TABLE OF CONTENTS

Page

STATEMENT OF JURISDICTION ... ~

STATEMENT OF THE ISSUES PRESENTED FOR REVIEW 2

STANDARD OF REVIEW 2

NATURE OF THE CASE 2.

STATEMENT 4

A. Statutory Background 4

B. Factual Background Ana Proceedings To Date 5

SUMMARY OF ARGUMENT 9
0;

ARGUMENT 1'1.

I THIS CASE APPEARS TO BE MOOT 12

Jl THE ACPA'S STATUTORY PREREQUISITES FOR BRINGING
12
AN
.IH
~
ACTION
DO
NOT
APPEAR
TO
BE
MET.
III THE ACPA' S ~ ~ PROVISIONS ARE CONSTITUTIONAL
. .. 18

CONCLUSION $3
CERTIFICATE OF COMPLIANCE

CERTIFICATE OF SERVICE

STATUTORY ADDENDUM
 TABLE OF AUTHORITIES

Cases: Page

Buraer Kina CorD. v. Rudzewicz, 471 U.S. 462 (198S) ,17

Burnham v. Su~erior Court of California,

U.S. 604 (1990)
19, 22-27

CNF Constructors. Inc. v. Donohoe Construction Co., 57 F.3d

395 (4th Cir. 1995)
12

Caesars World. Inc. v. Caesars-Palace.com, 1+2 F. Supp.

2d 502 (E.D. Va 17, 29, 33
.
2000)
~olorado River Water Conservation District v United States,
424 U.S. 800 (1976)
32

Ellicott Machine CorD. v. John Holland Partv Ltd., 995

F.2d 474 (4th Cir 16
1993)
First Charter Land Corp. v. Fitzqerald, 643 F.2d 1011
(4th Cir. 1981) ... 29, 32

Fleetboston Financial CorD. v. Fleetbostonfinancial.com,

138 F. Supp. 2d 121 (D 29
Mass.
2001)
HelicoDteros Nacionales de Columbia. S.A. v Hall,
466 U.S. 408 (1984)
...... 27

International Shoe Co. v State of Washinqton, 3~6 U.S 310

(1945)
. . . . . . . . . .. 10, 19, 22, 23, 24, 25, 28

ISI International. Inc. v. Borden Ladner Gervais LLP,

No. 99-1815, 2001 WL 747642 (7th Cir. July 2, 2001 15

Jellenik v Huron CoDDer Mininq Co., :1'77 U~S . 1:

,.; (1900) 3'0 31

Lucent Technoloqies v Lucentsucks.com, 95 F. supp. 2d 528

(E.D. Va. 2000) .................. 33

McOuillen v. National Cash Reaister Co., 112 F.2d 877

(4th Cir. 1940)
31
Miller v AT&T CorQ_, 250 F..3dS20 (4th Cir. 2000) 2

Network Solutions. Inc. v. Umbro International. Inc.,

S.E.2d 80 (Va. 2000 30
.)
16,
Panavision International. L.P. v Toeggen, 141 F.3d 1316
(9th Cir. 1998)
......... 14
pennoyer v. ~I 95 U.S. (5 Otto) 714 (U77 18, 19, 26, 27
Pittsburah Terminal Co~. v Mid Alleahenv CorQ.,
831 F.2d 522 (4th Cir. 22
1987)
R.M.S. Titanic v. Havner, 171 F.3d 943 4th Cir..), cert.
denied, 528 U.S. 825 ...... 28, 29
(1999)
ReDublic of Panama v. BCCI Holdinas (Luxemboura) S.A.
119 F.3d 935 (11th Cir. 1997)

15
Shaffer v. Heitner, 433 U..S. 186
(1977)
passim
Swint v. Chambers County Commission, 514 U.S. )5 1995) ~1
Sylvania Industrial CorQ. Y. Lilienfield's Estate, 132
~1
F.2d 887 (4th Cir. 1943)

United States v . Bear Marine Services. Inc" 696 F.2d 1117

(5th Cir. 1983) .".., , 12

United States v. MetroDolitan Life Insurance Co., 256 F.2d 17

(4th Cir. 1958)

29
United States v. Swiss American Bank. Ltd., 191 F.3d 30
(1st Cir. 1999)

~4
Vermont Aaencv of Natural Resources v. United States ex reI.
Stevens, 529 U.S. 765 (2000)

13
Yamaha Motor CorD.. U.S.A. v. Calhoun, 516 U.S. 199 (1996) 13

III
Statutes:

Anticybersquatting Consumer Protection Act of 1999

15U.S.C. §1125(d)(1)(C).. 4
15
U.S.C.
§
1125
(d)
(1)
.... 4
15U.S.C. Sl125(d)(2)(A).. . 1, 2, 4, 5, 11
15
U.S.C.
S
1125
(d)
(2)
5
15 U.S.C. § 1125 (d) (2) (A) (ii } (I) &. (II) 5,13
4
15
U.S.C.
fl.125(d}(1)
28 U.S.C § 129: :(1)) $~ 9, 12
28 U..S.C § 16S! f ."" 31
28 U.S.C § 240: .. 8

Rules:

Federal Rule of Civil Procedure

Rule 41(a) (1 . 8
Rule 4(k) (2) 14

Leaislative Materials:

145 Congo Rec. S15023 (dailyed Nav 4

1;71 1.9'9
4
(statement
of
Sen.
Leahy)
H.R. Coni. Rep No. 106-464 (1999) 5, 28
H.R. Coni. Rep No. 106-412 (1999) 28

Miscellaneous:

Charles A. Wright, Arthur R. Miller, Federal Practice and

Procedure § 1073 (Supp. 20011 . . . . . . . . . . . . . . . . . . . . . . . . . . . 15, 26

Edward H. Cooper, Federal Practice and Procedure § 1067.1

at 327 (1987) 15

tV
 IN THE UNITED STATES COURT OF APPEALS
FOR THE FOURTH CIRCUIT

No. 01-1153

HEATHMOUNTA. E. CORP

Plaintiff-Appellee,

TECHNODOME.COM
and DESTINATIONTECHNODOME.COM,

Defendants-Appellants.

ON APPEAL FROMTHE UNITED STATES DISTRICT COURT

FOR THE EASTERN DISTRICT OF VIRGINIA

BRIEF FOR INTERVENORUNITED STATES OF AMERICA

STATEMENT OF JURISDICTION

Plaintiff brought this action pursuant to the in ~

provisions of the Anticybersquatting Consumer Protection Act of

1999 , lS u.s.C~ § 1125(d (2 "ACPA" The districtcourt'g

subject matter jurisdiction is contested

Elliot Salmons is the person who registered the domain names

that are the defendants in this in ~ action. In an order dated

December 29, 2001, the district court denied Salmons's motion to

dismiss the in ~ complaint On January 10, zoox, the district

court certified that order for interlocutory appeal pursuant to

28 u. s. c S 129~(b} Salmons filed a petition dated January 19,

2001 with this Court seeking leave to appeal the interlocutory

order This Court granted the petition

 Plaintiff subsequently moved to dismiss the appeal as moot

The Court denied the motion

STATEMENT OF THE ISSUES PRESENTED FOR REVIEW

1. Whether this case is moot

2. Whether the statutory prerequisites for bringing an in

~ action under the Anticybersquatting Consumer Protection Act

of 1999, 15 U.S.C. 5 1125 (d) (2) , have been met

3 Whether the ACPA's in ~ provisions violate the Due

Process Clause of the Fifth Amendment

STANDARD OF REVIEW

The district court's legal rulings are subject to ~ novo

review in this Court ~I e.g., Miller v AT&T Cor~., 450 F..3d

820, 836 4th Cir 2000)

NATURE OF THE CASE

The Anticybersquatting Consumer Protection Act was enacted

in 1999 to protect the rights of trademark owners against

"cybersquatters" who register internet domain names that are

identical or confusingly similar to a trademark in order to

profit from the mark's goodwill The Act authorizes a trademark

owner to bring an in ~ action against a domain name itself, but

only if the owner would be unable to obtain personal jurisdiction

over the person who registered the domain name

Plaintiff brought this in ~ action against two doma'in

names, alleging that it would be unable to obtain personal

-2-
jurisdiction over Elliot Salmons, the person who registered the

domain names. The district court agreed that due process would

not permit plaintiff to obtain personal jurisdiction over

Salmons, and allowed the j.n ~ action to proceed.

Salmons moved to dismiss the in ~ complaint, arguing that

the ACPA's in ~ provisions violate due process to the extent

that they permit a court to exercise in ~ jurisdiction over

property when the court could not constitutionally exercise in

Dersonam jurisdiction over the persons with an interest in the

property The districtoourt denied the motion to dismiss, but,

at the parties' joint request, it certified its order for

interlocutory appeal This Court granted the petition for leave

to appeal from the interlocutory order

Subsequently, plaintiff moved to dismiss the appeal as moot,

representing that it was abandoning the trademarks that had

formed the basis for its suit and that it had moved to dismiss

its own complaint This Court denied the motion to dismiss,

without explanation

-3-
 STATEMENT

A. Statutory Background.

provisions of the Anticybersquatting Consumer Protection Act of

1999,. 15 U..S.C § 1125 (d) (2).1 The statute was enacted to

protect the rights of trademark owners against "cybersquatters"

who register internet domain names that are identicaL or

confusingly similar to a trademark in order to profit from the

mark's goodwill. ~ 145 Congo Rec 815023 (daily ed. Nov 19,
1.999) (statement of Sen Leahy:
The statute authorizes the exercise of both..in Dersonam and

in ~ jurisdiction The in oersonam provisions, which are not

directly at issue here, generally provide that a person who
registers a domain name that is identical or confusingly similar

to a mark with a bad faith intent to profit from that mark shall

be liable in damages to the owner of the mark -

See .. 5 '
.1.
US

. ~'"'
~

§ 1125 ((1) (1 The ..iJ1 Dersonam provisions also authorize the

court to order the forfeiture or cancellation of the domain name

or the transfer of the domain name to the owner of the mark ~

.i.Q § 1125 (d){1 )(q)

Because many cybersquatters register domain names under

aliases, provide false contact information in their registration

agreements, or are beyond the personal jurisdiction of the

A copy of the ACPA is attached to this brief

-4-
courts, Congress also authorized an in ~ remedy against a
domain name itself ~H.R Coni Rep- 106-464 {1999j. Under
ACPA's in ~ provisions, the owner of a mark may file an

action against a domain name in the judicial district in which

the domain name registrar domain name registry, or other domain

name authority that registered or assigned the name is located.

15 U.S.C S 1125 (d) (2 (A) An in ~'action may not be

brought however, unless the court finds that the owner of the

is not able to obtain .in Dersonam j urisdict"ion over "a person

who would have been a defendant in an ill Dersonam action; or

through due diligence is not able to find a person who would have
It '
been such a defendant ~ i.d § 1125( d) (2 (A) ii I1 5: } .
""
remedies in an..ill ~ action are limited to a court order for

the forfeiture or cancellation of the domain name or the transfer

of the domain name to the owner of the mark. ~JJ;L. "
§ 1125 (d) (2 (~)

B. Factual Background And Proceedings To Date.

1 Plaintiff brought this in ~ action pursuant to the

ACPA against the domain names <technodome.com> and

<destinationtechnodome.com> According to the complaint, these

domain names are identical to the names of two entertainment

centers that plaintiff, a Canadian corporation, was developing in

Canada and New York at the time the complaint was filed JA 7 - 8 .

domain names were registered by a Canadian citizen named

.5-
Elliott Salmons with Network Solutions, Inc. (NSL) , which is
located in Herndon, Virginia JA 6. The complaint alleges that
Salmons registered the domain names in a bad faith effort to

profit from plaintiff's marks. JA 8-9

The district court (Cacheris, J. concluded that the
prerequisites to maintaining an in ~ action were met ~ 106
F Supp. 2d 860 (E.D Va. 2000). As particularly relevant here
the court concluded that a federal court could not, consistent
with due process, exercise personal jurisdiction over Salmons

The court noted that, as far as plaintiff had been able to

ascertain, Salmons's only contact with the United States was his

registration of the defendant domain names with NSI ~ .i.d a t

863 The court explained that the act of registration required

only that Salmons visit NSI's website from his computer ~~

at 866. The court further explained that, although the

registration agreement with NSI provides that Virginia law

governs the agreement, NSI's website does not indicate that it is

located in Virginia or that it is a Virginia business ~ ibid.

The court concluded ~hat Salmons did not have the minimum

contacts with Virginia necessary for the exercise of personal

jurisdiction ~ ~ at 867

2 Salmons who was subsequently served with a copy of the

in ~ complaint, moved to dismiss the complaint. He argued

(among other things that the ACPA's in ~ remedy is

"6~
unconstitutional insofar as it allows a court to exercise in ~

jurisdiction over domain names when due process would preclude

the exercise of in ~ersonam jurisdiction over the person who

registered the domain names

The district court denied the motion to dismiss. The court

rejected the argument that under Shaffer v Heitner, 433 U.S 186
(1977), a court may not exercise in.r..e..m jurisdiction unless it

could exercise in personam jurisdiction over the persons with an

interest in the:r..e.§. JA 188-89 Th~ court explained that, where

property is the entire subject matter of an.in ~ action, due

process does not require a level of contact with the forum

sufficient for the exercise of personal jurisdiction over persons

with an interest in the property. ~ ~ at 189. The court

also rejected the argument that Congress exceeded its power in

deeming a domain name to be property for purposes of bringing an

~ ~ action ~ iJ;L. at 189-90

3 At the parties' joint request, the district court

certified its constitutional ruling for interlocutory appeal

JA 204. This Court granted Salmons's petition for permission to

appeal the interlocutory order. JA 212

4 Subsequently plaintiff moved to dismiss the appeal as
moot In its motion, plaintiff explained that since the time it
had commenced this action it had lost the construction site for
its New York facility and abandoned its Canadian site Mot~on at

-7-
2 Plaintiff represented that it was abandoning the trademarks

that had formed the basis for its suit Ibid. Indeed, plaintiff
explained that it had already filed a motion in district court to

dismiss its complaint, pursuant to Rule 41(a) 1 of the Federal

Rules of Civil Procedure Ibid. The district c~t had not
acted upon that motion, apparently because it believed that the

pendency of the interlocutory appeal deprived it of jurisdiction.

.I.d at 2-3. Plaintiff explained, however, that upon remand the

district court would be required to dismiss the complaint under

Rule 41(a (1 which allows a plaintiff to dismiss its complaint

any time before an answer has been filed. Ibid.

Salmons opposed the motion to dismiss, noting among other

things) that plaintiff had sought to dismiss its complaint

without prejudice In reply, plaintiff indicated that it would

not oppose a dismissal with prejudice Reply at 2. This Court

nonetheless denied the motion to dismiss, without explanation

Plaintiff subsequently indicated that it did not intend to

file a brief on appeal, and the Court entered an order accepting

plaintiff's waiver of its right to file a brief In a separate

order, the Court certified to the Attorney General, pur,suant to

28 U.~.(; S"24cQ3, that this appeal may draw the constitutionality

of a federal statute into question.

-8-
 SUMMARY OF ARGUMENT

The Anticybersquatting Consumer Protection Act was enacted

in 1999 to protect the rights of trademark owners against

"cybersquatters" who register internet domain names that are

identical or confusingly similar to a trademark in order to

benefit from the mark's goodwill. The ACPA authorizes the

exercise of both in oersonam and in ~ jurisdiction. Anin~

action may not be brought under the statute, however, unless the
owner would be unable to obtain personal jurisdiction over the

person who registered the domain name. Relief in an ,j..n ~

action is limited to an order requiring the forfeiture,

cancellation or transfer of the domain name

Appellant Elliot Salmons, who registered the two domain

names that are at issue in this ~ ~ actiQn, challenges the

constitutionality of the ACPA's in ~ provisions

As a threshold matter, this constitutional challenge is

not presented. First, the case appears to be moot Plaintiff

has represented that it is abandoning the trademarks that form

the basis for its action and that it has moved to dismiss its own

eomplaint Even if these developments are insufficient to moot

the case, it is unclear how this interlocutory appeal co~ld

materially advance the litigation, as required by 28 U.S.C.

§ 1292 (b)

...,-
 Second, it appears that the ACPA's statutory prerequisites

for bringing an in ~ action have not been met in this case

Although the district court concluded that plaintiff would be

unable to obtain personal jurisdiction over Salmons, this ruling

rested on a number of flawed legal and factual premises. The

court misunderstood the legal standard that governs the exercise

of personal jurisdiction by a federal court in a federal question

case and overlooked a number of significant contacts between

Salmons and Virginia

II In any event, Salmons's constitutional arguments lack

merit
A. Salmons contends that a court may never exercise in ~
jurisdiction over property unless the property owner has the

"minimum contacts" with the forum that would be constitutionally

required under International Shoe Co. v. State of Washington, 32&

u. S. 310 (1945) to support the exercise of personal

jurisdiction The "minimum contacts" test, however, applies only

to the unusual type of in ..:gm jurisdiction that was at issue in

Shaffer v. Heitner, 433 U.S 186 ti97.7} in which a state court

hearing a shareholder's derivative suit attempted to)';.~.!:£~~.:~.ill

_un~l '
~ jurisdiction over property that was completel
that suit, for the sole purpose of forcing the defendants E-o

appear and defend against the shareholder's derivative suit. The

test does not constrain the exercise of traditional forms of j.:n

-10-
~ jurisdiction, in which the property is itself the subject

matter of the dispute

B Salmons argues in the alternative that Congress exceeded

its power when it deemed a domain name to be property

authorized an in ~ action to be brought in the judicial

district in which the domain name registrar, registry, or other
domain name authority that registered or assigned the domain name

is located It is long established, however, that a legislature

has the power to define property, including intangible property
And even in the absence of legislative guidance, the Supreme
Court has taken a practical approach in designating the situs of

intangible property that turns on whether the property in

question is under the control. of some person or entity that is

subject to the trial court's jurisdiction. The ACPA's in ~

provisions are wholly consistent with that approach

ARGUMENT

In his opening brief, Salmons argues that the in ~

provisions, of the Anticybersquatting Consumer Protection Act, 15

u:s.C S 112S(.d){2) I violate the Due Process Clause of the Fifth
Amendment. As we explain below, this argument lacks merit. We
note as a threshold matter, however, that the Court need not
address the constitutional challenge for two independent reasons

First, the case appears to be moot And, second,. the statutory

-11-
prerequisites for bringing an in ~ action do not appear to be
met in this case

I. THIS CASE APPEARS TO BE MOOT.

Notwithstanding the ruling of the motions panel, this case

appears to be moot.2 Plaintiff has disavowed any interest in the

trademarks that form the basis for this action and has sought to

dismiss its complaint, indicating that it would accept a

dismissal with prejudice Even if the case is for some reason

not technically moot, the Court may properly decline to hear this

int$rloC\1tory appeal because the appeal is no longer likely to

materially advance the litigation, as required by 28 U.S.C.

§ 1292 (b) . .Q..§..§. e.g. United States v. Bear Marine Servs.. Inc.,

696 F.2dl117, 1119-20 5th Cir. 1983 (II [t]he merits panel may

consider events occurring after the motions panel's initial

decision" and "may conclude that the initial decision to hear the

appeal was, or was later rendered, improvident

II. THE ACPA'S STATUTORY PREREQUISITES FOR BRINGING
AN ~ RgM ACTION DO NOT APPEAR TO BE MET.

Even assuming that the appeal should be heard it appears

that the ACPA's statutory prerequisites for bringing an in ~

action have not been met An in ~ action may not be brought

under the ACPA unless the district court finds that the owner of

2 This panel is not bound by the ruling of the motions panel.

~ CNF Constructors. Inc. v. Donohoe Construction Co., 57 F.3d
395, 397 n.1 (4th Cir. 1995).

-12-
 mark is unable to obtain in gersonam jurisdictioI

person who would have been a defendant in an in Qersonam action

or through due diligence is unable to find a person who would

been such a defendant ~ 15 U.S.C § 1125(d 2 :A ii I

& II) The district court concluded that plaintiff would be

unable to obtain personal jurisdiction over Salmons, who

registered the defendant domain names ~ 106 F Supp 2d at

862-68 Thi ruling rested on a number of faulty premises both

.egal and factual

A In analyzing .e questior whether t aintiff .ld obt

personal jurisdiction over Salmons, the district court began by

asking whethe:r Salmons w ld be amenable to suit under the lonq

arm statutes c Virginia and New York the tw states whicl

Salmons had apparent contacts ~ 106 F Supp 2d at 863-6

reac of the state long-arm statutes is rrelevant however

the quest whetheI plaintiff ~ould obtai persona

;UI :dictior oveI Salmons in ar act on brought under ACPA

3 The district court's personal jurisdiction ruling was not made

in the order certified for interlocutory appeal, and thus
ordinarily would not be within the scope of appellate review.
~ Yamaha Motor COrD.. U.S.A. v. Calhoun, 516 U.S. 199, 204-05
(1996). The Court may address the personal jurisdiction ruling,
however, because it is antecedent to the constitutional question
before the Court. ~ Vermont Aaencv of Natural Resources v.
United States ex rel. Stevens, 529 U.S. 765, 770 (2000)
(explaining that the state had taken an interlocutory appeal fro
the district court decision denying it Eleventh Amendment
immunity, and that the court of appeals had exercised pendent
appellate jurisdiction over the antecedent statutory question)
(citinq ~nt v. .ChamhA"'s ('"",nt-" ("~mmissinT1, 514 U.S. 35, 50-51

-13-
 Under the 1993 amendment to Rule 4 of the Federa: Rules of

Civil Procedure, a defendant in a federal question case who would

not be amenable to suit in any state court may be subject to suit

in any federal court, as long as the exercise of jurisdiction

would satisfy the requirements of due process ~ Rule 4(k) (2

~ generall~ United States v. Swiss American Bank. Ltd., 191

F.3d 30, 38-40 (1st Cir 1999) (describing the 1993 amendments to

Rule 4 Thus, to determine whether Salmons could be subject to

an .!n Qersonam .action, only the due process limitations need be

considered

The district court did not decide whether Salmons would be

constitutionally amenable to suit in New York - the state in

which one of plaintiff's entertainment facilities was to be built

because it concluded that the requirements of the New York

long-arm statute could not be met ~ 106 F. Supp 2d at 864

n.6 The court thus failed to consider contacts that were

potentially relevant to the personal jurisdiction question. ~,

e.g., Panavision Int'!. L.P. v ToeQQen, 141 F.3d 1316 (9th Cir

1998) (jurisdiction in the Central District of California was

proper because the effects of the alleged cybersquatting were

felt in California

B The district court also erred in its constitutional

analysis, by focusing narrowly on Salmons's contacts with the

Commonwealth of Virginia As Judge Easterbrook recently

-14-
explained, the due proceSS clauses of the Fifth and F~.~~teenth

Amendments prc;>tect persons "from being haled into a court unless

they have 'minimum contacts with the sovereign that established

that court." ISI Int'l. Inc. v. Borden Ladner Gervais LLP,

No. 99-1815~ 2001 WL 747642, at *3 (7th Cir. July 2, 2001 "The

jurisdiction whose power federal courts exercise is the United

States of America," not the state in which the particular federal

court happens to be located Ibid. Thus, "[s]o far as the

Constitution is concerned, the right question is whether [the

defendant has contacts with the United States * * * Ibid.

~ gl.§Q Reoubl ic of Panama v BCCI Holdinas (Luxemboura) S.A.,

119 F.3d 935, 947 n.23 (11th Cir 1997 (citing cases that accept

this "pure nationa1contacts" approach)

Even the courts that have not entirely endorsed this "pure

national contacts" approach have recognized that a narrow focus

on the defendant's contacts with the state in which the district

court is located is inappropriate ~ ~ at 946 in

considering the reasonableness of the forum, "a defendant's

contacts with the forum state play no magical role in the Fifth

Amendment analysis" ~ .§.l..2Q 4 Charles A. Wright, Arthur R

Miller, & Edward H Cooper, Federal Practice and Procedure

t 1067..1, at 327 (1987) ("As a practical matter * * * state lines

cannot provide an accurate measure (!)f the burdens that would be

imposed on a defendant by requiring him to defend an action in a

-15-
particular forum There is nothing inherently burdensvme about

crossing a state line."). Thus, the district court's narrow

focus on Salmons's contacts with Virginia was inappropriate

,c Even on its own terms, the district court's analysis of

Salmons's contacts with Virginia was flawed Salmons's

contractual relationship with NSI by itself would seem to support

the exercise of personal jurisdiction in the Eastern District of

Virginia The district court relied on Ellicott Machine CorQ. v

John Holland Party Ltd., 995 F.2d 474 (4th Cir 1993 to
conclude that Salmons's contractual relationship with NSI would

not confer personal jurisdiction over Salmons in Virginia But

in Ellicott Machine this Court stressed that the contract at

issue was not performed in Maryland and did not contain a choice-

of-law provision that would have made Maryland law govern. ~

..1..d a t 4 7 8 . By contrast, Salmons's contract with NSI is

performed in Virginia and includes a choice-of-law provision

under which Virginia law governs. ~ JA 77-83 (the registration

agreement ~ qenerally Network Solutions. Inc. v Umbra

Int I 1. Inc., 529 S.E.2d to, 84..85 (Va. 2000) (describing the
services that NSI provides pursuant to its registration

agreements)

The district court stated that the registration agreement

between Salmons and NSI does not contain a jurisdictional waiver

~ lOG F Supp at 863 11.5. The copy of the agreement that

-16
Salmons attached to his declaration, however, proviJ;::::; that " [b]y
submitting this Registration Agreement, Registrant consents to
the exclusive jurisdiction and venue of the United States

District Court for the Eastern District of Virginia, Alexandria

Division." JA 81 Even if, as Salmons argued, this provision is

regarded as applicable only in contract actions brought by NSI,

~ JA 103, it is surely relevant in determining whether Salmons

should have II 'reasonably anticipate[d]
being haled into court
in Virginia Buraer Kina Cor~. v Rudzewicz, 471 U.S 462, 474
(1985 {citation omitted}. Indeed, Salmons's own

characterization of the jurisdictional waiver casts doubt on the

district court's conclusion that there was "no evidence" that

Salmons "knew that NSI was located in Virginia, let alone that he
was purposefully directing his activities to the Commonwealth,

106 F Supp 2d at 866 ~ JA 103 (arguing that the

jurisdictional waiver "requires that any litigation between the

Registrant and the Registrar in respect of the services

contracted for, i.e domain registration, be brought in the

location where the Registrar operates from, i.e. Virginia" At

a minimum, this would seem to be the type of case in which it

would be appropriate to require the plaintiff to attempt an in

oersonam action before allowing the in ~ action to proceed.

ComDare Caesars World. Inc. v. Caesars-Palace. com, 112 F Stipp

-17
2d 502, 505 (E.D. Va. 2000) (declining to impose suc. a filing

requirement when it would be futile)

III. THE ACPA IS 1H &gM PROVISIONS ARE CONSTITUTIONAL

A. Salmons's challenge to the constitutionality of the

ACPA's in ~ remedy rests principally on his argument that a

court may never exercise in ~ jurisdiction over property unless

it could constitutionally exercise in ~ersonam jurisdiction over

the persons with an interest in the property. In other words

Salmons contends that the "minimum contacts" test of

International Shoe must be satisfied regardless of whether the

exercise of jurisdiction is in ~ersonam or in ~

As we have just shown, the Eastern District of Virginia

could exercise jurisdiction over Salmons; the requirements of

International Shoe have been satisfied in this case Thus,

Salmons's constitutional challenge is not presented. But even

assuming for the sake of argument that the requirements of

International Shoe would not be satisfied Salmons's

constitutional challenge lacks merit

In Penno~er v Neff, 95 U.S. (s Otto) 714 1877 the

Supreme Court endorsed a territorial concept of state court

jurisdiction The Court held that "every State possesses

exclusive jurisdiction and sovereignty over persons and property

within its territory.R ~ at 722 As a corollary, the Court

-18-
opined that "no State can exercise direct jurisdiction over

persons or property without its territory." Ibid.

Subsequent Supreme Court decisions eroded this corollary.

In the late 19th and early 20th centuries, improvements in the
modes of transportation and communication and corresponding

increases in the mobility of American citizens "led to an

inevitable relaxation of the strict limits on state jurisdiction

over nonresident individuals and corporations Burnham

SuDerior Court of California, 495 U.S. 504, 617 (1~90
(plurality {citation omitted}. Although the decisions initially
relied on constructive notions of consent and presence, 1n
International Shoe Co. v. State of Washington, 326 "~
U.S.~1.~

1945) , the Court "cast those fictions aside and made explicit

the underlying basis of these decisions Due process does not

necessarily reQuire the States to adhere to the unbending

territorial limits on jurisdiction set forth in Pennoyer.

Burnham 495 U.S at ,1,8 Instead, the Court held that "'due
process requires only that in order to subject a defendant to a

judgment ..in personam, if he be not present within the territory

of the forum he have certain minimum contacts with it such that

the maintenance of the suit does not offend "traditional notions

of fair play and substantial justice Ibid. (quoting

International Shoe, 326 u.s. at 316) (citations omitted)

~19-
 2. In Shaffer v Heitner, 433 U.S 1-86 {1977 t:.he Court

applied the minimum contacts test of International Shoe to

invalidate the exercise of an unusual kind of in ~

jurisdiction. The property that was the subject of the in ~

action in that case was wholly unrelated to the dispute between

the plaintiff "and the property owners, and was used s"imply as a

means to compel the property owners to appear and defend in the

unrelated.in Qersonam action. Altho~gh the holding of Shaffer

was narrow, dicta in that decision suggested that the minimum

contacts test of International Shoe might apply, not only to

expand the power of state courts to assert jurisdiction over

persons not within their borders, but also to limit their

traditional power to exercise jurisdiction over persons and

property that are located within state borders

In Shaffer, a Delaware court hearing a shareholderrs

derivative suit against a corporation's directors sequestered the

directors' stock in the company, the situs of which was Delaware

under Delaware law. ~ Shaffer, 433 U.S at 189-92 The

Supreme Court stressed two features of the Delaware sequestration

procedure that particularly justified application of the "minimum

contacts" test of International Shoe, which, before Shaffer, had

been applied only to test the exercise of in gersonam

jurisdiction

-20-
 First, the Court explained that "the property which now

serves as the basis for state-court jurisdiction is completely

unrelated to the plaintiff's cause of action." ~ at 209

Second, and relatedly, the Court explained "the express purpose

of the Delaware sequestration procedure is to compel the

defendant to enter a personal appearance" in the shareholder's

derivative action. I bid.; ~ ,9]..2.Q ,.ig..,..a t 1 93 (the sequestration

order was not intended "'to secure possession of property pending

a trial between resident debtors and creditors on the issue of

who has the right to retain it If but "'to compel the personal

appearance ofa nonresident defendant to answer and defend a suit

brought against him in a court of equity'") (quoting the Delaware

Court of Chancery
The Supreme Court held that, "[i}n such cases, if a direct

assertion of personal jurisdiction over the defendant would

violate the Constitution, it would seem that an indirect

assertion of that jurisdiction should be equally impermissible

l.Q at 209. Because the corporation's directors did not have

sufficient contacts with Delaware to support the exercise of

personal jurisdiction under International Shoe, the Court held

that the sequestration of their stock was an unconstitutional

mechanism for acquiring personal jurisdiction over the directors.

~ .i.d at 213.

-21-
 The facts of Shaffer did not require the Court c~ decide

whether the minimum contacts test of International Shoe should

also constrain the traditional exercises of.;i.n ~ jurisdiction,

in which the property at issue II related to the plaintiff'$

cause of action. Indeed, the Court distinguished cases in which

"claims to the property itself are the source of the und~rlying

controversy * * *." l.Q...,..a t 207 .

Nonetheless, the Court stated broadly that "all assertions

of state-court jurisdiction must be evaluated according to the

standards set forth in International Shoe and its progeny." ~

at 212 Although the Court recognized the "long history of

jurisdiction based solely on the presence of property in a

State," ..iQ at 211, it suggested that II I [t] raditional notions of

fair play and substantial justice' can be as readily offended by

the perpetuation of ancient forms that are no longer justified as

by the adoption of new procedures that are inconsistent with the

basic values of our constitutional heritage," ~ at 212

Shaffer thus could have been read to reject Penno~er's

premise that "every State possesses exclusive jurisdiction and

sovereignty over persons and property within its territory

Pennover, 95 U.S atn2..4 The Supreme Court's decision in

4 Indeed, before the Supreme Court decided Burnham, this Court.

stated that" [t]he narrow holding of [Shaffer] was a simple one:
the minimum contacts rule of International Shoe would henceforth
be applied to actions 1n ~ and QUasi 1n ~I as well as to
actions.in Dersonam." Pittsburah Terminal Cor~. v. Mid Alleahen~
(continued. . .)

-22-
Burnham v SuDerior Court of California, 495 U.S 6CJ';" S11
1990), however, rejected Shaffer's broad dicta and confirmed

that the minimum contacts test of International Shoe applies only

when a state court cannot invoke a traditional territorial basis

for its exercise of jurisdiction

3. In Burnham, the Supreme Court held that a California

court properly asserted personal jurisdiction over a nonresident

who was personally served with process while temporarily present

in California for reasons unrelated to the suit (a practice

sometimes described as "tagging")

Dennis Burnham was a New Jersey resident. His wife lived

with their children in California. Burnham took a three-day
business trip to California, during which he visited his

children While in California he was served with his wife's

divorce petition and a California court summons ~ Burnham,

495 U.S at 607-0$. Burnham argued that because he was in

California for reasons unrelated to the litigation, he did not

have contacts with California that were sufficient under

International Shoe to support the exercise of jurisdiction

The Supreme Court rejected this argument Justice Scalia

announced the judgment of the Court and delivered an opinion that

was joined by the Chief Justice and Justice Kennedy in full and

by Justice White in part Justice Scalia observed that a

4 ( . . . continued)
CorQ., 831 F.2d 522, 526 (4th Cir. 1987

-23-
nonresident's physical presence in a state is a long established

basis for the exercise of jurisdiction He explained that under

International Shoe, a defendant's litigation-related "minimum

contacts" may take the place of the defendant's physical presence

in the state as a basis for jurisdiction. ~ Burnham, 495 U.S.

at 618. But he stressed that " [n]othing in International Shoe or

the cases that have followed it * * * offers support for the very

different proposition petitioner seeks to establish today: that

a defendant's presence in the forum is not only unnecessary to

validate noveL, nontraditional assertions of jurisdiction, but is

itself no longer sufficient to establish jurisdiction." .I..d at

619. He concluded that "jurisdiction based on physical presence

alone constitutes due process because it is one of the continuing

traditions of our legal system that define the due process

standard of 'traditional notions of£air play and substantial

justice Ibid.

Justice Scalia distinguished Shaffer, explaining that

Shaffer, like International Shoe, involved jurisdiction over an

absent defendant, and it stands for nothing more than the

proposition that when the minimum contact' that is the

substitute for physical presence consists of property ownership

it must, like other minimum contacts, be related to the

litigation." ~ at 620. He explained that Shaffer held, "not

that all bases for the assertion of in Qersonam jurisdiction

-24-
(including, presumably, in-state service must be treated alike

subjected to the minimum contacts' analysis of International

~/" but rather that the unusual type of gyasi .in .I:.§.!!l

jurisdiction asserted in Shaffer and in Qersonam jurisdiction

were "really one and the same and therefore must be treated

alike." ~ at 621 He declined to read Shaffer as "casually

obliterating" the long-standing distinction between defendants

are absent from the state and defendants who are physically

present. ~ ibid. And he disavowed Shaffer's suggestion that a

jurisdictional principle that is "both firmly approved by

tradition and still favored" could violate due process. ~..;iJ;L.

at 621-22.

Concurring in part, Justice White suggested that the Court

has authority under the Due Process Clause to examine even

traditionally accepted procedures and declare them invalid ~

at 628 He concluded, however, that there had been no

showing that the widely accepted practice of obtaining personal

jurisdiction over a nonresident by personal service in the forum

state was "so arbitrary and lacking in common sense in so many

instances that it should be held violative of due process in

every case." Ibid. Unless this "difficult" showing were made

Justice White would not require courts to entertain claims in

individual cases that the rule would operate unfairly as applied

to a particular nonresident. ~ ibid.

25-
 Justice Brennan filed an opinion concurring in the judgment,

in which Justices Marshall, Blackmun, and O'Connor joined

Although Justice Brennan agreed "that history is an important

factor in establishing whether a jurisdictional rule satisfies

due process requirements," he did not agree "that it is the 2nl:i

factor such that all traditional rules of jurisdiction are, ioso
facto, forever constitutional. .l!;L. at 629. He concluded,

however, that the rule allowing state courts to assert

jurisdiction over nonresidents temporarily within the state

comports with due process, because it is consistent with

reasonable expectations that are based in part on the rule's

historical pedigree. ~ ~ at 637.5

4 Notwithstanding the separate opinions, Burnham has been

understood "to preserve the physical presence principle of

Pennover v Neff." ~ 4 Charles A. Wright and Arthur R. Miller,

Federal Practice and Procedure § 1073, at 320 (Supp- 200J;t. As

Justice Scalia explained, the contacts that Burnham had with

California plainly would not have sufficed to support the

exercise of jurisdiction if Burnham had not been served with

process while in the state ~ Burnham, 495 U.S at 623-24

S Justice Stevens filed a concurring opinion that noted that he

had not joined Shaffer because of its broad reach, and could not
join either Justice Scalia's opinion or Justice Brennan's opinion
for the same reason. ~ Burnham, 495 U.S. at 640. In his view,
the historical evidence and consensus identified by Justice
Scalia, the considerations of fairness identified by Justice
Brennan, and the common sense displayed by Justice White all
combined to show that Burnham was an easy case. ~ ibid.

-26-
 To the contrary, the Supreme Court has held thac

defendant's contacts with the forum state must be "continuous and

systematic" before a state court may exercise jurisdiction in a

lawsuit that does not arise out of or relate to the defendant's

contacts with the state. ~ HelicoDteros Nacionales de

Columbia. S.A. v. Hall, 466 u.s 408, 416 (1984) Burnham's
three-day trip to California clearly would not have met this

standard Thus, only the principle of territoriality can explain

the judgment in Burnham.

This point is dispositive here, because the territoriality

principle not "only gives courts the power to assert jurisdiction

over persons within the forum; it also gives courts the power to

adjudicate, in an in ~ act ion I the interests in property that

is located within the forum ~ pennoyer v Neff 95 U.S (5
Otto) 714, 722 (1878 "every State possesses exclusive

jurisdiction and sovereignty over persons and DroDerty within its

territory") (emphasis added). As pennoyer makes clear, the power

of a court to adjudicate the interests in property within the

forum is as longstanding as the power of courts to exercise

jurisdiction over persons who are served with process while

temporarily within the forum

Thus, it is only the unusual type of guasi in ~ proceeding

that was at issue in Shaffer - a proceeding that was tantamount

to the exercise of personal jurisdiction - that must satisfy the

-27
minimum contacts requirement of International Shoe. When the

property that is at issue in the in ~ action is itself the

subject matter of the dispute, due process is necessarily

satisfied

As this Court has explained "personal jurisdiction need not

be exercised in a pure in ~ proceeding because, in the simplest

of terms, a piece of property and not a person serves as the

defendant R.M.S. Titanic v Havner 171 F.3d 943, 957 4th

Cii:. cert. denied 528 U.S 825 1.9.99) "111 ~ actions only

require that a party seeking an interest in a ~ bring the ~

into the custody of the court and provide reasonable, public

notice of its intention to enable others to claim an interest in

the ~." Ibid.

Congress relying in part on this Court's analysis in R.M.S.

Titanic recognized the same principle in enacting the ACPA's in

x.e.m provisions :ongress correctly concluded that the ACPA's in

.:gm remedy "does not offend due process, since the property and

only the property is the subject of the jurisdiction, not other

substantive personal rights of any individual defendant H.R

Rep No 106-412 at 14 1999 ~~H.R Coni. Rep No 1.06-

464 1999 ,noting that although Shaffer called into question the

viability of guasi in ~ "attachment jurisdiction, the Supreme

Court has acknowledged the propriety of in xgm proceedings where

-28
 claims to the property itself are at issue (citing R.M.S.
Titanic and other cases)

B Salmons argues in the alternative that Con~ress exceeded

its power by deeming a domain name to be property and by

authorizing an in ~ action to be brought in the judicial

district in which the domain name registrar, registry, or other

domain name authority that registered or assigned the domain name

is located
1.. Salmons asserts (Br 42-43 that i:ntangfble property

cannot be the.subject of an in ~ action That contention is

baseless. Even in the absence of a specific legislative

authorization intangible property may be the subject of an in

~ act ion ~, e.q, , First Charter Land Com. v Fitzqerald
643 F.2d 1011 (4th Cir 1981) (exercising in ~ jurisdiction
over bank notes and a bank account United States v.
MetroDolitan Life Insurance Coo, 256 F.2d 17 4th Cir 1958)
(exercising in ~ jurisdiction over life insurance policies)

6 Accord Caesars World. Inc. v. Caesars-Palace. com, 112 F. Supp.

2d 502, 504 (E.D. Va. 2000) (rejecting due process challenge to
the ACPA's in ~ remedy because Shaffer requires minimum
contacts sufficient to support personal jurisdiction "only in
those in ~ proceedings where the underlying cause of action is
unrelated to the property which is located in the forum state").
~ ~ Fleetboston Financial Com. v. Fleetbostonfinancial.com,
138 F. SUppa 2d 121, 133-35 (D. Mass. 2001) (rejecting, in dicta,
the Caesars World court's narrow reading of Shaffer, but holding
only that the ACPA's statutory prerequisites for an in ~ action
were not met).

-29
 Where, as here, Congress has determined that a particular

form of intangible property may be the subject of an in ~

action, that determination governs. It has long been understood

a legislature has broad power to define property. In

Jellenik v Huron CODDer Mining Co., 177 U.S. 1 1900), the
plaintiffs brought an in ~ action to remove a cloud on their

title to corporate stock that had arisen when the corporate

directors sold the stock to themselves. The Court held that the

corporate stock would be considered property for the purpose of

in ~ jurisdiction because "the State under whose laws the

Company came into existence has declared, as it lawfully might

such stock is to be deemed personal property." ~ at 12

The Court explained that it therefore "need not discuss, in light

of the authorities, whether the shares of stock in the defendant

company may not be accurately described as chattels or choses in

action, or property in the nature of choses in action." Ibid.

Congress's decision to treat a domain name as property is

likewise concrolling

Contrary to Sal,~ons' s contentions (Br. 49-50) , the ACPA's

designation of a domain name as property is not inconsistent with

the decision of the Virginia Supreme Court in Network Solutions.

. Umbro Int'l. Inc., 529 S.E.2d 80 (Va 2000) The

Virginia Supreme Court did not decide whether a domain name

should be classified as intangible property, and held only that

-30-
as a product of a contract for services, a domain name is not

subject to garnishment under Virginia law ~ j.,g at 86 But

even if there were a conflict, federal law would preempt

inconsistent state law by operation of the Supremacy Clause.

2 Salmons is also wrong in asserting (Br. 43-45

Congress exceeded its power when it designated the situs of a

domain name to be the district in which the registrar, registry,

or other authority that registered or assigned the domain name is

located In des~gnating the situs of intangible property, the

Supreme Court has taken a pragmatic approach that turns on

whether the property in question is under the control of some

person or entity that is subject to the trial court's

jurisdiction. Thus, in Jellenik, the Court held that the

corporate stock "may be deemed to be held by the company within

the state whose creature it is, whenever it is sought by suit to

determine who is its real owner," because the company was subject

to the state court's jurisdiction and could be required to cancel

the stock certificates Ibid.@

7 Salmons is likewise mistaken in suggesting (Br. 45-46) that an

in ~ action may brought under the ACPA only if the action is
intended to extinguish a "pre-existing" claim on a domain name.
The case on which Salmons relies, McQuillen v. National Cash
Reaister Co., 112 F.2d 877, 880 (4th Cir. 1940), was describing a
statutory requirement of the predecessor to 28 U.S.C. § 1655, the
general federal in ~ statute. The ACPA contains no such
requirement.
8 ~ al.§.Q S~lvania Industrial Cor~. v. Lilienfield's Estate, 132
F.2d 887, 891 (4th Cir. 1943) (II [t]he rule is well settled that
(continued.. .)

-31-
 This Court has similarly explained that i]n contemporary
jurisprudence, property refers to both the actual physical

object and the various incorporeal ownership rights in the ~,

such as the rights to possess, to enjoy the income from, to

alienate, Qrto recover ownership from one who has improperly

obtained title to the ~." First Charter Land Cor~. v

Fitzgerald 643 F.2d 1011, 1014-15 (4th Cir 1981 Jurisdiction

over the ~ "is based on the authority to adjudicate property

interests, not upon the fortuity of having actual possession of a

~." .lQ a t 1 a 1 5

A domain name authority like NSI has the ability to cancel

or transfer a domain name And because NSI is located in

Herndon, Virginia, it is subject to the jurisdiction of the

district court. Thus, the Eastern District of Virginia is a

8(.. .continued)
regardless of the place where the stock certificates may happen
to be, the state in which a corporation has been organized is the
situs of ,i~s shares of stock, for purposes of administration,
rather than the state'of decedent's domicile, and particularly so
if the corporation also conducts its business in the state where
it has been organized") (quotation marks and citation omitted).
9 Although this test may create the potential for more than one
court to have in.rgm jurisdiction over the same~, III [i]t has
been held * * * that the court first assuming jurisdiction over
property may exercise that jurisdiction to the exclusion of other
courts. III First Charter Land Co~., 643 F.2d at 1014 (quoting
Colorado River Water Conservation District v. United States, 424
U.S. 800, 818 (1976)). This rule "forecloses unseemly and
inefficient power struggles between courts having concurrent
jurisdiction, but whose simultaneous exercise of their
jurisdictions might result in inconsistent adjudication. II 643
F.2d at 1014.

.~;2-
proper situs for this in ~ action, and Salmons's constitutional

challenge lacks merit ~ Caesars World, 112 F. Supp. 2d at 50"4

" [e]ven if a domain name is no more than data,
Congress can make
data property and assign its place of registration as its

situs" ; Lucent Technoloaies v. Lucentsucks.com, 95 F Supp. 2d

528, 535 (E.D. Va 2()OO (following Caesars World)

CONCLUSION

For the.foregoing reasons, ,the Court should dismiss the

appeal as moot, or, in the alternative, reverse the judgment of

the district court on the ground that the ACPA's statutory

prerequisites" for maintaining an in ~ action have not been met

If the Court reaches the merits of the constitutional challenge

to the ACPA's in ~ provisions, it should affirm the district

court's constitutional ruling

Respectfully submitted,

STUART E. SCHIFFER
Actina Assistant Attorney General

KENNETH MELSON
United States Attorney

MARK B. STERN
(202) 514-5089 A 6..6.L-
ALISA B. KLEIN /~c--
(202) 514-1597
Attornevs. Aooellate Staff
Civil Division. Room 9530
Deoartment of Justice
601 D Street. N.W.
Washinaton. D.C. 20530-0001

JULY

-33-
 CERTIFICATE OF COMPLIANCE

Pursuant to Rule 32(a 7) (A) of the Federal Rules of

Appellate Procedure, I certify that this brief contains 7,482

words, according to the word count of Corel Wordperfect 9.

Alisa B. Klein
Attorney
 CERTIFICATE OF SERVICE

I hereby certify that on this 25th day of July, 2001, I am

causing copies of the foregoing brief to be sent by first class

regular mail to the Court and to the following counsel:

Alisa B. Klein
Attorney
.
15 § 1125 COMMERCE A..~D TRADE

(c) Remediesfor dilution of famous marb

[Seemain oolurntfor text off 1)]
(2) In an actjonbroughtunder this subsection,the ownerof the famousmark shall be
entitled only to irijunctiverelief as set forth in section1116of this title unlessthe person
against whom the irijunction is sought willfully intended to trade on the owner's
reputation or to causedilution of the famousmark. If suchwillful intent is proven,the
owner of the famousmark shall also be entitled to the remediesset forth in sections
1117(a)and 1118of this title, subjectto the discretionof the court.and the principlesof
equity.
[Seemain oolumefor te%tof (3) and (-')]

(d) Cyberpiracy prevention

(l)(A) A personshall be liable in . civil action by the O\\'Derof a mark. including a
personalnamewhichis pro~ as a mark under this section,if, without regard to the
goodsor servicesof the pWes, that person
(i) has a bad faith intent to profit from that mark, including a personalname
which is protectedas a mark underthis section; and
(ii) registers,traffics in, or uses:a domainnamethat-
(I) in the caseof a mark that is distinctiveat the time of registrationof'the
domainname,is identicalor confusinglysimilar to that mark;
(II) in the caseof a f'amousmark that is famousat the time of registrationof'
the domainname,is identicalor confusinglysimilar to or dilutive of that mark;
or
(111)is a trademark,word, or name protectedby reasonof section706 of
Title 18or section220500of Title 36.
(B)(i) In deunnlning whether a person has a bad faith inunt described under
subparagraph(a). a court may considerfactorssuchas.but not limited to
(l) the trademarkor other inullectual property rights of the person.if any, in
the domainname;
(II> the extentto whichthe domainnameconsistsof the legal nameof the person
or a namethat is othe!'\\'isecommonlyusedto identify that person; .
(III) the person'sprior use, if any, of the domainnamein connection~ith the
bonafide offeringof any goodsor sel"\ices;
(IV) the person'sbona fide noncommercialor fair use of the mark in a site
accessibleunderthe domainname;
(V) the person'~intent to divert consumersfrom the mark o\\-ner'sonline
location to a site accessibleunder the domainnamethat could hanD the goodVoil1
representedby the mark. either for commercialgainor with the intent to tarnish or
disparage the mark. by creating a likelihood of confusion as to the source,
sponsorship.aff"lliation.or endorsementof the site;
(VI) the person'soffer to transfer. sell. or othe!'\\iseassignthe domainnameto
the mark o\\-neror any third party for financialgain~ithout ha\ing used.or ha\ing
an intent to use.the domainnamein the bonafide offeringo( any goodsor sel"\ices.
or the person'~prior conductindicatinga pattern of suchconduct;
(VII) the person'spro\ision of material and misleading(alsecontactinfonnation
when applying (or the registration o( the domain name,the person'~intentional
failure to maintain accurau contact information. or the person's prior conduct
indicatinga patterno( suchconduct;
('"III) tht' pel'SOn'~registrdtion or acqui..;itiono( multiple domain names~"hich
the person kno\\.~are identicalor conftl~inglysimilar to markt' of others that are
di..;tinctiveat the time o( registration o( such domainnames,or dilutive of (amous
marks of otht'l~ that are famou$at the time or registrationof suchdomainnames.
\\ithout regard to the good:;or senicesof the parties; and
(IX) the extent to which the mark incorporatedin the person'sdomain name
regiitration is or is not di$tinrti,'e and famous"ithin the meanin~of sub~ef:tion
(c)(1) o( this section.
14
 CO)I.\fERCE A..'JDTRADE 15 § 1125
(ii) Bad faith intt'nt del'cl;~1 uncft'r suhpara~dph (A) ~hall nol ~ found in an." ca.~e
in \\.hich the court determine~ that the ~rson ~Iie\'ed and had rea..;onablegrounds to
tk'liE".E'lhat lht' U...t'of lhe domain name \\'a.~a fair use or otheNise la\\ful.
(C) In an~'ri,il action in,'ol'ing tht' rE'gi~tration. traffirkinr., or use of a domain name
undE'r lhi.~ paragr-aph. a court may ord('r thE' forfeiture or canrellation of the domain
namE'or the lran$fer of th(' domain nam(' to the O\\"nt'rof the mark.
(D) A pe~n ~hall be liable for usin~ a domain name under subparagraph (A) only if
wat person i5' lhe domain name regi~lr.int or thal registrant's authorized licensee.
(E) As used in thi.~ paragraph. tht' term '"traffics in" refers to transactions that
inrludE'. but are not limited to. saJe~.pllrcha.~. loans, pledges, lit'enses, exchanges of
currency, and any other transft'r for consideration or receipt in exchange for consider-
ation.
(2)(A) The o""ner of a mark may file an in rem mil artion against a domain name in
we judicial di.~trict in which the domain name registrar, domain name registry, or other
domain name authority that registered or assigned the domain name is located if
(i) we domain name violates an~' right of tht' o""ner of a mark registered in tht'
Patentand TrademarkOffice,or protectedunder.S\lbsection (a) or (c); and
(ii) thecourtfindsthat theo\\'rler- .

(I) is not able to obtain in pe~onam juri.~diction over a person who would
have been a defendant in a ci,il action under paragraph (1); or
(11) through due diligence ,,~ not able 00 ftnd a person who would have
been a defendant in a civil actjon under paragraph (1) by-
(aa) sending a notice of the alleged violation and intent to proceed
under this paragraph 00 the registrant of the domain name at the postAl
and e-mail address provided by the registrant 00 the registrar; and
(bb) publishing notice of the action as the court may direct promptly
aft.er filing the action.
(B) The actions under subparagraph (AXil) shaDconstitu~ service of process.
(C) In an in rem action under this paragraph, a domain name shall be deemedto have
iu situs in the judicial district in which
(i) the domain name registrar, registry, or other domain name autllority tIlat
registered or assigned the domain name is located; or
(ii) documents sufficient to establish control and authority regarding the disposi-
tion of the registration and use of the domain name are deposited witll the court.
(D)(i) The remedies in an in rem action under this paragraph shall be limited to a
rourt order for the forfeiture or canrellation of tile domain name or tile transter ot the
domain name 00 the O\\-ner of the mark. upon receipt of written notification of a filed,
stamped copy of a complaint ~]ed by tile O"-"nerof a mark in a United States distJict
court under this paragraph, the domain name registrar, domain name registJj', or otller
domain name authority shall
(I) expeditiously deposit with the court documents sufticient to establish the
court's contJ'Ol and autilority regarding tile disposition of the regisb'ation and use of
the domain name fA> the court; and
(11) not transfer, suspend, or otheNise modify the domain name during tile
pendency of the action, except upon order of the court.
(ij) The domain name registrar or registry or other domain name autilority shaD not
be liable tor injunctj,.'e or monetary relief under this paragraph except in the caseot bad
faith or reckless disregard, which includes a willful taiJure 00 comply witil any such court
order.
(3) The civil action established under paragraph (1) and the in rem action established
under paragraph (2), and any remedy available under either such action. IbaJl be in
addition fA>any other civil action or remedy otherwiae applieable. '
(4) The in rem jurisdictjon established under paragraph (2) shaD be in addition to any
other jurisdiction that otherwiSe emu, whether in rem or in personam.

(As amendedAug. 5, 1999.Pub.L. 106-43,ii 3(a)(2),6. 113Stat. 219,S; Nov.~, 189, Pub.L.
106-113.
Div. B. § l~a)(9) [TitJeIII. § ~a)], 113Stat. 1536,160lA-6'5.)
.15