Globalsantafe Corp. v. Globalsantafe.Com

• Decision Date: 05 February 2003
• Docket Number: No. CIV.A.01-1541-A.,CIV.A.01-1541-A.
• Citation: 250 F.Supp.2d 610
• Court: U.S. District Court — Eastern District of Virginia
• Parties: GLOBALSANTAFE CORPORATION, Plaintiff, v. GLOBALSANTAFE.COM, Defendant.

250 F.Supp.2d 610

GLOBALSANTAFE CORPORATION, Plaintiff, v. GLOBALSANTAFE.COM, Defendant.

No. CIV.A.01-1541-A.

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

February 5, 2003.

COPYRIGHT MATERIAL OMITTED

Kevin Michael Henry, Sidley Austin Brown & Wood, Washington, D.C., for Plaintiffs.

MEMORANDUM OPINION

ELLIS, District Judge.

GlobalSantaFe Corporation ("GlobalSantaFe"), the plaintiff in this in rem suit under the Anticybersquatting Consumer Protection Act ("ACPA"),¹ successfully demonstrated that the domain name infringes its trademark and accordingly obtained a Judgment Order directing Hangang Systems, Inc. ("Hangang"), the registrar of the infringing domain name, to transfer the name to GlobalSantaFe.² Yet, because a court enjoined Hangang from transferring the domain name, GlobalSantaFe now seeks a further amendment of the Judgment Order directing the ".com" registry, VeriSign Global Registry Services ("Verisign"), to cancel the domain name. Thus, the question presented here is whether the ".com" registry in the United States may be ordered to cancel a domain name that has already been found to be registered in violation of the ACPA, where, as here, the foreign registrant has obtained an in unction from a foreign court barring the foreign registrar from transferring the domain name.

I.

The facts are straightforward.³ Prior to their merger, Global Marine Inc. ("Global Marine") and Santa Fe International Corporation ("Santa Fe") were both involved in the business of contract drilling and related services. Global Marine was a major international offshore drilling contractor, and the world's largest provider of drilling management services, while Santa Fe was a leading international offshore and land contract driller and also provided drilling-related services to the petroleum industry. Since 1958, Global Marine had conducted business under its GLOBAL MARINE mark and in 1969 Global Marine was issued a federal trademark for the mark. While Santa Fe's mark was not registered, the company had used its SATA FE mark in conducting and promoting its services since 1946, and customers and others came to associate the mark with Santa Fe's services.

On September 3, 2001, Global Marine and Santa Fe publicly announced their agreement to merge into an entity to be known as GlobalSantaFe Corporation. Less than one day later, Jongsun Park registered the domain name with the Korean registrar Hangang.⁴ The domain name was subsequently transferred to Fanmore Corporation, a Korean entity, with Jong Ha Park ("Park") listed as the administrative, billing and technical contact. The web site currently linked to the domain name is simply a placeholder site marked "under construction."⁵

On October 5, 2001, just over one month after the announcement and Jongsun Park's registration of the domain name, Global Marine and Santa Fe filed this ACPA in rem action against the domain name. Service was perfected as required under the ACPA by sending notice of the alleged violation and the pending in rem action to the postal and email addresses of the listed registrant and by publishing notice of the action in two Korean newspapers. See 15 U.S.C. § 1125(d)(2)(A)(ii)(aa) & (bb).⁶ In the meantime, on November 20, 2001, the merger of the two compaines became effective, resulting in the publicly traded GlobalSantaFe company with a market value of approximately $6 billion. On November 15, 2001, GlobalSantaFe applied for a federal trademark registration for the GLOBALSANTAFE mark under four separate categories, and those applications are pending. On December 20, 2001 the registrar, Hangang, deposited the registrar certificate for the domain name with the Clerk of this Court, and by doing so "tender[ed] to the Court complete control and authority over the registration" for , as required by the ACPA, 15 U.S.C. § 1125(d)(2)(D)(i)(I). The registrant failed to appear, either in person or through pleadings, to defend its right to use the domain name.

In response to the registrant's apparent default, the matter was referred to a magistrate judge for proposed findings of fact and recommendations pursuant to 28 U.S.C. § 636(b)(1)(B). The magistrate judge's Report and Recommendation concluded that the registration of the domain name violated the ACPA and that the registrant acted in bad faith,⁷ and recommended that the domain name be transferred to GlobalSantaFe. Following consideration of the Report and on the basis of an independent review of the entire record, this Court adopted the Report's findings of fact and recommendations as its own, entered judgment by default in favor of GlobalSantaFe, and ordered Veri-Sign to transfer the domain name to GlobalSantaFe.⁸ Shortly after this Judgment Order entered, GlobalSantaFe sought an amendment to add Hangang, the registrar, as the entity ordered to transfer the domain name.⁹ On April 1, 2002, an Amended Judgment Order was entered, directing both Hangang and Verisign to "take all appropriate steps to transfer the domain name" to GlobalSantaFe.¹⁰

On April 9, 2002, Park filed an application for an injunction in the District Court of Seoul, Korea, requesting that court to issue an injunction prohibiting Hangang from transferring the domain name as ordered by this Court. The District Court of Seoul provisionally granted this injunction by order dated September 17, 2002, finding that this Court likely lacked jurisdiction over the matter.¹¹ In light of these proceedings and the Korean court's order, it appears that Hangang has refused to transfer the domain name as directed by Order of this Court. GlobalSantaFe, therefore, now seeks by motion a second amended judgment, which not only directs Hangang and VeriSign to transfer the domain name, but additionally directs Veri-Sign, the registry, to cancel the infringing domain name pursuant to the ACPA until the domain name is transferred to Global-SantaFe.

II.

Under the ACPA, suits may be brought in rem against a domain name provided certain jurisdictional requirements are met. In addition to meeting these jurisdictional requirements, GlobalSantaFe must also show (i) that it is entitled to relief under the ACPA, (ii) that cancellation is an available remedy under the ACPA, (iii) that the particular method of cancellation requested by GlobalSantaFe is effective and appropriate, and (iv) that concerns of international comity do not preclude such a remedy in the face of the Korean court's injunction. Jurisdiction and entitlement to relief were settled by the Amended Judgment Order, as reviewed briefly below. Also discussed briefly below is the availability of a cancellation remedy under the ACPA. The questions concerning the mechanisms by which cancellation of a domain name may be accomplished and the issues of international comity merit more extensive consideration.

A. Jurisdictional Requirements under the ACPA

In rem ACPA suits must meet several jurisdictional requirements. First, the ACPA allows a trademark owner to file an in rem action only in specific jurisdictions, namely "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). This statutory requirement is satisfied here because the domain name registry in this case, VeriSign, is located within this district in Dulles, Virginia.

[1] Second, in rem actions under the ACPA are appropriate only if there is no personal jurisdiction over the registrant in any district. See ACPA, § 1125(d)(2)(A)(ii)(I). This requirement is also plainly met, as there is no evidence that Park or Fanmore have conducted or transacted business in any district in the United States, nor is there any evidence that their actions constitute sufficient minimum contacts to support personal jurisdiction in the United States. See International Shoe Co. v. Washington, 326 U.S. 310, 316, 66 S.Ct. 154, 90 L.Ed. 95 (1945). While it is true that the infringing domain name is included in the VeriSign registry, this is not enough to establish minimum contacts; indeed, even if the registrar were also located in this district, the resultant contacts would still be too minimal to support jurisdiction. See America Online, Inc., et al. v. Huang, 106 F.Supp.2d 848, 856-58 (E.D.Va.2000) (holding that registration of a domain name in this district with Network Solutions, Inc., which at the time performed both the registrar and the registry functions, did not constitute sufficient minimum contacts to support suit in this district.). Nor does the nature of the website operating at provide a jurisdictional nexus; it is a passive, placeholder site, consisting largely of the notice that the site is "under construction," and therefore is not itself a basis for jurisdiction over the registrant. See ALS Scan, Inc. v. Digital Service Consultants, Inc., 293 F.3d 707, 713-14 (2002) (stating The principle that there is no personal jurisdiction on the basis of purely passive Web sites); Alitalia-Linee Aeree Italiane v. Casinoalitalia.com, 128 F. Supp 2d 340, 349 (E.D.Va.2001) (same). Thus, there is no personal jurisdiction over Park or Fanmore in this district or, it appears, in any district in this country.

Third, GlobalSantaFe has properly perfected service, as required by the ACPA, by sending notice to the registrant's listed email and postal addresses and by publishing notice in Korean newspapers as directed by Order dated October 23, 2002. See 15 U.S.C § 1125(d)(2)(A)(ii)(aa) & (bb).

Finally, the Fourth Circuit has recently affirmed that in rem jurisdiction, as authorized by the ACPA, is not a violation of the Due Process Clause of the Constitution, where, as here, "the property itself is the source of the underlying controversy between the plaintiff and defendant," and jurisdiction is assigned "based on the location of the property." See Porsche Cars North Amer., Inc. v. Porsche.net et al, 302 F.3d...