Jack In The Box v. jackinthebox.org

Citation: Jack In The Box, Inc. v. jackinthebox.org, 143 F. Supp. 2d 590 (E.D. Va. 2001).

Factual Background
Plaintiff, operator of the JACK IN THE BOX fast-food restaurant chain, brought this in rem action under the ACPA against the domain names "jackinthebox.org" and "jackinthebox.net," neither ever connecting to active websites. The issue before the court was "whether the mere act of registering an Internet domain name was sufficient to invoke the protection of the in rem provision of the [ACPA]."

Trial Court Proceedings
The court considered this issue in the context of the report and recommendation of a magistrate judge to enter default judgment in favor of plaintiff. Defendants did not file any objection to the magistrate's recommendation. The court adopted the magistrate's recommendation, but for different reasons. According to the magistrate, the act of registering a domain name did not, by itself, constitute a "use in commerce" and thus violate any of a trademark owner's rights or otherwise violate federal trademark law as required to bring an in rem action under 15 U.S.C. §1125(d)(2)(A)(i). But the magistrate held that the inclusion of the word "registers" in the in personam provision of the ACPA "carried over" to the in rem provision of the statute so that the registration of a domain name without any use was still actionable. The court disagreed.

First, the in rem provision neither mentioned registration per se nor incorporated the in personam provision by reference. Rather, the in rem prong pointed to substantive law as the standard.

Second, turning to the merits, the court found that registration of the domain names would lead to confusion, mistake, or deception because they were exact replicas of plaintiff's mark. Moreover, the court held that the act of registering a domain name met the definition of "use in commerce" required to establish infinfringement, false designation of origin, or dilution under the Lanham Act because the domain names themselves constituted goods or services sold in a commercial transaction between the registrant and the registrar. Accordingly, plaintiff was entitled to transfer of the domain names because the registration of the domain names violated plaintiff's rights to its mark.

Finally, the court held that it was not necessary to consider in an in rem action the "bad faith" factors of the in personam prong of the ACPA. Contrary to the decisions in BroadBridge Media and Harrods, the court held here that the "plain terms" of the ACPA clearly stated that the bad faith factors applied only to in personam actions.

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