United States District Court, E.D. Virginia, Alexandria Division
European Performance Engineering, Inc., Plaintiff,
represented by Jonathan Donald Westreich.
REPORT & RECOMMENDATIONS
MICHAEL S. NACHMANOFF, Magistrate Judge.
matter is before the Court on Plaintiff European Performance
Engineering, Inc.'s Motion for Default Judgment (ECF No.
17), pursuant to which Plaintiff seeks an order transferring
to Plaintiff control of the domain name EPE.COM
("Defendant Domain Name"). Having reviewed the
record, the undersigned makes the following findings and
recommends entering default judgment in Plaintiff's
European Performance Engineering, Inc. is an automobile
repair facility that purchased the domain name EPE.COM on
October 28, 1995. Compl. Â¶Â¶ 13, 16 (ECF No. 1). Plaintiff
entered into a contract with Network Solutions, LLC to
register the domain name through October 27, 2018.
Id. Â¶Â¶ 2, 20, 32, 45. Plaintiff claims it has used
its business name in connection with the domain name,
EPE.COM, for thirty years. Id. Â¶ 16. As a result,
Plaintiff claims to have developed "substantial goodwill
associated with the subject domain name." Id.
Plaintiff has used the domain name in commerce, gaining
common law rights in the subject mark, EPE.COM. Id.
alleges that on or before March 21, 2016, Defendant John Doe
gained unauthorized access to Plaintiff's domain
management account at Network Solutions and changed the
registrant name without authorization. Id. Â¶Â¶ 4, 14,
22. On or about June 30, 2016, Defendant Doe changed the
registrant name to Oleksandr Shapoval and then to Wang Zheng,
which Plaintiff believes are Defendant's aliases.
Id. Defendant Doe also provided "materially
false and misleading contact information" when
registering the domain name. Id. Â¶ 29.
unauthorized use of the domain name, Defendant Doe has
knowingly gained control of Plaintiff's emails with
customers with the intent to redirect Plaintiff's
customers to Defendant Doe, resell the domain name for
financial gain, and damage Plaintiff's business
reputation and good will. Id. Â¶Â¶ 17, 23-27.
29, 2016, Plaintiff filed suit under the Anti-cybersquatting
Consumer Protection Act ("ACPA") in an effort to
regain control of the domain name. Id. at 6-8.
Plaintiff moved for a preliminary injunction, which this
Court granted. See Order (ECF No. 12); see
also Pl.'s Mot. for a Prelim. Inj. (ECF No. 6); Mem.
of Law in Supp. (ECF No. 8). Plaintiff now seeks an
injunction "and other equitable relief." Compl. Â¶
to proceed in rem against the Defendant Domain Name
pursuant to the ACPA, Plaintiff obtained an order from the
Court (ECF No. 9) granting Plaintiff leave to serve process
by email and publication. Plaintiff certified its compliance
with that order on August 11, 2016. See Notice (ECF
No. 11); see also Mot. for Leave to Serve Process by
Email & Publication (ECF No. 2); Mem. of Law in Supp. of Mot.
(ECF No. 4).
interested party responded, the Clerk of the Court entered
default as to EPE.COM. See Clerk's Entry of
Default (ECF No. 16). Plaintiff filed the instant Motion on
August 30, 2016. The defendant did not appear at the
September 9, 2016 hearing held on the Motion, and the
undersigned took the matter under advisement.
Jurisdiction and Venue
Court has subject matter jurisdiction over this action
pursuant to 28 U.S.C. Â§ 1331 and 1338(a) because it involves
a federal question arising under the ACPA, 15 U.S.C. Â§
1125(d). The Court has in rem jurisdiction over the
Defendant Domain Name pursuant to 15 U.S.C. Â§ 1125(d)(2)(A)
because Plaintiff alleges infringement of its trademark
rights, Plaintiff has been unable to determine the identity
of the Defendant Domain Name's registrant(s), and
Verisign- the registry of the Defendant Domain Name-is
located in this District. See Compl. Â¶ 5. Venue is
proper under 15 U.S.C. Â§ 1125(d)(2)(C) due to Verisign's
presence in this District.
Service of Process
plaintiff bringing an in rem action under the ACPA
may serve process by 1) sending notice of the lawsuit to the
listed email and physical addresses of the domain name
registrant, and 2) publishing notice of the action as
directed by the court. 15 U.S.C. Â§ 1125(d)(2)(A)(ii).
Plaintiff obtained leave of the Court to proceed in this
manner, see Order (ECF No. 9), and has certified
that it complied with these procedural requirements.
See Notice; see also Mot. for Leave to
Serve Process by Email and Publication (ECF No. 2); Mem. of
Law in Supp. ...