_ Q _

[_Yakov_]

Hello.
This question is to lawers.
Guys, supose a company that believes that a domain should belong to them wants to file a law suit. The whois of the domain as fallows :

Domain name: fzk.com

Registrant Contact:
Coordinator.com
Vlad Yukhananov ([email protected])
+1.9175199775
FAX: +1.000-0000
10 Volakolamskoye Shosse
Moscow, 125080
RU


Administrative Contact:
Coordinator.com
Vlad Yukhananov ([email protected])
+1.9175199775
FAX: +1.000-0000
10 Volakolamskoye Shosse
Moscow, 125080
RU


Billing Contact:
Coordinator.com
Vlad Yukhananov ([email protected])
+1.9175199775
FAX: +1.000-0000
10 Volakolamskoye Shosse
Moscow, 125080
RU


Technical Contact:
Coordinator.com
Vlad Yukhananov ([email protected])
+1.9175199775
FAX: +1.000-0000
10 Volakolamskoye Shosse
Moscow, 125080
RU


Since the whois showes that the registrant lives in Russia, is there any chance for the company to do anything about it? What chance? What can they do? What can be done to maximize the protection against any legal matters?

Thank you.
Yakov

 

[Domainaholic]

Not a lwayer myself - but here's my 2 cents

Mind that the WhoIs also shows the registrar - and you have to agree to the registrars legal docs whenever you buy a domain. This does not mean you will lose the domain, just means you have to read a bit more yourself about the legal issues.

 

[jberryhill]

"Since the whois showes that the registrant lives in Russia, is there any chance for the company to do anything about it?"

Absolutely. A UDRP complaint can be filed against the domain name. It doesn't matter where the registrant is located, or whether the registrant information is fictitious. Ditto for an _in rem_ ACPA suit.

"What can be done to maximize the protection against any legal matters? "

Don't do anything illegal.

 

[_Yakov_]

Originally posted by jberryhill
"Since the whois showes that the registrant lives in Russia, is there any chance for the company to do anything about it?"

Absolutely. A UDRP complaint can be filed against the domain name. It doesn't matter where the registrant is located, or whether the registrant information is fictitious. Ditto for an _in rem_ ACPA suit.

"What can be done to maximize the protection against any legal matters? "

Don't do anything illegal.

Thank you for responding
I got other questions here:

What I meant was if a US or, say, Canadian company wants to get the domain trough the court, the only thing they can use is a trade mark law. Right? The registrant is located in the country with it's own trade mark laws and the registrant doesn't have to comply with foreign law. So, as I understand, if the company who want's to get the domain trough the court haven't registered their trade mark in Russia before the domains was registered, there should be no way for the company to ubtain the domains trough the court.

If I'm wrong please correct me.
Also, what other means can be used in order to ubtain a domain trough the court?

Thank you much

 

[_Yakov_]

see above

 

[HOWARD]

For UDRP purposes, it doesn't matter where the trademark is registered or where the domain registrant is located. WIPO will still take the case and decide if the complaint qualifies under the Rules.

 

[LawyerSturgeon]

Furthermore, a trademark owner can initiate a lawsuit in Virginia claiming a violation of the anticybersquatting act - irregardless of the location of the registrant (as John mentioned above, in rem). The registrant will need to defend in the Virginia court. If the trademark owner wins, the Virginia court will order the registry (in Virginia) to transfer the domain name to the trademark owner.

Steve

Stephen H. Sturgeon, Esquire
DomainNameDisputeLawyers.com
Virginia, DC, Maryland, Oklahoma & Massachusetts

 

[dtobias]

...which isn't particularly fair to any domain owner who doesn't live anywhere near Virginia, and might not even be doing business with anybody in Virginia (including the registrar and web hosting company, which might also not be anywhere near Virginia). It's bad enough that somebody in Florida (like me) could get dragged up to Virginia for a case... even worse for somebody in Russia. It's not so bad for attorneys specializing in domain disputes and licensed to practice in Virginia, like the guy above me in this thread, though...

 

[pljones]

If the individual living is Russia would like to avoid the reach of US courts, perhaps he should register in a TLD such as .ru or .uk or .fr, etc.

 

[HOWARD]

I'm defending a WIPO case right now where the Respondent is in Croatia and the domain was registered by Fabulous.com in Australia. The Complainant recited that they would accept jurisdiction in Virginia, but WIPO threw it out because the Complainant either had to accept jurisdiction in Croatia or Australia, under the UDRP Rules.

 

[LawyerSturgeon]

Yes, but even if the Complaint recites that the Complainant will accept jurisdiction elsewhere, a court action can still be commenced in Virginia based on in rem jurisdiction. Since the main registry database is in Virginia, the Virginia courts can order that the domain name (ie, the subject matter) be transferred to another party or that a transfer be halted.

Steve

Stephen H. Sturgeon, Esquire
DomainNameDisputeLawyers.com

 

[pljones]

Complainant can still accept jurisdiction in Australia for the purposes of UDRP, and if necessary, bring an ACPA action in Virginia if it is an in rem action. Complainant doesn't waive the right to bring a case later in the US if it consents to jurisdiction in Australia for the purposes of the UDRP.

 

[Restecpa]

Originally posted by pljones
If the individual living is Russia would like to avoid the reach of US courts, perhaps he should register in a TLD such as .ru or .uk or .fr, etc.

Since when does .com belong to USA?

 

[pljones]

Verisign, a company located in Virginia, is the registry operator for .com. Therefore, if you register a .com domain name, be aware that a US court can and will assert jurisdiction over your domain name, even if you live in a village in the Urals.

 

[jberryhill]

"Since when does .com belong to USA?"

Well, let's see... A top-level domain name exists as a result of there being an entry in the root zone file, defining nameservers for that top-level domain. The root zone file is maintained in the US, by a US company under contract to the US Department of Commerce. Policy over what goes into the root zone file is also controlled by another US company under contract to the US Department of Commerce.

Moving up a level from the root zone to the .com zone, it turns out that the .com zone file is also maintained exclusively by a US company under contract to another US company which is under contract to the US Department of Commerce.

Now, you'll notice that everyone who has any aspect of actual control over the root zone, or over the .com zone, is located in the United States.

I would be curious to know the answer to the converse question: Since when has anyone outside of the United States exercised control over the root zone file or the .com zone file?

 

[jberryhill]

Two slight wrinkles on the VA jurisdiction issue in _in rem_ cases come to mind....

The first wrinkle is that you can get this form of jurisdiction over the domain name only if there is no other US federal court in which you can get personal jurisdiction over the defendant. This is something of an odd result for those outside of the United States. For example, if the domain name registrant is located in nearby Maryland, then you cannot bring an _in rem_ action in Virginia against the domain name. However, if the domain name registrant is located in Tierra del Fuego, then, yes, by all means, you may proceed in Virginia.

This first wrinkle has led to a few interesting cases establishing lack of personal jurisdiction in certain instances. Usually, the plaintiff is arguing in favor of personal jurisdiction based on tenuous connections to the forum state. But, if the _in rem_ basis is challenged, you find plaintiffs furiously attempting, and sometimes succeeding, in having a court overlook contractual and business ties to the forum state, so that they can proceed _in rem_.

The second wrinkle is that it is not always possible to obtain transfer of the domain name merely based on the registry location in VA. There was a recent case which was very widely and very badly misreported on this particular issue. The basic situation is that the domain name is registered through a Korean registrar. Originally, a TM owner brought a UDRP and obtained a transfer order. The domain name registrant brought a post-UDRP action, properly, in Korea. Hence, the domain name was locked by the registrar pursuant to the Korean court action. In parallel with the Korean action, the TM owner brought an _in rem_ suit in VA, based on the registry location....

Now, here is the part that every news article on the story got wrong. The story, as reported, is that the VA court ordered the registry to effect a transfer of the domain name, effectively establishing US judicial supremacy over all domain name registrations, and in conflict with the Korean court action.

However, that is NOT what the VA court ordered. Recognizing that the registry isn't really set up to effect a transfer of a registration from one registrant to another (indeed, the registry can only effect a registrar transfer, not a registrant transfer), the plaintiff requested and received an order which required the registry to pull the name out of the .com zone file - rendering the domain name inoperative. THAT is within the power of the registry, and that is what was done. Pursuant to the Korean court action, the domain name remains registered, albeit inoperative, through the Korean registrar and to the original registrant.

(didn't have time for the unabridged version earlier today)

 

[pljones]

Thanks John. An added note is that some trademark owners would rather see domain names pulled from the zone file and rendered inoperative forever, rather than have them transferred. Call it domain name purgatory if you will, but this is option many think they are getting when they request cancellation of a domain name rather than transfer. Maybe the UDRP should be amended (if the UDRP Task Force ever gets moving again), to allow for "domain name purgatory" as an option.

 

[actnow]

PL,
I believe you are correct. But, I would assume that if a number of names are retired. It is lost revenue for the Registry. A couple names does not amount to alot. But, the domain business as we know it is less than 10 yrs old. 10 yrs from now, that list would be very long plus if one company see this as a way to maintain the integitity of the trademark without paying a yearly fee. Then, others will do it.

But, lets look at the retiring of names from another position. Law firms representing their clients will start initiating petitions or suits to release a TM that has been retired. Because, the retiring of a domain name, has caused a loss of maximizing the potential for their client's TM.

For example, Jones Motors forces the retiring of "Jonesengine.com" But, Jones Internet owns the TM on "Jones Engine" as a search engine.

???

PL, I went to school a few blocks from your office. There is nothing more exciting as being at GU this time of the year.


Richard

 

[pljones]

The suggestion that I made in my last post really isn't workable in the present market. I made the comment based on the point of view held by many who are not aware of how the domain name dispute resolution process really works. There is no "domain name purgatory" - except when you have names that should have dropped that are held back by a registrar.

That doesn't mean many trademark owners wouldn't mind seeing domains able to be retired forever from use.

 

[carlomrx]

Mr. Berryhill,

can I borrow your brain for next week's civ pro final?

I'll donate some dnf