Concerns Expressed Over Reach Of ACPA

by Glen Shapiro, LawAndTax-News.com, New York

25 February 2003

Writing for the Toronto Star on Monday, Canadian legal expert, Michael Geist expressed concern at the increasingly long reach of the US Anticybersquatting Consumer Protection Act (ACPA), warning that courts and lawmakers in other countries may soon find themselves 'unable to establish their own laws and policies since the US has in effect done it for them'.

Acknowledging the tendency for courts in all countries to assert jurisdiction over online activity, Professor Geist argued that: 'The larger threat comes not from courts asserting jurisdiction over online activity, but rather from national legislatures that create laws that are expressly designed to apply not just in their own country but worldwide.'

The ACPA's drafters, according to the Toronto Star report, recognised the difficulties for trademark holders of taking action against domain name registrants living in different jurisdictions, and sought to overcome this by granting trademark holders the right to treat the domain name itself as property which can be sued, an approach known as 'in rem' jurisdiction.

'The statute, which applies to dot-com, dot-net, and dot-org domains reaches that conclusion by referring to the fact that the domain name system's root server, the database that houses all domain names and their corresponding numeric addresses, is located in Virginia,' the University of Ottowa law professor explained, citing several cases in which 'in rem' jurisdiction has been invoked by plaintiffs in other countries than the United States, and suggesting that this means that the ACPA can be applied equally to foreign trademarks.

Citing a recent case in which the re-registration of a domain name initially registered before the statute came into effect was deemed to bring the registrant within the reach of the Act, and another in which an US court ruled that it could order the transfer of a domain name despite a foreign court order banning the transfer, Professor Geist concluded that:

'The collective result of these cases is that the ACPA now covers every dot-com domain, regardless of where it was registered, when it was registered, or what a foreign court has to say about it.'

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