Order based on Anti-cybersquatting Act trumps later injunction

In GlobalSantaFe Corp v Globalsantafe.com, the District Court for the Eastern District of Virginia has ruled that, in certain circumstances, it has in rem jurisdiction to order the transfer and/or cancellation of a domain name registered in violation of the Anti-cybersquatting Consumer Protection Act (ACPA) by a registrant based outside of the United States, even if the registrant later obtains an injunction from its home court prohibiting such transfer or cancellation.

A day after the creation of US company GlobalSantaFe (GSF) was announced to the public, Jongsun Park registered the domain name 'globalsantafe.com' with the South Korean registrar Hangang. The domain name was later transferred to South Korean company Fanmore Corporation with Jong Ha Park listed as the main contact. GSF claimed that the registration infringed its trademark rights in violation of the ACPA and brought an in rem action against the domain name before the district court. At the proceedings, VeriSign, the US-based '.com' registry that maintains all official worldwide records of '.com' domain name registrations, tendered the court complete control over the 'globalsantafe.com' registration. Using this control, the court directed both Hangang and VeriSign to "take all appropriate steps to transfer the domain name to GSF".

Several months later, Park applied to the District Court of Seoul in South Korea for an injunction prohibiting Hangang from transferring the domain name. GSF then filed another motion with the US district court requesting (i) the immediate transfer of 'globalsantafe.com' either by Hangang or VeriSign, and (ii) that, in the meantime, VeriSign cancel the disputed domain name.

The district court ordered the transfer and temporary cancellation (or suspension) of the disputed domain name. It noted that GSF had fulfilled all the jurisdictional requirements for an in rem action under the ACPA and also held, among other things, that:

  • GSF was entitled to relief because Park infringed GSF's trademark rights by registering the domain name after, and in response to, GSF's use of its mark;

  • the requested transfer and temporary cancellation were the correct remedies pursuant to the ACPA since a central registry, such as VeriSign, can delete an infringing registration without the cooperation of the pertinent registrar (in this case Hangang); and

  • it was not obliged to cede jurisdiction over the domain name to the South Korean court because Park's injunction application was filed after GSF's initial in rem action in the United States and there were no conflicting issues of comity.

Howard J Shire and Domingo A Alonso, Kenyon & Kenyon, New York

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