America Online, Inc. v. Huang

• Decision Date: 13 July 2000
• Docket Number: No. Civ. 00-290-A.,Civ. 00-290-A.
• Court: U.S. District Court — Eastern District of Virginia
• Parties: AMERICA ONLINE, INC., and ICQ, Inc., Plaintiffs, v. Chih-Hsien HUANG, et al., Defendants.

106 F.Supp.2d 848

AMERICA ONLINE, INC., and ICQ, Inc., Plaintiffs, v. Chih-Hsien HUANG, et al., Defendants.

No. Civ. 00-290-A.

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

July 13, 2000.

Michael A. Grow, James R. Davis, II, Arent Fox Kintner Plotkin & Kahn, Washington, DC, for plaintiffs.

John W. Polk, Kenneth R. Hayduk, Baker & McKenzie Washington, DC, for defendants.

MEMORANDUM OPINION

ELLIS, District Judge.

A threshold question presented in this trademark and trade name dispute is whether personal jurisdiction over a defendant exists based on the defendant's registration of the allegedly infringing domain name with a registrar located in the forum state. More specifically, the question is whether a California defendant who used the Internet to register an allegedly infringing domain name with a domain name registrar located in Virginia is, on that basis alone, subject to suit to in Virginia arising from the registration of the domain name.

I

Plaintiffs America Online, Inc. ("AOL"), and ICQ, Inc., a wholly-owned subsidiary of AOL, are Delaware corporations with a shared principal place of business in Dulles, Virginia. Defendant eAsia, Inc., the sole defendant to have been served at this point, is a California corporation, with its principal place of business in Taipei, Taiwan. Defendant Chih-Hsien Huang an individual, and defendant Inforia, Inc., a California corporation, have not yet been served. According to the complaint, defendant Inforia, Inc., doing business as Inforian Inc., is a subsidiary of Inforian Inc., a Taiwan corporation, which is itself a subsidiary of eAsia.

Plaintiffs offer a wide variety of online services, including services under their common law mark, "ICQ."¹ The ICQ service allows persons registered with the service to determine whether another person registered with the service is currently online. Thus, ICQ is clever shorthand for "I Seek You." Once two users realize they are online at the same time, they may exchange messages via email, engage in real time "chat," and exchange files with one another. In essence, the purpose of ICQ is to facilitate real time Internet communication and interaction.

eAsia, through its subsidiaries, develops Internet related software and provides Internet related services for customers in Taiwan and other parts of Asia. It is apparent from the record that eAsia directs its products and services primarily, if not exclusively, at Chinese-speaking regions of Asia. First, eAsia's web pages are written in Chinese, and any English or other western words on the pages are rare and used primarily as trademarks. And second, the undisputed affidavit of eAsia's president establishes that eAsia's products and services are aimed at, and marketed exclusively in, Asia.

Among the services eAsia offers is a communications protocol it refers to as ICQ. It is unclear on this record whether this service is similar to that offered by plaintiffs under the same mark. In any event, eAsia registered and used the allegedly infringing domain names and , and Inforia Inc., registered and used the allegedly infringing domain name .² Both corporations registered the domain names with Network Solutions Incorporated ("NSI"), at the cost of approximately $35.00 per year. Significantly, the registration process occurred entirely online, by way of NSI's web site, and lasted no more than a few minutes.

Plaintiffs contend that the use of the ICQ mark on defendants' web pages, and defendants' registration and use of Internet domain names that incorporate the ICQ mark, infringed plaintiffs' rights to that mark. They have sued all three defendants under a variety of theories, including (i) violation of the recently enacted Anticybersquatting Consumer Protection Act ("ACPA"), 15 U.S.C. § 1125(d), (ii) false designation of origin and false advertising, 15 U.S.C. § 1125(a), (iii) dilution, 15 U.S.C. § 1125(c), (iv) common law unfair competition, (v) common law service mark infringement, (vi) common law trade name infringement, and (vii) violation of Virginia's Consumer Protection Act, Va.Code § 59.1-1-198. In the motion at bar, eAsia, the only served defendant thus far, seeks dismissal for lack of personal jurisdiction, or in the alternative, for lack of venue. Plaintiffs respond that eAsia is subject to personal jurisdiction in this case by virtue of its having registered the domain names and with NSI, which is located in Herndon, Virginia. As an additional factor, plaintiffs argue that personal jurisdiction is also appropriate because they are located in the forum state, and therefore the alleged harm was suffered here.

II

Given that domain name registration is the basis relied on for jurisdiction, a useful starting point is discussion of domain names, and the role NSI plays with respect to domain names and the operation of the domain name system ("DNS"). Specifically, it is necessary to understand the essentially decentralized nature of the DNS, and the very limited, albeit essential, role that NSI's actions in Virginia play with respect to the operation of the DNS.

The history and structure of the Internet have been discussed by numerous courts, and need not be reiterated here.³ In essence, the Internet is an international network of computer networks that communicate with one another through the use of a standard language or protocol.⁴ At a high level of abstraction, the Internet is simply a medium by which computers or computer networks otherwise isolated from one another may interact. Thus, for the Internet to function, each computer connected to the Internet, known as a "host," must have a unique identity, so that other computers may identify it. Currently, a computer's identity on the Internet is its Internet Protocol address ("IP address"), a numerical address that "appear[s] as four numbers, each between 0 and 255, separated by periods." Goldfoot, supra note 4, at 913; see Thomas, 176 F.3d at 502-03 & n. 1 (discussing the structure of an IP address). Of course, it is difficult for individual users to remember, and hence use, long numerical addresses, a fact that led to the development of the DNS. In functional terms, the DNS allows a user to locate a particular computer on the Internet by using an alphanumeric "domain name," in lieu of the computer's IP address.⁵

Yet, a domain name does not replace the IP address. Instead, a domain name is an alphanumeric means of determining the appropriate IP address by way of the DNS. In essence, the DNS matches a domain name with the appropriate IP address. But this simple description incorrectly suggests that the DNS is a central database to which other computers may refer, when the DNS is instead a decentralized, albeit hierarchical, process for correlating a domain name with the appropriate IP address.⁶ The hierarchical nature of the DNS is reflected in the structure of the "domain name space," at the top of which is the root, followed closely by the various Top Level Domains ("TLDs"), such as .com and .edu.⁷ The decentralized nature of the DNS, on the other hand, is reflected in the way the DNS actually works. Specifically, there is no master directory of domain names and IP addresses to which a computer refers when confronted with an unknown domain name. Instead, the domain name database is distributed across the Internet, on a multitude of name servers, each responsible for correlating the IP addresses and domain names of computers within its particular "zone" of the domain name space.⁸ The DNS is the means of searching that distributed database. The DNS, and the relatively limited, albeit essential role that registries such as NSI play in the DNS, is illustrated by its mechanics. When a person uses a domain name to identify a particular computer, that domain name is submitted to the user's DNS server. Unless the DNS server is familiar with that domain name, it must search beyond the user's network for the relevant information. The user's server first submits a query to one of over a dozen root name servers, which server then directs the query to the appropriate name server for the domain name's TLD. See Albitz & Liu, supra, § 2.6.1.⁹ After receiving the query from the user's name server, the TLD name server refers the query to a name server for the domain name's second level domain ("SLD") — a server which in most instances, including for the domain names at issue in this case, is not controlled by the entity that controls the TLD name server. Assuming the computer to which the domain name refers is in the zone of the SLD's name server, that server, not the TLD name server, provides the specific IP address of the computer the user seeks.

Thus, NSI and other entities with similar responsibilities have two essential functions: (i) a registrar function, to govern the distribution of SLDs, and to ensure each SLD within a particular TLD is unique,¹⁰ and (ii) a registry function to correlate each SLD with the IP address of the SLD's name server, and make that information available to the DNS. See Thomas, 176 F.3d at 505. With respect to the registry function, NSI currently operates the name server for several TLDs, including the TLDs of the domain names at issue in this case, .com and .net. See Thomas, 176 F.3d at 504; Goldfoot, supra note 4, at 95. As discussed above, this means NSI is responsible for maintaining the database that directs DNS queries for domain names ending in TLDs within NSI's control to the appropriate SLD name server. NSI is also a registrar for these and other TLDs¹¹, which means that it "acts as go-between for domain name holders and the registry, providing various services, including the registration of domain names on a first-come, first-served basis." Thomas, 176 F.3d at 505; see Network Solutions, 529 S.E.2d at 84. Significantly, however, NSI does not maintain a record of the IP address for each computer that falls within its TLDs. As discussed above, that function is...