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The long arm of the law reaches all the way into the Wild West of cyberspace. In September the U.S. Court of Appeals for the Fourth Circuit expanded the parameters of a 1999 federal act meant to curb “cybersquatting,” the practice, by rogue individuals or outsiders, of registering famous brand names as Internet domain names. The decision, handed down in Harrods Ltd. v. Sixty Internet Domain Names, permits plaintiffs to file infringement and dilution claims against cybersquatters without obtaining personal jurisdiction over them; plaintiffs can simply file suit in the jurisdiction where the defendant registered the offending domain name. Filed in a federal district court in Virginia two years ago, the case pitted Harrods Ltd., the august British retailer, against an estranged and moribund Argentinean offshoot, Harrods (Buenos Aires) Ltd. (or Harrods BA). The complaint named as defendant not the Argentine entity, but 60 of the domain names that Harrods BA had registered with the Herndon, Virginia-based Network Solutions, Inc. (now VeriSign, Inc.). The older Harrods alleged that the Argentinean company registered all 60 names in bad faith. It also accused the spin-off of infringing on, and diluting, its “Harrods” trademark, which is registered in the United States. Harrods UK elected to proceed against the names-and not Harrods BA-because, its attorney says, Argentina has no comparable law. Swatting Fly-By-Night Operators The U.S. law, formally known as the Anticybersquatting Consumer Protection Act, gives established businesses a legal remedy against fly-by-night operators that register established entities’ likely domain names with the intent of selling those names to the expected owners for exorbitant fees. The Fourth Circuit’s decision affirmed a finding by Judge Leonie Brinkema of the Eastern District of Virginia that 54 of the names were registered in bad faith and must be turned over to Harrods UK. However, the panel reversed Brinkema’s finding that the act did not permit Harrods UK to file in rem (pertaining to a piece of property or legal action rather than a person or entity) infringement and dilution claims. “The court’s decision establishes a new tool,” says Harrods UK attorney Ralph Taylor, Jr., a partner at Minneapolis’s Dorsey & Whitney. Taylor says it had been previously understood that the in rem provision allowed plaintiffs to try to wrest domain names only from bad-faith filers. But with the new ruling, it is now possible to bring in rem infringement and dilution actions as well. Pillsbury Winthrop partner Susan Kohlmann, who represented the domain names, declined to comment on the ruling. This article originally appeared in The National Law Journal, a sibling publication of Corporate Counsel and part of American Lawyer Media.

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