Lucent Technologies, Inc. v. Johnson, 56 U.S.P.Q.2d (BNA) 1637, 2000 US Dist. LEXIS 16002 (C.D. Cal. 2000).
Factual Background Edit
Plaintiff filed an in rem action under the ACPA against the domain name "lucentsucks.com." On November 11, 1999, plaintiff sent a cease-and-desist letter by Federal Express to the domain-name registrant, but it was returned as undeliverable. On December 8, 1999, by first-class mail and e-mail, plaintiff sent another letter, this one giving notice of plaintiff's intent to proceed with an in rem action. Although the e-mail came back undeliverable, the letter was successfully delivered to the defendant, who had left a forwarding address with the U.S. Postal Service.
Trial Court Proceedings Edit
On December 16, 1999, plaintiff filed this in rem action. Even though plaintiff spoke with defendant and obtained his new address on December 22, 1999, plaintiff continued to prosecute the in rem action. Defendant filed a motion to dismiss, arguing that plaintiff failed to comply with the in rem jurisdictional provisions of the ACPA. The court agreed, finding both that plaintiff could have obtained in personam jurisdiction over defendant and that filing the in rem action only eight days after sending notice of its intent to proceed in rem did not show the "due diligence" required under the ACPA.
On the latter point, because the ACPA does not specify a waiting period, the court interpreted the ACPA consistent with the due-process requirement. In doing so, the court looked to two other waiting periods for guidance: (1) Fed. R. Civ. P. C(1), which permits the claimant of property subject to an in rem maritime action 10 days after seizure of the res to file a claim and 20 days after that to serve an answer, and (2) Fed. R. Civ. P. 12, which provides an in personam defendant 20 days after service to file an answer. Although these rules are not directly on point, "[t]aken together, [they] strongly suggest that Congress would not consider eight days to be a sufficient waiting period after mailing notice of a potential in rem action to a person who may be affected by that action."
Moreover, the court pointed out that the purpose of the ACPA's in rem provision is to "provide a last resort where in personam jurisdiction is impossible, because the domain name registrant is foreign or anonymous." Use of the in rem provision was thus inappropriate here where defendant's identity and address were found and in personam jurisdiction was possible. Finally, the court addressed several other arguments raised by defendant. First, the court rejected defendant's argument that a domain name was not "property" for purposes of establishing in rem jurisdiction under the ACPA, citing the court's recent decision in Caesars World, Inc. v. Caesars-Palace.com,
And, although the court did not rule on defendant's argument that plaintiff could not prove its trademark infringement claims without infringing defendant's free-speech rights, it noted in dicta that "[d]efendant argues persuasively that the average consumer would not confuse lucentsucks.com with a website sponsored by plaintiff." In short, "[a] successful showing that lucentsucks.com is effective parody and/or a cite [sic] for critical commentary would seriously undermine the requisite elements for the causes of action at issue in this case."
After the ruling by the district court in Virginia, plaintiff sued the domain-name owner in California. In September 2000, the district court denied defendant's motion to dismiss. First, regarding defendant's assertion that confusion was not likely, the court stated that "the likelihood of confusion inquiry is a fact-intensive evaluation ill-suited for disposition on a motion to dismiss."
As to the issue of dilution, plaintiff sufficiently stated a claim for tarnishment because "[t]he display of pornographic content on a site bearing someone's registered mark may constitute tarnishment." Lastly, plaintiff pleaded sufficient facts to support a finding of bad faith under the ACPA because defendant's website sold pornography and defendant offered to sell the domain name to plaintiff for $10,000, both of which are evidence of bad faith.
The court rejected defendant's argument for a per se rule that "yourcompanynamesucks" domain names constitute a "safe harbor" under the First Amendment, because it did not challenge the sufficiency of plaintiff's claim and was therefore inappropriate on a motion to dismiss. Similarly, despite defendant's claim that he reasonably believed his domain-name registration was a fair use, the court held that this "particularistic, context-sensitive analysis" should be conducted at the summary-judgment stage, not on a motion to dismiss.
- ↑ 112 F. Supp. 2d 502 (E.D. Va. 2000) (defendant's motion to dismiss); 112 F. Supp. 2d 505 (E.D. Va. 2000) (plaintiff's contempt motion).
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