Internet Trademark Case Summaries
Standing Stone Media, Inc. v. Indiancountrytoday.com
193 F. Supp. 2d 528 (N.D.N.Y. 2002)
Plaintiff is a media corporation based in upstate New York that publishes the Native American newspaper “Indian Country Today.” Miles Morrisseau, the former editor-in-chief of ICT, registered the domain names “indiancountrytoday.com/.net/.org” with a domain-name registrar in New York City one week after he was discharged by plaintiff. Because Mr. Morrisseau was residing in Canada at the time the complaint was filed, plaintiff filed this in rem action under the ACPA. Plaintiff then deposited with the court a “Register Certificate” completed by registrar to support its claims of in rem jurisdiction. The court noted that the domain registrar for the domain names at issue was located in a different judicial district, i.e., the Southern District of New York, and ordered plaintiff to file a brief addressing the availability of in rem jurisdiction in the Northern District of New York. Plaintiff argued that it had complied with requirements for alternative jurisdiction in subsection (d)(2)(D)(i) of the ACPA by depositing certificates of registration for the domain names with the Northern District. The court rejected plaintiff’s argument, however, citing to the decisions of other courts in Fleetboston and Mattel, which held that the ACPA does not provide in rem jurisdiction except in the judicial district in which the domain-name registrar or registry is located. The court also rejected plaintiff’s argument that in rem jurisdiction was proper because the case was filed in the same state as the domain registrar, because the ACPA specifically provides for in rem jurisdiction only in the “judicial district” where the registrar or registry is located. To hold otherwise would put states with only one judicial district at a disadvantage. The court thus transferred the case to the Southern District of New York “in the interest of justice” pursuant to 28 U.S.C. § 1406(a).