Electronic Frontier Foundation Media Advisory

EFF Wins a Partial Victory in Ford Case

For Immediate Release: Thursday, January 10, 2002

On December 20, 2001, the Eastern District of Michigan Court handed down several rulings in Ford v. Great Domains, et al. In that case, EFF, along with pro bono counsel Eric Grimm and David Lowenshuss, represents 7 individuals who were sued by Ford for registering domain names that contain Ford trademarks. The domains are all used by individuals for purposes unrelated to selling Ford cars. Ford claimed both trademark infringement and violation of the Anti-Cybersquatter Protection Act (ACPA). The websites include:

1. jaguarcenter.com, a website devoted to the wild cats, not cars;
2. jaguarenthusiastsclub, a website devoted to fans of Jaguar cars (and big cats),
3. volvoguy.com, a website of a Volvo repairman,
4. 4fordparts.com websites of a repair shop that sells Ford parts and
5. vintagevolvo.com, a website devoted to fans of old Volvos.

All of the domains are passive, non-interactive domains. Jaguarcenter.com, jaguarenthusiast.com and vintagevolvo.com are all hobbyist websites with no commercial purpose whatsoever, much less one that might intrude on Ford's business. Ford claims that "cybersquatting" occurred because it alleges that all of the domains were registered for sale at Great Domains. In addition, EFF brought a motion on behalf of one of its clients, but whose goal was to free the over 70 other unserved domain owners from the shadow of the lawsuit.

First, the court granted EFF's motion to dismiss the trademark causes of action. It stated: "neither registering, nor warehousing, nor trafficking in a domain name that incorporates a protected trademark is alone sufficient to support claims of trademark infringement or dilution. Both causes of action require use of a trademark in connection with goods or services, which, in the cybersquatting context, generally will require evidence that the domain was used to host a website from which goods or services have been offered over the Internet."

Second, the Court rejected Ford's attempts to drag even more individuals into the lawsuit through a process called "in rem" jurisdiction. Ford had attempted to bring hundreds of additional individuals into the lawsuit by fictitiously claiming that the lawsuit was not against the owner of the domain, but the domain itself. Ford then claimed that a "deposit" of the domain name in the Michigan courts, done by NSI, would be sufficient to allow the case to go forward there. The Court disagreed. Thus the individuals who have not been formally served could not be brought into the case. This freed domains like the fan website classicvolvo.com, which is registered to a Swedish man, from the threat of the lawsuit.

Earlier, the court had denied EFF's motion to dismiss the case because Ford could not force the defendants, none of whom live or work in Michigan and several of whom live in England, to defend this case in Michigan. The Court refused to reconsider that decision at this stage, but its ruling allows EFF to renew the claim that none of the Defendants have sufficient contacts with Michigan to reasonably be sued there at a later date.

The rulings, while not a complete victory, are significant not only for this case but for many others. They establish:

1. Merely registering a domain name cannot serve as a basis for a claim of trademark infringement, and
   
2. The fiction of "in rem" jurisdiction will not allow individuals to be forced to any foreign court to defend their domains (although the question of whether they can be forced to defend in Virginia, where NSI is located, remains).

Both of these are good for the Internet.

The case continues through the discovery phase. At the end, EFF intends to renew its motion to dismiss based upon lack of jurisdiction, as well as fight the main case--that merely registering a domain name that contains a trademark of a company and offering it for sale to the general public does not constitute cybersquatting when the domain name can have many noncompeting and noninfringing uses.

Links:

The decisions can be found at:
  http://www.mied.uscourts.gov/_opinions/cleland.htm

More case documents:
  http://www.eff.org/IP/Internet_address_disputes/Ford_v_GreatDomains/

The Electronic Frontier Foundation is the leading civil liberties organization working to protect rights in the digital world. Founded in 1990, EFF actively encourages and challenges industry and government to support free expression, privacy, and openness in the information society. EFF is a member-supported organization and maintains one of the most linked-to Web sites in the world:
  http://www.eff.org/

Contact:

Will Doherty, EFF Online Activist / Media Relations
  wild@eff.org
  +1 415-436-9333 x111

Katina Bishop, EFF Offline Activist / Education Dir.
  katina@eff.org
  +1 415-436-9333 x101

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