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Designer Skin LLC v. S & L Vitamins, Inc., et al.
Unauthorized internet reseller of plaintiff’s products is not guilty of trademark infringement, and does not cause actionable initial interest confusion, by using plaintiff’s trademarks in meta tags of website at which plaintiff’s and its competitors’ products are sold, and in...

NBC Universal, Inc. v.

378 F. Supp.2d 715 (E.D. Va., July 14, 2005)

Court denies motion to dismiss made by foreign domain name registrant, and allows trademark owner to proceed with in rem action, seeking relief under both the Anticybersquatting Consumer Protection Act, and the Lanham Act for trademark infringement.  The ACPA gives a trademark holder the right to proceed in rem to have a domain name transferred to it, or its registration cancelled, and allows a United States court to exercise jurisdiction over a res – the domain name – where the registry or registrar for such domain name is located in the United States.  This is true notwithstanding the fact that the United States court lacks personal jurisdiction over the domain name registrant.

Plaintiff NBC Universal Inc. (“NBC”) commenced a Uniform Domain Name Dispute (“UDRP”) proceeding against Junak Kwon (“Kwon”), the registrant of the domain name at issue – – in Korea.  Kwon defaulted, and the panel found that Kwon had registered the domain name in bad faith.  The domain was not transferred to NBC, however, because Kwon commenced an action in Korea, disputing the findings of the UDRP Panel.  Kwon, however, had not served the pleadings in this action on NBC at the time this suit was commenced.

NBC thereafter commenced this in rem action in Virginia, where the domain registry for all .com domains is located.
 Kwon moved to dismiss, arguing that NBC had waived its right to pursue a federal action by first proceeding under the UDRP.  The Court rejected this argument, relying on the court’s decisions in, Inc. v. Excelentisimo Ayuntamiento De Barcelona, 330 F.3d 617 (4th Cir., 2003) and Parisi v. Netlearning, Inc., 139 F.Supp.2d 745 (E.D. Va. 2001).

Kwon also asserted that the Court should abstain in favor of the pending Korean proceeding.  The Court declined, noting both that the Korean action was an in personam action brought against NBC, not an in rem action asserting jurisdiction over the res, and that Kwon had not served the pleadings in the Korean action on NBC during the six months since the suit’s commencement.  The Court also noted that US Courts have a strong interest in protecting the public policies effectuated by the Lanham Act.

Finally, the Court rejected Kwon’s motion to dismiss the Lanham Act claim, holding that “the in rem provision [of the Lanham Act] not only coves bad faith claims under section 1125(d)(2) but also covers infringement claims under Section 1114 and 1125(a) and dilution claims under Section 1125(c).”  In reaching this result, the Court relied on Harrods Ltd. V. Sixty Internet Domain Names, 302 F.3d 214 (4th Cir. 2002).

Accordingly, the Court permitted NBC to proceed with its in rem action.

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