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Internet Trademark Case Summaries

Banco Inverlat, S.A. v.

112 F. Supp. 2d 521 (E.D. Va. 2000)

In this in rem action against two domain names and their foreign registrants, plaintiff had already sent the registrants a copy of the Complaint by courier with delivery confirmed, and had sent the Complaint translated into Spanish to the registrants by e-mail with computer verification that registrants opened the e-mail.  At issue here was plaintiff's motion to waive an order requiring notice of the suit by publication. The court held that the ACPA gave courts discretion to excuse publication under 15 U.S.C. § 1125(d)(A)(ii)(II)(bb) where a plaintiff accomplishes notice to the registrant by mail and e-mail.  Relying on the ACPA's "plain language," the court reasoned that the presence of the word "may" in the statutory language "publishing notice of the action as the court may direct promptly after filing the action" is "properly read to mean that the publication requirement is within a court's discretion, meaning that a court may or may not direct notice by publication, depending on the circumstances."  Even if the ACPA's language was ambiguous and the word "may" might be read to refer only to the particular means of publication, the court found that reading inconsistent with the ACPA's purpose.  Because the clear purpose of subparts (aa) and (bb) are to provide notice to the domain-name registrant that its property is at issue in the litigation, publication under (bb) would be "superfluous" where the registrant had already received copies of the relevant pleadings by regular mail and e-mail.