SCC Communications Corp. v. J. Clarke Anderson, 195 F.Supp.2d 1257 (D. Colo. 2002) (full-text).
Factual Background Edit
Defendants included a Michigan-based computer systems integration company that registered the domain name “911.net” in 1996. Plaintiff, a Colorado-based retailer of software that helps route 9-1-1 emergency calls, registered the trademark “9-1-1NET” in 1998 and filed a trademark application for “911.net” in January 2000.
Plaintiff contacted defendant in 2000 claiming that defendant’s registration and maintenance of the “911.net” domain name violated plaintiff’s trademark rights. The parties negotiated a possible transfer of the domain name, but the defendant ultimately rejected plaintiff’s offer and requested a higher transfer price and threatened to use the “911.net” domain name in plaintiff’s marketplace.
Trial Court Proceedings Edit
Plaintiff then filed suit in Colorado, asserting claims of unfair competition, cyber-piracy, and dilution. Defendant moved to dismiss the action for lack of personal jurisdiction, and the court held that it did not have personal jurisdiction over defendant under either Colorado’s long-arm statute or the effects test.
Specific jurisdiction was not proper because defendant did not purposefully direct its activities toward the forum’s residents. Defendant’s website, which contained only information on the company’s software, services, personnel, and clients but lacked any means for visitors to purchase software or services, was a passive website.
The court also rejected plaintiff’s claim that defendant had purposefully directed its activities toward Colorado under the “effects doctrine.” It held that “something more” than the registration of another’s trademark as a domain name was needed to demonstrate that defendant intentionally directed activities towards the forum state.
In addition, because defendant registered its domain name two years before plaintiff registered its trademark, defendant could not have intended to infringe plaintiff’s mark at that time. Nor was the parties’ negotiations regarding a possible transfer of the domain name sufficient to support personal jurisdiction because they were initiated by plaintiff and defendant had not initiated contact with Colorado before then. Although the court did not grant defendant’s motion to dismiss, it did grant its motion to transfer the case to the Western District of Michigan.
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