Lucent Technologies, Inc. v. Lucentsucks. Com
2000 U.S. Dist. LEXIS 6159, 54 U.S.P.Q. 2d (BNA) 1653, 95 F. Supp. 2d 528 (2000)
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Rule of Law:
To satisfy the 'due diligence' requirement for an in rem action under the Anticybersquatting Consumer Protection Act (ACPA), a plaintiff must provide the domain name registrant with a reasonable time to respond to the notice of intent to sue before filing the action; an eight-day waiting period is insufficient.
Facts:
- Lucent Technologies, Inc. (Lucent) has manufactured and sold telecommunications equipment under its registered 'LUCENT' trademark since 1996.
- On August 2, 1998, Russell Johnson registered the domain name lucentsucks.com through Network Solutions, Inc. (NSI).
- The website at the lucentsucks.com domain name contained pornographic photographs and services for sale.
- On November 11, 1999, Lucent's counsel sent a cease-and-desist letter via Federal Express to the address Johnson had provided to NSI, but the letter was returned as undeliverable.
- On December 8, 1999, Lucent sent a second letter via first-class mail and e-mail, notifying Johnson of its intent to file an in rem action against the domain name.
- Although the e-mail was returned as undeliverable, the first-class letter was successfully delivered because Johnson had left a forwarding address with the United States Postal Service.
- On December 21, 1999, thirteen days after the second letter was sent, Johnson contacted Lucent's counsel and subsequently provided his new address.
Procedural Posture:
- Plaintiff Lucent Technologies, Inc. filed an in rem civil action against the domain name lucentsucks.com in the United States District Court for the Eastern District of Virginia.
- Defendant lucentsucks.com filed a Motion to Dismiss the Complaint, arguing that Lucent failed to satisfy the jurisdictional requirements of the Anticybersquatting Consumer Protection Act.
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Issue:
Does filing an in rem action under the Anticybersquatting Consumer Protection Act (ACPA) only eight days after mailing a notice of intent to the domain name registrant satisfy the statutory 'due diligence' requirement and constitutional due process principles?
Opinions:
Majority - Brinkema, J.
No. Filing an in rem action only eight days after sending notice does not satisfy the Anticybersquatting Consumer Protection Act's (ACPA) due diligence requirement or comport with constitutional due process. The ACPA permits an in rem action only when a plaintiff, through 'due diligence,' is unable to find the domain name registrant. The court found that constitutional due process, as established in Mullane v. Central Hanover Bank & Trust Co., requires that notice must not only be reasonably calculated to reach the interested party but must also afford a 'reasonable time' for that party to respond. An eight-day waiting period, especially when mail may be forwarded, is not a reasonable time and therefore does not constitute due diligence. The court reasoned that Congress intended the in rem provision to be a last resort for unidentifiable or foreign registrants, not a procedural shortcut for plaintiffs who have a means of contacting the registrant. Thus, because Lucent filed its action too hastily, it failed to meet the jurisdictional prerequisites for an in rem proceeding under the ACPA.
Analysis:
This decision clarifies that the 'due diligence' requirement under the ACPA's in rem provision is not a mere procedural formality but a substantive obligation grounded in constitutional due process. By invalidating an eight-day waiting period as insufficient, the court established a floor for what constitutes a 'reasonable time' for notice, thereby protecting domain registrants from hasty forfeiture proceedings. This ruling reinforces Congress's preference for traditional in personam jurisdiction and forces trademark holders to make more than a token effort to locate and notify registrants before resorting to suing the domain name itself. The decision thus adds a significant procedural safeguard for defendants in cybersquatting cases, ensuring they have a meaningful opportunity to respond before an in rem action can proceed.
