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Domain Vault LLC v. Bush

United States District Court, District of Colorado

April 8, 2015



William J. Martínez United States District Judge

Plaintiff Domain Vault LLC (“Domain Vault”) owns the domain name Domain Vault has sued eClinicalWorks LLC (“eClinicalWorks”) and one of its attorneys, John C. Bush (“Bush”), for “reverse domain name hijacking, ” which is the abusive use of trademark rights to “strip domain names from rightful owners.” Sallen v. Corinthians Licenciamentos LTDA, 273 F.3d 14, 17 (1st Cir. 2001). The Lanham Act provides a remedy for such abuses. See 15 U.S.C. § 1114(2)(D)(iv)–(v).

Before the Court are three motions: (1) eClinicalWorks’s Rule 12(b)(6) Motion to Dismiss Complaint with Prejudice (ECF No. 6); (2) Bush’s Motion to Dismiss Complaint for Lack of Personal Jurisdiction (ECF No. 21); and (3) eClinicalWorks’s Rule 56 Early Motion for Summary Judgment (ECF No. 22). For the reasons stated below, the Court will deny eClinicalWorks’s motions to dismiss and for summary judgment. However, the Court finds that it lacks personal jurisdiction over Bush and will therefore grant his motion to dismiss.


If the Internet has anything equivalent to a supervisor, it is the Internet Corporation for Assigned Names and Numbers, usually known as “ICANN.” ICANN is “a not-for-profit corporation that administers the domain name system pursuant to a Memorandum of Understanding with the United States Department of Commerce.” Sallen, 273 F.3d at 20. ICANN accredits domain name registrars, which are the businesses that sell domain names (web addresses) to the consuming public. Id.

ICANN has rules for dealing with potential trademark disputes arising from domain names. Specifically, ICANN requires all registrars to

follow the Uniform Domain-Name Dispute-Resolution Policy (often referred to as the “UDRP”). Under the [UDRP], most types of trademark-based domain-name disputes must be resolved by agreement, court action, or arbitration before a registrar will cancel, suspend, or transfer a domain name. Disputes alleged to arise from abusive registrations of domain names (for example, cybersquatting[1]) may be addressed by expedited administrative proceedings that the holder of trademark rights initiates by filing a complaint with an approved dispute-resolution service provider.

Uniform Domain-Name Dispute Resolution Policy: General Information (“UDRP General Information”), (last accessed Apr. 6, 2015).

When a registrar issues a web address, its contract with the consumer requires resolution of domain name disputes under the UDRP. See, Inc. v. Excelentisimo Ayuntamiento De Barcelona, 330 F.3d 617, 621 (4th Cir. 2003). Thus, an allegedly aggrieved trademark holder (the “Complainant”) can force the domain name holder (the “Respondent”) into an administrative proceeding “with an approved dispute-resolution service provider” (the “Provider”). UDRP General Information; see also Rules for Uniform Domain Name Dispute Resolution Policy (“UDRP Rule(s)”), Rule 1, 25-en (last accessed Apr. 6, 2015).

The task of the Provider in such a proceeding is to determine whether: (1) the disputed domain name “is identical or confusingly similar to [the relevant] trademark”; (2) the domain name holder “should be considered as having no rights or legitimate interests in . . . the disputed domain name”; and (3) the domain name “should be considered as having been registered and being used in bad faith.” UDRP Rule 3(b)(ix). If these elements are satisfied, the Provider may order the domain name cancelled or transferred to the Complainant. UDRP Rule 3(b)(xiii). In such a circumstance, however, the Complainant must agree to “submit, with respect to any challenges to a decision in the administrative proceeding canceling or transferring the domain name, to the jurisdiction of the courts in at least one specified Mutual Jurisdiction.” Id. “Mutual Jurisdiction means a court jurisdiction at the location of either (a) the principal office of the [domain name] Registrar . . . or (b) the domain-name holder’s address . . . .” UDRP Rule 1.

The Lanham Act permits UDRP Respondents to challenge a Provider’s adverse decision in court. Specifically,

[a] domain name registrant whose domain name has been suspended, disabled, or transferred under a policy [such as the UDRP] may, upon notice to the mark owner, file a civil action to establish that the registration or use of the domain name by such registrant is not unlawful under this chapter. The court may grant injunctive relief to the domain name registrant, including the reactivation of the domain name or transfer of the domain name to the domain name registrant.

15 U.S.C. § 1114(2)(D)(v). The Court will refer to this provision as “Subparagraph (v).” The Lanham Act also allows a UDRP Respondent to seek damages and attorneys’ fees if the Respondent can show that the Complainant intentionally misrepresented certain facts to the Provider:

If a registrar . . . [transfers or cancels a domain name] based on a knowing and material misrepresentation by any other person that a domain name is identical to, confusingly similar to, or dilutive of a mark, the person making the knowing and material misrepresentation shall be liable for any damages, including costs and attorney’s fees, incurred by the domain name registrant as a result of such action.

Id. § 1114(2)(D)(iv). The Court will refer to this provision as “Subparagraph (iv).”


The following provides a general background on this case. Additional facts are discussed in the Analysis section as relevant to the various issues.

Domain Vault is a Virginia LLC that owns the domain name (ECF No. 1 ¶¶ 1, 10.) Domain Vault registered this domain through the registrar, which is headquartered in Colorado. (Id. ¶ 13.)

eClinicalWorks is a Massachusetts LLC that owns a registered trademark for the term ECLINICALWORKS. (Id. ¶ 11; ECF No. 22 at 2–3.) eClinicalWorks filed a UDRP proceeding against Domain Vault with an ICANN-approved Provider, the World Intellectual Property Organization (“WIPO”) based in Geneva, Switzerland. (ECF No. 1 ¶ 3; ECF No. 6-1.) eClinicalWorks was represented by Bush, an outside attorney who lives in Georgia and works in his law firm’s Atlanta office. (ECF No. 21-1 ¶¶ 2–3.) eClinicalWorks argued that Domain Vault’s registration of was “typosquatting, ” i.e., taking advantage of a common misspelling of a mark to secure the mark-holder’s customers. (ECF No. 6-1 at 7.) eClinicalWorks further alleged that “is used to provide a mere parking page that links to [eClinicalWorks’s] competitors.” (Id. at 9.)

Domain Vault contested eClinicalWorks’s allegations. (ECF No. 6-2.) Domain Vault argued, among other things, that “eclinical work” is a generic term and that eClinicalWorks had falsely represented that was being used to provide links to eClinicalWorks’s competitors. (Id. at 4–5.) WIPO ruled in favor of eClinicalWorks, however, and ordered to transfer to eClinicalWorks. (ECF No. 6-3 at 7.)

Domain Vault then filed this lawsuit, alleging causes of action against eClinicalWorks under both Subparagraph (iv) and Subparagraph (v). (ECF No. 1 ¶¶ 17–18.) Domain Vault filed this suit in the District of Colorado because, as required under the UDRP, eClinicalWorks agreed to be subject to a “Mutual Jurisdiction, ” and selected “the jurisdiction of the courts of Denver, Colorado, the location of the principal office of [, ] the concerned registrar.” (ECF No. 21-3 at 10.)


Although filed in September 2014, this case has already produced three fully briefed substantive motions. The Court will first address Bush’s Rule 12(b)(2) motion to dismiss, followed by eClinicalWorks’s early motion for summary judgment, and conclude with eClinicalWorks’s Rule 12(b)(6) motion to dismiss.

A. Personal Jurisdiction Over Bush

1. Legal Standard

The purpose of a motion to dismiss pursuant to Federal Rule of Civil Procedure 12(b)(2) is to test whether the Court has personal jurisdiction over the named parties. The Tenth Circuit has established a two-part test for personal jurisdiction: “First, we ask whether any applicable statute authorizes service of process on defendants. Second, we examine whether the exercise of statutory jurisdiction comports with constitutional due process demands.” Dudnikov v. Chalk & Vermillion Fine Arts, Inc., 514 F.3d 1063, 1070 (10th Cir. 2008). “In a federal question case such as [a trademark infringement action], in which the federal statute at issue does not authorize nationwide service, personal jurisdiction is determined according to the law of the forum state.” Impact Prods., Inc. v. Impact Prods., LLC, 341 F.Supp.2d 1186, 1189 (D. Colo. 2004).

Colorado’s long-arm statute “confers the maximum jurisdiction permissible consistent with the Due Process Clause.” Archangel Diamond Corp. v. Lukoil, 123 P.3d 1187, 1193 (Colo. 2005) (citing Colo. Rev. Stat. § 13-1-124). Thus, the Court need only address the constitutional question of whether the exercise of personal jurisdiction over Bush comports with due process. Dudnikov, 514 F.3d at 1070 (noting that the inquiry into whether any statute authorizes service of process “effectively collapses into the second, constitutional, analysis” in Colorado).

The plaintiff bears the burden of establishing personal jurisdiction over a defendant. Behagen v. Amateur Basketball Ass’n, 744 F.2d 731, 733 (10th Cir. 1984). When the district court does not hold an evidentiary hearing before ruling on jurisdiction, “the plaintiff need only make a prima facie showing” of personal jurisdiction to defeat a motion to dismiss. Id. A prima facie showing is made where the plaintiff has demonstrated facts that, if true, would support jurisdiction over the defendant. OMI Holdings, Inc. v. Royal Ins. Co. of Can., 149 F.3d 1086, 1091 (10th Cir. 1998). To defeat the plaintiff’s prima facie case, a defendant “must present a compelling case demonstrating that the presence of some other considerations would render jurisdiction unreasonable.” Id. (internal quotation marks omitted).

The Court will accept the well-pleaded allegations (namely, the plausible, nonconclusory, and nonspeculative facts) of the complaint as true to determine whether the plaintiff has made a prima facie showing that personal jurisdiction exists. Dudnikov, 514 F.3d at 1070. Any factual conflicts must be resolved in the ...

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