Starcom Mediavest Group v. Mediavestw.com, No. 10-4025, 2010 WL 3564845 (September 13, 2010)
In rem actions over domain names are powerful tools. A trademark owner can undertake these actions when it identifies an infringing domain name but cannot locate the owner of that domain name. In a sense, the domain name itself is the defendant.
The Anticybersquatting Consumer Protection Act (which is a part of the federal trademark statute dealing with the unauthorized registration of domain names) says that a court can enter ex parte orders requiring a domain name to be turned over when: (1) the plaintiff owns a registered trademark, (2) the domain name registry is located in the judicial district in which the action is being brought, (3) the domain name violates the plaintiff’s trademark rights, and (4) the plaintiff cannot locate the owner of the domain name even though it has diligently tried.
An “impostor” registered mediavestw.com, and “tricked” at least one of plaintiff’s business partners into signing up for advertising services. Plaintiff owns a trademark for MEDIAVEST and operates a website at mediavestww.com. Plaintiff filed an in rem action and sought a temporary restraining order (TRO).
The court granted the motion for TRO. It found that plaintiff had met its burden for a temporary restraining order in that it had shown that it was likely to succeed on the merits and that it would suffer irreparable harm in the absence of preliminary relief. As for the showing of harm to its trademark rights, the court noted the efforts on the part of the domain name registrant to fraudulently enter into business arrangements with plaintiffs’ business partners.
The court found that the TRO would serve the public interest because such interest favors elimination of consumer confusion. (Consider whether there really was any consumer harm that took place here if the alleged fraud was on a business-to-business level. Compare the findings in this case with the finding of no consumer nexus in the recent Reit v. Yelp case.)
The court found that plaintiff had made such a strong showing of the likelihood of success that it did not require plaintiff to post a bond. It ordered the domain name transferred into the court’s control immediately. Behold the power of in rem actions.
Zynga Game Network Inc. v. Williams, 2010 WL 2077191 (N.D.Cal. May 20, 2010)
Zynga (you know, the creator of Farmville and Mafia Wars) has filed a federal lawsuit against the operators of websites that sell virtual currency and goods for use in Mafia Wars. These websites allegedly give rise to infringement of the Mafia Wars trademark and the sale of these virtual things is in violation of the game’s terms of service.
In federal court, you can’t start the discovery process until the parties have met to discuss certain issues (this is called a Rule 26(f) conference). But there’s an obvious chicken and egg problem in cases like this that have anonymous defendants — how do you confer with a defendant you don’t know? You’re kind of stuck if you can’t take discovery to learn who he is.
Fortunately the court can allow discovery to happen before the Rule 26(f) conference when there is good cause.
So Zynga has argued that there is good cause to allow it to serve subpoenas on Godaddy (the registrant for the MAFIAWARSDIRECT.COM, MWBLACKMARKET.COM, and MWFEXPRESS.COM domain names) and PayPal, who apparently facilitated the purchase of virtual goods.
The court agreed that Zynga should get to serve the subpoenas. But it found that the subpoenas as proposed were too broad. For example, Zynga sought all billing and account records, server logs, website content, contact information, transaction histories and correspondence for the persons or entities that purchased services from the offending sites. The court held that the limited discovery appropriate for Zynga at the early stage would only allow it to get identifying information for the site owners.
Palacio del Mar Homeowners Assn., Inc. v. McMahon, — Cal.Rptr.3d —, 2009 WL 1668294 (Cal. App. 4 Dist. June 16, 2009)
A California state court entered a $40,000 judgment against defendant McMahon in favor of plaintiff homeowners association. The homeowners association tried to collect the money from McMahon, seeking a “turnover” of property McMahon owned. Among the items the homeowners association sought was the domain name ahrc.com, registered in the name of McMahon’s wife.
The trial court permitted the domain name to be turned over to the homeowners association to satisfy the judgment. McMahon sought review with the California Court of Appeal. That court reversed and vacated the turnover order.
The court gave several reasons for reversing the lower court. The most interesting reason, however, dealt with the very nature of domain names. The provision in California law allowing turnover of property limits itself to tangible property that can be “levied upon by taking it into custody.” Looking to the case of Network Solutions, Inc. v. Umbro International, Inc., 529 S.E.2d 80 (Va. 2000), the court held that a domain name registration is not property, but merely supplies the intangible contractual right to use a unique domain name for a specified period of time. Even if the registration were property, it was not something that could be taken into custody.