Internet Trademark Case Summaries
Graham & Buffet, Ltd. v. www.vilcabamba.com
2006 WL 851253 (W.D. Wash. Mar 30, 2006)
Plaintiff, a Texas-based business, owned the mark VILCABAMBA and filed an in rem action under the ACPA to obtain ownership of the domain name “vilcabamba.com.” Plaintiff filed suit in Washington state according to the location of the domain registrar. The owner of the domain name, James Lawson, resided in Texas and appeared in the case by filing an answer to the complaint. After ordering the parties to brief the issue of whether plaintiff had met the requirements for in rem jurisdiction, the court held that in rem jurisdiction was inappropriate because the ACPA expressly limited its use to when a plaintiff cannot obtain personal jurisdiction over a party or when a plaintiff cannot, after due diligence, find the appropriate defendant. Here, plaintiff “found” Lawson and plaintiff could not show its inability to obtain personal jurisdiction over Lawson in any jurisdiction in the United States. For example, plaintiff could obtain personal jurisdiction in Texas where Lawson resided. The court found it unnecessary to rule on whether Lawson submitted to personal jurisdiction by filing an answer to plaintiff’s complaint or by appearing in court; it held only that plaintiff could have gained personal jurisdiction over Lawson somewhere in the United States. Plaintiff argued that the need for in rem jurisdiction need not continue throughout the litigation, citing Porsche Cars North American, Inc. v. Porsche.net, where the court sought to prevent an interested party from “yanking [a case] across the country a few days before trial.” The court agreed but distinguished Porsche. First, while the defendant in Porsche had no contacts with the United States, Lawson lived and worked in Texas. Second, the Porsche defendant only submitted to personal jurisdiction three days before trial, whereas this case is in its early stages. Third, no evidence suggested that the owner intended to consent to personal jurisdiction as a tactic to defeat jurisdiction as did the domain name owner in Porsche. Lastly, the court in Porsche chose not to upset its prior decision upholding in rem jurisdiction whereas the court here was determining the issue for the first time. The court thus dismissed plaintiff’s in rem cause of action and granted plaintiff leave to amend its complaint to assert personal jurisdiction over defendant. Finally, the court granted plaintiff's motion for a transfer of venue to the Western District of Texas, because that venue was more convenient to both parties.