DORER v. ARELNo. Civ.A. 98-266-A.
60 F.Supp.2d 558 (1999)
Rose Marie DORER and Forrms, Inc., Plaintiffs,
Brian AREL, Defendant.
Brian AREL, Defendant.
United States District Court, E.D. Virginia, Alexandria Division.
September 3, 1999.
Daniel Lewis Hawes, Hawes & Associates, Fairfax, VA, for plaintiffs.
ELLIS, District Judge.
The question presented in this trademark infringement action is whether a judgment creditor — here the plaintiff-trademark owner — can execute upon an infringing domain name registered to the judgment debtor in partial satisfaction of a default judgment. This appears to be a question of first impression raising several problematic issues, which, as it happens, need not be reached because the domain name registrar provides an alternative means by which plaintiff can use the judgment to acquire the infringing domain name.
On February 24, 1998, plaintiffs Rose Marie Dorer and ForRMS, Inc., filed a trademark infringement action against defendant Brian Arel, seeking money damages and injunctive relief. Defendant failed to file any responsive pleading and on April 24, 1998, plaintiffs moved for entry of default judgment. Based on the evidence received at the default hearing
The money judgment against defendant remains unsatisfied. According to plaintiffs, under Virginia law the infringing domain name, which is registered with Network Solutions, Inc. ("NSI"), is an asset subject to the lien of fieri facias. Va.Code § 8.01-501.
When executing a judgment, a federal court must follow the law and procedure of the state in which it sits, in this case, Virginia law. See Rule 69(a), Fed. R.Civ.P. In Virginia, on motion of a judgment creditor, the clerk of the court issues a writ of fieri facias, which writ orders an appropriate officer to satisfy the judgment out of the judgment debtor's personal property. Va.Code §§ 8.01-466 et seq.; id. § 8.01-501 et seq. With respect to tangible personal property, such as automobiles and appliances, the officer would seize the property, dispose of it by judicial sale, and distribute the proceeds, less expenses, to the judgment creditor. See Va. Code § 8.01-478, id. § 8.01-487 et seq.
It is unclear, however, whether the writ of fieri facias is operative on domain names.
Second, a domain name that is not a trademark arguably entails only contract, not property rights. Thus, a domain name registration is the product of a contract for services between the registrar and registrant. By this view, the contracted-for service produces benefit and value depending upon how the party receiving the service exploits it. Thus, a judgment debtor "owns" the domain name registration in the same way that a person "owns" a telephone number. A telephone number can be a valueless means of reaching a party, or it can be an extremely valuable commercial tool.
Some domain names, however, are valuable assets as domain names irrespective of any goodwill which might be attached to them.
In any event, the knotty issue of whether a domain name is personal property subject to the lien of fieri facias ultimately need not be resolved because there is a more readily available, practical solution to the problem to be found in NSI's policies. In essence, NSI's published policies, apparently in anticipation of precisely this type of case, provide at least two means by which plaintiffs can challenge the defendant's domain name registration.
A second policy seems more appropriate here. NSI has established a procedure that appears to be an alternative to litigation. See id. ¶¶ 8-9. A complainant must demonstrate to NSI both that the registrant's domain name infringed the complainant's mark, and that the complainant has provided sufficient notice to the registrant of that fact. Id. ¶ 8. If NSI receives "sufficient evidence" of this, it will place the registrant's domain name in a "hold" status, pending resolution of the dispute. Id. The dispute can be resolved by agreement of the parties, court order, or cancellation, either at the domain name registrant's request or because of nonpayment. Id. ¶ 9; Dispute Policy FAQ ¶ 20. In addition, NSI maintains "in its sole discretion" the right "to revoke, suspend, transfer or otherwise modify a domain name registration." Dispute Policy ¶ 7. Further, so that plaintiffs might acquire the domain name for their own use, NSI's web page indicates that a complainant would be given a chance to register for the canceled domain name. Domain Name Dispute Policy FAQ ¶ 22. This method seems to fit the facts at bar. A final judgment in plaintiffs' favor should be "sufficient evidence" of plaintiffs' rights under the trademark laws, and the service of process requirements of the Federal Rules of Civil Procedure should satisfy the notice requirement.
To the extent that the plaintiffs simply seek transfer or cancellation of the domain name, there appears to be an avenue of self-help that is at least as efficacious and surely less problematical than seeking to compel the defendant to transfer personal property in satisfaction of the judgment. A ruling on plaintiffs' motion to compel transfer of personal property will be deferred pending plaintiffs' recourse to the self-help method suggested in this opinion.
The Clerk is directed to forward copies of this Memorandum Opinion to all counsel of record. An appropriate order will enter.
- No Cases Found