Fourth Circuit sorts out some more cybersquatting jurisdiction issues

A man who was stripped of his ownership of the domain name "lorealcomplaints.com" by Network Solutions, Inc. (NSI) could not sue Network Solutions for transferring the domain name, but he could maintain a claim against the company that caused the transfer.

In Hawes v. Network Solutions, Inc., No. 02-1182, 02-1377, 02-1824, 02-1825 (4th Cir. July 09, 2003) NSI transferred lorealcomplaints.com to French cosmetic company L'Oreal after L'Oreal initiated trademark litigation in a French court. The plaintiff sued in the U.S. to get the domain name back, but the district court dismissed the suit for lack of subject matter jurisdiction.

The Fourth Circuit reversed in part and affirmed in part. It found that although the district court did have jurisdiction over the claim against NSI, its dismissal of the claim was nonetheless proper because the plaintiff failed to allege all of the required elements of his claim. (The Anticybersquatting amendments to the Lanham Act generally prohibit suits against registrars like NSI unless the plaintiff can show that one of three exceptions to the limitation of liability granted by 15 U.S.C. 1114(2)(D)(i) applies. The failure to meet the elements was a 12(b)(6) issue, not a jurisdictional issue, the court found).

As to the claim against L'Oreal brought under 15 U.S.C. 1114(2)(D)(v), (which authorizes a domain name registrant to sue trademark owners for "reverse domain name hijacking") the Court found again that jursidiction was present. However, as to this claim, the Court found that all of the necessary elements were alleged and that the claim should not have been dismissed.

The Court was careful not to step on the toes of the French court system, which was hearing similar claims in France. ("We should add that our conclusion that Hawes' complaint states a cause of action under s1114(2)(D)(v) over which a United States court may exercise jurisdiction does not imply any disrespect of any French court that may have taken jurisdiction of a related dispute in France.")