Hearst, owner of Esquire magazine and numerous trademark registrations for ESQUIRE and ESQ., brought suit in New York challenging the right of registered owner Goldberger to the domain name "esqwire.com", used for promoting virtual law firm support services and legal information services. The Magistrate advised that the New York court decline jurisdiction and transfer the case to New Jersey (defendant's residence) on the consent of the parties. The Magistrate found no personal jurisdiction in New York, on the grounds that (1) mere advertisement of goods or services in a globally accessible medium is not sufficient to establish jurisdiction in a forum where such advertisement may be accessed, (2) no tortious injury had occurred in New York as a result of the alleged infringement, since no goods or services had yet been offered for sale, and (3) Goldberger's emails into New York occurred after the litigation was filed and so could not establish minimum contacts with the forum. According to the Magistrate, a notion of jurisdiction that would subject Web site operators to suit wherever their sites could be accessed would be inadvisable "in the absence of a Congressional enactment of Internet-specific trademark infringement personal jurisdictional legislation."
Magistrate's Report and Recommendation at http://www.jmls.edu/cyber/cases/esqwire1.html
Keywords: jurisdiction, trademark, domain names, advertising
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