In 2001, Mattel sued the individuals whose domain names used its
Barbie, Matchbox and Hot Wheels trade marks. Their domain names
were registered in Maryland, Virginia and California.
Because the lawsuit was filed in New York, the company could not
establish personal jurisdiction against the sites' owners. Mattel
therefore invoked the Anticybersquatting Consumer Act of 1999
(ACPA) which allows action to be taken against a domain name,
rather than the name's registered owner.
Such actions are known as "in rem" actions – meaning an action
taken against a thing. The concept is better known in cases raised
against ships.
A federal court in New York last year dismissed Mattel's claims.
It ruled that, under the ACPA, the judicial district where the
domain name is registered is the only place where in rem
jurisdiction exists.
Mattel appealed the decision. However, the 2nd US Circuit of
Appeals upheld the previous ruling. Mattel still has the right to
sue the domain names in their jurisdictions.
