United States District Court, N.D. California, San Francisco Division
ORDER FINDING IN REM JURISDICTION [ECF No. 32]
LAUREL BEELER, Magistrate Judge.
This is an in rem action under the federal Anti-Cybersquatting Consumer Protection Act ("ACPA"), 15 U.S.C. § 1125(d). (ECF No. 26 at 2 (¶ 24).) Plaintiff Denso Corporation sues to recover the Internet domain name denso.com from its current registrant, Densoft Consultancy Services, Ltd. ("DCS"). Denso moves the court to find that there is in rem jurisdiction over the domain name under 15 U.S.C. § 1125d)(2). The court finds this matter suitable for determination without oral argument. See Civ. L.R. 7-1(b). For the reasons stated below, the court agrees that it may assert in rem jurisdiction over denso.com through ACPA, and so grants Denso's motion.
JURISDICTION & VENUE
Jurisdiction is laid under several statutes: 28 U.S.C. § 1331 - federal-question jurisdiction; 28 U.S.C. § 1338 - federal patent, copyright, and trademark laws; 15 U.S.C. § 1121 - trademarks; and, most specifically, 15 U.S.C. § 1125(d)(2) - in rem jurisdiction under ACPA. (ECF No. 26 at 3 (¶ 11).) Venue is proper in this district under 15 U.S.C. § 1125(d)(2)(C). Denso.com is registered in a domain-name registry operated by Verisign, Inc. See (ECF No. 26 at 2 (¶ 3).) Verisign has an office in San Francisco and to that extent is "located" in this district. See 15 U.S.C. § 1125(d)(2)(C)(i). Verisign also stipulated to an order in this suit placing denso.com on "registry lock status, " which prevents the domain name from being transferred, suspended, or otherwise modified (without a court order) until this lawsuit is over. See (ECF Nos. 7-8.) It thus appears that Verisign could, if necessary, deposit in court "documents sufficient to establish control and authority regarding the disposition of the registration and use of the domain name." See 15 U.S.C. § 1125(d)(2)(C)(ii). Denso has consented to the undersigned's jurisdiction. (ECF No. 10.)
I. FACTUAL BACKGROUND
Denso is a Japanese corporation with its principal place of business in Japan. (ECF No. 26 ¶ 1.) It supplies advanced automotive technology, systems, and components for automakers, and operates in 30 countries. ( Id. ¶ 2.) Denso previously owned the denso.com domain name, which it used in association with its website, its business, and corresponding DENSO trademarks. ( Id. ¶ 3.) Denso's trademarks are registered with the U.S. Patent and Trademark Office and internationally. ( Id. ) Denso.com is registered in a domain-name registry that is operated by Verisign, Inc. See ( id. ¶ 12.) Verisign has an office in San Francisco. ( Id. )
In March 2000, Denso mistakenly allowed its registration of denso.com to lapse. ( See id. ¶¶ 15-18.) One week later, a Russian company registered the domain. ( Id. ¶ 19.) The registrant subsequently transferred the ownership several times, making it difficult for Denso to contact the real registrant. ( Id. ¶ 20.)
Since 2001, Denso has made several attempts to reacquire the domain. See ( id. ¶¶ 21-30). It located and contacted the registrant in 2001. ( Id. ¶¶ 21-23.) In 2003, Denso filed an administrative action under ICANN's Uniform Dispute Resolution Policy to recover the domain. ( Id. ¶¶ 5, 24.) That same year, the World Intellectual Property Organization ("WIPO") arbitration panel ordered the domain transferred to Denso. ( Id. ¶ 25.) Despite the WIPO ruling, the registrant and registrar refused to transfer the domain. ( Id. ¶ 26.)
The registrant then filed a claim with the Russian Arbitrazh Court of the City of St. Petersburg and the Leningrad Region disputing Denso's right to the domain. ( Id. ¶ 27.) After numerous appeals, Denso prevailed in the Supreme Court of the Russian Federation in a published decision dated November 11, 2008. Still the domain's registrant and registrar refused to transfer the domain to Denso. ( Id. )
II. PROCEDURAL HISTORY
Denso filed this action on March 6, 2014. (ECF No. 1 (complaint).) The original complaint named denso.com as an in rem defendant and denso.com 's then unknown registrant as a Doe defendant. See ( id. ¶ 4). Denso explained that it could not identify the denso.com registrant "as they are registered via a WHOIS privacy' service located in Russia." ( Id. ¶ 4.) The Complaint asserted claims for: (1) cyberpiracy under ACPA, 15 U.S.C. § 1125(d)(1)(A); (2) conversion; (3) common-law unfair competition; and (4) unfair competition under California Business and Professions Code § 17200. ( Id. ¶¶ 31-50.)
Denso moved for an order directing Verisign to place denso.com on "registry lock status, " so that it could not be transferred, suspended, or otherwise modified during the pendency of this action without a court order. ...