South-Western Legal Studies in Business

Cybersquatting Suit Must Be Filed in Proper Judicial District
Description Appeals court held that the owner of a trademark that wished to challenge domain names that used their registered trademark as part of a domain name must bring suit in the judicial district in which a domain-name authority is located.
Topic Cyberlaw
Key Words Cybersquatting; Trademarks; Domain Name; Jurisdiction
C A S E   S U M M A R Y
Facts Mattel owns the trademark rights to "Barbie," "Hot Wheels," and other marks. Mattel filed suit in federal court in New York seeking cancellation or transfer of 57 registered domain names that contained the word Barbie or another Mattel trademark, such as Barbiegallery.com. The suit was filed under the Anticybersquatting Consumer Protection Act of 1999 (ACPA), which permits the owner of a mark to sue a domain name that violates the owner of a registered mark. The district court dismissed the suit for lack of jurisdiction. Mattel appealed.
Decision

Affirmed. Jurisdiction in such cases is exclusively in the district in which registrar, registry, or other domain-name authority that registered or assigned the disputed domain name is located. The ACPA does not allow jurisdiction to be in any federal court.

Citation Mattel, Inc. v. Barbie-Club.com, 310 F.3d 293 (2nd Cir., 2002)

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