Northern Light Technology v. Northern Lights Club

Citation: Northern Light Technology, Inc. v. Northern Lights Club, 97 F. Supp. 2d 96 (D. Mass. 2000), aff’d, 236 F.3d 57 (1st Cir. 2001), ''cert. denied,'' 533 U.S. 911 (2001).

Factual Background
The defendants, Jeffrey Burgar of High Prairie, Alberta, who was the president (and apparently the only member) of the Northern Lights Club headquartered in Las Vegas, obtained the domain name , and later set up a website. Northern Light Technology, which owned  and the website, demanded that Burgar quit using the similar name. On his refusal, and after NSI declined to interfere because of the one letter difference, Northern Light sued, originally for trademark infringement, but later amended the complaint to state a claim under the Anticybersquatting Consumer Protection Act (ACPA), 15 U.S.C. § 1125(d).

Mr. Burgar voluntarily came from Alberta to Boston for the hearing on jurisdiction and the merits of plaintiff's claims. There, in the courthouse just before the hearing, “plaintiff's agent physically served process upon Burgar.”

Trial Court Decision
The district court entered a temporary restraining order and after a hearing in early 2000 entered a preliminary injunction, ruling that the court had jurisdiction under the Massachusetts Long Arm statute. Defendant appealed.

Appellate Court Decision
On appeal, plaintiff's major argument for jurisdiction arose from the service of process on Burgar before the September 1, 1999 TRO hearing. Defendant argued that permitting such service would be “a trap for the unwary litigant who travels to the forum state solely to contest the issue of personal jurisdiction [and] permitting [such service] is unwise from a public policy perspective in that it discourages the litigant from actively assisting the district court in the jurisdictional discovery process.”

The court reviewed cases that lent credence to defendant's argument, but ruled against him because here the defendants never asked the district court for immunity on Burgar's behalf, either before or after the hearing at which he was served. There is no “per se rule precluding the exercise of personal jurisdiction whenever the served individual is in the jurisdiction to attend litigation-related proceedings that pertain to him or her.”

Proceeding to the merits, the appellate court affirmed the finding that defendants' domain name registration was a bad faith effort to profit from plaintiff's trademark. It noted as “highly relevant under the ACPA that defendants had also registered many domain names, including rollingstones.com, evinrude.com and givenchy.com.” However, since plaintiffs began the action before the ACPA became effective, and the TRO was entered before that date, the applicability of the new act was irrelevant.

On the motion for rehearing and rehearing en banc, defendants argued that a rehearing was needed:


 * to “secure and maintain uniformity with prior decisions,” citing an 1992 case, and


 * to determine (a) whether in personam jurisdiction could be obtained by service of a second summons just before a hearing, (b) the proper interpretation of the ACPA, and (c) whether the preliminary injunction violated the First Amendment.”

All five active judges of the First Circuit ruled on defendants' motions, denying both a simply rehearing and a rehearing en banc.