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How to steal a domain name with a bogus patent
August 31st, 2007 by 
Jay Westerdal
The most recognized brand in Internet gambling is Bodog.com. However the domain was stolen in a court of law not less then 1 mile from my office. I would have expected to hear about something like this in a third world country. How can a US Judge decide against a foreign company for violating a US patent when that company doesn’t even operate inside the US? The judge has no business deciding this case and when seeing all the evidence I am perplexed this happened in my backyard.
Mel Molnick of Las Vegas filed for a process patient on remote betting using the Internet back in 1995. Mr. Molnick sued Bodog in Seattle for violating his patent, Bodog ignored the lawsuit because they where not even based in the US and didn’t think anything would happen to them. If someone sued you in a foreign country how likely would you be to fly there and defend yourself if you don’t have any assets in that country? This was the wrong mistake, the Judge made a default judgment against Bodog and awarded Mr. Molnick $48,937,456.00 in damages. Mr. Molnick instructed the judge to write into the judgment that eNom (the registrar) must turn over the domain names to Mr. Molnick.
Mel Molnick wasn’t looking for cash, he was looking for domain names. I think the Judge over reached his jurisdiction. A judge in Washington State can order a Washington State based registrar to turn over domain names. However, one would argue that domains were not even in Washington. They live in the root servers for dotcom and those reside all over the world and are controlled in Virgina by Verisign. Any company can add and delete things from the dotcom name servers if they pay the access fee to ICANN and sign an agreement with Verisign. If I was Mr. Molnick I would sue in Virgina. But which state to sue in is not really the issue. The issue is that a US judge is making judgments on foreign companies for violating US patents. Even if those patents are bogus and a first year par-legal could have defended Bodog. The issue is the Judge. Judges don’t go to tech school, they simple take the word of the plaintiff if the defendant never shows up. That is a very expensive lesson for Bodog. To overturn the judgment Bodog will need file a lot of motions and get a re-trial. They will win if they get the re-trial but with Football season beginning right now Bodog is missing a lot of regular customers.
Bogus US patents holders can troll for domain names that are worth millions of dollars. If a foreign company doesn’t take a US lawsuit seriously they are kidding themselves, you must defend even the most insane cases because the judge will just accept the word of the other side if you don’t show up in court.
I suspect more domains will be stolen with the help of the US court system in the future. That is totally sick.
Bodog appears to have not learned their lesson. Their first registrar eNom was in Washington state. The judge ordered the domains to be turned over. Well, Bodog when out and purchased newbodog.com to temporally replace their main domain names. They just added the word “new” to any domain name they lost in the law suit. “We are fighting this dispute and are confident that we will win,” says Ayre. “I sincerely apologize to any customers affected by our interruption.”
I have bad news for Ayre. All those “new” domains are registered with a second registrar called Dotster. Guess what, they are based in Washington State too. That Judge can go back and order those new domains be turned over as well. A total of 3000 domains were lost in the first case and the judge also awarded Mr. Molnick the Bodog trademark and ability to use the old logo.
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Posted in Reserve Hi-Jacking, Stolen Domain |
August 31st, 2007 at 1:15 am
Someone should sue the judge himself for damages caused by his incompetent verdict.
August 31st, 2007 at 2:56 am
Ok im confused does’nt there have to be a UDRP before there is a court case? if not why even have a UDRP ?Cant ICANN force the return of the Domain for not following ICANN procedures albeit on a temporary bases till the UDRP is done thus giving BODOG back the names for football season and time for Bodog to appeal on so many different levels,im no Lawyer but why have an ICANN if not?I know judges can and seem to ignore everything due to current US Trademark Laws in a UDRP in US based company vs US based company cases but a foreign one ? This is just another reason for US Trademark REFORM ? Isnt there a WIPO or International court for that since Domains are International and 2 countries have valid Trademark rights ? When speaking to a reporter at the Domain Round Table i said to a reporter,”the Internet has done what madmen and conquerors have tried to do throughout time: unify the world,” so we see why big marketing firms don’t want to get into the Domain Markest wholeheartedly is with these types of cases.I see 2 possible futures if Laws arent reformed and decisions keep being made with seeming ubiquitous omnipotence over simple common sense facts. One is where ICANN moves the controlling Registry out of the US by world pressure(i wouldnt want to be a US Company at that point in a foreign jurisdiction payback is a biatch they say.)or with 200+Tlds and HUNDREDS OF COMPANIES USING THE SAME NAMES if not more what might happen is all .COM .NET .ORG end up just Portal Pages with Links to each and every one all equally(a parking page how ironic that would be)and what a BLOW to Big Corps but they have the cash to put into real oldfashioned ads(but why? profits are better) and Internet Commerce mom and pops would be devestated if THAT were to happen it would be 10 steps backward.Better for a workable Free Market compromise and solution before we end up in some Draconian dare i say communistic approach to the net.But i just deal in dreams and want to steer clear of nightmares what do i know.
August 31st, 2007 at 2:58 am
I’ve commented this in another places. It’s incredible how you can patent a process. I think science fiction writers should be millionaires by now.
Here in Europe there was a great fight against software patents, and it was won, for now.
http://fsfeurope.org/projects/swpat/
It’s time for the US to stop patenting processes and ideas. Real products are fine.
Nuno Oliveira
CatalogDomains.com
August 31st, 2007 at 4:26 am
ok you have me thinking(always a bad thing my friends say)i MIGHT understand possibly damages for patent “infringement” but how does the Judge have a precedent to take away a in effect a COMPANY Trademark if the company or process wasnt named BODOG ?(if it was i want this guy to pick me some lotto numbers)Plus how does this Mr Molnick no offense to him i dont know the details, somewhere there may be a basis for a claim as i said for damages but what about the other gazillion casinos out there? he just chose the biggest.Will this judge give him all Casino Domain names even the free sites in the world ?Mr Ford built the car but yet there are legal other cars in this world ?Bodog even if it has a Slot Machine in its Office(if its Legal might be considered a Gambling institution so the Judge seems to have made an an egregious error(did the Ricoh law somehow apply here?Heck the cigerette companies only lured knowingly millions into addiction to a Carcinogenic product that was instrumental in the DEATHS of countless proportions worldwide and they still make a profit selling the same poision)to strip a company of its Name and place of business.What if they decided to just sell Bodog shoes ? They have the right to change products or services.Id say a ruling of a website devoid of any visible Gambling references so as to not make cash on a infringing casino elswhere but take in Effect the Company?I just dont see it.But what do i know,shrug.
August 31st, 2007 at 7:15 am
This is the same issue we had…
http://blog.bluefur.com/2007/01/26/monsterhostingca-changes-to-bluefurcom/
It can happen very easy. Another example was in Vancouver there was an Amazon Cafe who owned a domain with amazon in it. They were sued by Amazon.com and lost their domain.
August 31st, 2007 at 8:43 am
Hmmm… and why is it the most recognized name in Internet gambling? Could it be the millions of dollars they spent on cable advertising in the U.S. Not doing business here? What are you… a frigging idiot?
The issue isn’t trolling for domains, the issue is this nonsense of method patents. Molnick was granted a patent for the IDEA of live casino games broadcast over the Internet back in 1995. He didn’t patent any actual technology. Complain about the judge all you want. This was a default judgement. The morons at Bodog’s legal dept decided they just didn’t need to respond to this suit, which was filed where Mr. Melnick’s business is incorporated.
Perhaps they can get the damages lowered on appeal. I hope so.
August 31st, 2007 at 9:24 am
Keep in mind that your domain name registrations are valuable assets that can be attached and sold to satisfy judgments. The claim here was patents but it just as easily could have been something like failure to pay child support or breach of contract. If you’re a foreign company and you don’t want your domain name registrations attached by U.S. courts, don’t use a U.S. registrar.
Bret
UPDATE BY JAY: Versign is still in the USA. So I don’t think it would matter where your registrar is. Have the Judge order Verisign to transfer the domain.
August 31st, 2007 at 9:32 am
“Ok im confused does’nt there have to be a UDRP before there is a court case?’
No. The UDRP is there so a domain dispute could be settled by arbitration without going thru a costly court battle.
But you don’t have to arbitrate.
You could go directly to court and sue under ACPA (Anti-Cybersquatting Consumer Protection Act).
August 31st, 2007 at 9:40 am
This is just insane. No, I mean that there is no PARKING PAGE on bodog.com…
UPDATE BY JAY: I agree. That parking page would be making bank! But it is on-hold, hence out of the zone. I imagine they want to resolve a parking page as soon as possible. I wonder if NewBodog would be the top bidder on that page?
August 31st, 2007 at 10:51 am
Hey Jay,
Great post. The only thing I think needs clearing up is that I don’t think the suit wasn’t filed by Mel Molnick.
Here is the original court doc:
http://www.majorwager.com/articles/bodogjudge.pdf
And here is Mel’s patent info:
http://www.i2corp.com/patent/index.cfm
Not quite sure if there is any connection between Mel and 1st Technology, but the patent #’s are different.
August 31st, 2007 at 12:39 pm
Lextext is right..registrars outside of the US are less likely to be bound by US based judgements like this one. Per Jay’s comment…there is the risk that Verisign gets named and acts on these judgements…but maybe the legal types can comment on how often this happens the chances of this happening on a marquee name?
As a Canadian based registrar…we have many customers that have come to us to reduce these risks.
August 31st, 2007 at 12:42 pm
From my understanding, jurisdiction in regards to domain name assets can be based on the location of the registrant (obvious) and/or based on the location of the registrar … eNom is a U.S. based company.
In theory, the jurisdiction for all .COM domains could be the U.S., but from my understanding that’s not how it works since registrants interact with registrars *not* the Verisign registry directly.
See this article for some discussion of jurisdiction relating to ICANN and Registries.
http://news.zdnet.co.uk/itmanagement/0,1000000308,39284034,00.htm
In particular note the last paragraph of that article explaining how neither ICANN nor the registry may have authority to act upon court orders regarding ceasing / disabling specific domain names.
Quote: “The court could make an order to the registry that holds the DNS, which is the Public Interest Registry, based in Virginia. But we think they would take the same course as ICANN — that they don’t have the authority,” Cox added.
So ultimately it comes down where the registrar is located…
On an aside, becoming one’s own registrar is more affordable and easier than ever - definitely something any entity that relies on their domains for business, if it’s a type that involves much legal exposure, should consider.
Ron
UPDATE BY JAY: ICANN is right, they don’t have the power to take it down. However a Registry does. I do not think a registry would ignore the order. ICANN has no contractual way to take a domain name down. That is not there role. However a registry can and courts have ordered them in the past to do things. It should like Attorneys going after a domain name need to understand the ICANN system better. ICANN is just a management piece on top that has contracts with Registries. They don’t have language in those contracts that allow them to bark orders at Registries.
August 31st, 2007 at 2:28 pm
A US court is a world court now? Let’s hold a tribunal with Captain Kirk as chief seal clubber. OK, so I had 3 glasses of wine.
Sincerely, US registrars should run scared. Anyone who visits domaintools.com will see this and steer clear of US registrars, which could mean chunks of money lost to them.
Just goes to show that guy with the info > the guy with brains and education.
August 31st, 2007 at 4:30 pm
Just curious? Is it me…, or do others feel like the wheels are spinning off the machine! The issue above is very real for the parties involved, yet by leaning back and watching the vile culture grow; supposedly under the safety of a petri dish, we can cheer and jeer, and not be ‘infected’ in the least.
But, this is the sad reality, look at the idle time om American’s hands, that they have the luxury to sit around, and waste neurological assets on this bombastic rhetoric. I just can’t imagine the world maintaining this feverish waste of resources; mental, and financial on issues as this quotidian event! HELP!!
Sorry for the declamation, caught the blog looking up a whois!
Cheers Ya’ll
JD in MD
August 31st, 2007 at 4:41 pm
Hi Jay,
Confused there for a second, as you refer to the domain in your post as BOBOG.COM (that’s “bog” as in “swamp”). Maybe a Freudian slip in your post, or a timely reminder about acquiring all possible typos of one’s main business domain…
Have a restful weekend after all the DRT work.
UPDATE BY JAY: Yep, that was a slip. I just corrected it.
September 1st, 2007 at 2:05 am
I hate to be so NEGATIVE here, but THE LEGAL SYSTEM of The United States of America is for sale to the HIGHEST BIDDER. It is corrupt to the core.
I started an ISP in 1996 under the domain name VW.NET: VW being representative of our company’s initials, Virtual Worlds (later changed to Virtual Works). At that time .net was reserved for Network Service providers and there could be no confusion that VW.NET was associated with Volkswagen, unless Volkswagen decided to become a Network Service Provider. Then in 1999 the infamous Network Solutions decided to line it’s pockets and opened up the top level domain structure to everyone/anyone - could register a “.net” or “.org;” thereby destroying the Top Level domain name structure: Making it next to meaningless. Why have dot anything when anyone can register anything! Six months later Volkswagen launched a legal assault topped off with a good helping of propiganda and backroom politics (Good-Old boy style). Volkswagen decided to make an example of VW.NET: Most likely because it was the best domain to set precident on and because we were an easy target: A two man company with a total of four employees. What Volkswagen didn’t expect, was for us to put up a fight…and we did…for three long years. Volkswagen was instrumental in getting the “Anti-Cybersquatting” and “Anti-Cyberpiracy” bills passed into law. You can see the propiganda machine at work, just in those names! Who came up with those names? Who drafted the bills? Senator Orin Hatch. Now you might ask yourself, “What does that have to do with the Tea in China?!?” Well nothing actually…I don’t like Chinese imports, but as to Senator Orin Hatch: History shows him eagerly shaking hands with Gerd Klauss, CEO of Volkswagen in 1999 at the Automotive Congress, held yearly in Washington DC. What is that? The Automotive Congress is an event where the leaders of Auto Manufacturers meet with the leaders of our Nation, to discuss ??? What goes on in the forefront, certainly has nothing to do with what goes on in the back office. On the Forefront, they disseminate the propiganda that they are there to better the world: While in the Back-Office(s) they make deals and layout agendas. It’s easy to say things things, but when you start to take the time to look, you become shocked by what you find. For example VOLKSWAGEN WAS A TOP CONTRIBUTOR TO SENATOR ORIN HATCH’S POLITICAL ACTION COMMITTEE. I don’t have the exact figures, but I’ve been told it’s seven figures. So for X amount of dollars, you can go out and buy yourself a Law and then use it against your competitors Ex-Post Facto, because (unbenownst to me at the time) the laws that protect you and I from Ex-Post Facto law, do not apply to Business Law!!! That’s right! A law can be passed and then applied to something your business did in the past, when it was LEGAL! AND that is exactly what they did to us when they STOLE VW.NET.
My Attorney, Willam Bode, screwed me in such a way as to make it impossible to appeal the case. On forefront, Mr. Bode advised repetitively that we would be appealing to the Supreme Court, but then with less than 24 hours left to file before the appeal deadline, Mr. Bode drafts a letter, back-dates it and then mails it certified from his postage meter…hmmm somebody must have forgot to update the date on the postage meter. The case died then and there, because filing deadlines were not met as promised. I wonder what kind of car Bill Bode is driving these days? And I can’t help but notice that the chief spokesman for Volkswagen is “Hans-Gerd Bode” - It’s probably just a coincidence. So you think Volkswagen would stop? They got their domain, they put Virtual Works out of business, but they couldn’t shut ME up. The propiganda machine was not working as they wished. That evil cyber-pirate/squatter just kept talking and writing. So, they decided to intimate him by throwing a lawsuit together claiming that I had somehow hacked into thier network and shutdown their mail-servers. So little ole me, went from losing my business and lively-hood to looking at the big house: You know? The one with the pretty bars and guards to make sure you’re safe! Volkswagen also decided not only to accuse me of being a criminal at this point, but to go after “VWX.COM” because that is where I was documenting the truth about this scandal. I drove from Virginia to Detroit, MI to defend myself against the trumped up criminal and civil charges and Volkswagen and their “experts” were shocked to see me there Pro-Se. They had planned a legal slaughter in my absense with supposed experts set to testify against me in my absense to a Judge that probably just knows where the on switch is on his computer. So the Judge ordered Volkswagen’s team and I into a room (I think there were six of them) to “work this out.” Volkswagen’s idea of working things out, was to have me sign a Stipulated Order that would hand VWX.COM over to them and in exchange they wouldn’t take my house and send me to jail. I refused. They were all quite angry, the pupils of their eyes seemed to become needle points, but I just sat there in silence on my side of the table. Unbenownst to me back at Volkswagen corporate, the proposed stipulated order was being re-written and submitted to the judge and we were called back to the court. I kept VWX.COM, but unwittingly signed away my first ammendment rights, agreeing never to write about Volkswagen or VW.NET ever again. Hey! It sounded alot better than having my house taken and a new home at the local Adult Detention Center. So I close saying this…There are Evil people that have created Evil Corporations that will do Evil things to accomplish their agendas. The concept of right and wrong is not considered and thus the playing field is very much slanted to their favor against those who play by the rules. Sometimes all you can do is to keep talking…
September 1st, 2007 at 2:23 am
Lesson for everyone: do NOT use USA based registrars. Canada, India or own accredidation is the way.
September 1st, 2007 at 3:36 am
And even using other registrars, it’s time for .com to be ran by the United Nations and with no Verisign raising prices 7% each year, like it will happen very soon.
September 1st, 2007 at 10:08 am
They NEED BorgataCasino.com NOW! at ANY price!
September 1st, 2007 at 11:05 am
Regbits is published by ICANN’s registrar liaison team to provide ICANN-accredited registrars with timely information of interest.
Following some helpful discussions with the registrar data escrow (RDE) working group, the RDE specs have been revised and are attached here.
Following some helpful discussions with the registrar data escrow (RDE) working group, the RDE specs have been revised and are attached here.
We Should make the campaign against such policy in regbits.com, should directly ask icann as a operator to answer! what kind of security we have when we investing on names and numbers?
regbits.net
September 1st, 2007 at 12:41 pm
I am not a lawyer and this is not legal advice.
Before you go chain yourselves across the courthouse steps, the Washington courts are likely drawing your scorn without having done anything wrong, or even interesting.
The Full Faith and Credit Clause of the US Constitution likely required the WA state court judge to grant the execution of the default judgment entered by the US District Court for the District of Nevada.
And before you head out for Nevada to protest injustice there, the federal magistrate judge’s legal acts were likely similarly ordinary. Having determined that service was proper and that the complaint alleged personal jurisdiction over the defendant, and if the court had subject matter jurisdiction over the type of claim, the magistrate would likely enter a default judgment for the plaintiff for the amount listed in the complaint without making any ruling as to the merits of the underlying claims.
The plaintiff then likely went to a jurisdiction where the the defendant had assets (WA) to seek a writ of execution. The defendant in a case like this can appear in this second jurisdiction to contest this, and can argue that the first jurisdiction lacked personal jurisdiction. One reason a defendant might not appear to do this in the second jurisdiction could be if that defendant feared possible arrest by federal authorities on other matters - and I have no idea if that’s the case here or not.
Your arguments seem to center on the meat of the lawsuit when no questions were really considered or resolved with respect to the merits of the case. The domains in question are likely relevant only to the extent that they constitute property of the defendant which the plaintiff is seeking in order to collect on the judgment, and might have been coffee beans or wristwatches or anything else of value that the defendant had in that jurisdiction.
September 1st, 2007 at 3:56 pm
I’m a domainer, but if I could be the devil’s advocate here for a moment, Bodog should have attended the hearing, or at least sent a lawyer to represent them. Not to do so was foolish and arrogant. You said they did not attend because they have no assets in the USA. Well, that was a choice they made, and it was the wrong one. True to their nature, they made a gamble. In this case they lost.
September 2nd, 2007 at 2:41 am
Well stated 10thMuse. The plaintiff received a favorable judgment against income derived by the infringing use of his patent. The defendant, being a non-US entity, incorrectly assumed that as they had no assets (in this case, I suppose, funds in a US bank) within the jurisdiction of the court, they didn’t need to comply.
Seeking payment of the judgment, the plaintiff looked for–and found–assets within the jurisdiction: the domain names. Those were attached. The plaintiff’s lawyer correctly filed in the jurisdiction in which the domains were reg’d, most likely anticipating that the defendant would not comply with the court order if found guilty. Kudos to the plaintiff’s legal team.
Jay, if you’re going to spin something, use an appropriate example, this isn’t one. The defendant was found guilty of infringing a correct patent, not a bogus one. The defendant made a pile of money from this infringement. The only assets within the correctly chosen jurisdiction were the domain names, and these were seized by the judge for satisfaction of the sentence. For what ever reason, you chose to ignore the salient fact that the DEFENDANT WAS GUILTY (sorry to shout) to make your point.
The domicile of a domain name is not in cyberspace, it is where the name is registered and held for and on behalf of the registrant. Come on, dude, you know this. Any domain investor worth his or her salt knows this too. There is no mystery about this. The judge and plaintiff acted correctly.
That the defendant then went out and reg’d NEW(whatever).com could be construed as registration in bad faith, in light of the judgment against it.
As to bogus patents, yes, there are thousands of them out there, lurking in the mud like land mines. And this is why Patent reform is necessary, and on the way…again the case you use is not one of these instances.
If there is an appeal, the merits of the case will ride on whether or not there was, indeed, a patent infringement and if the lower court judge acted correctly. The domain name assignment is nothing more than an attachment of an asset and has little to do with the finding of facts and conclusions in law.
September 2nd, 2007 at 2:43 am
Dear “DomainerPro” imagine theoretically that someone in let’s say China sues you for some funny patent - would you go to China to defend yourselves and waste hundreds of thousands of dollars on some funny lawsuit ? And imagine for some reason China would have power to take all your domains and would take it. Would you also think you were arrogant and had it comming ?
September 2nd, 2007 at 8:53 am
I unfortunatly forgot in my previous posts to say it was a horrible idea to ignore the case and yes it was a great job by the patent holders legal team (but as was previously said if your a little mom n pop or mega corp and have a great Domain some other country sues you where you dont do biz but you might have a registrar there ? this is opening Pandoras Box)but what does this high profile case do now to US based registrars?,and if all the US Registrars open foreign “Home offices” what will that do to the security of US domain holders against that local law ? This really needs to be done on a global basis.Maybe uniform Domain Laws will be a first step into that One World New World order so greatly coveted and feared but tit for tat across the globe will only fragment not unify the countries of this world (domains may seem like nothing to some but not acknowledging foreign laws at all is like spitting in someones face )maybe more level headed fair minds will prevail and not just the deep of pocket or national legal loopholes.
September 2nd, 2007 at 10:56 am
I’m still not a lawyer and this is still not legal advice.
whoisssc, I imagine you wrote that with a smirk, and if not, you should have. It’s precisely because China does not respect intellectual property rights in any meaningful way and does not have a predictable and stable process for mediating disputes or allegations of infringement that it might not be reasonable to defend there, or to hold and risk assets there in the first place.
And dreamdealer, you seem to suggest that this case has some relevance to an imagined person who is subjected to legal process in a jurisdiction where he does not do business. Not only is that clearly not the case here, as Bodog generated millions of dollars from its business conducted here, but the quite common-sense rules of personal jurisdiction that many people in this thread seem to be attacking actually agree with you (if I understand your point) completely.
The same intuitions you are expressing form the foundation of the American rules of personal jurisdiction - which, by the way, were defined by an incident that occurred in Washington state as well, when it tried to tax a traveling shoe salesman from International Shoe Co. (which, I believe, folded into what is know known as Florsheim Shoes). The dispute was what level and quality of contacts must a business have in a jurisdiction to be called before the courts there to defend against a suit (and whether the dispute must arise from one of those contacts with the forum or whether the business could be sued for something completely unrelated as long as they had such contacts with that forum).
Personal jurisdiction in the united states is of two basic kinds, specific and general, which correspond to those two different types of suits that I just mentioned. They are both based on the notion of “minimum contacts” and require that before a defendant can be haled into court to defend an action, it must be established that he has some sufficient minimum level of contacts with the forum state such that it would be reasonably foreseeable that he could be expected to defend there, and that an assertion of jurisdiction would not offend traditional notions of fair play and substantial justice.
If those contacts are basically continuous and frequent and there is evidence that the defendant has purposefully availed himself of the market and services in the forum, then a court might find that he is basically domiciled there, so that he could be sued for pretty much anything there (unrelated to the activities that gave rise to the assertion of jurisdiction). That’s a pretty high bar to reach, and if a plaintiff can’t establish that the defendant basically “legally lives” in the jurisdiction, then a lawsuit would be dismissed for lack of personal jurisdiction over the parties unless the controversy giving rise to the dispute occurred within or involved activities directly related to the forum state.
But the show isn’t over there by any means - it’s not enough that plaintiff claims that it is so. After having to establish that the defendant was properly notified of the pending law suit, the plaintiff must be prepared to counter a defense argument that the case must be dismissed for lack of personal jurisdiction over the defendant. This defense must be raised immediately or it is waived - but it’s the first order of business the court would consider, before listening to any arguments about the dispute itself.
By not showing up to defend the suit, a properly notified defendant would default. But as I write above, he *still* has the opportunity to defend the matter based on the lack of personal jurisdiction over him in the first forum. And this second forum only exists if *the defendant has property there* which is taken to be a contact with that jurisdiction — not insignificantly because the defendant enjoys the stability and protection that the courts there provide for that property, and which make the notion of property rights coherent in the first place.
To return briefly to whoiss’s comment — but really also to what Jay and many of you have expressed — imagine the world you are asking for. Really - just follow it through: a world where on can allegedly or possibly (don’t focus on whether Bodog did anything wrong - pretend you don’t know; this is really important) trample the property rights of others and have there be absolutely no remedy for resolving the conflict short of grabbing one’s musket - or, since the offender might be powerful and many and distant and you are but one, perhaps you form associations for protection and enforcing obligations. Let’s call it…oh I dunno…..the mob. So, yo go out and *literally* fight for your rights, or, in the alternative, you can just abandon altogether the notion of there being any such thing as property rights. This world — the one I take to be the consequence of your logic — is one in which property ceases to exist.
Last point, I promise. But if you’ve followed me to this point, you might be able understand that “property” is nothing more than complex arrangements of reciprocal obligations and duties among people. Really - that’s it. None of us should want it to be the case that any particular player in the game can simply opt-out of the process with impunity. By doing so it deprives you of a forum to have your dispute resolved — good claim or bad. Bodog didn’t suffer this judgment because the judge didn’t think it had a right to use the process without a license or because he thought the patent owner was a stand-up kinda guy. Bodog lost because it refused to even play the game.
September 2nd, 2007 at 11:53 am
Bodog screwed up by not showing up. I bet there are a few lawyers / exec’s looking for a job this week.
September 3rd, 2007 at 4:35 am
Tenthmusemedia and others: you still do not understand that this could happen to some company which does not have such resources as Bodog and COULD NOT go to the USA to defend their property.
They might even NOT understand english - imagine some company from Krakozhia, which happened to own some very valuable generic .com. Someone sue them in the USA for any bogus claim. They get notification via Fedex, sea something in language they do not understand and rubbish it (”Yet another spam from the USA” they might think). So there will be a default judgement and they will loose the domain.
Even if they would not use US based registrarm it can be enforced even via Verisign (as in i.e. GlobalSantaFe.com). While non-US companies can NOT do that (and I am not calling they could but I am calling for NOBODY could).
So now the ONLY FAIR step would be - get top level domains OUT OF any goverment jurisdcition. Because now USA has jurisdiction over .com which is however GLOBAL extension, USA should have jurisdiction over .US !
September 3rd, 2007 at 5:55 am
There really is no place immune from all governments even if you dropped the registry at the UN it has to answer to the permanent members that have veto power(if i remember correctly).So compromise of some sort needs to be made.With binding mediaters.If you get the right people together (reasonable creative people)they can work issues out fair enough.There has to be a way even if via a teleconference to save travel costs.I get Emails on Domains in different languages at times and have no idea what they say and cant even figure out what language mostly marked spam.Snail mail letters and Emails offering to sell me Domains i ALREADY OWN at times so im sure these Foreign Corps get the same things maybe at the very least a Uniform notification system to confirm whats NOT Garbage.
September 3rd, 2007 at 6:35 am
DREAMDEALER: the different is non-US company can not STEAL your domains, US-company CAN DO steal domains of any non-US company. That’s the point here. I think whois protection has bright future - with whois protection is impossible to find all domains I own.
September 3rd, 2007 at 6:44 am
I’m still not an attorney and this, still, is not legal advice.
Well, the plight of your Krakozhians is not one that the Federal Rules of Civil Procedure fail to consider. In fact, they do more than consider it - they carve out protections for people like those you ask us to imagine. It’s called forum non conveniens, and it’s designed to accommodate parties for whom it isn’t possible to defend in a foreign country, *even though* the court has personal jurisdiction over the defendant and subject matter jurisdiction over the type of claim, and venue is otherwise proper.
For the very fundamental fairness and commonsense justice reasons you cite, the judge can dismiss the matter or transfer it to a forum more convenient for the defendant — and the case might even be litigated there in Krakozhia. If not, there are still ways to lessen the burden upon the Krakozhians, such as Letters Rogatory, and other mechanisms to accommodate distant parties.
But all this is an additional safeguard for the Krakozhians, which, as I mention, only becomes relevant when jurisdiction and venue is otherwise properly exercised over the defendant. From the situation you describe, I find it very hard to imagine the situation where that would have been the case, for the reasons I explain in my earlier posts.
I know this is tedious stuff, but the various distinct procedural steps only become confusing and suspicious-looking when we smush them into one giant legal misstep. It’s not enough that the Krakozhian might have property in the forum - that only becomes relevant after judgment has been entered in the plaintiff’s favor. We should start our analysis at the beginning of the litigation.
If the Krakozhian does not live in the States, has never been here, is poor (I’ll suspend disbelief to the extent that there is a tension here with the wildly valuable domain asset(s) he holds in the US), and doesn’t even speak English, describe for me the type of dispute that would give rise to personal jurisdiction over the defendant in the first place.
He doesn’t seem to have much, if any, contacts with the forum state. Certainly hasn’t purposefully availed himself of the markets here, doesn’t move goods through the stream of commerce here. Doesn’t sound like he flew here to sign contracts or negotiate deals. For the reasons I explain above, there is no way I can figure that a US court would find that it had personal jurisdiction over him for the vague lawsuit you describe. If it does not, then we don’t even need to get to a forum non conveniens analysis (but if it did, the point is that the Krakozhian still has a second bite at the apple for just the reasons you say).
Oh, and as for your service of process hypo, Rule 4(f) of the Federal Rules of Civil Procedure require that personal service be made in a manner consistent with the requirements and laws of, in this instance, Krakozhia, and which is reasonably calculated to provide meaningful notice to the defendant.
September 3rd, 2007 at 9:41 am
Steve_Russell said:
“The defendant was found guilty of infringing a correct patent, not a bogus one. The defendant made a pile of money from this infringement.”
I strongly disagree. Noone infringed on their so-called “patent”, the only thing they had was a vague process patent (something that wouldn’t even be allowed in for example Europe.) The company filing the suit, 1st Technology LLC, is an infamous patent troll. Like most other patent trolls, they had no legitimate claim. Their business is to threaten other companies, and get them to settle out of court, rather than risking a lengthy legal process.
However in this case, the patent troll probably had a chance of actually winning the case. In Nevada and this court in particular, where 9 out of the 12 jury members work in a casino, a foreign, online gambling company such as Bodog may not have been given a fair trial.
(That being said, Bodog of course handled the situation poorly themselves by not showing up in court.)
September 3rd, 2007 at 10:04 am
HI whoissc64587,
When you say:
“I think whois protection has bright future - with whois protection is impossible to find all domains I own”.
That’s not strictly true. Whois protection via (for example) Domains By Proxy, will certainly prevent anyone from just looking up your details and contact information in Whois. However, Domains By Proxy do make it clear that they will cooperate with the law, and in a case where there was a court request to reveal your information, it seems they most certainly would.
Like most other correspondents to this post, I am stunned that Bodog didn’t even try and defend or answer this case. Even on other forums frequented by amateur and pro domainers alike, the word is always, always, respond to a legal action such as a C & D letter; don’t ignore it. It’s difficult to believe that Bodog presumably had a full-time legal department (although as cgarden said, they’re probably looking for new jobs right now).
September 3rd, 2007 at 12:09 pm
Eric_H - but I wonder whether a federal magistrate sitting in the District of Nevada would be more likely during claim construction to find, as a matter of law, that this particular patent failed the nonobviousness requirement. If so, a company in a similar situation might find the matter resolved in their favor before the need for fact finding. And if bias would be a particular problem here, how successful do you think they’d be with a motion to change venue outside the district? And if it were granted, do you think a company in a situation similar to this one would be better off in a district where gambling is completely illegal?
And then just wondering whether we (me included) are being completely fair to to the defendant’s attorneys here. In my first post I mention — but forget to revive in subsequent comments — that there could be very, very, very good reasons why a defendant in a similar situation would make the fully informed and reasoned decision to cut one’s losses with respect to a particular country, given the nature of the business activity. This man being in the business of bets, wagers and odds, I would expect that someone faced with several distasteful possible outcomes would think hard about which he preferred least. It seems like a choice such as this could be described as risk-averse. And that certainly sounds like advice an attorney might favor.
But who knows, I’m not an attorney and that isn’t legal advice.
September 3rd, 2007 at 8:22 pm
domains80265:
To find all domains I own with whois protection is impossible UNLESS the whois protection would list somewhere a full list of real owners using whois protection. Let’s say there are 1 million of domains using “Domains by proxy”, one thousand of it is mine - how would you determine which one thsouands is mine ?
September 4th, 2007 at 10:38 am
I posted my view @ DNF re: the ongoing debate of being safe in India or China when it comes to domains etc. I’m not a lawyer but rather starting my JD as we speak but I did some research in CyberLaw. Those really interested can look into ordering what is considered the definitive bible “Cyberlaw, problems of policy and jurisprudence in the information age, 3rd edition”
Now, doing reverse hijacking (legal or not) is stupid when performed under WIPO cause if registrar or owner are indeed in India you’re tied up to an endless legal system which can take up to 10 years for the case to reach court.
It’s very important for US at least to have the first court hear a case, because quite frankly even if you appeal in your local country (i.e. India) you can still be nailed.
“According to longstanding precedent and practice, the first court seized of jurisdiction of property, or asserting jurisdiction in a case requiring control over property, may exercise that jurisdiction to the exclusion of any other court.”
This applies to in rem or quasi in rem cases and requires federal courts to decline jurisdiction over a particular property or res over which another court has already asserted jurisdiction.
The interesting case that used this doctrine was Cable News Network L.P. vs Cnnews.com. CNN Delaware LLP with principal place in Atlanta, Georgia whereas Maya Online Broadband Network (HK) is a Chinese company that is a subsidiary of a second Chinese company, Shanghai Online Broadband network.
So, 99.9% of the time, you’re better off paying a bit more in legal fees and suing under ACPA…
Another interesting case of GlobalSantaFe Corp. vs GlobalSantaFe.com. Follows same format, the Corp based in US, the registrar Hangang Systems in Korea.
October 5 2001 filed ACPA in rem action against the domain name and won the order in April 1 2002 which directed Verisign and Hangang to transfer the domain to plaintiffs within 10 days of receipt of the order.
Hangang files injustion on April 9 2002 with District Court of Seoul and judge’s write-up below:
“Tue, we cannot require a foreign court to yield when the US court was the first to assume jurisdiction, but neither can we acquiesce in a rule under which the US court recedes regardless of its priority in time. That rule would empower a defendant in the US to oust our courts of in rem jurisdiction merely by filling its own action int he courts of any hospitable country — of which there would be no shortage if that were our rule.”
Traditionally you could have Denny’s store in London and somebody could open a Denny’s store in Ontario even if you have previously established a TM in the name. The idea was that customers would not likely be confused due to geographical disparity…
With the internet though and domains one interesting case Panavision vs Panavision.com which was a website owned by Dennis Toeppen which included photos of the city of Pana, Ilinois. The District court and Ninth Circuit Court ruled that Toeppen had violated the Federal Trademark Dilution Act because Panavision’s inability to use the panavision.com website diminished the “capacity of the Panavision marks to identify and distinguish Panavision’s goods and services on the internet” (Panavision Int’l vs Toeppen, 141 F.3d 1316 (9th Cir. 1998).
In so doing, the court was, in effect expanding the geographical reach of TM law, at least with regard to domain names. So, while you still couldn’t sue the guy in Ontario for owning violating your TM by choosing a confusingly similar name for its store (based on geographical disparity), you might now have a cause of action concerning dennys.com domain name even if someone registered the name ahead of you.
This led to the expansion of ACPA act and thus in the online context, trademark law is now far more likely to operate extraterritorially.
The issue is that any domain name relies on the Verisign registry an entity located within US district so your options are the following:
a) current registrar of the domain can cancel it by directing the registry to delete the registration from the Registry Database
b) Registry for the pertinent top-level domain can disable the domain by placing it “ON HOLD”
c) Registry can cancel a domain name by acting unilaterally to delete the registration information without the pertinent registrar’s cooperation.
Again registering, transferring or deleting a domain typically involves interaction between the registrar and the registry and is governed by several contracts such as the registry-registrar agreement, the registrar accreditation agreement and the .com registration agreement. Thus, Verisign for each domain name in the “.com” TLD is responsible for maintaining and propagating the following information: i) domain name ii) the IP addresses of NS1 and NS2 of the registrar for the domain name iii) expiration date for registration.
The (c) option I listed above essentially instructs Verisign to act unilaterally to cancel the domain name by deleting the registration information in the registry database and removing the domain name from the TLD zone file without regard to current registrar’s lack of cooperation and the normal contractual procedures for cancellation (as per Verisign & Registrar agreements).
Enom took option (b) but there’s nothing to stop Verisign from deleting the domain should Enom or Bodog don’t hand over the domain…
September 8th, 2007 at 2:06 am
Hello all:
I’m not sure if this thread is still active, but yesterday the US Senate passed some very important legislation IN RE patents. Using the case cited by Jay at the beginning of this thread, if, in fact, the lower court found the patent to be bogus and nothing more than a sleeping bomb, then the domain would not have been turned over.
On the other hand, if the patent was found to be viable, the opposite is true.
Let’s see how this unfolds in the coming years as the new legislation is tested, measured and interpreted in the courts.