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ICANN Do What?

On Behalf of | Sep 11, 2017 | Intellectual Property Law

Fighting Intellectual Property Infringement via Email

One advantage attorneys have, in arguing Intellectual Property Law cases in the United States, is the established precedent allowing us to serve notice to 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 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 Blog post 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 Recognizes Potential Conflicts

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. That lead the Internet Corporation for Assigned Names and Numbers (ICANN), a non-profit organization, to set out rules for 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.

ICANN decided that when registering top-level domain names (such as .com and .net) domain name registrants world-wide would have to contractually agree to 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.

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?  Plaintiffs had to find ways to haul foreign defendants into a U.S. court.

The Rio Properties Lawsuit of 2002 [1]

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 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 to a mailing address in Miami, but was unsuccessful. They found no person or entity entitled to accept service on RII’s behalf.  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, but 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.  The Ninth Circuit acknowledged that it was treading on “untrodden ground,” but 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.  From this, we’ve seen 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] Rio Properties, Inc. v. Rio International, Interlink, 284 F.3d 1007 (2002).