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Reaching beyond our borders to catch trademark infringers has alwaysbeen challenging. I recall a case against a Turkish herbal productproducer who was infringing our U.S. client’s trade dress. Although theoffending product was advertised in the United States, the Turkishproducer had no local presence for accepting service. The proceduresfor effecting extraterritorial service were byzantine indeed. The growing importance of the Internet as an advertising anddistribution medium has dramatically increased the globalization oftrademark problems. That fine cafe you enjoyed in Portofino last summercan now post a Web site to promote its specialty products to customersin Pasadena virtually overnight. Our legal system, built on precedent, understandably lags behind theseeconomic and technological forces. Nevertheless, the legal response toglobalization in recent years has been quietly dramatic. Two recentcases suggest new options for business and intellectual property counselseeking to enforce and protect their clients’ rights. SERVICE BY E-MAIL Too often the operators of infringing Internet sites hide behind falsenames, addresses and contact information. When our client PopularEnterprises, LLC, owner of the Netster trademark, encountered the misuseof its mark for pornographic Web sites, it was easy enough to file suitin Tennessee. The difficulty lay in effecting service. Although theinfringer could be found in cyberspace, all available information for aphysical location proved false. My colleagues Brett August and ChadDoellinger had the documents translated into Portuguese and soughtservice under the Hague Convention, but the Portuguese Ministerio de Justica could not effect service without a valid mailing address. See Popular Enterprises, LLC v. Webcom Media Group, Inc., Case No.3:03-CV-565 (E.D. Tenn. 2004). The solution to this problem was found in Rule 4(f)(3) of the FederalRules of Civil Procedure, which allows service on an individual in aforeign country “by … means not prohibited by international agreementsas may be directed by the court.” Since all other methods had failed, the Tennessee District Courtdirected service via the e-mail address provided to the domain nameregistrar. “This e-mail did not bounce back and presumably reached thedefendant.” And that was deemed sufficient for valid service. As previously stated by the 9th U.S. Circuit Court of Appeals, “whenfaced with an international e-business scofflaw, playing hide and seekwith the federal court, e-mail may be the only means of effectingservice of process.” Rio Properties, Inc. v. Rio InternationalInterlink, 284 F.3d 1007 (9th Circuit, 2002). JURISDICTION BASED ON ONLINE EFFECTS Personal jurisdiction over defendants typically is based on physicalcontacts with the forum state, either through specific contacts with thestate involving the matter in dispute or through a general practice ofdoing business in the forum state. Trademark infringement, however, caninvolve damage to intangible rights “located” where the owner resides,even if the defendant never sets foot in that forum. BSH Home Appliances Corp. manufactures and sells the famous appliancebrands Thermador, Gaggenau and Bosch. Recently, BSH came to my partnersRay Geraldson and Brad Cohn for help in a dispute with a former dealercontinuing to use the domain names thermadorappliance.com andgaggenauappliance.com. When the case was filed in California, the defendant, GoldmanAssociates, demonstrated that it had no physical contact with Californiafor over two years and argued therefore that it was not subject to suitin the state. But because Goldman held the domain names and allegedlyoffered to sell them for profit, the effects of Goldman’s conduct werefelt where BSH was located, in the case BSH Home ApplianceCorporation v. Goldman Associates of New York, Inc., Case No. CV04-0745 AHS (C.D. Cal., Nov. 24, 2004). What is notable here is the possibility of basing jurisdiction on thevirtual effects (via the Internet) of a defendant’s conduct onintangible trademark rights “located” in a remote location. These procedural tools complement other legal developments providingmore options for dealing with the borderless trademark disputes createdby the Internet. Under the Anti-Cybersquatting Consumer Protection Act,jurisdiction can lie where the domain name registry is located. Thus,for example, any trademark owner, domestic or foreign, can take actionagainst a “.com” infringement in Virginia where VeriSign, the operatorof the domain name registry, is located. Another now well-known tool is the uniform dispute resolution policyprivately enforceable under the standard gTLD registration contract, orthe Uniform Domain-Name Dispute Resolution Policy (UDRP) for theInternet Corporation for Assigned Names and Numbers (ICANN). Briefedand decided online, these disputes are truly global in reach. I servedas panelist in one case between a domain name owner in the United ArabEmirates and a trademark owner located in India. My co-panelists werein the United Kingdom and Australia. We never talked or met. It wasall handled online. E-mail service, virtual jurisdiction, in rem actions, virtualproceedings — it’s a brave new world.

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