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26 ORDER – 1

UNITED STATES DISTRICT COURT

WESTERN DISTRICT OF WASHINGTON

AT SEATTLE

GRAHAM & BUFFET, LTD.,

Plaintiff,

v.

WWW.VILCABAMBA.COM,

Defendant.

CASE NO. C05-1667C

ORDER

This matter comes before the Court on the briefing submitted by the parties in response to this

Court’s December 7, 2005 Order directing Plaintiff to show cause why this matter should not be

dismissed for lack of jurisdiction. (Order (Dkt. No. 7).) Plaintiff submitted a Response (Dkt. No. 11)

(“Pl.’s OSC Resp.”), a Motion To Transfer Venue (Dkt. No. 10) (“Pl.’s Venue Mot.”), and a Motion for

Leave To Amend Complaint To Order Transfer of Domain Name (Dkt. No. 9) (“Pl.’s Amend Mot.”). 

James Lawson (owner of in rem Defendant www.vilcabamba.com) filed a Response to Plaintiff’s showcause Response (Dkt. No. 16), which contains additional argument on grounds for dismissal of this

action. Plaintiff submitted a Reply (Dkt. No. 17) to Mr. Lawson’s filing. Having reviewed these

materials and determined that oral argument is not necessary, the Court finds and rules as follows.

//

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26 ORDER – 2

I. BACKGROUND

Plaintiff, a Texas limited partnership, is the owner of the registered trademark “vilcabamba” and

has filed this in rem action pursuant to 15 U.S.C. § 1125(d)(2) seeking to obtain ownership of the domain

name www.vilcabamba.com. The domain name www.vilcabamba.com is registered in Bellevue,

Washington. The owner of the domain name James Lawson apparently resides in Texas. He has a P.O.

Box address in Waco, Texas, and he has been reached there for purposes of this litigation. 

Plaintiff initiated this suit on October 3, 2005. Mr. Lawson filed an Answer to the Complaint on

October 25, 2005. On December 7, 2005, this Court denied Plaintiff’s motion for an order directing

notice procedure, finding that Mr. Lawson had received actual notice of this proceeding and that

publication was therefore unnecessary. The Court further found that even if publication would have been

appropriate, Mr. Lawson had waived any insufficiency-of-process objection he may have had by filing an

Answer to Plaintiff’s Complaint that did not raise that issue. After declining to order publication, the

Court ordered the parties to brief the issue of whether Plaintiff had met the requirements for in rem

jurisdiction under 15 U.S.C. § 1125(d)(2)(A)(ii) in bringing this action in the first instance.

II. ANALYSIS

There are two types of anticyberpiracy proceedings provided for in 15 U.S.C. § 1125(d). The

first option, found in subsection (d)(1), is a cause of action by the owner of a trademark against the

registrant of a domain name, where the challenged domain name was obtained in bad faith and will cause

consumer confusion. Personal jurisdiction over the owner of the domain name is required to maintain

such an action. The second option, found in subsection (d)(2), is an in rem proceeding against the

domain name itself, if the domain name violates any right of the owner of a trademark. In rem

jurisdiction attaches only after certain requirements are met. Specifically, in order to establish in rem

jurisdiction over a domain name, a plaintiff must (I) be unable “to obtain in personam jurisdiction over” a

party who could be a defendant under § 1125(d)(1) (e.g., the current owner of the domain name), or (II)

Case 2:05-cv-01667-JCC Document 18 Filed 03/30/06 Page 2 of 9
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1

 In enacting this legislation (contained in the Anticybersquatting Consumer Protection

Act (“ACPA”)), 

Congress was disturbed by the increasing number of individuals who registered

domain names in violation of trademark rights and then eluded trademark

enforcement because either they could not be found or the trademark owner was

unable to acquire in personam jurisdiction over them. Accordingly, in enacting the

ACPA, Congress included an in rem provision to allow remedies for violations of

the statute by anonymous or “absent cybersquatters.” Consequently, the ACPA

specifically allows a trademark owner to file an action against the domain name

itself when the trademark owner cannot locate the domain name owner or cannot

obtain in personam jurisdiction over him. 

Standing Stone Media, Inc. v. Indiancountrytoday.com, 193 F. Supp. 2d 528, 531 n.2 (N.D.N.Y.

2002) (internal citations omitted).

ORDER – 3

“through due diligence [be unable] to find a person who” could be a defendant under § 1125(d)(1).1 

A. In Rem Jurisdiction

Before an in rem proceeding may progress, the Court must determine whether in rem jurisdiction

is appropriate. See Porsche Cars North America, Inc. v. Porsche.net, 302 F.3d 248, 257 (4th Cir. 2002)

(The ACPA “calls for a finding early in the case as to whether in rem jurisdiction exists.”); Shri Ram

Chandra Mission v. Sahajmarg.org, 139 F. Supp. 2d 721, 723 (E.D. Va. 2001) (“For an in rem action to

proceed, the court must find that the owner of the mark is not able to obtain in personam jurisdiction

over the would-be defendant.”). If this Court “concludes that personal jurisdiction can be exercised,

either in [this Court] or in another forum, then the in rem complaint shall be dismissed.” Heathmount

A.E. Corp. v. Technodome.com, 106 F. Supp. 2d 860, 863 n.4 (E.D. Va. 2000). Another federal district

court has provided a useful hypothetical to understand the ACPA’s operation in this respect: 

When a [trademark] owner becomes aware of an infringing use, the owner’s first step,

typically, is to ascertain the infringer’s identity and location by reference to information

available from the infringing website or the pertinent domain name registrant. With this

information in hand, the owner must then proceed to determine whether the circumstances

of Option I [lack of personal jurisdiction] or II [inability to locate a person who would be

a defendant] exist. In this regard, if the owner determines that the putative infringer

resides, does business, or is otherwise present in any judicial district in the United States,

then the inquiry is ended and the owner, in these circumstances, must proceed in

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26 ORDER – 4

personam against the infringer and is precluded by the ACPA from proceeding in rem

against the offending domain name. . . . To accommodate [situations where the putative

infringer is located in a foreign country and/or provided false information to the domain

name registrar], Congress included Section 2 of the ACPA, so that in these circumstances,

an owner could still seek a remedy—albeit it a more limited one—by proceeding in rem

against the domain name itself.

Alitalia-Linee Aeree Italiane S.p.A., v. Casinoalitalia.com, 128 F. Supp. 2d 340, 346 (E.D. Va. 2001)

(internal footnotes omitted). 

Plaintiff has briefed the issue, requesting that the Court find that Plaintiff “has met the

requirements for in rem jurisdiction.” (Pl.’s OSC Resp. 4.) The Court notes that Mr. Lawson’s filings

do not address the in rem jurisdiction question. Such failure is immaterial, however, because this Court is

required to decide the jurisdictional issue “whether or not a defendant formally opposes the court’s

assertion of in rem jurisdiction.” Porsche Cars, 302 F.3d at 257. 

As the holder of the trademark at issue here, Plaintiff “must convince the court that in personam

jurisdiction over a person is unavailable before an ACPA in rem action may proceed.” Id. at 255. 

Plaintiff has identified Mr. Lawson as the owner of the domain name and, as such, he could be a

defendant under § 1125(d)(1). Thus, the question for this Court to decide is whether Plaintiff has shown

an inability to obtain personal jurisdiction over Mr. Lawson, in satisfaction of § 1125(d)(2)(A)(ii)(I) or an

inability to find Mr. Lawson, in satisfaction of § 1125(d)(2)(A)(ii)(II). If Plaintiff fails to make such a

showing under either subsection of the statute, in rem jurisdiction is improper. For the following reasons,

the Court finds that Plaintiff may not maintain an in rem action. 

Mr. Lawson has appeared in this Court by way of his Answer to Plaintiff’s Complaint and his

response to court filings, such as his recent “Motion to Dismiss Case and Deny All Motions Filed by the

Plaintiff” (Dkt. No. 16). Though Plaintiff asserts that this appearance amounts to this Court having

personal jurisdiction over Mr. Lawson in this matter, the Court notes that Mr. Lawson’s appearance in

this in rem proceeding may or may not confer personal jurisdiction over Mr. Lawson. Compare Caesars

World, Inc. v. Caesars-Palace.com, 112 F. Supp. 2d 505, 508–09 (E.D. Va. 2000) (finding that the mere

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2

 No argument has been presented regarding the non-consensual means of obtaining

personal jurisdiction over a party. Accordingly, this Court does not reach the traditional

minimum-contacts or longarm statute analyses with respect to whether Mr. Lawson may be

subject to personal jurisdiction in the Western District of Washington.

ORDER – 5

appearance by someone with an interest in the res in an in rem action cannot create in personam

jurisdiction over that person), with FED. R. CIV. P. 12(h)(1) (waiver of venue, process, service, and

personal jurisdiction objections if not timely raised), and Insurance Corp. of Ireland, Ltd. v. Compagnie

des Bauxites de Guinee, 456 U.S. 694, 703–05 (1982) (discussing the many ways to waive personal

jurisdiction objections and consent thereto). Nevertheless, the effect of Mr. Lawson’s appearance in this

Court need not be determined to resolve the question of whether in rem jurisdiction is appropriate over

www.vilcabamba.com. 

Therefore, the Court declines to rule on whether Mr. Lawson currently is subject to personal

jurisdiction in this Court by way of his appearance here in an in rem matter. It is enough to find that, had

this been an in personam proceeding at its inception, this Court could have had personal jurisdiction over

Mr. Lawson—by way of his consent (by appearance) or otherwise.2

 Accordingly, Plaintiff cannot show

that it is unable to obtain personal jurisdiction over Mr. Lawson in any jurisdiction in the United States. 

Further, in addition to the Western District of Washington, there likely are other districts in this country,

such as in Texas, where Plaintiff might also obtain personal jurisdiction over Mr. Lawson. As the

Alitalia-Linee court makes clear (as quoted supra), the purpose of the in rem provision of § 1125(d) is to

prevent trademark infringers in foreign countries from evading liability because they cannot be found in

any judicial district in the United States. 128 F. Supp. 2d at 346 (Dominican infringer); see also Porsche

Cars, 302 F.3d 248 (British infringer); Standing Stone Media, 193 F. Supp. 2d 528 (Canadian infringer). 

Here, there is no indication that Mr. Lawson is in—or resides in—a foreign country and/or cannot be

subject to the jurisdiction of any United States district court.

//

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26 ORDER – 6

Plaintiff correctly points out that the conditions necessitating in rem jurisdiction need not

“continue throughout the litigation.” Porsche Cars, 302 F.3d at 255. Accordingly, Plaintiff argues, the

fact that it could not obtain personal jurisdiction over Mr. Lawson previously should not be

overshadowed by Mr. Lawson’s subsequent appearance and alleged consent to personal jurisdiction. In

Porsche Cars, a foreign defendant suddenly consented to in personam jurisdiction three days before trial

in an effort to defeat the lawsuit on jurisdictional grounds. That defendant’s “eleventh-hour decision to

submit to personal jurisdiction” in one federal court drove the Porsche Cars court to find that the ACPA

does not require that the conditions supporting in rem jurisdiction remain unchanged. Id. at 254. More

importantly, the holding in Porsche Cars was that a court could not be divested of in rem jurisdiction in

such a manner after it had made a finding that in rem jurisdiction existed. Id. at 255–59. The policy

behind the holding was to prevent “a person with an interest in a case” from being able to “yank it across

the country a few days before trial” as a litigation-manipulation tactic. Id. at 258. The Porsche Cars

court was careful to limit its holding to the facts of that case, finding that submission to personal

jurisdiction “three days before trial by a person who received actual notice of the in rem action nine

months earlier is far too late.” Id. at 259. 

The instant case differs from Porsche Cars in several significant respects. First, in Porsche Cars,

the defendant had “no contacts with the United States,” id. at 254, whereas in the present case, Mr.

Lawson appears to reside in and have at least some contact with the state of Texas. Therefore, it is likely

that a court in Texas would have personal jurisdiction over him, even if one in Washington might not. 

Second, this case is in its very early stages. There is no trial date yet, and no case schedule has been set. 

Third, there is no evidence whatsoever that Mr. Lawson might consent to personal jurisdiction in this

Court as a tactical move to defeat in rem jurisdiction. Finally, in contrast to Porsche Cars, there is no

prior finding by this Court that in rem jurisdiction is proper that is in danger of being upset. Rather, the

Court presently analyzes the issue for the first time. Therefore, although consent was insufficient to

defeat in rem jurisdiction in Porsche Cars, appearance and consent to personal jurisdiction would be

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26 ORDER – 7

sufficient to defeat in rem jurisdiction on the facts and procedural posture of the present case. 

The Court finds that Plaintiff cannot meet the standard of § 1125(d)(2)(A)(ii)(I), because Mr.

Lawson could be subject to the jurisdiction of this Court or another United States federal court. 

Nor can Plaintiff meet the standard of § 1125(d)(2)(A)(ii)(II). Plaintiff clearly has found Mr.

Lawson, and Mr. Lawson has engaged in this litigation. That the only known address is a P.O. Box in

Waco, Texas is not enough to show that Plaintiff cannot “find” Mr. Lawson. Plaintiff’s evidence of

inability to find consists of unreturned phone calls and the fact that Plaintiff does not know a street

address for Mr. Lawson. Plaintiff presents no evidence of efforts to further investigate a street address or

to employ means other than phone calls to Mr. Lawson to locate him. Plaintiff does not allege that Mr.

Lawson is outside the United States. Coupled with the obvious fact that Plaintiff has evoked a response

from Mr. Lawson on several occasions, particularly in these court proceedings, Plaintiff’s limited efforts

at locating Mr. Lawson are insufficient to support in rem jurisdiction based on an inability to find him.

Having determined, for the foregoing reasons, that Plaintiff fails to satisfy both potential in rem

jurisdictional hooks, the Court cannot allow an in rem proceeding to continue against

www.vilcabamba.com. Accordingly, Plaintiff’s in rem cause of action must be DISMISSED. The Court

therefore moves on to Plaintiff’s motions to amend its Complaint and to transfer venue to the Western

District of Texas.

B. Amendment Adding In Personam Claim

As noted above, a direct action against domain name owner James Lawson is possible under 

§ 1125(d)(1). Plaintiff seeks leave to amend its Complaint to plead a cause of action under this

subsection, with jurisdiction over Mr. Lawson in personam. 

Leave to amend should be freely given when justice so requires. FED. R. CIV. P. 15(a). Mr.

Lawson has appeared in this matter and he likely can be subject to personal jurisdiction in some district in

the United States, if not here. For these reasons—and because this litigation is in its early stages—the

Court finds amendment of the Complaint proper. Accordingly, Plaintiff’s motion for leave to amend is

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26 ORDER – 8

GRANTED. This ruling does not assume or rely on the existence of personal jurisdiction over Mr.

Lawson in this Court or elsewhere. Such a determination is not appropriate at this stage of the litigation,

because, when Plaintiff’s First Amended Complaint (see Pl.’s Amend Mot. Ex. A) is filed pursuant to this

Order, this case will include an in personam claim for the first time.

C. Transfer of Venue

The present action was filed in the Western District of Washington pursuant to § 1125(d)(2)(A),

which provides that in rem venue is proper in the judicial district where the domain name registrar,

registry, or other domain name authority is located. Because www.vilcabamba.com’s domain registrar is

located in Bellevue, Washington, this district was the proper one in which to file this case. However,

now that the in rem claim must be dismissed and an in personam claim will be added by amendment, the

Court must reevaluate proper venue. 

“For the convenience of parties and witnesses, in the interest of justice,” the Court may “transfer

any civil action to any other district or division where it might have been brought.” 28 U.S.C. § 1404(a). 

Both Plaintiff and Mr. Lawson are located in Texas. Because the Court has already determined that the

in rem claim must be dismissed, www.vilcabamba.com will no longer be a party to this suit. Further,

Plaintiff may amend its complaint to assert a claim against Mr. Lawson in personam without maintaining

www.vilcabamba.com as an in rem defendant. Therefore, Mr. Lawson will be the only defendant in this

action once Plaintiff’s First Amended Complaint is filed. Because Plaintiff could have brought an action

against Mr. Lawson in Texas, and because such venue is more convenient to both parties named in the

proposed First Amended Complaint (Plaintiff and Mr. Lawson), the Court finds it proper to transfer this

matter to the Western District of Texas, Waco Division, following the filing of Plaintiff’s First Amended

Complaint. Plaintiff’s motion for such transfer is therefore GRANTED. 

//

//

//

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26 ORDER – 9

III. CONCLUSION 

For the foregoing reasons, Plaintiff’s in rem claim against www.vilcabamba.com is DISMISSED;

Plaintiff’s motion to amend its Complaint is GRANTED; and Plaintiff’s motion to transfer venue is

GRANTED. Plaintiff must file its First Amended Complaint within 5 days of the date of this Order. The

Clerk is DIRECTED to transfer this case to the Western District of Texas, Waco Division, 30 days from

the date of this Order. Mr. Lawson’s substantive arguments and motion to dismiss (Dkt. No. 16) will be

considered by the transferee court. The in-court Status Conference presently scheduled in this matter for

April 11, 2006 is unnecessary due to the change of venue and is hereby STRICKEN.

SO ORDERED this 30th day of March, 2006.

A

John C. Coughenour

United States District Judge

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