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Internet Trademark Case Summaries


378 F. Supp. 2d 715 (E.D. Va. 2005)

Plaintiffs filed and won a UDRP complaint against the domain name “”  As part of its UDRP complaint, plaintiffs stipulated to Korean courts as the jurisdiction for the registrant to challenge the UDRP decision and stay the transfer of the domain name to plaintiffs.  In January 2005, the registrant filed suit in Korea challenging the UDRP decision.  A few months later, plaintiffs filed this in-rem action for cybersquatting and infringement.  The domain name registrant moved to dismiss this action on two grounds.  First, the registrant argued the court lacked subject-matter jurisdiction because by proceeding under the UDRP plaintiffs submitted to the jurisdiction of Korea where the domain name is registered.  The court held, however, that plaintiffs did not waive their right to file this action, because arbitrating a UDRP dispute does not preclude filing a civil suit either before or after the UDRP proceeding.  Moreover, the plaintiffs are not limited to bringing a lawsuit in the jurisdiction to which they submitted for purposes of the UDRP proceeding.  Second, the registrant argued the court must abstain from exercising jurisdiction over the domain name because he filed suit in Korea challenging the UDRP decision before plaintiffs filed this action.  The court noted that abstention is warranted only in extremely rare circumstances, such as when another court has already exercised jurisdiction over the res at issue in another case.  In this case, however, the registrant filed an in-personam action in Korea, which did not exercise jurisdiction over the domain name.  Nor did the registrant suggest in his motion that the Korean court has taken any action to assert jurisdiction over the domain name, i.e., a quasi in-rem action.  Moreover, even if the registrant filed an in-rem or quasi-in-rem action, “neither the first-in-time rule nor deference rooted in principles of international comity” would require the court to abstain, because the Korean action had not “been initiated in any meaningful sense” as plaintiffs still had not been served, and this court had a “strong interest in protecting the important public policies effectuated by the federal trademark laws at issue in this action.”  Lastly, the court rejected the registrant’s argument that the in-rem provision of the Lanham Act does not also cover infringement or dilution claims, noting the Fourth Circuit’s decision in Harrods.