Court determines it can’t issue default judgment in John Doe suit.
A lawsuit filed to recover the allegedly stolen domain name Rat.com has hit a snag in Fairfax County court.
Jon Beutler registered rat.com in 1995. He alleges that the domain name was stolen from his GoDaddy account last year and transferred to another registrar.
I see lots of lawsuits filed in Virginia because Verisign is located there. But most of these are in rem suits filed against the domain names in Federal District Court that allege cybersquatting.
Instead, Beutler’s lawsuit was filed in a circuit court for conversion and tortious interference, and against John Doe rather than the domain name.
The court determined (pdf) that it can’t issue a default judgment against a John Doe in a domain name case, that you can’t serve a John Doe defendant by publication in Virginia, and that Verisign would have to be a party to the suit if the court were to order the domain name transferred.
It seems to me like the most common way to try to recover a domain name like this is to claim trademark rights and file it in rem. I’m not sure why the plaintiffs took a different approach in this case.
Andrea Paladini says
Funny thing is that RAT.com redirects to Disney website … 🙂 … Ratatouille? 😀 … not to be confused with the traditional French Provençal stewed vegetable dish.
John says
Great domain, ironically enough.
John Berryhill says
“It seems to me like the most common way to try to recover a domain name like this is to claim trademark rights and file it in rem.”
The problem there is being able to “claim trademark rights” in good faith.
A number of these suits have gone forward in the EDVA, and they have been successful at recovering stolen domain names. But in many instances, the string corresponding to the domain names has not actually been used as a trade or service mark. These suits “work” because the defendants don’t show up, so the allegation of trade or service mark rights is not challenged, as a practical matter.
But that strategy works for the same reason that the Associated Recovery in rem suit in the EDVA worked – at least until many of the affected domain registrants showed up to challenge the order after finding their domain names had been transferred, and not previously having had actual notice of the proceeding.
At the end of the day, the in rem provisions of the ACPA can be used to obtain transfer of any .com domain name in circumstances where it is impractical for a domain registrant to put in an appearance in the court in Virginia. We’ve seen that in a comment on this blog to one of the articles on the Associated Recovery case, in which the purchaser of one of the affected domain names said that he was quoted a (quite reasonable) $6,000 to challenge the default transfer order, and wondered whether it was a better use of that $6,000 to simply look for another domain name to purchase.
It is the “most common way” as you note, but it does require someone willing to plead an allegation which is simply not true in many instances of in rem suits of that type – i.e. in which a domainer files one in order to get a stolen name back. It involves a moral calculation along the lines of “someone stole something from me, so I’m going to say something that isn’t true to a court in order to get it back.” There are of course differing opinions on whether two wrongs make a right, or whether the ends justify the means. However, if you look back at, say, the screenshots history of rat.com, it does not appear that either “rat.com” or “rat” were ever used as a trade or service mark for any particular goods or services (insofar as can be determined by that limited view of the domain name’s history of use).
So, yes, if the aggrieved registrant of rat.com files an in rem suit “claiming trademark rights”, the odds are that the other side will not show up, and the plaintiff will get a default judgment ordering transfer of the domain name. But of course that can be done by ANY claimant in relation to ANY .com domain name, in circumstances where it is unlikely that the domain registrant cannot afford to have someone appear in court for them, or where the domain registrant simply does not understand the stream of English-language emails and documents which might be sent to them.
Is that the way these things should work? I’m sure there are a range of opinions on that question.
Steven M. Levy, Esq. says
Could an in rem action for recovery of stolen property have been filed instead of a claim that relies on trademark rights? Or would it be a challenge to produce evidence of the theft here?
John Berryhill says
“Could an in rem action for recovery of stolen property have been filed instead of a claim that relies on trademark rights?”
No. The only statutory authority for an in rem proceeding against a domain name is 15 USC 1125(d)(2).
The challenge is not producing evidence of theft, it is that there is no such cause of action.
Without getting into a religious debate over whether domain names are “property” for any and all causes of action, it is quite obvious that if domain names were “property” for the purpose of an in rem cause of action, then there wouldn’t need to be a special carve-out for proceeding “as if” they were for the purpose of an action under 15 USC 1125. In other words, the type of action provided under the in rem provisions of the ACPA is one in which it will be procedurally treated as an “in rem” action.
If you are going to file a conversion case, then file a conversion case, but that doesn’t by itself get you into a federal court. And claiming a domain name as “property” in any court in Virginia will typically get you dismissed. See, e.g. In re Alexandria Surveys Int’l, LLC, 13-CV-00891 (E.D. Va. Nov. 7, 2013) following 50 U.S.P.Q.2d 1786 (Va. Cir. Ct. 1999), rev’d sub nom., Network Solutions, Inc. v. Umbro Int’l, Inc., 54 U.S.P.Q.2d 1738 (Va. Sup. Ct. 2000)