Suing an Electronic Address: In Rem Domain Name Actions Under the ACPA

March 01, 2002

Introduction

Imagine yourself as a trademark owner when domain names were first introduced.  Your first thought of “it’s just a fad” quickly fades and you decide that your business needs a web site, whatever that may be.  You hire an eighteen year old web designer, tell him to register two different domain names for the site, and sit back.  An unexpected  problem pops up.  Your designer tells you that both of the domain names you have chosen are already registered by two different people, Moe and Curly, who reside at different addresses.  You are aghast.  There must be some mistake, you think, because the domain names you chose are your federally registered trademarks.  You even consistently follow your attorney’s advice and use the little circle with an “R” in it next to each one.
 
Further investigation reveals that neither Moe nor Curly have any trademark rights in the selected names.  In addition, Moe’s website has nothing on it and Curly’s website is being used to exhibit his collection of hand-tinted straw hats.  You call your attorney and have her send each registrant a polite, yet forceful, letter regarding your trademark rights.  Each letter is sent to the proper registrant at the mailing address listed in the registrar’s database.  You feel satisfied that everything will be taken care of and return to building the rest of your website for its grand unveiling.  More problems pop up.

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