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Thursday, June 28, 2012
by Thomas O'Toole
Maybe it's because I work in the Washington, D.C., area, but I enjoyed reading the court's decision in Vizer v. Vizernews.com. The court ruled that the Anticybersquatting Consumer Protection Act does not permit an in rem action against a domain name to be filed in Washington, D.C. Not a surprising result, but how the court got there was interesting to me.
The plaintiff, Marius Vizer, a resident of Hungary, filed an in rem action under the Anticybersquatting Consumer Protection Act against the domain name vizernews.com. As you can see from the website, somebody is writing unflattering things about Vizer.
According to his complaint, Vizer is the president of an organization called the International Judo Foundation and is well-known in international judo circles. According to vizernews.com, Vizer is involved in bribery and corruption; he is a "suspicious businessman." The vizernews.com home page carries the headline "Is this the kind of man you want in control of world judo?"
There is no advertising on the vizernews.com website or any attempt the trade on Vizer's name. It looks like an entirely non-commercial gripe site targeting a small-bore public figure. Content-wise, it's standard internet stuff. I don't think the author of the vizernews.com site laid a glove on Vizer.
Apparently, Vizer is a thin-skinned guy. He decided that the solution to his reputation problem is a federal cybersquatting lawsuit. Let's call that Mistake #1. Attempts to silence online critics rarely work. Not only are they misguided, they frequently exacerbate the problem by bringing additional attention to the problematic content. Going for a critic's domain name seems particularly ineffectual (Right now vizersucks.com., vizerupdate.com, vizerisacrook.com are all available).
In his ACPA complaint, Vizer alleged that the vizernews.com domain name was registered "with the bad faith intent to profit or otherwise trade on Plaintiff's rights in his name." Vizer further alleged: "Visitors who were looking for Plaintiff or information about Plaintiff's judo expertise would be confused as to whether Marius Vizer had sponsored or was affiliated with the web site hosted at the domain name in question." That's a stretch, to put it mildly.
Under the ACPA, an "in rem" action -- a lawsuit against the domain name itself -- is authorized by Congress at 15 U.S.C. Section 1125(d)(2). This provision is triggered when a trademark owner cannot establish personal jurisdiction over, or locate, the registrant of the disputed domain name. The ACPA provides:
The owner of a mark may file an in rem civil action against a domain name in the judicial district in which the domain name registrar, domain name registry, or other domain name authority that registered or assigned the domain name is located …. (15 U.S.C. Section 1125(d)(2)(A))
A domain name registrar is like a retailer. It's the place where domain names are purchased by the end user. In the case of vizernews.com, the domain name was registered by Melbourne IT, a company located in Australia.
A domain name registry is like a wholesaler, or (some would say) a manufacturer, of domain names. Because vizernews.com is in the .com top-level domain, the relevant registry is Verisign, located in Herndon, Va., within the jurisdiction of the U.S. District Court for the Eastern District of Virginia.
Finally, there is a third place for filing an in rem action, the other domain name authority mentioned in Section 1125(d)(2)(A). This term is not defined in the ACPA.
The Eastern District of Virginia courthouse is a scant 10 miles from downtown Washington, D.C. It's just across the river. Vizer's attorney is located in Washington, D.C. Filing the case in the Eastern District of Virginia seems like a no-brainer, a layup.
What did Vizer and his attorney do? They dribbled their basketball all the way back to the half-court line and then threw up this shot:
Washington, DC is the home of the "mothership" of domain name authority: the Internet Corporation for Assigned Names and Numbers. ICANN maintains an office at 1101 New York Avenue in Washington, DC.
Vizer argued that ICANN is the "supreme domain name system (DNS) authority" because it controls domain names by virtue of its contractual relationships with domain name registries and its accreditation system with domain name registrars. "Accordingly, ICANN is a 'domain name authority' as contemplated under 15 U.S.C. 1125(d)(2)(A)," Vizer argued.
Clank! Mistake #2.
Judge Beryl A. Howell was having none of it. ICANN is not a "domain name authority" as that term is used in the ACPA, and so the federal courts in Washington, D.C., do not have jurisdiction over an in rem ACPA action merely by virtue of the fact that ICANN has an office there, the court held.
Beryl Howell. Where have I heard that name before?
Because the domain name registrant failed to answer the complaint, the court raised the jurisdiction question on its own and did its own research to support its ruling. That was interesting to me. You don't see that happen too often.
First, the court said, the ACPA phrase under review is "domain name authority that registered or assigned the domain name ..." The court was skeptical of Vizer's contention that ICANN had "registered" or "assigned" the vizernews.com domain to vizernews.com. Neither "register" nor "assign" nor "domain name authority" are defined in the ACPA. Black's Law Dictionary wasn't much help either. Looking to the caselaw, the court found that the general import of the few decisions in this area is that a "registration" is the initial contract between a domain customer and the registrar that registers the domain. Other than that, there wasn't much help in the cases decided to date.
The court's own examination of the statute yielded the conclusion that the ACPA is "clear" that the phrase "other domain name authority" covers "only entities that perform the functions of the registrar or registry by registering or assigning domain names." This definition, obviously, does not describe ICANN.
For further support, the court pointed to legislative history in the form of remarks from Sen. Patrick Leahy, a co-sponsor of the ACPA:
The terms “domain name registrar, domain name registry, or other domain name authority that registered or assigned the domain name” in Section 3002(a) of the Act, amending 15 U.S.C. 1125(d)(2)(a), is intended to refer only to those entities that actually place the name in a registry, or that operate the registry, and would not extend to other entities, such as the ICANN or any of its constituent units, that have some oversight or contractual relationship with such registrars and registries. Only these entities that actually offer the challenged name, placed it in a registry, or operate the relevant registry are intended to be covered by those terms. (emphasis mine)
This legislative history supports the court's interpretation of the ACPA and forecloses Vizer's argument that ICANN is a "domain name authority" as that term is used in the ACPA, the court said.
Wait, I remember. Beryl Howell worked for Sen. Leahy way back in 1999, the year the ACPA was enacted.
Unfortunately for Vizer, not only did he pick the wrong court to bring his in rem ACPA action, he drew the wrong judge too. I am tempted to call this Mistake #3, but actually it was just bad luck. Not only did Judge Howell serve as a legal advisor to Sen. Leahy, she was general counsel to the Senate Judiciary Committee during the time when the ACPA made its way through the committee and eventually became law.
For all I know, Judge Howell might have had a hand in drafting the ACPA. She might have written the very same legislative legislative history quoted in her opinion. Granted, this is just idle speculation on my part. What is known, however, is that Judge Howell probably knows more about the ACPA, and what Congress intended when it passed the ACPA, than just about any other attorney appearing in her court. Having to make the argument in her court that in rem ACPA actions can be brought in Washington, D.C., is not a job I would wish on anyone.
So I now know why this court did such a thorough job turning back Vizer's ACPA argument. What I still don't know is why Vizer picked the D.C. Circuit in the first place. I'm sure there is a reason, though the answer eludes me now.
In a footnote, the court remarked that it was not deciding whether ICANN's role in approving new top-level domains (e.g., .law, .bank, .sucks etc.) would make ICANN a "domain name registrar, domain name registry, or other domain name authority that registered or assigned the domain name" with respect to any top-level domains ICANN might put into the root. Seems like a stretch argument, but the court was aware of the issue and did not want its opinion to be a source of precedent for either side of the question.
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