Jack in the Box Inc. v. 
jackinthebox.org and jackinthebox.net

DOMAIN NAME REGISTRATION ALONE IS ENOUGH TO INVOKE IN REM PROVISION OF ANTICYBERSQUATTING CONSUMER PROTECTION ACT

On May 21, 2000, a federal judge in Alexandria, Virginia, has ruled that the act of registering an Internet domain name is, by itself, sufficient to invoke the in rem provision of the Anticybersquatting Consumer Protection Act ("ACPA"). The judge ordered the transfer of the jackinthebox.net and jackinthebox.org domain names to Jack in the Box Inc. Jack in the Box Inc. v. jackinthebox.org et al., No. 00-913-A (E.D. Va., May 21, 2001).

Two separate individuals had registered the domain names jackinthebox.net and jackinthebox.org, but they never posted any Web sites at those addresses or used the domain names for any other purposes. Jack in the Box, Inc. filed a lawsuit under the in rem provision of the ACPA, 15 U.S.C. § 1125(d)(2), which allows trademark owners to sue infringing domain names themselves, rather than the persons or entitites who registered them.

Congress included this unique provision into the ACPA because it felt that "cybersquatters" are often difficult to track down and serve with process. Moreover, cybersquatters are sometimes physically located outside the jurisdiction of U.S. courts and cannot be sued directly. Therefore, the in rem provision allows trademark owners to take over disputed domain names, but does not provide for injunctive relief or monetary damages.

Nobody showed up to represent the "defendant domain names," and Jack in the Box filed a motion for a default judgment transferring ownership of jackinthebox.org and jackinthebox.net.

The issue in the case was whether a plaintiff can file an in rem suit against domain names that have been registered, but not actually used. A magistrate judge ruled that domain name registration of a domain name, without more, does not violate a trademark owner's rights or otherwise violate federal trademark law. These are both requirements for an in rem lawsuit. However, the judge stated that the section of the ACPA which governs in personam suits (that is, suits against the person or entity who actually registered the domain names) states that it applies to anyone who "registers" an Internet domain name, and he therefore held that the word "registers" could be imported into the in rem provision.

sm Chief District Judge Claude M. Hilton upheld the magistrate's decision, but on different grounds: "A domain name registrant need not actually develop a working Web site for the illegal use of the mark to constitute commercial use," the judge said. "The act of registering a domain name is a commercial act because it involves a sale between the registrant and the registrar. The infringing domain name is used in this commercial act because it itself becomes the good or service that is sold. It this meets the definition of 'use in commerce' under [the Lanham Act]. Because the act of registering the domain names in question violated Plaintiff's rights to its mark, Plaintiff is entitled to relief under . . . the in rem provision of the Anticybersquatting Consumer Protection Act."