Mattel v. Barbie-Club.com

Citation: Mattel, Inc. v. Barbie-Club.com, 58 U.S.P.Q.2d 1798 (S.D.N.Y. 2001), aff’d, 310 F.3d 293 (2d Cir. 2002).

Factual Background
Plaintiff filed an in rem action in a New York federal court against various domain names, including defendant “captainbarbie.com,” which was registered with a domain name registrar in Maryland. Defendant argued that the court did not have subject-matter jurisdiction because Section 1125(d)(2)(A) provides that an in rem action could be brought only in the judicial district in which the domain-name registrar or registry was located.

Plaintiff countered that an in rem action could also be filed “pursuant to Section 1125(d)(2)(c)(ii) in any district where the plaintiff deposits with the court documents establishing control over the registration and use of the domain name.”

Trial Court Proceedings
Relying on Fleetboston Financial v. Fleetbostonfincial.com, the court agreed with defendant, finding that in rem jurisdiction under the ACPA existed only in the districts in which the domain-name registrar, registry, or other registration authority was located pursuant to Section 1125(d)(2)(A). In contrast, Section 1125(d)(2)(c)(ii) existed simply “to facilitate the continuation of litigation in one of the districts identified in subparagraph 2(A).” Accordingly, the court dismissed plaintiff’s claims as to the “captainbarbie.com” domain name.

Appellate Court Proceedings
On appeal, the Second Circuit affirmed the district court’s holding that plaintiff’s claims were properly dismissed for lack of in rem jurisdiction. Initially, the appeals court rejected plaintiff’s argument that the case was improperly dismissed for lack of subject-matter jurisdiction. Although the lower court inadvertently referred to “subject matter” in its orders, the matter was dismissed for lack of in rem jurisdiction.

According to the Second Circuit, “both the language of the statute and its legislative history indicate that in rem jurisdiction is a preexisting fact determined by the location of the disputed domain name’s registrar or a similar authority, and that the subsequent deposit of sufficient documents with a court of appropriate jurisdiction confirms the domain name’s legal situs as being in that judicial district for purposes of the litigation.”

This page uses content from Finnegan’s Internet Trademark Case Summaries. This entry is available under the GNU Free Documentation License.