Registry ordered to transfer '' after registrar refused

In America Online Inc v '' (2003 WL 1957442 (ED Va)), the US District Court for the Eastern District of Virginia has ordered the '.org' registry, Public Interest Registry, to transfer the domain name '' to America Online (AOL) after a foreign registrar refused to comply with an earlier court order. At issue was whether federal courts in Anti-cybersquatting Consumer Protection Act (ACPA) in rem cases may order a registry (as opposed to a registrar) to transfer a domain name from the infringing registrant to the trademark holder.

Previously, the court had entered a judgment ordering the registrar, OnlineNIC of China, to transfer '' to AOL. Instead, OnlineNIC transferred the domain name to another registrar, Inc, in South Korea. The court held that ordering the '.org' registry to transfer the domain name was an appropriate remedy because the registrar had not complied with the previous transfer order.

AOL's action met the ACPA's jurisdictional requirements for in rem actions because Public Interest Registry is located in Virginia and AOL was unable to assert personal jurisdiction over the registrant, Will E.

In directing Public Interest Registry to unilaterally transfer the domain name, the court was not deterred by potential contract issues. Even assuming that the transfer would require Public Interest Registry to breach its contractual agreement with OnlineNIC, the court found that:

  • "such private agreements cannot serve to limit the trademark rights and remedies granted [...] by federal law";

  • a transfer of the domain name would not be an extraterritorial application of the Lanham Act; and

  • the decision was not unfair to foreign registrants or inconsistent with international comity because there was no foreign court order or lawsuit to consider.

Ron N Dreben, Morgan Lewis & Bockius LLP, Washington DC

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