ACPA in rem provision upheld in Harrods Case

The US Court of Appeals for the Fourth Circuit has determined in the case of Harrods Limited v Sixty Internet Domain Names that the in rem provision of the Anticybersquatting Consumer Protection Act (ACPA) applies not only to claims of bad-faith registration of domain names, but also to trademark infringement and dilution claims.

Harrods (Buenos Aires) Limited (Harrods BA) had registered HARRODS as a trademark in several South American countries and registered approximately 300 domain names that incorporated the 'Harrods' name in some way. Harrods Limited (Harrods UK) brought a claim related to 60 of these names in the US District Court for the Eastern District of Virginia under the in rem provision of the ACPA. The district court granted summary judgment to Harrods BA in respect of six of the domain names, but found bad-faith intent to profit with regard to the remaining 54 names and transferred them to Harrods UK (see Harrods Case confirms burden of proof in cybersquatting disputes). The district court also ruled that claims for trademark infringement and dilution could not be brought in rem.

On appeal, the US Court of Appeals for the Fourth Circuit affirmed the district court's finding of bad faith with regard to the 54 domain names, but reversed and remanded the summary judgment in respect of the six other names. Most importantly, the court reversed the dismissal of the infringement and dilution claims. The court analyzed the statutory language of the ACPA, finding that an in rem action may be filed against a domain name if the name (i) violates any right of a registered trademark owner, including the right to be protected against infringement or dilution, and (ii) the owner is unable to locate or obtain personal jurisdiction over the registrant.

Harrods is the first federal circuit court decision to make a conclusive determination of the issue, and to hold that the in rem provision encompasses infringement and dilution as grounds for relief.

James L Bikoff and Patrick L Jones, Silverberg Goldman & Bikoff Washington DC and Steven Patrick Shaw, Georgetown University Law Centre, Washington DC