Wednesday, December 30, 2015

Where Does Trademark Infringement Tort Occur For Venue Purposes?

Where the trademark owner resides, at least under Florida's long-arm statute:
Under Florida's long-arm statute, Defendant is subject to personal jurisdiction where it commits a “tortious act within th[e district].” § 48.193(1)(a)(2), Fla. Stat. Trademark infringement is considered a tortious act under Florida's long-arm statute, Mighty Men of God, Inc. v. World Outreach Church of Murfreesboro Tenn., Inc., 6:14-cv-947-Orl-41TBS, 2015 WL 1534446, at 3 (M.D. Fla. Apr. 6, 2015), and is deemed to take place where the trademark owner resides, Nida Corp. v. Nida, 118 F. Supp. 2d 1223, 1228 (M.D. Fla. 2000).  Because the true owner of the trademark and trade dress at issue is disputed among the parties, Plaintiff is credited as the trademark holder for the purposes of determining venue.  Because Plaintiff resides in the Middle District, the tortious act of trademark infringement is deemed to have occurred here.   Thus the Middle District has personal jurisdiction over Defendant under Florida’s long-arm statute.
Motion to dismiss or transfer, denied.
Tile World Corp. v. Miavana & Family, Inc., Case No. 6:15-CV-919 (M.D. Fla. Dec. 2, 2015) (J. Antoon)

Monday, December 28, 2015

Does Re-Registering a Domain Name Constitute "Registering" a Domain Name for Anticybersquatting Purposes?


Jysk Bed'N Linen operates furniture stores in Georgia, New Jersey, and North Carolina.  In early 1999, it had a website developed for it and hosted that website at  It had asked the website developer to register the domain name and assign the domain to Jsyk.  The domain name was registered, but it was never listed in the name of Jsyk.

In 2012, the domain name registration expired, and the website went down.  Jsyk asked the web developer to re-register the domain name and transfer it to Jsyk.  The web developer did re-register the domain, but did not transfer it.  Instead, the web developer registered a handful of other domains (,, etc...) and demanded that he be compensated for his thousands of hours of work.  Jsyk sued, claiming violation of the Anticybersquatting Consumer Protection Act.


The ACPA makes it unlawful to register, traffic in, or use a domain name that uses another's distinctive mark (where the accused cybersquatter has a bad faith intent to profit off of this usage).  Here, the web developer argued that "re-registration" does not constitute "registration" and thus did not violate the ACPA.  The Eleventh Circuit was not persuaded:
Including re-registrations under the registration hook comports with the purpose of Congress in enacting the ACPA—to prevent cybersquatting. See S. Grouts & Mortars, Inc., 575 F.3d 1235, 1246–47 (11th Cir. 2009) (“Registering a famous trademark as a domain name and then offering it for sale to the trademark owner is exactly the wrong Congress intended to remedy when it passed the ACPA.”(quotation marks omitted) (quoting Ford Motor Co. v. Catalanotte, 342 F.3d 543, 549 (6th Cir.2003))). It would be nonsensical to exempt the bad-faith re-registration of a domain name simply because the bad-faith behavior occurred during a noninitial registration, thereby allowing the exact behavior that Congress sought to prevent. We accordingly will not read additional words into the statute such as initial or creation. The plain meaning of register includes a re-registration. 
Thus, here in the Eleventh Circuit, re-registration constitutes registration for purposes of the ACPA.  This comports with the Third Circuit.  See Schmidheiny v. Weber, 319 F.3d 581 (3d Cir.2003).  Notably, the Ninth Circuit has reached a different conclusion.  See GoPets Ltd. .v. Hise, 657 F.3d 1024 (9thCir.2011) (determining that "re-registration" was not "registration" for concern that it would limit the transferability of rights associated with domain names).

The Court went on to confirm the web developer's activities demonstrated a bad faith intent to profit off of Jsyk's trademark rights.

Issuance of preliminary injunction, affirmed.
Jysk Bed'N Linen v. Dutta-Roy, Case No. 13-15309, (11th Cir. Dec. 16, 2015)