America Online, Inc. v. AOL.org, 259 F.Supp.2d 449 (E.D. Va. 2003) (full-text).
Plaintiff, owner of the trademark AOL, brought an in rem suit under the ACPA against the domain name "aol.org," asserting claims for federal trademark infringement and unfair competition. The "aol.org" name linked to a Korean-language site with further links to other sites that promoted various Internet and computer-related services. The domain name registrar never deposited with the court a registrar's certificate acknowledging the court's authority over the "aol.org" domain name but did acknowledge in an e-mail that it would not transfer or modify the domain name except upon order of the court.
Trial Court Proceedings
The district court held in plaintiff's favor on its infringement and unfair competition claims, finding that the registrant's intent was to use the domain name to divert traffic intended for plaintiff to its own site. The registrant used the "aol.org" name in commerce through the links to the third-party sites noted above. Accordingly, the court ordered OnlineNIC, the China-based registrar, to transfer the "aol.org" domain name to plaintiff within twenty days after receipt of the court's order. But OnlineNIC refused to transfer the name to plaintiff. Instead, it transferred responsibility for the name to Neptia.com, a registrar based in South Korea.
Plaintiff then moved the court to amend its original transfer order to order the .org registry, which was located in Virginia, to transfer the name to plaintiff. This case presented the same situation the court faced in Globalsantefe v. Globalsantafe.com but the plaintiff there requested only that the registry cancel or disable the domain name at issue pending its transfer to plaintiff. However, because nothing in the ACPA limits the transfer and cancellation remedies to orders directed only at registrars and because the ACPA specifically provides for jurisdiction in the district in which the registrar or registry is located, the court concluded that it could direct the registry, if necessary, to transfer an infringing domain name to the trademark owner.
Moreover, the interests of international comity did not militate against the transfer of the name for several reasons. First, unlike GlobalSantaFe, there was no order of a foreign court directing the registrar not to transfer the name. Second, even though the registrant and registrar were foreign, the location of the .org registry in this district provided jurisdiction for an in rem action against the domain name in this district. Third, an order directing a U.S.-based registry to transfer an infringing domain name to the trademark owner did not require any foreign entity to do anything outside the U.S. and thus was not an improper extraterritorial application of the Lanham Act. Accordingly, the court ordered the .org registry to transfer the domain name "aol.org" to plaintiff.
- 250 F.Supp.2d 610 (E.D. Va. 2003) (full-text).
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