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December 11, 2010
Court Unlocks Allegedly Infringing Domain Name Based on Ineffectual Email Service -- Station Casinos, Inc. v. Murphy
[Post by Venkat]
Station Casinos, Inc. v. Murphy, 2:10-cv-01770-GMN-LRL (D.Nev.; Nov. 18, 2010) [pdf]
Plaintiff, who operates a family of Station-branded casino hotels and owns the "STATION CASINOS" mark, brought suit against Ryan Murphy, alleging that a website accessible via [stationcasinos.org] which was operated by Murphy infringed on plaintiff's trademark rights. The court granted an ex parte TRO which was fairly broad in scope. The order:
direct[ed] the current registrar to disable or change the domain name server (DNS) information for the allegedly infringing domain name and place the domain name on hold and lock for the pendency of the litigation.
Plaintiff also "requested that the current domain name registry place the Infringing Domain Name on Registry Hold status, thus removing Defendant from the TLD zone files maintained by the registry, which link the Infringing Domain Name to the IP address where the associated website is hosted." The court grants this request on an ex parte basis and allows plaintiff to serve defendant via email. However, the email sent by plaintiff's counsel bounced (was undeliverable) and as a result the court dissolves the TRO. [Added: Laura Wise pointed out that if the attempts at email service occurred after the TRO had been implemented (and the domain name disabled), it should come as no surprise that the emails bounced.]
Unfortunately for plaintiff, the defendant is located abroad, and this raises the possibility that the defendant transfers the domain name to a non-US registrar, which would complicate plaintiff's enforcement efforts.
The result in this case can be contrasted with the recent "seizure" of various allegedly infringing domain names by ICE. (I uploaded one of the warrants and seizure orders to Scribd: US v. Domain Names (LV-OUTLETSTORE.COM; LV-OUTLETS.COM; LV-OUTLETS.NET), 10-mc-00085 (D. Col.; Nov. 19, 2010) (Application for Warrant); (Warrant of Seizure).) From what I can tell, in those seizure actions, the courts issued an order (also ex parte) requiring a change in the DNS information which meant that people trying to access the domain names would now be directed to the following message:
[This] domain name [has] been seized by ICE - Homeland Security Investigations, pursuant to a seizure warrant issued by a United States Court.
For a good description of how this process worked, check out this post at Liberale et libertaire: "The Background Dope on DHS Recent Seizure of Domains." For a rundown of some Due Process issues that the ICE domain name seizures raise, check out this post by David Post: "Copyright Enforcement Tail Wags Internet Dog, Cont’d; or, What the Hell Ever Happened to Due Process?" (See also posts at Techdirt: "Who Needs COICA When Homeland Security Gets To Seize Domain Names?" and SearchEngineWatch: "Homeland Security Seized Torrent Domain That Gave Same Results Google Still Does.")
This also brings to mind whether improperly having a domain name locked can result in civil liability, and Eric posted about a case a couple of weeks ago that is relevant in this regard. In that case Tucows locked a slew of domain names in response to a demand by a trademark-plaintiff. This resulted in a rare ruling allowing a reverse domain name hijacking claim (against the plaintiff/trademark owner) to go forward. (Here's Eric's post on that case: "Wildcarding Subdomains Is OK; Reverse Domain Name Hijacking Isn't--Goforit v. Digimedia.")
This is a good a time as any to mention a few other domain name enforcement cases that are lurking around (some are a few months old, but still worthy of a mention):
Microsoft Corp. v. John Does 1-27, 10-cv-00156-LMB-JFA (E.D. Va.; Sept. 17, 2010) (R&R re default judgment); (Order adopting R&R): Microsoft obtains default judgment against unnamed defendants who allegedly used various domain names in connection with the Waledac botnet. Interestingly, the court awards Microsoft control over the domains. The case documents do not appear to have been physically served on defendants, but the court lets Microsoft slide, given (1) the extensive efforts at serving the case documents undertaken by Microsoft, and (2) the fact that Microsoft uploaded the pleadings to a website called [noticeofpleadings.com], coupled with evidence that someone who shared IP addresses with the offending domains accessed this site.
Chanel, Inc. v. Xuhui, et al., 10-cv-2040 (W.D. Tenn.; Nov. 4, 2010): Chanel obtains default judgment against an alleged seller of counterfeit items, after getting permission to serve via alternate means (email). Interestingly, the court orders a long list of domain names transferred to Chanel. The legal authority for a transfer is questionable (see "Domain Names as Property Subject to Creditor Claims--Bosh v. Zavala") but no one was around to raise this issue.
Xcentric Ventures, LLC v. Elizabeth Arden (Complaintsboard.com), No. C 10-80058 SI (N.D. Cal.; Oct. 1, 2010): Rip-off Report (which has garnered more than a few mentions on the blog) obtains a default judgment for copyright and trademark infringement against complaintsboard.com. It gets control over the complaintsboard domain name the old fashioned way - it takes the judgment to the Northern District of California where it obtains a writ of execution. Arden contested jurisdiction when Rip-off Report moved to enforce the judgment but the court rejected Arden's arguments. It's unclear as to whether the court orders the domain name transferred to Rip-off Report or whether Rip-off Report has to buy the name at an auction or from a receiver.
Righthaven v. Drudge: This just-filed complaint by Righthaven against Drudge hasn't produced any rulings, but it gets an honorable mention because Righthaven asks the judge to "lock the Drudge Report Domain and transfer control of the Drudge Report Domain to Righthaven." (See ArsTechnica.) It's safe to say that Righthaven's chances of getting Drudge's domain name range between slim and none.
Posted by Venkat at December 11, 2010 01:36 PM | Domain Names