ICANN Do What?

Fighting Intellectual Property Infringement via Email


One advantage attorneys have, in arguing Intellectual Property Law cases in the United States, is the established precedent that allows allowing us to serve notice to serve international defendants via email.

Often, it’s the only way.



In a recent counterfeiting lawsuit involving a European defendant, the court granted me leave to perform the process of service on the defendant by email.  Opposing counsel had a conniption claiming he had never heard of such a thing.  Process of service by email?  What was I thinking?  The fact is, what is typical for one legal practice area might be completely foreign to another practice area.  But, in cybersquatting, and other Internet and website-related lawsuits involving domain names, service of process by email has been around for fifteen years or more. 

This article revisits the rationale behind service by email, the rules on which it is based, and why it helps prevent foreign defendants from thumbing their noses at U.S. victims of their fraudulent schemes instead bringing those defendants into the jurisdiction of a U.S. court.

 

ICANN Explained in 60 Seconds

In the 1990s when domain names using literal terms were first used, the Internet community quickly recognized that trademark infringement would be a problem if persons registered domain names incorporating a brand name without that brand owner’s permission.   ICANN (the Internet Corporation for Assigned Names and Numbers) a non-profit organization set up to promote and maintain the operational stability of the Internet, requested that WIPO (the World Intellectual Property Organization) produce a report on the potential conflict between trademarks and domain names bearing in mind that because of the global reach of the Internet, domain name disputes would likely extend world-wide.  WIPO recommended an administrative procedure be put in place with its own set of governing rules, and which would allow a neutral forum for international domain name disputes.  The governing rules are the UDRP (the Uniform Domain Name Dispute Resolution Policy).  The process and rules are designed to settle a dispute about the registration of a domain name.  They do not provide for monetary damages for trademark infringement.[1] 

 

Gathering Domain Name Registrants Into the “Net”

For the ICANN process and UDRP to work it was necessary to ensure that domain name registrants world-wide would agree to comply with the rules.  This was accomplished by regulations requiring those companies registering domain names with tlds (top level domains) such as .com and .net to agree to abide by the ICANN and UDRP rules and procedures in order to have the right to administer those commercially lucrative tlds.  Similarly, if a person or entity wanted to register a tld domain name through a registrar, they had to contractually agree to comply with ICANN and the UDRP.  One of the key components of the UDRP is that a domain name registrant must provide the registrar with a current and valid email address, and that registrant must agree to accept service of process by email.  The public records of each registrant showing the domain name registered and the identifying information of the registrant, including email address, are known as the “Whois” records and are easily accessible through any Internet search engine.

 

Extending Service of Process by Email to U.S. Lawsuits

As the Internet became more widely used, so did the scope of the abuse of trademark rights.  Fraudsters sitting off-shore in havens such as the Cayman Islands had no qualms about setting up off-shore gambling websites using domain names incorporating famous casino brands such as MGM and BALLY’S.  The fraudsters duped unwitting patrons into providing sensitive personal and credit card information to what patrons believed were legitimate gaming sites operated by famous and reputable casinos.  This became a lucrative business as extra charges, often in large amounts, were added to credit cards upping the profits for these cheats.  Patrons complained about the excess charges, not to the cheats sitting off-shore, but to the famous casinos they thought were operating the gaming websites. 

The casinos had to take action. 

Trademark rights were being infringed, reputations were being damaged, and the resolution needed something more than a slap on the wrist and the taking away of a domain name.  It required large monetary judgments against these fraudsters. 

It was one thing to file a lawsuit against these defendants who were clearly violating United States trademark laws, but how could defendants be served if they resided outside of the U.S?  Various treaties such as the Hague Convention exist to facilitate process of service abroad but the process under the Convention is cumbersome and not always successful.  Also, many countries were not signatories to the convention so plaintiffs had to find other ways to haul foreign defendants into a U.S. court.

 

The Rio Properties Lawsuit of 2002 [2]

The owners of a Las Vegas hotel and casino, the Rio All Suites Casino Resort, (“RIO”) filed a trademark infringement lawsuit against a foreign entity, Rio International Interlink (“RII”).  RII was an entity in Costa Rica engaged in Internet gaming via its website at <www.riosports.com> grossing an estimated $3,000,000.00 annually.   RII advertised its gaming services in the United States including in Nevada where the Rio hotel casino is located. RIO’s lawsuit alleged trademark infringement because RII was using a domain name incorporating RIO’s trademark without RIO’s permission and which was confusing to consumers who patronized RII’s gaming website believing it was operated by RIO.

RIO attempted to serve the lawsuit within the United States but found no person or entity entitled to accept service on RII’s behalf.  Investigating the possibility of serving RII in Costa Rica, RIO found the only contact information was an email address and a Miami address for “snail mail” which had already proven invalid for process of service of the lawsuit.  RIO filed an emergency motion for alternative service of process to known addresses and contacts, and also via email to RII’s email address.  The court granted the motion.  RII later challenged the sufficiency of service by email and the court’s exercise of U.S. jurisdiction over the Costa Rican defendant.

The case went to the Ninth Circuit Court of Appeals.  Evaluating whether service by email was permitted under the rules and if it met the constitutional notions of due process, the Ninth Circuit found that RII had sufficient contacts with Nevada through its advertising and marketing to residents of Nevada for the court to exercise jurisdiction over it.  More importantly, and acknowledging that it was treading on “untrodden ground,” the Ninth Circuit recognized the need for courts to keep pace with advances in technology and modern e-business models.  As RII had structured its business so that it could only be contacted by email, and because email was its preferred method of contact, the court found that service by email was appropriate.  It complied with the rules requiring RIO use a method of service reasonably calculated to apprise RII of the lawsuit against it.  A fact proven when RII responded to the lawsuit.

After the RIO decision, alternative service of process by email became typical for suits where defendants were hiding off shore or behind domain name proxy services.  I litigated a cybersquatting case against German individuals operating a casino in Germany using the same name as a famous Las Vegas casino.  They also registered seven domain names incorporating the casino’s trademark. I obtained leave of court to serve the lawsuit by email after my attempts at service through the Hague Convention were unsuccessful.  The defendants filed a motion to quash service arguing it contravened international law.  My opposition brief argued that a defendant should not agree to abide by the UDRP in order to register a .com domain name and then hide behind German national law when accused of infringement.  The court drafted a well-reasoned opinion as to why defendants’ motion was denied:

This court previously granted plaintiff’s request to serve defendants by electronic mail transmission.  This method of service was reasonably calculated to apprise defendants of the pendency of the action and the requested injunctive relief, and afford them the opportunity to respond.  Not only was this method of service the most likely to reach defendants, it conforms to the rules of the Internet Corporation for Assigned Names and Numbers (“ICANN”), including a Uniform Domain Name Dispute Resolution Policy (“UDRP”), which was adopted by the registrar of the seven domain names at issue.  The Rules for UDRP make it the responsibility of the provider administering the proceedings to employ reasonably available means to achieve actual notice to a defendant, including sending a complaint in electronic form.  Also, achieving actual notice discharges the provider’s responsibility.  Defendants here have apparently received actual notice as they have moved to quash service.[3]

 

You Can Do It Too   

The law and our courts are more than willing to keep pace with the rapid changes in technology and the new business models being created.  All it takes is presenting them with a logical, legally viable argument as to why the law needs to take another step forward.


[1] In 1999 the Anticybersquatting Consumer Protection Act (ACPA) was established in the U.S. under the Lanham Act, 15 U.S.C. § 1125(d) creating a cause of action for registering, trafficking in, or using a domain name confusingly similar to, or dilutive of, a trademark or personal name.  The ACPA allows for statutory damages of up to $100,000.00 per infringing domain name.  15 U.S.C. § 1117 (d).

[2] Rio Properties, Inc. v. Rio International, Interlink, 284 F.3d 1007 (2002).

[3] Stations Casinos, Inc. v. Thomas Waechter, et al., Case 2 :05-cv-01012-LDG-GWF, Document 23.


Laraine Burrell is an intellectual property attorney practicing with JDSA Law

[Content provided in this article should be used for informational purposes only and is not intended to be a substitute for professional advice. Always seek the advice of a relevant professional with any questions about any legal decision you are seeking to make.]