UNITED STATES COURT OF APPEALS
FOR THE SECOND CIRCUIT
August Term, 2001
Argued: Decided: November 07, 2002)§
Docket No. 01-7680
_________________________________________
ATTEL, INC.,
Plaintiff-Appellant,
v.
BARBIE-CLUB.COM, BARBIE21.COM, BARBIEBORZA.COM, BARBIEDOLL-A.COM,
BARBIEGALLERY.COM, BARBIEJ.COM, BARBIEPCHOME.COM,
BARBIESECRETS.COM, CAPTAINBARBIE.COM, MISSBARBIE.COM,
PRINCESSBARBIE.COM, QUIEROKILLERBARBIES.COM, QUIEROBARBIE.COM,
THEBARBIE.COM, THEBARBYS.COM, CASINOHOTWHEEL.COM,
CASINOHOTWHEELS.COM, HOTWHEELCASINO.COM, HOTWHEELSCASINO.COM,
THEHOTWHEELCASINO.COM, HOTWHEELSCAFE.COM,
HOTWHEELSCANADA.COM, HOTWHEELSHOME.COM, HOTWHEELSPCHOME.COM,
HOTWHEELSUSA.COM, HOTWHEELSWEB.COM, OURHOTWHEELS.COM,
COOLHOTWHEELS.COM, ILOVEHOTWHEELS.COM, IHOTWHEELS.COM,
HOTWHEELSWANTED.COM, BUYMATCHBOX.COM, COOLMATCHBOX.COM,
ILOVEMATCHBOX.COM, IMATCHBOX.COM, MATCHBOXINTROS.COM,
ATCHBOXONLINE.COM, OURMATCHBOX.COM, MYMATCHBOX.COM,
ATELLSOFTWARE.COM, MATELLSOFTWARE.NET, MATELLSOFTWARE.ORG,
ATTELS.COM, MATTLE.NET, MASTERTHEUNIVERSE.COM, SEE-AND-SEE.COM,
SEENSAY.NET, SEENSEE.NET, TYCOLTD.COM, VIEWERMASTER.COM,
VIEWMASTERS.NET, BARBIE21CENTURY.COM, and MATTLE.COM,
Defendants-Appellees.
__________________________________________
Before: CABRANES, STRAUB, and SOTOMAYOR, Circuit Judges.
Appeal from orders of the United States District Court for the Southern District of
New York (Cote, J.) dismissing claims brought under the Anticybersquatting Consumer
Protection Act of 1999, 15 U.S.C. 1125(d), for lack of in rem jurisdiction.
Affirmed.
WILLIAM DUNNEGAN, Perkins & Dunnegan, New York, NY,
for Plaintiff-Appellant.
MICHAEL ASCHEN, Abelman, Frayne & Schwab, New York,
NY, for Defendant-Appellee captainbarbie.com.
SOTOMAYOR, Circuit Judge:
Plaintiff Mattel, Inc. ("Mattel") appeals from orders entered by the United StatesDistrict Court for the Southern District of New York (Cote, J.) on May 2 and May 17, 2001,
dismissing Mattel's claims against the defendant domain names (collectively, the "Domain
Names") for lack of in rem jurisdiction under the Anticybersquatting Consumer Protection Act of
1999 ("ACPA"), 15 U.S.C. § 1125(d). We affirm, holding that (1) subsection (d)(2)(A) of theACPA provides for in rem jurisdiction only in the judicial district in which the registrar, registry,
or other domain-name authority that registered or assigned the disputed domain name is located,
and (2) subsection (d)(2)(C) does not provide an additional basis for in rem jurisdiction.
BACKGROUND
I. Facts
The underlying facts are not in dispute. Mattel owns registered trademark rights
to "Barbie," "Hot Wheels," and other well-known marks. To protect these marks against
allegedly unlawful domain-name registration and use, Mattel filed this in rem action against the
Domain Names in the Southern District of New York on November 15, 2000, seeking
cancellation or transfer of the Domain Names under the ACPA, 15 U.S.C. § 1125(d). The
Domain Names are fifty-seven Internet addresses that were registered with domain-name
registrars in the United States by various persons or entities over which Mattel alleged that it
could not obtain personal jurisdiction. Because Mattel could not sue in personam, it sought to
avail itself of the in rem provisions of the ACPA, which permit the owner of a mark to bring suit
directly against a domain name that "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." 15 U.S.C.
§ 1125(d)(2)(A)(i).
A domain name is a unique string of characters or numbers that typically is used
to designate and permit access to an Internet website. See Sporty's Farm L.L.C. v. Sportsman's
arket, Inc., 202 F.3d 489, 492-93 (2d Cir. 2000). The widespread use of domain names in
recent years has been accompanied by a phenomenon known as "cybersquatting," which involves
the registration as domain names of well-known trademarks by
non-trademark holders who then try to sell the names back to the
trademark owners. Since domain name registrars do not check to
see whether a domain name request is related to existing
trademarks, it has been simple and inexpensive for any person to
register as domain names the marks of established companies.
This prevents use of the domain name by the mark owners, who
not infrequently have been willing to pay "ransom" in order to get
"their names" back.
Id. at 493 (citing H.R. Rep. No. 106-412, at 5-7 (1999); S. Rep. No. 106-140, at 4-7 (1999)). In
order to combat such bad-faith registration or use of domain names, Congress enacted the ACPA
as a supplement to the federal trademark statute. The ACPA applies to all domain names
registered before, on, or after the date of enactment, November 29, 1999. Pub. L. No. 106-113
tit. III § 3010, 113 Stat. 1501, 1501A-552 (1999).
Defendant-appellee captainbarbie.com ("captainbarbie.com") the onlydefendant to submit a brief on this appeal is typical of the Domain Names. Captainbarbie.com
is registered with Bulkregister.com, a domain-name registrar with offices in Baltimore,
aryland. Most of the other domain names were registered with domain-name authorities in
aryland, Virginia, or California. Four of the Domain Names (matellsoftware.com,
matellsoftware.net, matellsoftware.org, and masteroftheuniverse.com) were registered with
Register.com, a registrar with its principal office in New York City, within the Southern District
of New York.
Shortly after filing this action in the Southern District, Mattel arranged to have
"registrar's certificates" for each of the Domain Names sent by their respective domain-name
authorities and deposited with the district court. Under the ACPA, a registrar's certificate is
understood to constitute a "document[] sufficient to establish [a district court's] control and
authority regarding . . . the use of the domain name." 15 U.S.C. § 1125(d)(2)(C)(ii). Depositing
such documentation with the district court also serves to signify, in the manner of interpleader,
the registrar's disinterested surrender of the disputed property to the adjudicative authority of the
court. See id. § 1125(d)(2)(D); see also FleetBoston Fin. Corp. v. Fleetbostonfinancial.com, 138
F. Supp. 2d 121, 126 (D. Mass. 2001) ("[I]t appears the deposit of registration documents wasdesigned to relieve registration authorities of the burdens of appearing in domain name dispute
litigation by formalizing a procedure through which those authorities can simply deposit the
disputed intangible in a manner not unlike interpleader.").
II. The Proceedings Below
A. The Preliminary Conference
The proceedings below were complicated by an unfortunate but ultimately
innocuous confusion of terminology between "subject matter jurisdiction" and "in rem
jurisdiction." The confusion was initiated by counsel for captainbarbie.com at the preliminary
conference held on March 30, 2001, when counsel raised a "concern . . . about the subject matter
jurisdiction of the court" and then proceeded to argue that Mattel's broad interpretation of
§ 1125(d) (the in rem jurisdiction provision) was an incorrect invocation of the "subject matter
jurisdiction [sic] of the court." Both parties as well as the court continued to refer to "subject
matter jurisdiction" instead of "in rem jurisdiction" throughout the conference.
The record shows that, muddled as their terminology was, the parties and the
court essentially understood the substance of the two concepts. Although the district judge
announced that it thought to satisfy itself as to the "issue of subject matter jurisdiction," the judge
plainly meant that Mattel should address the specific issues regarding in rem jurisdiction that
captainbarbie.com had raised. Complying with the judge's request with studied literalness while
ignoring her manifest intention, Mattel submitted a brief demonstrating that the ACPA conferred
federal-question subject matter jurisdiction on the court. After receiving captainbarbie.com's
response brief, which substantively addressed the issue of in rem jurisdiction, the district court
dismissed the case for lack of "in rem jurisdiction under 15 U.S.C. § 1125(d)." Mattel, Inc. v.
Barbie-Club.Com, No. 00 Civ. 8705, 2001 WL 436207, at *3 (S.D.N.Y. May 1, 2001). Mattel
neither sought to file a further brief in reply to captainbarbie.com's response brief nor moved for
reconsideration or reargument on the issue of in rem jurisdiction. In a post-opinion brief
responding to specific questions posed by the court, Mattel did not challenge the court's
disposition of the jurisdictional question and made no mention of being surprised that in rem
jurisdiction rather than subject matter jurisdiction was the ground of dismissal.
B. The District Court Decision
The district court's opinion, which states that captainbarbie.com "has raised the
issue of whether this Court has subject matter jurisdiction over this in rem action," Mattel, Inc.,
2001 WL 436207, at *1, analyzes in rem jurisdiction under the ACPA and concludes by
dismissing the action because "this Court lacks in rem jurisdiction under 15 U.S.C. § 1125(d)
over defendant captainbarbie.com, and all other defendants in this action that do not have a
domain name registrar, domain name registry, or other domain name authority that registered or
assigned the domain name located within this district." Id. at *3.
The district court reached this conclusion by determining that: (1) § 1125(d)(2)(A)
of the ACPA does not allow in rem jurisdiction "except in the judicial district in which the
domain name registry, registrar, or other domain name authority is located"; (2) § 1125(d)(2)(C),
which Mattel argued provides an additional basis for in rem jurisdiction in any other judicial
district where a registrar's certificate or similar documentation has been deposited with the court,
exists simply "to facilitate the continuation of litigation in one of the districts identified in
subparagraph (2)(A)"; and (3) interpreting § 1125(d)(2)(C) as a basis for in rem jurisdiction
"would run afoul of the due process clause of the Fifth Amendment of the United States
Constitution." Mattel, Inc., 2001 WL 436207, at *2 (quoting FleetBoston, 138 F. Supp. 2d at
125, 129, 135).
The district court dismissed the action in orders entered on May 2 and May 17,
2001. This timely appeal followed. We have jurisdiction pursuant to 28 U.S.C. § 1291.
DISCUSSION
I. Standard of Review
We review de novo a dismissal for lack of in rem jurisdiction. LiButti v. United
States, 178 F.3d 114, 122 (2d Cir. 1999); Dluhos v. The Floating & Abandoned Vessel, 162 F.3d
63, 68 (2d Cir. 1998). On de novo review, "the burden of proving jurisdiction is on the party
asserting it," Robinson v. Overseas Military Sales Corp., 21 F.3d 502, 507 (2d Cir. 1994),
although, prior to discovery, this burden is a lenient one, inasmuch as "a plaintiff may defeat a
motion to dismiss based on legally sufficient allegations of jurisdiction," Metro. Life Ins. Co. v.
Robertson-Ceco Corp., 84 F.3d 560, 566-67 (2d Cir. 1996).
II. Whether the District Court Dismissed for Lack of Subject Matter
Jurisdiction
On appeal, as below, Mattel seeks to make subject matter jurisdiction an issue and
argues that the district court erred in dismissing the action for lack of "subject matter
jurisdiction."
As noted above, the district court did not dismiss this action for lack of subject
matter jurisdiction, despite the court's inadvertent use of that term at the preliminary conference
and in its written orders. Nor did captainbarbie.com ever argue, in substance, that the court
lacked subject matter jurisdiction over this federal-question action. Subject matter jurisdiction is
clearly satisfied here because Mattel's claims are founded upon a federal statute that confers
subject matter jurisdiction on the district and appellate courts. See 15 U.S.C. § 1121(a) ("Thedistrict . . . courts of the United States shall have original jurisdiction and the courts of appeal of
the United States . . . shall have appellate jurisdiction, of all actions arising under [the federal
trademark statute, which includes the ACPA], without regard to the amount in controversy or to
diversity or lack of diversity of the citizenship of the parties."); see also 28 U.S.C. §1331
(federal question jurisdiction), § 1338(a) ("The district courts shall have original jurisdiction ofany civil action arising under any Act of Congress relating to . . . trademarks."); Porsche Cars N.
Am., Inc. v. Porsche.Net, 302 F.3d 248, 255 (4th Cir. 2002) ("[Plaintiff trademark owner's]assertion of substantive claims under federal statutes, the ACPA and the trademark-dilution
statute, invokes a federal court's subject-matter jurisdiction . . . .").
III. Whether the District Court Properly Dismissed for Lack of In Rem
Jurisdiction
The issue of in rem jurisdiction, which is one of first impression in this Circuit,
presents greater complexities. The ACPA, under 15 U.S.C. § 1125(d)(1), allows a trademark
owner to pursue an in personam civil action against an alleged trademark infringer. If the court
finds that in personam jurisdiction is not available or that the infringer cannot be located,
§1125(d)(2) allows the trademark owner to proceed against the domain name itself. Id.
§1125(d)(2)(A)(ii). This in rem jurisdiction was provided in part to address the situation where
"a non-U.S. resident cybersquats on a domain name that infringes upon a U.S. trademark." 145
Cong. Rec. H10,823, H10,826 (Oct. 26, 1999) (section-by-section analysis of ACPA); see also
Standing Stone Media, Inc. v. Indiancountrytoday.com, 193 F. Supp. 2d 528, 532 (N.D.N.Y.
2002) (noting that the ACPA's in rem jurisdiction was provided "to counter the unlawful activity
of foreign-resident cybersquatters").
The registrant of captainbarbie.com is an Australian entity over which Mattel
alleged in its complaint, and the district court apparently found, that Mattel was "unable to obtain
personal jurisdiction." Consequently, Mattel sought to obtain in rem jurisdiction over
captainbarbie.com pursuant to § 1125(d)(2)(A)(ii)(I). Because the parties effectively agree that
in rem jurisdiction is available in some judicial district within the United States, we turn to the
question of whether the Southern District of New York is a proper judicial district for
entertaining this in rem action. To answer that question, we analyze the language and structure
of § 1125(d)(2) as well as the legislative history of the ACPA.
A. The Language and Structure of § 1125(d)(2)
The parties dispute the meaning and function of two subsections of 15 U.S.C.
§ 1125(d)(2). Subsection (d)(2)(A) provides that an in rem civil action may be filed "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 . . . ." Id. § 1125(d)(2)(A).
Subsection (d)(2)(C) states that the "situs" of a domain name in an in rem action shall be deemed
to be
in the judicial district in which (i) the domain name registrar,
registry, or other domain name authority that registered or assigned
the domain name is located; or (ii) documents sufficient to
establish control and authority regarding the disposition of the
registration and use of the domain name are deposited with the
court.
Id. § 1125(d)(2)(C). Mattel argues that the latter subsection supplements and effectively expands
the jurisdictional grant contained in the former subsection by permitting suit to be brought in any
judicial district in which sufficient documents evidencing the disputed domain name are
deposited with the district court. Accordingly, Mattel contends that it was simply following
statutory instructions when it opted to file suit in the Southern District of New York and then
arranged to have the Maryland registrar deposit domain-name documentation with that court.
Captainbarbie.com argues, however, that subsection (d)(2)(A) provides the sole basis for in rem
jurisdiction under the ACPA, and that subsection (d)(2)(C) simply describes the legal situs of the
domain name once an in rem action has been properly commenced in the judicial district in
which the domain-name registrar or a similar authority is located.
We begin, as we must, with a plain-meaning analysis of the language and
structure of § 1125(d)(2). Williams v. Taylor, 529 U.S. 420, 431 (2000); Senator Linie GMBH &
Co. Kg v. Sunway Line, Inc., 291 F.3d 145, 154 (2d Cir. 2002); see also Griffin v. Oceanic
Contractors, Inc., 458 U.S. 564, 571 (1982) ("There is, of course, no more persuasive evidenceof the purpose of a statute than the words by which the legislature undertook to give expression
to its wishes." (internal quotation marks omitted)). The plain meaning of § 1125(d)(2) suggests
that an in rem action may be brought only in that judicial district in which the domain name
registrar, domain name registry or other authority that registered or assigned the domain name is
located. The structure of § 1125(d)(2) is fully consistent with this plain meaning. A careful
inspection of § 1125(d)(2) reveals that the sequence of its subsections generally traces the
progress of an in rem action from the filing of suit and the service of process, id.
§ 1125(d)(2)(A)-(B), to the securing of the court's control and authority over the domain name,
after suit has been commenced, through measures that ensure that the disputed property's legal
situs is within the judicial district, id. § 1125(d)(2)(C), to the granting of remedies against a
domain name that has been found liable for cybersquatting, id. § 1125(d)(2)(D)(i). Section
1125(d)(2) then concludes by setting forth steps to be taken and actions to be avoided by the
registrar or other domain-name authority if it wishes to avoid exposing itself to liability. Id.
§ 1125(d)(2)(D)(i)-(ii).
Thus, the arrangement of § 1125(d)(2) separates, conceptually and
chronologically, the prescriptive jurisdiction-granting language of subsection (d)(2)(A) from the
descriptive language of legal situs in subsection (d)(2)(C). Cf. FleetBoston, 138 F. Supp. 2d at
128 (holding that § 1125(d)(2) "assumes a temporal sequence that makes it impossible for
[§ (2)(C)] to provide jurisdiction independent of subparagraph (2)(A)"). Moreover, while
subsection (d)(2)(A) speaks of "fil[ing] an in rem civil action," subsection (d)(2)(C), which
begins with the words "[i]n an in rem action under this paragraph," plainly presupposes that such
an action has already been filed in a judicial district referred to in subsection (d)(2)(A), and then
proceeds to describe the domain name's legal situs during that action. Thus, by the time we
reach subsection (d)(2)(C), we are already "in" litigation that was commenced pursuant to
subsection (d)(2)(A). Nothing on the face of the statute suggests that a plaintiff may alter this
procedural sequence, as Mattel did, by filing suit in a judicial district of its own choosing, and
then attempting unilaterally to relocate the domain name's legal situs to buttress that choice.
In addition to the plain meaning of the statute's language, the canon of statutory
interpretation known as generalia specialibus non derogant general provisions do not qualify
specific ones is applicable here. See Senator Linie GMBH, 291 F.3d at 157. It would be odd
for Congress to have taken pains to enact subsection (d)(2)(A) with its specific procedure for
filing an in rem action "in the judicial district in which the domain registrar . . . is located," only
to qualify, and indeed nullify, that circumscribed requirement by effectively creating nationwide
in rem jurisdiction in subsection (d)(2)(C). Such a reading of subsection (d)(2)(C) would have
the effect of rendering the language of subsection (d)(2)(A) superfluous a result frowned upon
by courts. See Duncan v. Walker, 533 U.S. 167, 174 (2001) ("It is our duty to give effect, ifpossible, to every clause and word of a statute." (internal quotation marks omitted)); Washington
kt. Co. v. Hoffman, 101 U.S. 112, 115-16 (1879) ("As early as in Bacon's Abridgment, sect. 2,it was said that 'a statute ought, upon the whole, to be so construed that, if it can be prevented, no
clause, sentence, or word shall be superfluous, void, or insignificant.'"); see also Cable News
Network L.P., L.L.L.P. v. CNNews.com, 162 F. Supp. 2d 484, 489 n.15 (E.D. Va. 2001) ("[W]ereboth Section 1125(d)(2)(A) and Section 1125(d)(2)(C) [of the ACPA] to be read as providing in
rem jurisdiction, all of Section 1125(d)(2)(A) and portions of Section 1125(d)(2)(C) would be
rendered redundant, an impermissible result."); FleetBoston, 138 F. Supp. 2d at 126 ("[T]here isredundancy in plaintiff's position . . . because its broad reading of subparagraph (d)(2)(C) [to
permit jurisdiction other than in the district of the domain name's registration] would essentially
consume the narrower reach of subparagraph (d)(2)(A).").
B. The Legislative History of the ACPA
The legislative history of the ACPA underscores the temporal sequencing that we
have identified in § 1125(d)(2):
When a court of appropriate jurisdiction receives a complaint filed
pursuant to this section, the court will notify the registrar, registry,
or other authority who shall expeditiously deposit with the court
documents to establish control and authority regarding the
disposition of the registration and use of the domain name.
145 Cong. Rec. at H10,826. Congress's reference to "a court of appropriate jurisdiction
receiv[ing] a complaint filed pursuant to this section" would be practically meaningless if it were
read to suggest that the filing of a complaint in any district court in the United States could
render that court one of "appropriate jurisdiction." Clearly, "appropriate jurisdiction" is a status
that precedes and is independent of the filing of the complaint, and is conferred by the presence
of the registrar or other domain-name authority within that judicial district. Subsection (d)(2)(D)
of the ACPA, echoing the language of subsection (d)(2)(A), reflects this intention of Congress:
Upon receipt of written notification of a filed, stamped copy of a
complaint filed by the owner of a mark in a United States district
court under this paragraph, the domain name registrar, domain
name registry, or other domain name authority shall expeditiously
deposit with the court documents sufficient to establish the court's
control and authority regarding the disposition of the registration
and use of the domain name to the court.
15 U.S.C. § 1125(d)(2)(D)(i)(I) (emphasis added). Thus, both the language of the statute and its
legislative history indicate that in rem jurisdiction is a preexisting fact determined by the location
of the disputed domain name's registrar or a similar authority, and that the subsequent deposit of
sufficient documents with a court of appropriate jurisdiction confirms the domain name's legal
situs as being in that judicial district for purposes of the litigation.
Because we base our conclusion on an analysis of the language and structure of
§ 1125(d)(2), it is unnecessary to reach any constitutional questions. Cf. United States v. Five
Gambling Devices, 346 U.S. 441, 448 (1953) ("The principle is old and deeply imbedded in ourjurisprudence that this Court will construe a statute in a manner that requires decision of serious
constitutional questions only if the statutory language leaves no reasonable alternative.").
Nevertheless, we note, as part of our analysis of the legislative history, that in enacting
subsection (d)(2)(A), Congress plainly sought to allay any concerns that the ACPA's in rem
jurisdiction might offend due process or principles of international comity:
This type of in rem jurisdiction still requires a nexus based upon a
U.S. registry or registrar [that] would not offend international
comity. . . . Finally, this jurisdiction does not offend due process,
since the property and only the property is the subject of the
jurisdiction, not other substantive personal rights of any individual
defendant.
H.R. Rep. No. 106-412, at 14 (1999). This language makes it clear that Congress considered the
"registry or registrar" to provide a "nexus" for in rem jurisdiction under the ACPA. Nowhere
does the legislative history suggest that this nexus might be supplied by domain-name
documentation alone. Rather, it is the presence of the domain name itself the "property [that]
is the subject of the jurisdiction" in the judicial district in which the registry or registrar is
located that anchors the in rem action and satisfies due process and international comity.
The legislative history also shows that Congress conceived of § 1125(d)(2) as
authorizing the type of in rem proceeding that, in contrast to "quasi in rem 'attachment'
jurisdiction," was found by the Supreme Court in Shaffer v. Heitner, 433 U.S. 186 (1977), to
present few if any due process concerns. 145 Cong. Rec. S14,696, 14,714 (Nov. 17, 1999)
(section-by-section analysis of the ACPA); see also 145 Cong. Rec. H11,769, 11,799 (Nov. 9,
1999) (conference report on H.R. 1554) (same). The Court in Shaffer observed that
when claims to the property itself are the source of the underlying
controversy between the plaintiff and the defendant, it would be
unusual for the State where the property is located not to have
jurisdiction. In such cases, the defendant's claim to property
located in the State would normally indicate that he expected to
benefit from the State's protection of his interest.
Shaffer, 433 U.S. at 207-08; see also Chapman v. Vande Bunte, 604 F. Supp. 714, 716-17
(E.D.N.C. 1985) ("In a true in rem proceeding, in order to subject property to a judgment in rem,due process requires only that the property itself have certain minimum contacts with the
territory of the forum."); cf. 145 Cong. Rec. at S14,714 (citing these passages from Shaffer and
Chapman, and stating that "the [ACPA] reinforces the view that in rem jurisdiction has
continuing constitutional vitality"); see also 145 Cong. Rec. at H11,799 (same).
In sum, we find that the legislative history of the ACPA reveals Congress's
concern to establish a circumscribed basis for in rem jurisdiction that is grounded in the "nexus"
provided by the registrar or other domain-name authority having custody of the disputed
property. This congressional solicitude is fully consistent with what we find to be the plain
meaning of § 1125(d)(2)(A): that an in rem action may be brought only "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."
C. The Role of Subsection (d)(2)(C) Within the Statutory Scheme
Mattel contends that if subsection (d)(2)(A) required a trademark owner to
commence an in rem action only in the judicial district in which the domain-name registrar or a
similar authority is located, then subsection (d)(2)(C)(ii) would be rendered "meaningless"
because subsection (d)(2)(C)(i) "would always apply." Another way of phrasing Mattel's
argument is to ask why Congress chose to conjoin subsections (d)(2)(C)(i) and (d)(2)(C)(ii) by
"or" instead of "and" the more logical choice, at first glance, if Congress's intention had been
to confine in rem litigation to the judicial district of registration. Assuming, as we must, that
Congress's choice of the disjunctive carries significance, see Reiter v. Sonotone Corp., 442 U.S.
330, 339 (1979) ("Canons of construction ordinarily suggest that terms connected by adisjunctive be given separate meanings, unless the context dictates otherwise . . . ."), we find no
inconsistency between the implied possibility of more than one domain-name situs under
subsection (d)(2)(C) and the clear limitation of in rem jurisdiction to one judicial district under
subsection (d)(2)A). Mattel's error is in assuming that subsections (d)(2)(A) and (d)(2)(C) both
address jurisdiction. They do not. We have already observed that the former subsection is the
operative jurisdiction-granting provision within § 1125(d)(2), while the latter serves to describe
the legal situs of the disputed property for purposes of securing the district court's control and
authority over that property during the litigation. Cf. Cable News Network, 162 F. Supp. 2d at
489 n.15 (holding that subsection (d)(2)(C) "does not confer in rem jurisdiction" but merely
describes the domain name's legal situs). Moreover, as noted above, subsections (d)(2)(A),
(d)(2)(C), and (d)(2)(D) work together to indicate that the legal situs of a domain name must be a
judicial district in which an in rem action was properly commenced.
It is not difficult to imagine scenarios in which the disjunctive "or" in subsection
(d)(2)(C) might become meaningful. Suppose, for example, that an in rem action is properly
commenced by the filing of a complaint in the Southern District of New York, where the
disputed domain name's registrar is located. Prior to depositing documentation with the district
court pursuant to subsection (d)(2)(D), however, the registrar relocates to the Northern District of
Oklahoma, effectively removing the subject property from the Southern District. The "or" in
subsection (d)(2)(C) recognizes that the action could continue in the Southern District of New
York once the registrar had dispatched documents from Oklahoma sufficient to secure the
Southern District as the legal situs of the domain name. See Standing Stone Media, 193 F.
Supp. 2d at 535 ("[S]ubsection (d)(2)(C) may also be read as a savings provision in the event thatthe registrar of a domain name moves out of the judicial district where the action was
commenced, goes out of business or sells its interests to another company in the time period
between the filing of the complaint and the deposit of the required certificates of registration.").
Suppose, again, that the disputed domain name's "registrar" is located in the
Southern District of New York, but the domain name's "registry" is based in the Northern
District of Oklahoma. The trademark owner has properly filed an in rem action in the Southern
District of New York, where "the domain name registrar, domain name registry, or other domain
name authority that registered or assigned the domain name is located," 15 U.S.C.
§ 1125(d)(2)(A) (emphasis added), only to discover that the Oklahoma registry, not the New
York registrar, is the entity that maintains and issues official records regarding domain-name
registration. Rather than refiling the in rem action in the Northern District of Oklahoma, the
plaintiff or the court, supported by the language of subsection (d)(2)(C), could simply see to it
that the Oklahoma registry deposited documentation sufficient to establish the domain name's
legal situs within the Southern District of New York. Cf. FleetBoston, 138 F. Supp. 2d at 125
("Subparagraph (2)(C), which defines the situs of the domain name either in the judicial districtof the domain name registrar, registry, or other domain name authority ((C)(i)), or where
documents establishing control of the registration are deposited with the court, ((C)(ii)), exists to
facilitate the continuation of litigation in one of the districts identified in subparagraph (2)(A)."
(emphasis in original)).
Each of these hypothetical scenarios is consistent with the language and structure
of § 1125(d)(2), which require that an in rem action under the ACPA be commenced in the
judicial district in which the subject domain name's registrar, registry, or other authority is
located, followed by deposit of sufficient domain-name documentation with the court in that
district. No scenario consistent with this statutory scheme, however, would permit an ACPA
plaintiff to establish in rem jurisdiction by filing a complaint in a judicial district not
contemplated by subsection (d)(2)(A) and then unilaterally seeking to effect a transfer of legal
situs to that district. Cf. R.M.S. Titanic, Inc. v. Haver, 171 F.3d 943 (4th Cir. 1999) (holding that
when a res is not in the court's actual or constructive possession, traditional principles of in rem
jurisdiction dictate that the court may not adjudicate rights to the res and effectively bind others
who may have possession); see also Restatement (Second) of Conflicts of Laws § 60 cmt. d
(1971) ("A State will not usually exercise judicial jurisdiction to affect interests in a chattelbrought into its territory without the consent of the owner . . . .").
It follows that, in the present case, Mattel's unauthorized arrangement to have
registrar's certificates for captainbarbie.com and the other Domain Names transferred from
aryland, Virginia, and California for deposit with the Southern District of New York was an
inappropriate and ineffectual method of establishing in rem jurisdiction under the ACPA. Cf.
Greatdomains.com, 177 F. Supp. 2d at 659 (holding an ACPA plaintiff's actions "insufficient" to
establish in rem jurisdiction and to "satisfy the fairness requirements of the Constitution" where
"[t]he only connection between the domain names and the forum . . . is that the domain names
have been 'brought' into the forum by [plaintiff] to facilitate its convenience in litigating the
matter"). Simply put, Mattel attempted to create jurisdiction in a judicial district where the
disputed property or its legal situs was not voluntarily or legitimately located for purposes of in
rem jurisdiction.
In sum, we hold that the ACPA's basic in rem jurisdictional grant, contained in
subsection (d)(2)(A), contemplates exclusively a judicial district within which the registrar or
other domain-name authority is located. A plaintiff must initiate an in rem action by filing a
complaint in that judicial district and no other. Upon receiving proper written notification that
the complaint has been filed, the domain-name authority must deposit with the court
documentation "sufficient to establish the court's control and authority regarding the disposition
of . . . the domain name," as required by subsection (d)(2)(D). This combination of filing and
depositing rules encompasses the basic, mandatory procedure for bringing and maintaining an in
rem action under the ACPA. Subsection (d)(2)(C) contributes to this scheme by descriptively
summarizing the domain name's legal situs as established and defined in the procedures set forth
in subsections (d)(2)(A) and (d)(2)(D). Accordingly, we affirm the district court's conclusion
that it did not have in rem jurisdiction over the Domain Names in this action.
IV. Waiver and Transfer
Mattel asks us to determine whether captainbarbie.com and mattle.com waived
objections to in rem jurisdiction in the Southern District by failing to raise that defense in their
answers. Mattel also seeks a determination of whether the district court abused its discretion in
failing to order transfer of the various in rem actions to the proper district courts. These issues,
however, were neither presented to nor expressly ruled on by the district court. "[I]t is a
well-established general rule that an appellate court will not consider an issue raised for the first
time on appeal." Greene v. United States, 13 F.3d 577, 586 (2d Cir. 1994); see also Gurary v.
Winehouse, 190 F.3d 37, 44 (2d Cir. 1999) ("Having failed to make the present argument to thedistrict court, plaintiff will not be heard to advance it here."). Mattel did not raise issues of
waiver or transfer at the preliminary conference below, and it arguably abandoned these issues by
choosing to devote its April 13, 2000 brief to matters plainly unrelated to the substantive dispute
over in rem jurisdiction. Although we may exercise our discretion to consider a newly-raised
issue when, for example, "we think it necessary to remedy an obvious injustice," Greene, 13 F.3d
at 586, we see no injustice in refusing to consider issues that Mattel strategically sidestepped
below.
Were we to address the waiver and transfer issues on the merits, however, we
would still reject Mattel's arguments as a matter of law. Assuming, without deciding, that
objections to in rem jurisdiction under the ACPA can be waived through failure to raise that
defense "by motion under [Rule 12 or] in a responsive pleading or an amendment thereof
permitted by Rule 15(a) to be made as a matter of course," Fed. R. Civ. P. 12(h)(1), we would
conclude that captainbarbie.com and mattle.com did not waive objections to in rem jurisdiction.
This Court has observed that, to preserve the defense of lack of personal
jurisdiction, a defendant need only state the defense in its first responsive filing and need not
articulate the defense with any rigorous degree of specificity. Transaero, Inc. v. La Fuerza
Aerea Boliviana, 162 F.3d 724, 730 (2d Cir. 1998). Captainbarbie.com substantially satisfied
this standard when it asserted its challenge to in rem jurisdiction explicitly and vigorously at the
preliminary conference on March 30, 2001, almost two weeks before the date (April 10) that
attel and captainbarbie.com had agreed on as the deadline for answering. Moreover,
immediately after the court announced April 13 as the date for submission of Mattel's brief
addressing the issue of in rem jurisdiction, counsel for captainbarbie.com offered to address that
issue on April 13 in "a motion to dismiss in lieu of an answer or would the court prefer that we
answer [by April 10, as agreed] and submit on the 13th on the issue of jurisdiction?" The court
responded by discouraging captainbarbie.com from addressing the jurisdictional issue until
"plaintiff and [the court] take a first cut [in Mattel's brief-in-chief to be submitted on April 13]."
The court also assured captainbarbie.com that its right "to submit something to me thereafter"
would be "preserv[ed]."
Furthermore, unlike Mattel, which chose to discuss subject matter jurisdiction in
its April 13, 2000 brief in disregard of the issue of in rem jurisdiction that clearly was of concern
to the court, captainbarbie.com followed the court's instructions by discussing in rem jurisdiction
in its April 17 response brief an act that Mattel would now have us construe as a waiver.
Neither fairness nor common sense would permit such a result in these circumstances. Cf.
Hamilton v. Atlas Turner, Inc., 197 F.3d 58, 60-61 (2d Cir. 1999) (observing that in determining
whether waiver or forfeiture of objections to personal jurisdiction has occurred, "we consider all
of the relevant circumstances").
Unlike captainbarbie.com, mattle.com answered Mattel's complaint prior to the
preliminary conference. Paragraph 1 of Mattel's complaint stated simply that Mattel was
bringing "this in rem action" under the ACPA, while Paragraphs 2 and 3 explicitly set forth
statutory bases for subject matter jurisdiction and venue, respectively. In response to these
paragraphs, and to Paragraph 4, which described Mattel's business locations, mattle.com's
answer stated: "Denies knowledge or information sufficient to form a belief as to the truth of the
allegations of paragraphs 1 through 4 of this complaint, except admits that Mattel purports to
assert claims for relief arising under 15 U.S.C. § 1125(d) and respectfully refers questions of law
regarding jurisdiction and venue to this Court."
Although the nature of any objections it may have had is unclear, mattle.com's
answer clearly fell short of admitting Mattel's allegations regarding jurisdiction and venue, and
specifically referred the issue of in rem jurisdiction to the district court. Moreover, Mattel's
complaint did not set forth a factual basis for the exercise of in rem jurisdiction, and thus there
was no specific factual allegation to which mattle.com could have replied. Under more typical
circumstances, a court might be concerned that mattle.com failed properly to preserve the
jurisdictional defense by including insufficient specificity in its answer. Under the present
circumstances, however, which include uncertainty over whether objections to in rem jurisdiction
under the ACPA are subject to waiver under Rule 12(h), we would conclude that mattle.com did
not waive this defense.
Similarly, the district court did not err or abuse its discretion in failing to order
transfer of the in rem action. Transfer of a case for the convenience of the parties or to cure
defects of venue or jurisdiction may be ordered by the court if such transfer is "in the interest of
justice." 28 U.S.C. §§ 1404(a), 1406(a), 1631. Here, transfer would not be in the interest of
justice. Mattel had notice and opportunity, both before and after the district court entered its first
order on May 2, 2001, to make arguments opposing dismissal for lack of in rem jurisdiction.
That Mattel chose a different strategy is now past cure.
CONCLUSION
For the foregoing reasons, we affirm the district court's dismissal of Mattel's
action against captainbarbie.com, mattle.com, and the other Domain Names for lack of in rem
jurisdiction under the ACPA.