Internet Trademark Case Summaries
Hi-Rise Technology, Inc. v. Amatuerindex.com
2007 WL 1847249 (W.D. Wash. June 27, 2007)
Plaintiff owned the federally registered trademark THE AMATEUR INDEX for use in "promoting the goods and services of others by providing a website at which Internet users link to other adult entertainment websites." An Australian company named Jasper Developments registered the domain name "amatuerindex.com" in 2003 through a domain name registrar in Washington state. Plaintiff filed an in rem action against the domain name under the ACPA seeking transfer of the domain name and temporary, preliminary, and permanent injunctions. Specifically, plaintiff requested that the TRO be automatically converted into a temporary injunction right before the TRO expired and the temporary injunction be automatically converted into an order of domain forfeiture after 30 days. The court first denied plaintiff's request for this injunctive relief and forfeiture as having no statutory or case-law basis. Moreover, plaintiff did not even mention, let alone analyze, the standards for granting a TRO or preliminary injunction. Turning to whether in rem jurisdiction was proper, the court held that plaintiff failed to satisfy the threshold requirement that personal jurisdiction over Jasper was not possible. Although Jasper was located in Australia, plaintiff failed to explain how Jasper's website was not sufficient to establish personal jurisdiction. In addition, plaintiff failed to provide Jasper with adequate notice as specified under the ACPA, namely, that a plaintiff was required to both send a notice to the postal and e-mail addresses provided by the registrant, and to publish notice of the action as directed by the court. Here, plaintiff only sent an unauthenticated email sent to Jasper's email address provided to the registrar. Even if plaintiff could authenticate the e-mail, the ACPA required plaintiff to also send a notice to Jasper's postal address. Although the court noted that there was "a split of authority" as to whether publication was discretionary under ACPA, the court held that "publication of notice should be made in this case in order to provide an additional means of ensuring that registrant of the domain name has fair notice of this action." The court thus ordered plaintiff to publish notice of the action in Melbourne, Australia within 14 days.