Looks like Andre Agassi and Steffi Graf have finally decided to go after their .COM domain names nearly 8 years after the names were registered by other parties. And as long as they are taking legal action, why not go after the registrants of their names with the .NET and. INFO domain name registries.
On May 12, 2009, both Agassi and Graf filed similar cybersquatting lawsuits in the U.S. District Court for the District of Nevada. See Agassi Enterprises, Inc. v. andre-agassi.com et al, Case No. 09-cv-00849 (D. Nev.) and SGF License, LLC v. steffigraf.com et al, Case No. 09-cv-00850 (D. Nev. Filed). A copy of the Andre Agassi complaint can be downloaded here.
Agassi Enterprises, Inc. (“AEI”), which owns the right to use Andre Agassi’s names and related intellectual property pursuant to an employment agreement it has with Andrew Agassi since 1994, sued three domain names containing the name Andre Agassi (andreagassi.com, andreagassi.net and andre-agassi.info). [Note: While the case caption indicates the names at issue are andre-agassi; the text of the complaint indicates that the .COM and .NET domain names at issue are without a dash]. Similarly, SGF License, LLC, Graf’s intellectual property licensing company, sued three domain names containing the name Steffi Graf (steffigraf.com, steffigraf.net and steffigraf.info).
In the Agassi case, the andreagassi.com domain name was registered with Tucows, Inc. by Standard Bearer Enterprises Limited, a company in St. Johns, Antigua, on October 4, 2001; the andreagassi.net domain name was registered with GoDaddy.com, Inc. by Garvin Advertising Agency, a company in Panama City, Florida, on February 22, 2009; and the andre-agassi.info domain name was registered with GoDaddy.com, Inc. by DomainsByProxy, a private domain registration service company in Scottsdale, Arizona, on June 3, 2007.
In the Graf case, the steffigraf.com domain name was registered by a company named Marketing Express on June 1, 2001; the steffigraf.net domain name was registered by Domain Admin on March 9, 2009; and the steffigraf.info was registered by Alexander Shadikhan on March 31, 2009.
Interestingly, the Las Vegas power couple, rather than filing separate actions against each of the registrants, opted instead to file “in rem” actions against the domain names themselves.
Under 15 U.S.C. § 1125(d)(2)(A), the owner of a registered trademark or mark that is protected under 15 U.S.C. § 1125(a) or 1125(c) may file an in rem civil action against a domain name in the judicial district in which the domain name registrar, domain name registry, or other domain name authority that registered or assigned the domain name is located if the court finds that the owner is not able to obtain personal jurisdiction over the domain name registrant or the owner was not able to find the domain name registrant after sending a notice to the registrant’s postal and e-mail address that the registrant provided to the domain name registrar. For purposes of this type of in rem action, the situs of the domain name is considered to be the judicial district in which the domain name registrar, registry, or other domain name authority that registered or assigned the domain name is located or alternatively the court in which the registrar of the domain name deposits a registrar certificate giving the court control and authority regarding the disposition of the registration and use of the domain name. See 15 U.S.C. § 1125(d)(2)(C).
In the Agassi case, AEI would certainly not be able to obtain personal jurisdiction over a company in Antigua, so it makes sense to file an in rem action against andreagassi.com. However, there is no indication that AEI could not obtain personal jurisdiction over the registrants in Florida and Arizona by filing lawsuits in those states. And yet those domain names were included in this Nevada action. AEI even recognizes that the domain names are not interactive, and therefore, there is no personal jurisdiction over these domain names in Nevada.
Based on the complaint’s jurisdictional statement, AEI is apparently hoping that once it serves the complaint on the domain name registrars, that the registrars will willingly sign Registrar Certificates, which AEI can then deposit with Nevada district court, giving the court control over the domain names (thereby placing the situs of those domains in Nevada). In other words, if AEI can get the situs of the domain names moved to Nevada, then the court will have personal jurisdiction over them.
Of course, not all domain name registrars are so willing to sign over a registrar certificate unless the case is filed in rem in the judicial district in which the domain name registrar or domain name registry is located (none of the registrars of the Agassi domain names are located in Nevada and the .COM registry and .NET registry, both with Verisign, are in Virginia and the .INFO registry, Affilias, is in Ireland).
Moreover, at least one court of appeals has held that §1125(d)(2)(C) does not confer an independent basis of jurisdiction. See Mattel, Inc. v. Barbie-Club.com, 310 F.3d 293 (2nd Cir. 2002):
No scenario consistent with this statutory scheme, however, would permit an ACPA plaintiff to establish in rem jurisdiction by filing a complaint in a judicial district not contemplated by subsection (d)(2)(A) and then unilaterally seeking to effect a transfer of legal situs to that district. . . . [T]he ACPA's basic in rem jurisdictional grant, contained in subsection (d)(2)(A), contemplates exclusively a judicial district within which the registrar or other domain-name authority is located. A plaintiff must initiate an in rem action by filing a complaint in that judicial district and no other. Upon receiving proper written notification that the complaint has been filed, the domain-name authority must deposit with the court documentation "sufficient to establish the court's control and authority regarding the disposition of . . . the domain name," as required by subsection (d)(2)(D). This combination of filing and depositing rules encompasses the basic, mandatory procedure for bringing and maintaining an in rem action under the ACPA. Subsection (d)(2)(C) contributes to this scheme by descriptively summarizing the domain name's legal situs as established and defined in the procedures set forth in subsections (d)(2)(A) and (d)(2)(D).
In other words, just because a registrar certificate gets filed in a court does not mean that the court has jurisdiction to hear the case.
So while I think it's a very valid question to ask why the jurisdiction of Nevada was chosen for this "in rem" cybersquatting action based on the above, the real question in my mind is what took them so long to go after the .COM cybersquatters in the first place?