Temkin & Associates, LLC successfully represented 50% owners of a Ukrainian limited liability company in an e-commerce website trademark rights dispute, when the other partners, having lost numerous litigations in Ukraine, came to the United States and attempted to assert ownership of the website domain under the Anti-Cybersquatting Consumer Protection Act, 15 U.S.C. § 1125(d) et. seq. (the “ACPA”).
The case presented a unique legal question of whether cyberpiracy prevention provisions of the ACPA claims can be asserted over ownership rights to the very popular Ukrainian website, that had a domain, registered in the United States, but provided services almost exclusively to customers located in Eastern Europe and was geared towards the Russian and Ukrainian-speaking markets.
In granting our clients’ motion for summary judgment, Judge T. S. Ellis found that the ACPA required that the website was “used in connection with any kind of business activity in the U.S.” and the mere availability of the webpages for access by U.S. citizens was insufficient. Klumba.UA, LLC v. Klumba.com, 320 F. Supp. 3d 772 (E.D. Va. 2018).
This case demonstrates a legal issue of first impression resolved by a U.S. Court, limiting foreign parties’ ability to bring claims in the United States for merely registering a website domain using a U.S. based registrar, which will undoubtedly have a significant impact on litigation of future e-commerce cases.