CNF Inc. v. THECNF.Com

Filing 35

ORDER by Judge Samuel Conti denying 30 Motion for Entry of Default Judgment and vacating 25 Clerk's Notice for Entry of Default. Plaintiff has sixty days from the date of this order to submit a statement to the Court explaining the status of the case. (sclc2, COURT STAFF) (Filed on 11/22/2006)

CNF Inc. v. THECNF.Com

Doc. 35

Case 3:05-cv-04083-SC

Document 35

Filed 11/22/2006

Page 1 of 5

1 2 3 4 5 6 7 8 9 10
For the Northern District of California

UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF CALIFORNIA ) ) ) ) ) ) ) ) ) ) )

CNF Inc., Plaintiff, v. THECNF.COM, Defendant. I. INTRODUCTION

No. C-05-04083 SC ORDER DENYING PLAINTIFF'S MOTION FOR ENTRY OF DEFAULT JUDGMENT

United States District Court

11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28

Plaintiff CNF, Inc. ("Plaintiff" or "CNF") brought this in rem action under the Anti-Cybersquatting Consumer Protection Act (the "ACPA"), 15 U.S.C. § 1125(d), against THECNF.COM ("Defendant"). Presently before the Court is Plaintiff's Motion For the reasons stated herein, the

for Entry of Default Judgment.

Court DENIES Plaintiff's Motion.

II. BACKGROUND On October 11, 2005, Plaintiff filed an in rem trademark infringement action under the ACPA, 15 U.S.C. § 1125(d)(2), against Defendant in federal court. See Compl., Docket No. 1.

Plaintiff claims to have properly served Defendant with a summons and the Complaint on February 8, 2006. See Docket No. 15. See

Plaintiff then filed a request for Clerk's Entry of Default.

Dockets.Justia.com

Case 3:05-cv-04083-SC

Document 35

Filed 11/22/2006

Page 2 of 5

1 2 3 4 5 6 7 8 9 10
For the Northern District of California

Docket No. 23.

As a result, on July 28, 2006, the Clerk of the See Docket No. 25.

Court entered default against Defendant.

Plaintiff then filed its Motion for Entry of Default Judgment. See Docket No. 30. Defendant has not responded to any of

Plaintiff's communications or court filings.

III. LEGAL STANDARD When evaluating a motion for default judgment, the Court must "access the adequacy of service of process on the party against whom default is requested." Board of Trustees of the N. Cal.

United States District Court

11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28

Sheet Metal Workers v. Peters, No. C-00-0395 VRW, 2000 U.S. Dist. LEXIS 19065, at *2 (N.D. Cal. Jan. 2, 2001). For an in rem

action, service of process is the mechanism by which the court acquires the power over the defendant res to enforce a judgment against it. United States v. 2,164 Watches, 366 F.3d 767, 771 Improper or insufficient service of process

(9th Cir. 2004).

"leaves the court without jurisdiction over the 'defendant' (i.e. the object in dispute)." Id. (internal quotations omitted).

Failed service cannot support the entry of a default judgment, even if the defendant has actual notice of the action, because the court has not yet acquired jurisdiction. See Mason v. Genisco

Tech. Corp., 960 F.2d 849, 851 (9th Cir. 1992).

IV. DISCUSSION This case is an in rem action for ownership rights in a domain name pursuant to the ACPA. To proceed with an in rem

action under the statute, Plaintiff must meet the numerous 2

Case 3:05-cv-04083-SC

Document 35

Filed 11/22/2006

Page 3 of 5

1 2 3 4 5 6 7 8 9 10
For the Northern District of California

statutory requirements of § 1125(d): (2)(A) The owner of a mark may file an in rem civil action against a domain name in the judicial district in which the domain name registrar, domain name registry, or other domain name authority that registered or assigned the domain name is located if (i) the domain name violates any right of the owner of a mark registered in the Patent and Trademark Office, or protected under subsection (a) or (c) of this section; and (ii) the court finds that the owner-(I) is not able to obtain in personam jurisdiction over a person who would have been a defendant in a civil action under paragraph (1); or (II) through due diligence was not able to find a person who would have been a defendant in a civil action under paragraph (1) by-(aa) sending a notice of the alleged violation and intent to proceed under this paragraph to the registrant of the domain name at the postal and e-mail address provided by the registrant to the registrar; and (bb) publishing notice of the action as the court may direct promptly after filing the action. (B) The actions under subparagraph (A)(ii) shall constitute service of process. A. Attempted Service of Process

United States District Court

11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28

As a threshold matter, under § 1125(d)(2)(A)(ii)(I) and (II), Plaintiff "must convince the court that in personam jurisdiction over a person is unavailable before an ACPA in rem action may proceed." Porsche Cars North America, Inc. v. Porsche.net, 302 To accomplish this, Plaintiff must

F.3d 248, 255 (4th Cir. 2002).

make reasonable efforts to alert potential defendants of the pending legal action. From a review of the record, the only

contact between Plaintiff and Speedy Web, the registrant of THECNF.COM, consists of a written letter and e-mail sent in August of 2005. Compl. at ¶¶ 14-15, Ex. C and D. Though Plaintiff

claims to have served Defendant with the summons and Complaint, and may have done so via e-mail, the physical address on the 3

Case 3:05-cv-04083-SC

Document 35

Filed 11/22/2006

Page 4 of 5

1 2 3 4 5 6 7 8 9 10
For the Northern District of California

Certificate of Service is different from that given in the Complaint and Exhibit A. Plaintiff's Complaint states:

The records of the domain name registrar for THECNF.COM domain name identify the Registrant of the THECNF.COM domain name as Speedy Web, with an address at Eight Thirty Eight Camp Street, 4th Floor, New Orleans, Louisiana 70130 and an e-mail address at [e-mail]. Compl. at ¶ 2. When Plaintiff notified Defendant via U.S. mail and e-mail of its intent to litigate, it used the above addresses. C and D. See Compl., Ex.

However, when Plaintiff attempted to serve Defendant

with a copy of the summons and Complaint, the documents were sent to "650 Poydras Street, Suite 1150, New Orleans, Louisiana 70130." Docket No. 15 at 2, 5. According to Plaintiff's Complaint, this

United States District Court

11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28

address is for the domain name registrar, Intercosmos Media Group, Inc. d/b/a directNIC.com. See Compl. at ¶ 3. Plaintiff should

have served the Complaint on the Registrant, Speedy Web, not on the Domain Name Registrar, Intercosmos. Because Plaintiff mailed

the Complaint to the wrong address, the Court finds that Plaintiff has failed to take sufficient steps to notify the appropriate parties of the pending litigation. With actual knowledge of the

name and address of the entity which registered THECNF.COM, Plaintiff should have been able to serve Speedy Web properly. As

a result, Plaintiff has failed to present convincing evidence that it cannot obtain in personam jurisdiction over Speedy Web, as is required to proceed in rem under the ACPA. The Court notes that the record reveals two problems with Plaintiff's case, either of which makes default judgment inappropriate. First, as discussed, Plaintiff has not convinced Second,

the Court that in personam jurisdiction is unavailable. 4

Case 3:05-cv-04083-SC

Document 35

Filed 11/22/2006

Page 5 of 5

1 2 3 4 5 6 7 8 9 10
For the Northern District of California

Plaintiff neither published notice of the action nor explained why the Court should waive the requirement under subsection (bb).

V. CONCLUSION For the foregoing reasons, Plaintiff's Motion for Entry of Default Judgment is DENIED. No. 25, is VACATED. The Clerk's Entry of Default, Docket

Plaintiff has sixty (60) days from the date

of this Order to submit a statement to the Court explaining the status of the case.

United States District Court

11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28

IT IS SO ORDERED. Dated: November 22, 2006 UNITED STATES DISTRICT JUDGE

5