GlobalSantaFe Corp. v. Globalsantafe. Com
2003 U.S. Dist. LEXIS 1758, 250 F. Supp. 2d 610, 74 U.S.P.Q. 2d (BNA) 1737 (2003)
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Rule of Law:
Under the Anticybersquatting Consumer Protection Act (ACPA), a U.S. court may order a U.S.-based domain name registry to cancel or disable an infringing domain name when a foreign registrar, acting under a foreign court's injunction, refuses to comply with the U.S. court's transfer order.
Facts:
- Global Marine Inc. and Santa Fe International Corporation were both major companies in the contract drilling industry, with established trademark rights in their respective names.
- On September 3, 2001, the two companies publicly announced their agreement to merge into a new entity called GlobalSantaFe Corporation.
- Less than twenty-four hours after the announcement, Jongsun Park, a Korean individual, registered the domain name
with Hangang Systems, Inc., a registrar based in Korea. - The domain name was subsequently transferred to Fanmore Corporation, a Korean entity, with Jong Ha Park listed as the contact.
- The website associated with the domain name was a passive placeholder site marked as 'under construction.'
- The merger of the two companies into GlobalSantaFe Corporation became effective on November 20, 2001.
- VeriSign Global Registry Services, the registry for all '.com' domain names, is located in Dulles, Virginia, within the court's judicial district.
Procedural Posture:
- GlobalSantaFe Corporation filed an in rem action in the U.S. District Court for the Eastern District of Virginia against the domain name
. - The registrant failed to appear, and the court entered a default judgment in favor of GlobalSantaFe.
- The registrar, Hangang, deposited the registrar certificate for the domain name with the court, tendering control over the registration.
- The District Court initially ordered VeriSign, the registry, to transfer the domain name.
- The court entered an Amended Judgment Order directing both Hangang (the registrar) and VeriSign to transfer the domain name to GlobalSantaFe.
- The domain name registrant, Jong Ha Park, filed for and was granted an injunction by the District Court of Seoul, Korea, prohibiting Hangang from transferring the domain name.
- GlobalSantaFe then filed a motion with the U.S. District Court for a second amended judgment, requesting an order directing VeriSign to cancel the domain name.
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Issue:
Under the Anticybersquatting Consumer Protection Act (ACPA), may a U.S. court order a U.S.-based domain name registry to cancel an infringing domain name when the foreign registrant has obtained an injunction from a foreign court barring the foreign registrar from transferring the name?
Opinions:
Majority - Ellis, District Judge
Yes. A U.S. court has the authority under the ACPA to order a U.S.-based domain name registry to cancel or disable an infringing domain name to enforce a judgment, particularly when a foreign registrar refuses to comply with a transfer order due to a conflicting foreign court injunction. The court's reasoning is grounded in several principles. First, the ACPA explicitly authorizes forfeiture, cancellation, or transfer of a domain name as remedies in an in rem action. Second, in rem jurisdiction is proper because the situs of the domain name as intangible property is the registry (VeriSign) located within the district, which has physical control over the central database needed to effect a cancellation. Third, principles of international comity do not require deference to the Korean court's order because the U.S. court was the first to assert jurisdiction over the property, applying the 'first-in-time' rule from Princess Lida. Ceding jurisdiction would frustrate the significant public policy of the United States embodied in the ACPA and would allow litigants to evade U.S. judgments by filing subsequent blocking actions abroad. Finally, private contractual agreements between the registry and registrars cannot limit or override the remedies provided by federal statute.
Analysis:
This decision solidifies the enforcement power of U.S. courts under the ACPA against foreign cybersquatters, particularly when the domain name uses a top-level domain (.com, .net, etc.) managed by a U.S.-based registry. It establishes the registry as a critical chokepoint for enforcement, allowing courts to bypass uncooperative foreign registrars. The ruling affirms that the physical location of the registry's database is the situs of the domain name for jurisdictional purposes in in rem actions, strengthening the reach of U.S. trademark law in cyberspace. This precedent makes it significantly more difficult for foreign actors to shield infringing domain names from U.S. legal remedies simply by using a foreign registrar and obtaining a local injunction.
