Owner of Petronas Twin Towers Files In Rem Cybersquatting Action Against PetronasTowers.Net

Petroliam Nasional Berhad (“Petronas”), the owner of the Petronas Twin Towers in Kuala Lumpur, Malaysia, filed an in rem cybersquatting lawsuit in the U.S. District Court for the Northern District of California against the domain name petronastowers.net. See Petroliam Nasional Berhad v. Petronastowers.net, Case No. 10-cv-03052 (N.D. Cal. July 12, 2010). Complaint here (via courthousenews.com).

The Petronas Twin Towers in Kuala Lumpur, Malaysia

(Wikimedia Commons)

Petronas is wholly-owned by the Government of Malayasia and was established to develop Malaysia’s petroleum resources. With all of the money it brought in as a successful worldwide oil and gas company, in 1996, Petronas built the Petronas Twin Towers, the tallest buildings in the world until 2004 when Taipei 101 was completed (and both of which have since been overshadowed by the Burj Khalifa in Dubai). The towers still hold the title of largest free standing towers in the world. (Of course, how many of you remember the Petronas Towers more for their featured prominence in the plot to the Sean Connery-Catherine Zeta Jones heist film Entrapment?)

Petronas promotes its business on the website www.petronas.com.my and also owns the mirror domain names www.petronas.com, www.petronas.org, and www.petronas.my. The official Petronas website promoting the Petronas Twin Towers is www.petronastwintowers.com.my. And Petronas also holds a trademark registration for the design mark PETRONAS in connection with, among other goods, chemicals and oil.

At issue in the complaint is the domain name www.petronastowers.net, which was registered in May 2003 (currently registered with GoDaddy) and, as a .NET domain name, the registry is with Verisign. WHOIS records reflect the owner of the domain name as an individual in London. The domain name currently hosts an adult website offering live adult videocam shows, adult photos, etc. -- a different type of “twin towers” for certain (but I can’t say that I saw anyone named Petronas).

Petronas requests the court issue an order to GoDaddy to transfer the domain name immediate to Petronas or alternatively, “forever cancelling the domain name” (an unusual alternative request for relief if it’s meant to be just to GoDaddy given that the order would be to a single registrar and would not impact any other registrars who, at the request of a registrant, might register petronastowers.net again – perhaps such an order would be better directed to the registry, Verisign. Anybody out there ever obtain such an order?).

UFC files In Rem Cybersquatting Action Against theultimatefighter.com

Las Vegas-based Zuffa LLC (“Zuffa”), the company which owns the marks THE ULTIMATE FIGHTING CHAMPIONSHIP and UFC in connection with mixed-martial arts competitions, filed an in rem lawsuit in the U.S. District Court for District of Nevada against the domain name theultimatefighter.com. See Zuffa, LLC v. theultimatefighter.com, Case No. 10-cv-00582 (D. Nev. File April 21, 2010). A copy of the complaint can be downloaded here (HT: Steve Green).

In addition to its more widely known UFC and ULTIMATE FIGHTING CHAMPIONSHIP marks, Zuffa has also registered the mark THE ULTIMATE FIGHTER in connection with the following goods/services (the applications of which were all filed June 2004 on the basis of intent to use):

• laser video discs, digital video discs, digital versatile discs and CD-ROM discs, all featuring sports events and mixed martial arts (link here) – claimed date of first use November 2005;
• tee-shirts; team uniform reproductions, namely jerseys featuring reproductions of professional athletic team logos; hats; caps; and for entertainment in the nature of an on-going television program in the field of sports and mixed martial arts (link here) – claimed date of first use January 2005; and
• tank tops; shorts, headwear; workout and sports apparel, namely shorts and shirts (link here) – claimed date of first use January 2005.

According to the complaint, Zuffa (and its predecessors-in-interest) began using THE ULTIMATE FIGHTER in 2003 in connection with a reality show named “The Ultimate Fighter” - although the complaint later acknowledges that the show has been broadcast on the Spike television network since as early as 2005. There is also a vague mention of some common law rights resulting from use of the name in connection with a Las Vegas gym where the reality show was filmed.

Of course, the date when the mark became distinctive is relevant because it is only cybersquatting if the domain name was confusingly similar to a mark that was distinctive on the date of registration. The domain name in dispute was purportedly registered by Anton Resnick with the registrar eNom on January 22, 2004 (long before Zuffa’s aforementioned trademark applications). The domain name http://www.theultimatefighter.com/ currently is redirected to a Yahoo page dedicated to mixed martial arts.

Zuffa argues that Resnick’s registration of the domain name http://www.theultimatefighter.com/ was a bad faith intent to profit from Zuffa’s trademark rights in THE ULTIMATE FIGHTER (i.e., cybersquatting). It is puzzling, however, why Zuffa waited over six years to go after Resnick for this so-called bad faith cybersquatting for a domain name registered six months before Zuffa had even filed the aforementioned intent-to-use trademark applications. Also interesting is that Zuffa owns the domain name http://www.ultimatefighter.com/, but WHOIS records suggest it was created only recently in January 2010. [DotWeekly ran an article in late March about the domain name acquisition by Zuffa from Marchex -- a company known for buying and selling domain names].

As for why Zuffa chose to bring this in rem action in a jurisdiction where neither the domain name registrant, the domain name registrar, or the domain name registry is located, the following is the jurisdictional statement:

This Court has in rem jurisdiction over pursuant to 15 U.S.C. § 1125(d) and 28 U.S.C. § 1655 and interpretive case law. Upon information and belief, this Court cannot exercise personal jurisdiction over the registrant of, as the registrant is located outside of the State of Nevada and/or website is not interactive. As a separate and independent basis for in rem jurisdiction, upon service of this Complaint upon the registrar of , the registrar will deposit domain name into the registry of the Court. In addition, the situs of domain name is, or will be, in this judicial district where the owner of the trademark contained in domain name is located.

Of course, see my previous blog post here regarding another in rem cybersquatting lawsuit filed in the District of Nevada (by the same law firm) citing the same jurisdictional argument as a basis for in rem jurisdiction. In that particular case, the plaintiff brought a Motion for Temporary Restraining Order, which was not only denied by the court, but which prompted the court sua sponte to dismiss the entire in rem action outright the very next day due to lack of jurisdiction under 15 U.S.C. § 1125(d)(2)(A). A copy of the court’s order in that case, which details the relevant "interpretive case law" quite nicely, can be found here.

Nonetheless, by searching the domain names at issue in that case, it appears that just filing the complaint was enough to get the domains at issue transferred. And more than likely, that is the strategy being pursued here by Zuffa.

Ninth Circuit Clarifies How Domain Names Can Be Attached By Creditors

Last week, the Ninth Circuit Court of Appeal clarified last week that creditors seeking to attach writ of executions against domain names in order to satisfy outstanding judgments can do so by levying the domain names through a court appointed receiver in a jurisdiction where either the domain name registrar or registry is located. See Office Depot, Inc. v. Zuccarini, No. 07-16788 (9th Cir. Feb. 26, 2010). Seattle Trademark Lawyer and Technology & Marketing Law Blog both have detailed posts on the court’s decision.

Basically, the Ninth Circuit upheld its prior decision in Kremen v. Cohen, 337 F.3d 1024, 1030 (9th Cir. 2003) that domain names are intangible property which can subject to a writ of execution. One important nuance highlighed by the court's decision is that while domain names cannot be subject to a turnover order under California law because they cannot be taken into custody, a domain name can be transferred to an appointed receiver who can then sell the domain name in order to satisfy a judgment.

Moreover, based on the sections of the Anticybersquatting Consumer Protection Act that allow for in rem actions to be filed against domain names in either the jurisdiction of the registrar or the registry, the court further concluded that under California law domain names are located where the registry is located for the purpose of asserting quasi in rem jurisdiction (so-called “attachment jurisdiction” because the jurisdiction establishes ownership of property in a dispute unrelated to the property – in thiscase, the original lawsuit brought by Office Depot for cybersquatting against Zuccarini involved a single domain name and resulted in a judgment that Office Depot then sought to satisfy by going after other domain names owned by Zuccarini).

Andre Agassi and Steffi Graf Play Doubles Match Against Cybersquatters

Andre Agassi & Steffi Graf

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).

Id. at 305-306 (emphasis added).

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?