11
Jul/03

4th Circuit Decides Domain Name Registrar Immunity Case


This case is too procedurally complex to be summarized here.  However let me quote some interesting language regarding registrar immunity under ACPA. 

L’OREAL brought an action in France against the registrant of LOREALCOMPLAINTS.COM.  Pursuant to that action, NSI, in accordance with its policy, deposited control of the domain name with the French Court.  Registrant brought a poorly-pleaded action in the U.S. against, among others, NSI.  The Court made out an allegation that NSI was not eligible for the registrar-exemption under ACPA.  Registrars are immune to ACPA provided they administer domain names pursuant to a ‘reasonable policy’ that is consistent with the policy of the trademark laws (which I understand to refer to UDRP-like policies).  ACPA provides for circumstances whereby registrars lose that immunity if they, for example, transfer a domain name during pendency of an action without court order.  The registrant alleged here that NSI lost its immunity because of its transfer of the name to the French Court.

The Court here held that had there been an ACPA proceeding pending at the time of the transfer, registrant would have been correct. 

“Pendency of a foreign action is irrelevant ot the question of whether a registrar is exposed to liability under the Lanham Act  . . Because the provisions conditioning the limitation on liability exempts the liability imposed by the Act, cooperating conduct under foreign law is given no relevance.”

In the instant case, there was no ACPA proceeding when NSI transferred the name, and therefore no liability to be exempted from.  It appears that once an ACPA proceeding has been filed, a registrar would lose its immunity under ACPA if it transfers a name, even if ordered to do so by a non-U.S. court.

Hawes v. NSI, (4th Cir July 9, 2003).

 

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