Internet Billions Domains, Inc. v. Venetian Casino Resort, LLC, 2002 U.S. Dist. LEXIS 11805 (E.D. Pa. May 31, 2002).
Factual Background Edit
Plaintiff, a Costa Rican corporation, name registered the domain name "venetiancasino.org" on May 10, 1999. Defendant owns the Venetian Hotel and Casino in Las Vegas, which opened on May 3, 1999. Defendant filed a UDRP Complaint, and there was a decision in defendant's favor ordering transfer of the domain to defendant.
Trial Court Proceedings Edit
Plaintiff filed this action seeking a declaratory judgment that its registration and use of "venetiancasino.org" did not infringe defendant's trademarks as well as cancellation of defendant's trademark registration. Defendant counterclaimed for cybersquatting, infringement, and dilution. Defendant filed motions to dismiss some of plaintiff's claims, including abuse of process, and to require plaintiff to post a nonresident bond to cover defendant's costs and possible statutory damages for cybersquatting.
Plaintiff filed a motion to dismiss all of the defendant's counterclaims. The court dismissed plaintiff's abuse-of-process claim because defendant filed and prosecuted the UDRP proceeding to decide who was entitled to the disputed domain name, the very purpose of the UDRP process.
The court also denied plaintiff's motion to dismiss defendant's counterclaims. In particular, plaintiff's argument that the ACPA claim was invalid because it registered the domain name before ACPA's effective date of November 29, 1999, had no merit because plaintiff trafficked in the domain name after ACPA's effective date. Based on the "dubious" merit of plaintiff's claims and the questionable ability of plaintiff to pay costs, the court required plaintiff to post a nonresident bond of $25,000 to cover defendant's costs and attorney's fees. However, neither Federal Rule of Civil Procedure 54(d)(1) nor Local Rule 54.1(a) gave the court power to issue a bond to secure potential statutory damages.
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