JUDGMENT ORDER AND DECREE

Wherefore, it is ordered and decreed as follows:

A. Defendant, Domain Source, Inc., is hereby enjoined, if it presently owns the
domain name, paulwright.com, from transferring the domain name to any person or entity other
than plaintiff;

B. Defendant is hereby ordered, if it presently owns the domain name,
paulwright.com, immediately to transfer said name to plaintiff;

Cc Defendant shall pay to plaintiff his costs;

D. Plaintiff is given until August 30, 2002 to submit a bill of costs;

E. Count II of the complaint is dismissed with prejudice;

F. The court retains jurisdiction for the purpose of enforcement of this decree;

ENTER: Chen Ki Kefther—

G. This is a final judgment.

U/ JOAN HUMPHREY LEFKOW
United States District Judge

Dated: August Z7, 2002

13


court directed plaintiff to submit an affidavit in support of his motion and continued the motion
to July 23. On July 9, plaintiff filed the affidavit. The motion was continued at plaintiff's
request to July 30. On July 25, however, because Seivright had informed plaintiff that DSI had
recently sold the domain name, plaintiff interposed a motion for partial default judgment,
believing that his claim for a preliminary injunction had become moot. The motion for partial
default judgment alleges that DSI transferred the domain name in “open and express defiance of
this court’s jurisdiction,” and further that DSI has refused to respond to plaintiff's
communications or appear and participate in the litigation. Plaintiff seeks a judgment of liability
on Counts J and II of the complaint, as well as reasonable expenses and an attorney’s fee as
compensation for DSI’s failure and refusal to participate in the framing of a discovery plan in this
case, and an order for forfeiture and transfer of the domain name, paulwright.com, to plaintiff.
DISCUSSION

A. Jurisdictional issues
d. Subject matter jurisdiction

This court has jurisdiction over the subject matter under 15 U.S.C. § 1121(a)’ and 28
U.S.C. § 1331 (federal question).
2. Personal jurisdiction

The court has personal jurisdiction over DSI. “The plaintiff bears the burden of
demonstrating personal jurisdiction.” Central States, Southeast & Southwest Areas Pension

Fund v. Reimer Express World Corp., 230 F.3d 934, 939 (7" Cir. 2000), citing RAR, Inc. v.

3Section 1121(a) gives the district courts original jurisdiction of all actions arising under chapter 22 -
trademarks - without regard to the amount in controversy or the existence of diversity of citizenship.

4


under Rule 4(e)(1), “pursuant to the law of the state .. . in which service is effected . . . ,” here,
California, or “by delivering a copy of the summons and complaint to any agent authorized by
law to receive service of process... .” Under the California Code of Civil Procedure, CAL. PRO.
CODE § 416.10 (2002), in addition to delivery,

... if the agent designated [by a corporation] cannot with reasonable diligence be

found at the address designated for personally delivering the process, . . . the court

may make an order that the service be made upon the corporation by delivering by

hand to the Secretary of State, or to any person employed in the Secretary of

State’s office in the capacity of assistant or deputy, one copy of the process for

each defendant to be served, together with a copy of the order authorizing such

service. Service in this manner is deemed complete on the 10th day after delivery

of the process to the Secretary of State.*
Plaintiff has demonstrated reasonable diligence in his attempt to personally serve process, has
obtained an order of this court authorizing substitute service on the Secretary of State of
California, and has served the Secretary of State by hand delivery. Further, the record reflects that
the registered agent, Seivright, signed a postal receipt and orally acknowledged receipt of
plaintiff's “certificate of service.” As such, plaintiff has established that DSI has been served and
has actual notice of this suit.
B. The ACPA claim: Count I

Under 15 U.S.C. § 1129(1)(A),

Any person who register a domain name that consists of the name of another

living person, or a name substantially and confusingly similar thereto, without that

person’ consent, with the specific intent to profit from such name by selling the
domain name for financial gain to that person or any third party, shall be liable in

‘subsection (d) provides that “[t]he court order... may be a court order of a court of another state, or of
any federal court if the suit, action, or proceeding has been filed in that court.”


constitutional limits, “the statutory analysis collapses into a due process inquiry, and [the court]
need not consider whether [the defendant] engaged in any of the acts enumerated under the long-
arm statute.” E.g., LFG, LLC, 78 F. Supp. 2d at 735, citing Dehmlow v. Austin Fireworks, 963
F, 2d 941, 945 (7" Cir. 1992); see RAR, Inc., 107 F.3d at 1276.

The defendant may be subject to personal jurisdiction either by way of general or specific
jurisdiction. E.g., RAR, Inc., 107 F.3d at 1276. The defendant is subject to general jurisdiction
when it is either domiciled in the forum state, see Euromarket Designs, Inc. v. Crate & Barrel
Lid., 96 F. Supp. 2d 824, 833 (N.D. Ill. 2000), or “where the defendant has continuous and
systematic general business contacts with the forum[,]” RAR, Inc., 107 F.3d at 1277, quoting
Helicopteros Nacionales de Colombia, S.A. v. Hall, 466 U.S. 408, 414 n.8 (1984) (internal
quotations omitted). Beyond DSI identifying itself as an “internet web traffic . . . business,”
which indicates that it does business only on the Internet, there is no evidence of general
jurisdiction in this case.

In order to meet the specific jurisdiction requirements, the court applies the test
articulated in Reimer Express World Corp., 230 F.3d at 942-43, to

... (1) identify the contacts the defendant has with the forum; (2) analyze whether

these contacts meet constitutional minimums .. . [(3)] whether exercising

jurisdiction on the basis of these minimum contacts sufficiently comports with

fairness and justice; [and (4)] determine whether the sufficient minimum contacts,

if any, arise out of or are related to the causes of action involved in the suit.

Because the court has found no cases treating personal jurisdiction in the context of the ACPA, it
will rely primarily on trademark infringement cases.

a. Whether DSI has contacts with the forum

Plaintiff points to DSI’s Internet-related activities via a website registered under the


- Turner Diesel, Ltd., 107 F.3d 1272, 1276 (7" Cir. 1997). In order to meet this burden, the
plaintiff must provide sufficient evidence to establish a prima facie case of personal jurisdiction.
Michael J. Neuman & Assoes., Ltd. v. Florabelle Flowers, Inc., 15 F.3d 721, 724 (7" Cir. 1994).
Ina federal question case, the court’s assertion of personal jurisdiction must satisfy the due
process requirements familiarly characterized as “traditional notions of fair play and substantial
justice,” International Shoe Co. v. Washington, 326 U.S. 310, 316, quoting Milliken v. Meyer,
311 U.S. 457, 463 (1940), and the defendant must be amenable to service of process. See Omni
Capital Int’l, Ltd. v. Rudolf Wolff & Co., Ltd., 484 U.S. 97, 104 (1987) (“[B]efore a court may
exercise personal jurisdiction over a defendant, there must be more than notice to the defendant
and a constitutionally sufficient relationship between the defendant and the forum. There also
must be a basis for the defendant’s amenability to service of summons”).

Amenability to service derives from Federal Rule of Civil Procedure 4(k)(1), which
provides that service is effective to establish jurisdiction over the person of a defendant “(A) who
could be subjected to the jurisdiction of a court of general jurisdiction in the state in which the
district court is located, or... (D) when authorized by a statute of the United States.” The
ACPA does not provide for nationwide service of process, see 15 U.S.C. § 1121, so DSI’s
amenability to service is governed by the Illinois long arm statute, 735 ILCS 5/2-209(a). See
LFG, LLC v. Zapata Corp., 78 F. Supp. 2d 731, 735 (N.D. Ill. 1999). The Illinois long arm
statute provides for jurisdiction over a defendant who performs enumerated acts in connection
with tort or contract and further allows the exercise of personal jurisdiction on “any . . . basis
now or hereafter permitted by the Illinois Constitution and the Constitution of the United States.”

735 ILCS 5/2-290(c). Because the statute allows the exercise of personal jurisdiction to the


to have no business activity, such as a store or warehouse, other than the Internet. Its website
includes a single “page,” which includes the link “{c]ontact us for more information.” Once an
Internet user clicks on that link, they must complete a form, adding their name, email address and
comments, and then click “[s]end email” or “[rJeset.” As such, DSI maintains an interactive
website.

Under the traditional effects doctrine test, the court considers whether “1) the defendant’s
intentional tortious actions 2) expressly aimed at the forum state 3) causes harm to the plaintiff in
the forum state, of which the defendant knows is likely to be suffered.” Euromarket Designs,
Inc., 96 F. Supp. 2d at 835, citing Calder v. Jones, 465 U.S. 783 (1984).

The evidence before the court is persuasive that DSI is not a corporation that owns and
operates “brick & mortar” shops with a website designed to provide information to its customers
within its limited market area. DS] identifies itself as an “internet web traffic . . . business,”
which fact indicates that it does business only on the Internet. Plaintiff's evidence supports his
allegations that he earlier registered the domain name, which became associated with his
business, and after his registration lapsed (through no fault of his own), DSI registered it and
contacted plaintiff in Illinois to attempt to sell it to him. See discussion infra pages 10-11. There
is evidence that DSI was aware when it solicited plaintiff to purchase paulwright.com that
plaintiff was located in Illinois. These facts are sufficient to establish a prima facie basis for
specific jurisdiction over DSI.

3. Service of process
The court finds that DSI has been properly served with a copy of the summons and

complaint. Under Rule 4(h), FED. R. Civ. P., a corporation may be served as upon individuals


finute Order, pm (06/97
. WZ United States District Court, Northern District of Illinois

Name of Assigned Judge Joan H. Lefkow Sitting Judge if Other
yy or Magistrate Judge than Assigned Judge
CASE NUMBER 02 C 2525 DATE 8/27/2002
CASE Wright vs. Domain Source, Inc.
TITLE

[in the following box (a) indicate the party filing the motion, e.g., plaintiff, defendant, 3rd party plaintiff, and (b) state briefly the nature

MOTION: of the motion being presented.]

DOCKET ENTRY:

qQ) Oo Filed motion of [ use listing in “Motion” box above.]

(2) Oo Brief in support of motion due

(3) Oo Answer brief to motion due___. Reply to answer briefdue___

(4) Oo Ruling/Hearingon__—s set fort

(5) Oo Status hearing[held/continued to] [set for/re-setfor]on___——ssetfor___—_at

(6) Oo Pretrial conference[held/continued to] [set for/re-set for]on__ssetfor sat.
(7) o Trial[set for/re-set for]on at

(8) im) [Bench/Jury trial] [Hearing] held/continuedto___—_at

(9) Qo This case is dismissed [with/without] prejudice and without costs[by/agreement/pursuant to]

OFRCP4(m) O Local Rule 41.1 CM FRCP41(a)(1) O FRCP41(a)(2).

qo) (Other docket entry] Enter Memorandum Opinion and Order. plaintiff’s motion for partial judgment is treated
as a motion for final judgment by default and is granted. Enter Judgment Order and Decree. Defendant, Domain Source,
Inc., is hereby enjoined, if it presently owns the domain name, paulwright.com., from transferring the domain name to any
person or entity other than plaintiff. Defendant, Domain Source, Inc., is hereby ordered, if it presently owns the domain
name, paulwright.com., immediately to transfer said name to plaintiff. Defendant shall pay plaintiff his costs. Plaintiff
is given until 8/30/02 to submit a bill of costs. Count II of the complaint is dismissed with prejudice. The Court retains
jurisdiction for the purpose of enforcement of this decree. This is a final judgment.

ql) ff {For further detail see order attached to the original minute order.]

No notices required, advised in open court.
1

No notices required. numberof notices

VY | Notices mailed by judge’s staff.

Notified counsel by telephone. datetdocketed

Docketing to mail notices. .
V_|: Mait AO 450 form. Mailed by MD. | ad / LZ

4d q’*ey
Copy to judge/magistrate judge. O29 LOW ESIG SA
yg 9/27/2002
. date mailed notice
courtroom cishua | fi

MD deputy’s Ud Lo oll wo
initials

Date/time'received in.
central Clerk’s Office mailing deputy initials



an active website with that domain name, which search of course means nothing other than it
may be that DSI has not transferred the name or that it is no longer registered to anyone. In the
event that DSI may still hold the domain name registration, however, the court may direct DSI to
transfer the domain name to plaintiff if, upon service of this order, it has not in fact transferred
the name to a third party, and it may award plaintiff his costs.

Plaintiff has not demonstrated that he is entitled to a reasonable attorney’s fee based on
DSI’s failure to participate in this litigation. A party may choose to default, and the penalty for
that is a default judgment. Neither is there an apparent basis for fees to a pro se lawyer litigant
under the ACPA. Cf Kay v. Ehrler, 499 U.S. 432 (1991) (A lawyer who proceeds pro se is not
entitled to an attorney’s fee under 42 U.S.C. § 1988); DeBold v. Stimson, 735 F.2d 1037, 1043
(7" Cir. 1984) (Expressly reserved the issue whether a pro se litigant who is also an attorney
would be entitled to an award of an attorney’s fee under Freedom of Information Act).
Cc. The California claims: Count II

Similar to the ACPA, California’s Business & Professions Code, CAL. BUS. & PROF.
CODE §§ 17525 et seq. (2002), prohibits the bad faith registration of a person’s name as a domain

name.® The law imposes a civil penalty for violation. Jd. at § 17526. Section 17535, however,

®CaL. Bus. & PROF. CODE § 17525 (2002) provides,

(a) It is unlawful for a person, with a bad faith intent to register, traffic in, or use a domain name,
that is identical or confusingly similar to the personal name of another living person or deceased
personality, without regard to the goods or services of the parties.

(b) This section shall not apply if the name registered as a domain name is connected to a work of
authorship, including, but not limited to, fictional or nonfictional entertainment, and dramatic,
literary, audiovisual, or musical works.

(c) A domain name registrar, a domain name registry, or any other domain name registration

authority that takes any action described in subdivision (a) that affects a domain name shall not be
liable to any person for that action, regardless of whether the domain name is finally determined to

11


a civil action by such person.°
According to plaintiff's affidavit and the documents submitted therewith, DSI knowingly
registered a domain name that consists of the name of plaintiff, Paul Wright, without plaintiff's
consent or the consent of any other person named Paul Wright, with the specific intent to profit
from the name by selling the domain name for financial gain to plaintiff or another person named
Paul Wright. Specifically, plaintiff has submitted evidence that DSI is listed in a directory of
domain registrants as the owner of multiple domains (Compl. Ex. F); that an on-line search of
DSI domain names revealed numerous domain names, including many personal names and
recognizable commercial names, that appear to bear no relationship to DSI or its representative,
Seivright; that Seivright has admitted to plaintiff that DSI sells domain names as a business; and
that DSI publishes advertisements such as “[h]undreds of prime domains for sale,” and “{a]
completely new method of listing domains for sale.” In light of this evidence, the court finds that
plaintiff has demonstrated that DSI has violated § 1129(1)(A), and that he is entitled to relief.

Section 1129(2) provides that “a court may award injunctive relief, including the
forfeiture or cancellation of the domain name or the transfer of the domain name to the plaintiff.
The court may also, in its discretion, award costs and attorneys fees to the prevailing party.”
Inasmuch as plaintiff believes that DSI has already transferred paulwright.com to a third party
whose name may also be Paul Wright, an order of injunction to transfer or to cancel the domain
name may trespass on the rights of the third party, which this court is unwilling to do by way of

default judgment. Nevertheless, the court’s own search for paulwright.com yielded no report of

Slthough subsection (B) of § 1129(1) sets out good faith exceptions to (A), none of the exceptions appears
to be applicable. At least, by its default DSI has forfeited the assertion of an exception.

10


: domain name “domainsource.com.” Other alleged contacts include DSI’s emails to plaintiff in
connection with paulwright.com.

b Whether these contacts meet the constitutional minimum

In considering whether DSI’s alleged contacts meet the constitutional minimum, the court
will consider whether DSI has done “some act or consummate[d] some transaction with the
forum state, or perform[ed] some act by which he purposefully avails himself of the privilege of
conducting activities in the forum, thereby invoking the benefits and protection of its laws[.]”
Euromarket Designs, Inc., 96 F. Supp. 2d at 834. Where part of the alleged wrongful conduct
involves Internet activities, courts consider both the traditional “effects” analysis, as well as the
more recently articulated “sliding scale” analysis. See id. at 835.

Under the sliding scale test, the court weighs the nature and quantity of the Internet
activities in evaluating evidence of minimum contacts. E.g. Zippo Mfg. Co. v. Zippo Dot Com,
Inc., 952 F. Supp. 1119, 1124 (W.D. Pa. 1997). Three categories of Internet activity have been
described: whether the defendant conducts business over the Internet through its active website,
whether the defendant maintains an interactive website, or whether the defendant maintains a

. passive website without any interactive element. E.g. School Stuff, Inc. v. Sch. Stuff, Inc., No. 00
C 5593, 2001 WL 558050, at *3 (N.D. Ill. May 21, 2001). Courts generally exercise jurisdiction
where an active site exists and do not exercise jurisdiction for passive sites. LFG, LLC, 78 F.
Supp. 2d at 736. With respect to interactive sites, the middle category, “the exercise of
jurisdiction is determined by examining the level of interactivity and commercial nature of the
exchange of information that occurs on the website[,]” id.; Zippo Mfg. Co., 952 F. Supp. at 1124,

between the user and the host computer. School Stuff Inc., 2001 WL 558050, at *3. DSI appears


the complaint alleges violation of “California’s Unfair Competition Act” (uncited, other than as
may be referenced in paragraph 4 of the complaint as CAL. Bus. & PROF. CODE §§ 17525 et seq.
(2002).?
B. Jurisdictional allegations

Plaintiff, who is an attorney and a member of the bar of this court, alleges that DSI is a
California corporation with its principal place of business in Rio Del Mar, California, and that
Andrew Seivright (“Seivright”) is registered with the Secretary of State of California as DSI’s
agent for service of process. Plaintiff represents and demonstrates by various forms of
documentary evidence that his diligent efforts to obtain personal service on DSI at any of its
known places of business were unsuccessful and that he, with leave of this court, obtained
substituted service on the California Secretary of State. He further represents that he mailed a
copy of the summons and complaint to Seivright at 617 Beach Drive, Aptos, California, and that
Seivright acknowledged receipt in writing on June 28, 2002. Plaintiff's Illinois address was used
in all of plaintiff's written communications with DSI. Plaintiff further represents that on June 28,
a person identifying himself as Seivright left a voicemail message with plaintiff acknowledging,
“I just received your certificate of service... ,” from which facts plaintiff infers that DSI has
actual as well as legally sufficient notice of the law suit.
C. Procedural history

Plaintiff initially moved for preliminary injunction, attempting to prevent DSI from

selling the domain name paulwright.com. This court heard the motion on July 8, 2002. The

2The court has found no indication that CAL. BUS. & PROF. CODE §§ 17525 and 17535 are denominated
“California’s Unfair Competition Act.”


FACTS AND PROCEDURAL HISTORY

A. Substantive allegations

The complaint alleges that plaintiff registered a domain name “paulwright.com” on or
about June 29, 1999, with Network Solutions, Inc., the designated registrar of the Internet
Corporation for Assigned Names and Numbers (“ICANN”), that plaintiff used this domain name
in interstate and international commerce, and that his services have become directly associated
with paulwright.com. During approximately September, 2001, plaintiff discovered that, due to
circumstances beyond his control and despite his diligence in maintaining his domain name
registration, his domain name registration had lapsed and that DSI had registered
paulwright.com. On October 22, 2001, and again on December 27, 2001, plaintiff contacted
paulwright.com via e-mail explaining his dilemma and requesting that DSI return the registration
to him for a nominal charge such as $35. Responding to the second e-mail, DSI represented that
it was in the “internet web traffic .. . business” and offered to sell the domain name to plaintiff
for $1,855. The complaint alleges that DSI registered plaintiff's personal name without his
consent, and without a good faith basis to register the name, and with the bad faith intent to
traffic in plaintiffs personal name. The complaint also alleges that DSI traffics in domain names
and engages in unlawful registration and marketing of domain names on the Internet. The
complaint represents that DSI, not having persuaded plaintiff to buy the domain name, has
informed plaintiff that it sold paulwright.com to another individual named Paul Wright.

In Count I, the complaint alleges that the registration of plaintiff's personal name as a
domain name, which name is recognized in commerce as belonging to plaintiff, with specific

intent to profit therefrom by selling the name, violates the ACPA, 15 U.S.C. § 1129. In Count II,


UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF ILLINOIS

EASTERN DIVISION
PAUL WRIGHT, )
)
Plaintiff, )
)
vs. ) No. 02 C 2525
) Judge Joan H. Lefkow
DOMAIN SOURCE, INC., )
)
Defendant. )
)

MEMORANDUM OPINION AND ORDER
Plaintiff, Paul Wright, pro se, filed this action on April 2, 2002, against Domain Source,

Inc. (“DSI”), alleging violation of the Anticybersquatting Consumer Protection Act (the
“ACPA”), codified at 15 U.S.C. § 1129(1),' and similar provisions of the California Business
and Professions Code, CAL. Bus. & PROF. CODE §§ 17525 et seg. (2002), and seeking damages,
injunctive relief, costs, and an attorney’s fee based on alleged piracy of his registered domain
name on the Internet. The complaint alleges that this court has jurisdiction over the ACPA
claims as authorized under 15 U.S.C. § 1121(a), and supplemental jurisdiction over the
California state law claims pursuant to 28 U.S.C. § 1367.

D@CKETED

AUG 28 2002

"The ACPA, Pub. L. No. 106-113, 113 Stat. 1501, was enacted and became effective November 29, 1999.
Although plaintiff alleges violation of the Lanham Act (formally known as the Trademark Act of 1946), 15 U.S.C.
§§ 1125 et seq., the anticybersquatting provision on which he relies throughout his papers is not part of the Lanham
Act. And although the complaint uses some terms familiar to trademark infringement cases (e.g., “. . . Plaintiff's
services became directly associated with the Domain ‘paulwright.com’” Compl. 9), he does not allege that “Paul
Wright” or “paulwright.com” is a trademark.


indicates that California law does not authorize a private right of action for plaintiff. Rather, the
attorney general or certain other public officials are authorized to apply to a court for injunctive
and other relief.’ Without having been provided any authority for a private cause of action, the
court concludes that plaintiff has no basis to assert this claim. For these reasons, Count II of the
complaint will be dismissed.
CONCLUSION

Although plaintiff has sought “partial” judgment, the above analysis demonstrates that
plaintiff has received the relief available under the law that supports his complaint. The
complaint seeks damages as well as injunctive relief, costs and an attorney’s fee, but the court
finds no basis in the law for an award of damages. For this reason, the motion for partial default

judgment is treated as a motion for a final judgment by default and is granted.

infringe or dilute a trademark or service mark.

7Section 17535 provides,

Any person, corporation, firm, partnership, joint stock company, or any other association
or organization which violates or proposes to violate this chapter may be enjoined by any
court of competent jurisdiction, The court may make such orders or judgments, including
the appointment of a receiver, as may be necessary to prevent the use or employment by
any person, corporation, firm, partnership, joint stock company, or any other association
or organization of any practices which violate this chapter, or which may be necessary to
restore to any person in interest any money or property, real or personal, which may have
been acquired by means of any practice in this chapter declared to be unlawful.

Actions for injunction under this section may be prosecuted by the Attorney General or
any district attorney, county counsel, city attorney, or city prosecutor in this state in the
name of the people of the State of California upon their own complaint or upon the
complaint of any board, officer, person, corporation or association or by any person
acting for the interests of itself, its members or the general public.

12