.en.html >;
Molson Breweries v. Kuettner, [1999], 3 C.P.R. (4th) 479 (F.C.T.D.), <
http://www.fja.gc.ca/en/cf/1999/orig/html/1999fca25773.o.en. html >; Bell
ActiMedia Inc. v. Puzo (Communications Globe Tete) [1999], 2 C.P.R. (4th) 289
(F.C.T.D.), < http://www.fja.gc.ca/en/cf/1999/orig/html/ 1999fca24841.o.en.html >;
ITV Technologies, Inc. v. WIC Television Ltd. [1999] 2 C.P.R. (4th) 1 (F.C.T.D.),
< http://www.fja.gc.ca/en/cf/1999/orig/html/ 1999fca25071.o.en.html >; ITV
Technologies, Inc. v. WIC Television Ltd. [1997], 77 C.P.R. (3d) 486 (F.C.T.D.), <
http://www.fja.gc.ca/en/cf/1997/orig/html/ 1997fca21666.o.en.html >; PEINET Inc.
v. O'Brien [1995], 61 C.P.R. (3d) 334 (P.E.I.S.C.).
Appellants' Brief -- Page 53

parochial views of how trademark law should work. Imagine also if these other
countries (or Canada, for that matter), were to begin using assertions of in rem
jurisdiction (based on nothing more than the convenient filing of affidavits in their
own courts) to apply their preferred rules extraterritorially to disputes among U.S.resident plaintiffs and defendants, who may or may not have registered trademarks
in those countries. The extraterritorial application of foreign laws to domestic U.S.
entities, via the Internet, is not a matter of idle speculation. For example, aspects of
this issue are already being adjudicated in Yahoo!, Inc. v. La Ligue Contre Le
Racisme et L’Antisemitisme, C.A. No. 00-CV-21275 (N.D. Cal. filed Dec. 21, 2000).
And such extraterritoriality certainly does not necessarily have to end
with trademark law. Other countries, such as Myanmar or Singapore may also be
uncomfortable with the Bill of Rights. Presumably, such extraterritorial interjection
of foreign jurisdiction and foreign law into matters that are properly viewed as a
U.S. matters, would trigger significant concerns about an affront to U.S.
sovereignty. Likewise, what greater affront could there be to Canadian sovereignty,
than the interjection of U.S. courts into disputes among Canadians over Canadian
trademarks, in the parochial view that the U.S. Congress and/or the U.S. courts
know better, how to run the show in Canada?
Especially in a case such as this one, where the dispute is among

Appellants' Brief -- Page 54

Canadians about Canadian trademarks, and all the evidence and witnesses are in
Canada (and none are or ever will be in Virginia), there exists no evident or
persuasive reason to treat trademark law differently from any other branch of tort
law, or to empower foreign trademark plaintiffs to hijack the U.S. courts, in
contexts in which other kinds of foreign tort plaintiffs clearly would be prohibited
from demanding the extraterritorial adjudication by U.S. courts of disputes
involving accused foreign tortfeasors. See, e.g., Helicopteros Nacionales, 466 U.S.
408 (1984) (personal injury claims do not belong in U.S. courts); Piper Aircraft Co.
v. Reyno, 454 U.S. 235, 255 (1981) ( the “presumption in favor of the plaintiff's
choice of forum . . . applies with less force when the plaintiff or real parties in
interest are foreign”).
Ultimately, “We cannot have trade and commerce in world markets
and international waters exclusively on our terms, governed by our laws, and
resolved in our courts.” M/S Bremen v. Zapata Offshore Co., 407 U.S. 1, 9 (1972).
Both the Supreme Court and this Circuit have had a long history of rejecting such
“parochial” notions. Allen v. Lloyd’s of London, 94 F.3d 923, 928 (4th Cir. 1996).
So long as satisfactory and appropriate remedies are available in foreign courts,
then U.S. courts should be circumspect about exporting U.S. policy preferences
extraterritorially simply because the laws of foreign countries are not completely

Appellants' Brief -- Page 55

identical to our own. Id.
Dismissal in favor of a Canadian forum not only makes sense on
Constitutional grounds, but also because such a dismissal is in the interest of
harmonious relations among independent sovereigns. The United States, more than
any other country, has reason to benefit by encouraging cooperation among all the
other nations that are being drawn together by the Internet. The United States also
has more than any other country to fear if other nations (not all of them democratic)
begin applying their laws extraterritorially on the pretext that they are merely
“following our lead.”
In light of this reality, the trial court misapplied the relevant principles
of International Comity and of forum non conveniens. Not only did the trial court
fail to address the Vanity Fair factors and to assign appropriate weight to the
prerogatives of the Canadian sovereign, but the trial court also applied the wrong
legal standards in its forum non conveniens analysis. Forum on Conveniens is not
limited solely to instances fulfilling the “financial impossibility” standard proposed
by the trial court. Industria E. Comercio De Minieros, S.A. v. Nova Genuesis
Societia, 310 F.2d 811 (4th Cir. 1962).

Appellants' Brief -- Page 56

CONCLUSION
For the foregoing reasons, Defendants respectfully pray that this Court
reverse the decision below and remand with instructions to dismiss the action for
lack of jurisdiction.
Respectfully submitted,
TECHNODOME.COM and
DESTINATIONTECHNODOME.COM,
By counsel,

March 28, 2001

____________________________
Eric C. Grimm
CYBERBRIEF, PLC
320 South Main Street
P.O. Box 7341
Ann Arbor, MI 48107-7341
734.332.4900

Cindy Cohn, Legal Director
ELECTRONIC F RONTIER F OUNDATION
454 Shotwell Street
San Francisco, CA 94110
415.505.7621
COUNSEL FOR ELECTRONIC
FRONTIER FOUNDATION,
TECHNODOME.COM, and
DESTINATIONTECHNODOME.COM.

Appellants' Brief -- Page 57