Alitalia-Linee Aeree v. Casinoalitalia.Com

• Citation: 128 F.Supp.2d 340
• Decision Date: 19 January 2001
• Docket Number: No. CIV. A. 00-394-A.,CIV. A. 00-394-A.
• Parties: ALITALIA-LINEE AEREE ITALIANE S.p.A., Plaintiff, v. CASINOALITALIA.COM, and TECHNOLOGIA JPR, INC., Defendants.
• Court: U.S. District Court — Eastern District of Virginia

128 F.Supp.2d 340

ALITALIA-LINEE AEREE ITALIANE S.p.A., Plaintiff, v. CASINOALITALIA.COM, and TECHNOLOGIA JPR, INC., Defendants.

No. CIV. A. 00-394-A.

United States District Court, E.D. Virginia, Alexandria Division.

January 19, 2001.

Charles Randolph Wolfe, Jr., Michael Charles Greenbaum, Blank, Rome, Comisky & McCauley, L.L.P., Washington, DC, for Plaintiff.

Henrik Jonathan Redway, Burns, Doane, Swecker & Mathis, Alexandria, VA, for Defendants.

MEMORANDUM OPINION

ELLIS, District Judge.

In this trademark dispute, the plaintiff, an Italian airline, has sued both the foreign registrant of an allegedly infringing domain name in personam and the domain name itself in rem. At issue on plaintiff's summary judgment motion is whether, consistent with the Anticybersquatting Consumer Protection Act ("ACPA" or the "Act"),¹ a mark owner may maintain in personam claims against a domain name registrant concurrently with an in rem claim against the domain name. Also presented is the related question whether the Virginia long-arm statute² constitutionally reaches the foreign registrant.

I.

Plaintiff Alitalia-Linee Aeree Italiane S.p.A. ("Alitalia") is Italy's national airline and is in the business of providing air cargo service and passenger transportation between Italy and the United States, among other foreign countries. Alitalia is the owner of a United States Trademark Registration issued on March 21, 1995, for the mark "Alitalia." Alitalia's founders coined the term "Alitalia," which has been used by the airline since 1957, by combining the words "Ali," which in Italian means "wings," and "d'Italia," which means "Italian"; the term "Alitalia," therefore, literally means "Italian wings."

Since Alitalia began operation in 1957, the airline has made continuous and widespread use of the mark "Alitalia" through extensive advertising and other means by which the carrier promotes and sells its services. In this regard, Alitalia spends approximately $60 million per year in advertising and promoting the "Alitalia" logo and mark. In addition, Alitalia maintains a website for its airline business at and has registered the Internet domain names and . A search of the Internet for the word "alitalia," however, returns not only Alitalia's website, but also an Internet site using the domain name , which has no affiliation or connection whatever to Alitalia.

Defendant Technologia JPR, Inc., ("JPR") has registered the domain name with registrar Network Solutions, Inc., ("NSI"). JPR is an entity established under the laws of the Dominican Republic, and JPR's NSI registration information lists JPR's place of business (including administrative, technical, and billing contacts) as located in Santo Domingo, Dominican Republic. JPR conducts its business entirely outside of the United States, and the company has no offices or other physical presence in the United States; it neither owns nor leases property in the United States and has no employees in the United States. Alitalia claims that JPR registered the domain name on or about October 13, 1999, although it appears from NSI's registration information that JPR registered the domain name with NSI in August 1998.

It is evident from a visit to that the website exists for the purpose of conducting the business of online casino gambling. A visitor to the website can play one or more online casino games — e.g., blackjack, poker, keno, slots, craps, and roulette — by opening an account with and purchasing casino "credits" that may be used to play individual games. Players can then win credits that can be redeemed for U.S. currency. In this regard, the website appears to be an attempt to simulate the experience of gambling at a conventional "brick and mortar" casino.

A visit to the website also reveals that the term "Alitalia" appears on the first page.³ Given this, Alitalia, which has not given JPR permission to use the mark "Alitalia" or any variation thereof for any purpose, claims that the domain name and JPR's unauthorized use of the term "alitalia" create a false impression that Alitalia promotes the business of online gambling and/or any other enterprise pursued by defendants. Indeed, Alitalia claims that the word "casinó" means "brothel," so that a literal translation of "casinoalitalia" is "alitalia's brothel." Thus, argues Alitalia, the site appears in the minds of consumers familiar with the Italian language to offer the services of a brothel associated or affiliated with Alitalia. In this regard, plaintiff contends, the website irreparably harms, tarnishes, and dilutes the goodwill, reputation, and image of the Alitalia mark.

In March of this year, Alitalia brought a four-count complaint stating claims for (i) trademark infringement, under 15 U.S.C. § 1114 et seq., against JPR (Count I); (ii) violation of the Lanham Act, 15 U.S.C. §§ 1125(a), (c), against JPR (Count II); (iii) common law unfair competition against JPR (Count III); and (iv) violation of the ACPA against JPR and (Count IV). Alitalia has moved for summary judgment on all four counts. In doing so, Alitalia argues, remarkably, that the ACPA entitles it to proceed concurrently both in rem and in personam. Whether this is so presents a threshold question that must be resolved before proceeding to resolve the remaining questions of personal jurisdiction and summary judgment. JPR has entered a limited appearance for the purpose of challenging personal jurisdiction.⁴

II.

The ACPA creates two avenues by which claimants may seek a remedy for "cyberpiracy." The first, found in Section 1 of the ACPA, is a remedy for owners of a mark in personam against a person who, with "a bad faith intent to profit from that mark[,] ... registers, traffics in, or uses a domain name" that:

(I) in the case of a mark that is distinctive at the time of registration of the domain name, is identical or confusingly similar to that mark;

(II) in the case of a famous mark that is famous at the time of registration of the domain name, is identical or confusingly similar to or dilutive of that mark; or

(III) is a trademark, work, or name protected by reason of section 706 of Title 18 or section 220506 of Title 36.

15 U.S.C. § 1125(d)(1)(A). A plaintiff proceeding under Section 1 has available a full panoply of legal and equitable remedies. Specifically, such a plaintiff may seek compensatory damages, including disgorgement of defendant's profits, or elect to recover, "instead of actual damages and profits, an award of statutory damages in the amount of not less than $1,000 and not more than $100,000 per domain name, as the court considers just." 15 U.S.C. § 1117(a) & (d).⁵ In addition, a Section 1 plaintiff may seek injunctive relief, including "the forfeiture or cancellation of the domain name or the transfer of the domain name to the owner of the mark." 15 U.S.C. § 1125(d)(1)(C); see Sporty's Farm LLC v. Sportsman's Market, Inc., 202 F.3d 489, 500 (2d Cir.2000). A mark owner's second avenue of relief is appropriately found in Section 2 of the ACPA, which provides that, where a domain name infringes a federally registered trademark or violates any right of the mark's owner under the Lanham Act, "[t]he owner ... 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. § 1125(d)(2)(A). But importantly, a mark owner may file an in rem cause of action only where the court finds that the owner of the mark either (i) "is not able to obtain in personam jurisdiction over a person who would have been a defendant in a civil action under [Section 1]" ("Option I") or (ii) "through due diligence was not able to find a person who would have been a defendant in a civil action under [Section 1]" ("Option II").⁶ Id. § 1125(d)(2)(A)(i)-(ii). Thus, the ACPA limits a court's in rem jurisdiction over a domain name on a finding that Option I or II exists.⁷ And further as a precondition to using Option II, a mark owner is required to exercise due diligence in attempting to find a suitable defendant. See id. § 1125(d). This attempt must include (i) "a notice of the alleged violation and intent to proceed [in rem] to the registrant of the domain name at the postal and e-mail address provided by the registrant to the registrar," and (ii) "publish[ed] notice of the [in rem] action as the court may direct promptly after filing." Id. § 1125(d)(2)(A)(ii)(II). Only if the owner complies with these requirements and nonetheless fails to find a suitable defendant who may be sued in personam may the owner maintain an in rem action against the domain name. And significantly, the relief afforded in an ACPA in rem action is limited to "a court order for the forfeiture or cancellation of the domain name or the transfer of the domain name to the owner of a mark." Id. § 1125(d)(2)(D)(i).

These provisions, given their plain meaning,⁸ compel the conclusion that the ACPA provides mark owners with two mutually exclusive avenues for relief against putative infringers. A mark owner may proceed either in personam against an infringer or, in certain circumstances where this cannot be done, the owner may proceed in rem against the domain name; a mark owner may not proceed against both at the same time.⁹ This follows from the fact that the ACPA's plain language limits the use of in rem jurisdiction to two situations, labeled here as Options I and II, where there is no in personam jurisdiction over the domain name registrant. Option I allows a mark owner to proceed in rem only where the identity and location of the registrant or user of an infringing domain name are known, but in personam jurisdiction cannot be obtained over this entity. Option II deals with those situations where the registrant or user of the offending domain name cannot be found and thus simply adds that this jurisdiction may be...