Harrods Limited v. Sixty Internet Domain Names

Affirmed in part, reversed in part, and remanded by published opinion. Judge MICHAEL wrote the opinion, in which Judge WILKINS and Senior Judge HAMILTON joined.

OPINION

This case involves a dispute over Internet domain names between two companies named “Harrods,” both with legitimate rights to the “Harrods” name in different parts of the world. The plaintiff, Harrods Limited (“Harrods UK”), is the owner of the well-known Harrods of London department store. The defendants are 60 Internet domain names (“Domain Names” or “Names”) registered in Herndon, Virginia, by Harrods (Buenos Aires) Limited (“Har-rods BA”). Harrods BA, once affiliated with Harrods UK, is now a completely separate corporate entity that until recently operated a “Harrods” department store in Buenos Aires, Argentina. Harrods UK sued the 60 Domain Names under 15 *220 U.S.C. § 1125(d)(2), the in rem provision of the recently enacted Anticybersquatting Consumer Protection Act (ACPA), Pub.L. No. 106-113, 113 Stat. 1501A-545 (codified in scattered sections of 15 U.S.C.) (1999). Harrods UK alleged that the Domain Names infringed and diluted its American “Harrods” trademark and that Harrods BA registered the Names in bad faith as prohibited by 15 U.S.C. § 1125(d)(1). 1 The district court dismissed the infringement and dilution claims, holding that in rem actions could only be maintained for bad faith registration claims under § 1125(d)(1). As discovery was just beginning, the district court granted summary judgment to six of the Domain Names on Harrods UK’s bad faith registration claim. After full discovery and a bench trial, the court awarded judgment to Harrods UK against the remaining 54 Domain Names and ordered those names to be transferred to Harrods UK. Both sides now appeal. For the reasons that follow, we affirm the judgment as to the 54 Domain Names, reverse the dismissal of Harrods UK’s infringement and dilution claims, reverse the grant of summary judgment to the six Domain Names, and remand for further proceedings.

I.

Harrods UK and its predecessors have operated a department store named “Har-rods” in the Knightsbridge section of London, England, since 1849. In 1912 Harrods UK created a wholly owned subsidiary, Harrods South America Limited, to carry on business in South America. Harrods South America Limited created Harrods BA as an independent company, and in 1914 Harrods BA opened a department store under the name “Harrods” in a new building in downtown Buenos Aires designed to look like Harrods UK’s historic London building. Over the following decades Harrods BA registered “Har-rods” as a trademark in Argentina, Brazil, Paraguay, Venezuela, and a number of other South American countries. Harrods UK and Harrods BA quickly drifted apart: by the 1920s Harrods BA was operating largely independently of Harrods UK, and the last remaining legal ties between the two companies were severed in 1963.

In the early 1990s Harrods UK and Harrods BA entered into negotiations for Harrods UK to buy Harrods BA’s South American trademark rights in the name “Harrods.” At one point Harrods UK offered $10 million for the rights, but the parties never reached agreement. Later, in 1995, Harrods UK sued Harrods BA in British court, alleging breach of contract, breach of fiduciary duty, and passing off, all arising from Harrods BA’s use of the name “Harrods” in South America. 2 The British High Court of Justice, Chancery Division, dismissed the contract and fiduciary duty claims against Harrods BA, and this decision was affirmed in 1998 by the Court of Appeal, Civil Division. Harrods *221 Ltd. v. Harrods (Buenos Aires) Ltd., [1997] F.S.R. 420(Ch.), aff'd, [1999] F.S.R. 187 (C.A.). The Court of Appeal held that Harrods BA had an implied contractual right to carry on business under the name “Harrods” anywhere in South America. Neither British court ruled on the passing off claim because that claim was withdrawn by Harrods UK on the condition that Harrods BA limit its business to South America. Here, we have not been asked to conclusively determine the legitimacy and scope of Harrods BA’s rights in the name “Harrods” throughout South America. It appears, however, that Harrods BA has the right to use the name “Harrods” in Argentina and much of South America, and for the limited purposes of this litigation Harrods UK does not attempt to prove otherwise.

Harrods UK, for its part, has exclusive trademark rights in the name “Harrods” in much of the rest of the world, including the United States, where retail catalog and Internet sales generate millions of dollars in revenue each year. Harrods UK’s retail business has thrived in recent years, but Harrods BA’s business has been in decline since the early 1960s. Over the years, Harrods BA occupied less and less of its large Buenos Aires department store building and leased more and more of the space to other vendors. Some time around 1998 Harrods BA ended its department store operation entirely, and the building now sits vacant. Harrods BA’s only current revenue is about $300,000 annually from the continued operation of the building’s parking garage.

In February of 1999 Harrods UK launched a website at the domain name harrods.com, and the website became a functioning online retail store in November of 1999. Harrods BA executives testified that sometime in 1999 they also began planning to launch a Harrods store on the Internet. Toward that end, Harrods BA hired a consultant, a Mr. Capuro, to prepare a proposal for an online business. In the fall of 1999, around the same time that Harrods UK was launching its Internet business (and announcing this in the press), Harrods BA began registering the first of what eventually became around 300 Harrods-related domain names. The 60 Domain Names that are defendants in this case were registered with Network Solutions, Inc. (NSI), a domain name registry located in Herndon, Virginia. At that time NSI served as the exclusive worldwide registry for domain names using .com, .net, and .org. 3

A brief explanation of the nature and terminology of Internet domain names is warranted before we continue with the details of Harrods BA’s domain name registrations. A domain name is the “address” at which a computer user accesses a website on the Internet. 4 A typical domain name is www.ca4.uscourts.gov, which is the domain name for the website of the United States Court of Appeals for the Fourth Circuit. Domain names consist of sections of alpha-numeric characters separated by periods, called “dots.” These sections are referred to, working from right to left, as the top-level domain, the second-level domain, and so on. The top-level domain is the ending suffix, such as .gov (as in ca4.uscourts.gov) or .com (as in vw. com). The second-level domain is the section just to the left of the top-level domain (in the above examples, uscourts and vw *222 serve as the second-level domains). For obvious reasons, most companies want their primary trademark to serve as their second-level domain, as in vw.com for Volkswagen of America. See Virtual Works, Inc. v. Volkswagen of Am., Inc., 238 F.3d 264 (4th Cir.2001).

Harrods BA registered each of its Har-rods-related domain names under the .com, .net., and .org top-level domains. For example, Harrods BA registered the second-level domain harrodsbuenosaires as harrodsbuenosaires.com, harrodsbueno-saires.net, and harrodsbuenosaires.org. This case involves 20 distinct second-level domain names, each registered under the three top-level domains .com, .net, and .org, for a total of 60 defendant Domain Names. 5 All told, Harrods BA registered about 300 Harrods-related domain names in the United States. The 20 second-level domain names at issue in this case are harrodsbuenosaires, harrodsar-gentina, harrodssudamerica, harrodssouth-america, harrodsbrasil, harrodsbrazil, har-rodsamerica, tiendaharrods, cyberharrods, ciberharrods, harrodsbank, harrodsbank-ing, haiTodsfinancial, harrodsservices, har-rodsvirtual, harrodsstore, shoppinghar-rods, harrodsshopping, harrodsbashopping, and harrodsshoppingba.

We now return to the events leading up to this lawsuit. In December of 1999 Ca-puro finished his proposal for Harrods BA's online business. The report suggested using the Harrods-related domain names registered by Harrods BA to set up a website portal where users could shop at various stores within the Harrods BA website. This suggested arrangement was much like the physical Harrods department store in Buenos Aires, where Har-rods BA had until recently housed a number of vendors (who were lessees) in its famous four-story building under the umbrella of the Harrods name. Under the proposal Harrods BA would not sell any merchandise itself but would simply earn commissions from vendors that it sponsored. The proposal thus treated the well-known Harrods name as the primary asset that Harrods BA could offer vendors to induce them to join the Harrods portal site and pay commissions. The report included an illustration of a transaction occurring through the proposed Harrods BA website. The illustration shows an online shopper designated as a “UK citizen” purchasing a Burberry sweater (a British brand) at the Harrods BA website and paying for the purchase with funds from Barclays Bank (a British bank). The “Harrods” logo on the webpage illustration is not the distinct “Harrods” logo used by Harrods BA; instead, it is identical to the script logo long used by Harrods UK. Har-rods BA used this proposal to solicit potential investors and partners in Argentina, the United States, and Europe (mostly via the Internet). No party expressed interest, and by January of 2000 Harrods BA had rejected the Capuro proposal and had solicited Ernst & Young to prepare a new business plan. The Ernst & Young plan was not introduced or described at trial.

On February 16, 2000, Harrods UK sued 60 of the Harrods-related domain names in the United States District Court for the Eastern District of Virginia. Harrods UK sued under 15 U.S.C. § 1125(d)(2), which permits the owner of a protected mark to bring an in rem action against domain names that violate “any right of the owner of a mark,” subject to certain limitations. *223 For example, the in rem action is available only when the plaintiff cannot find or cannot obtain personal jurisdiction over the domain name registrant. 6 Harrods UK claimed that the Domain Names violated 15 U.S.C. § 1125(d)(1), which prohibits bad faith registration of domain names with intent to profit, and 15 U.S.C. §§ 1114, 1125(a) & (c), which together prohibit trademark infringement and dilution. Harrods BA was easily identified as the registrant of the defendant Domain Names, but the mere act of registering the Domain Names in Virginia was deemed insufficient to provide personal jurisdiction over Harrods BA. See, e.g., Heathmount A.E. Corp. v. Technodome.com, 106 F.Supp.2d 860, 866-69 (E.D.Va.2000). Because Harrods UK could not obtain personal jurisdiction over Harrods BA, the suit was filed in rem against the 60 Domain Names themselves.

The initial complaint did not allege bad faith registration on the part of Harrods BA. The Domain Names moved to dismiss, arguing that bad faith must be pled and proven in all cases filed under the in rem provision of the ACPA, § 1125(d)(2). The district court dismissed the infringement and dilution claims with prejudice, holding that § 1125(d)(2) provided in rem jurisdiction only for bad faith claims under § 1125(d)(1). The court also dismissed without prejudice Harrods UK’s bad faith registration claim under § 1125(d)(1) because the complaint failed to allege bad faith. Harrods UK promptly filed an amended complaint, this time alleging bad faith under § 1125(d)(1). Before discovery got under way, the Domain Names moved for summary judgment as to just six of the names, specifically the .com, .net, and .org permutations of harrodsbuenosaires and harrodsargentina (the “Argentina Names”). The district court granted summary judgment to the Argentina Names, reasoning that Harrods BA had legitimate trademark rights in Argentina and that these Names on their face were clearly identified as Buenos Aires- and Argentina-related.

After extensive discovery and a bench trial, the district court found bad faith intent to profit on the part of Harrods BA with respect to the remaining 54 Domain Names and ordered that those names be transferred to Harrods UK. (Forfeiture, cancellation and transfer of domain names are the only remedies available under the in rem provision. 15 U.S.C. § 1125(d)(2)(D)(i).) Harrods UK appeals the district court’s order dismissing its infringement and dilution claims and the order granting summary judgment to the six Argentina Names. The Domain Names appeal the court’s order entering judgment after trial for Harrods UK against the remaining 54 Domain Names.

II.

The central issue for both the six Argentina Names and the other 54 Names is whether Harrods BA registered the Domain Names in bad faith as that term is outlined by the ACPA. Ultimately, we conclude that the district court did not err in holding that Harrods BA registered the 54 Names in bad faith, but the court did err *224 in granting summary judgment to the six Argentina Names before Harrods UK had an adequate opportunity for discovery. Before we deal with the issue of bad faith registration, we must consider several other issues raised by the parties. First, the Domain Names assert a due process challenge to the district court’s in rem jurisdiction on the ground that the Names lack sufficient minimum contacts with the forum. Second, the Domain Names argue that claims of bad faith under § 1125(d)(1) must be proven by clear and convincing evidence, not by a preponderance of the evidence, which is the usual standard. For its part, Harrods UK argues that § 1125(d)(2) provides in rem jurisdiction not only for violations of ,§ .1125(d)(1) but also for other trademark violations, such as infringement and dilution. We conclude that the district court properly exercised jurisdiction over the Domain Names and that the normal preponderance of the evidence standard applies to bad faith claims under § 1125(d)(1). We further conclude that a plaintiff bringing an in rem action under § 1125(d)(2) may, in appropriate circumstances, pursue infringement and dilution claims as well as bad faith registration claims under § 1125(d)(1). We discuss these issues here in part II, and then in part III we discuss the question of Har-rods BA’s alleged bad faith.

A.

On appeal the Domain Names claim that the district court’s exercise of in rem jurisdiction over them violates the Due Process Clause because they lack sufficient minimum contacts with the forum. The Due Process clause of the Fifth Amendment permits a federal court to exercise personal jurisdiction over a defendant only if that defendant has “certain minimum contacts with [the forum] such that the maintenance of the suit does not offend ‘traditional notions of fair play and substantial justice.’ ” Int’l Shoe Co. v. Washington, 326 U.S. 310, 316, 66 S.Ct. 154, 90 L.Ed. 95 (1945) (quoting Milliken v. Meyer, 311 U.S. 457, 463, 61 S.Ct. 339, 85 L.Ed. 278 (1940)). “[T]he minimum contacts rule of International Shoe ... applie[s] to actions in rem and quasi in rem, as well as to actions in personam.” Pittsburgh Terminal Corp. v. Mid Allegheny Corp., 831 F.2d 522, 526 (4th Cir.1987) (construing Shaffer v. Meitner, 433 U.S. 186, 97 S.Ct. 2569, 53 L.Ed.2d 683 (1977)). Accordingly, we apply the minimum contacts test to the district court’s exercise of in rem jurisdiction over the Domain Names. Under this test we ask whether there has been “some act by which the defendant purposefully avail[ed] itself of the privilege of conducting activities within the forum State, thus invoking the benefits and protections of its laws.” Hanson v. Denckla, 357 U.S. 235, 253, 78 S.Ct. 1228, 2 L.Ed.2d 1283 (1958). A federal district court can exercise personal and in rem jurisdiction to the same extent as courts in the state where the district court is located. Thus, to determine whether the Domain Names have sufficient minimum contacts to justify the exercise of in rem jurisdiction by the district court' in this case, we must determine whether the Domain Names have sufficient contacts with the Commonwealth of Virginia to justify the exercise of in rem jurisdiction by the courts of Virginia. See ESAB Group, Inc. v. Centricut, Inc., 126 F.3d 617, 622 (4th Cir.1997).

In the case of disputes involving property, the presence of the property in the jurisdiction does not always justify the exercise of in rem jurisdiction, but “when claims to the property itself are the source of the underlying controversy between the plaintiff and the defendant, it would be unusual for the State where the property is located not to have jurisdiction.” Shaf *225 fer, 433 U.S. at 207, 97 S.Ct. 2569 (internal footnote omitted). See also 4A Charles A. Wright & Arthur R. Miller, Federal Practice & Procedure § 1072 (3d ed.2002). Specifically, the Supreme Court said in Shaffer that in rem jurisdiction is appropriate in "suits for injury suffered on the land of an absentee owner, where the defendant's ownership of the property is conceded but the cause of action is otherwise related to rights and duties growing out of that ownership." Shaffer, 433 U.S. at 208, 97 S.Ct. 2569. The dispute in this case is roughly analogous to such a suit. Harrods UK has allegedly suffered injury by way of property, the Domain Names, owned by Harrods BA, an absentee owner. Harrods BA's initial ownership of the Names is conceded, but the cause of action is related to Harrods BA's rights and duties arising out of that ownership.

Likewise, Virginia's "interests in assuring the marketability of property within its borders and in providing a procedure for peaceful resolution of disputes about the possession of that property" also support the exercise of in rem jurisdiction in this case. Id. (internal footnote omitted). Moreover, Virginia's interest in not permitting foreign companies to use rights emanating from, and facilities located in, its territory to infringe U.S. trademarks also supports the exercise of in rem jurisdiction. By registering these Domain Names in Virginia, Harrods BA exposed those Names to the jurisdiction of the courts in Virginia (state or federal) at least for the limited purpose of determining who properly owns the Domain Names themselves. This is not a case where "the only role played by the property is to provide the basis for bringing the defendant into court." Id. at 209, 97 S.Ct. 2569. Rather, because "claims to the property itself are the source of the underlying controversy," id. at 207, 97 S.Ct. 2569, and because Virginia has important interests in exercising jurisdiction over that property (the Names), we conclude that courts in Virginia, the state where the Domain Names are registered, may constitutionally exercise in rem jurisdiction over them. Thus, the district court's exercise of in rem jurisdiction over the Domain Names was constitutional. 7

B.

The Domain Names argue that proving bad faith under § 1125(d)(1) requires proof by clear and convincing evidence rather than by a preponderance of the evidence, the usual standard. The district court concluded that the preponderance of the evidence standard applies, and we agree. We can find no other cases discussing the proper standard of proof under the ACPA, so we are the first to take a direct crack at the question. We note, however, that none of the courts applying the ACPA have mentioned a heightened burden of proof. See, e.g., People for the Ethical Treatment of Animals v. Doughney, 263 F.3d 359 (4th Cir.2001); Virtual Works, 238 F.3d 264; Sporty's Farm L.L.C. v. Sportsman's Market, Inc., 202 F.3d 489 (2d Cir.2000). This suggests, *226 at the very least, that courts have assumed that the usual preponderance of the evidence standard applies to bad faith claims under the ACPA.

The Supreme Court has explained that under “[c]onventional rules of civil litigation ... parties ... need only prove their case by a preponderance of the evidence” and that “[exceptions to this standard are uncommon.” Price Waterhouse v. Hopkins, 490 U.S. 228, 253, 109 S.Ct. 1775, 104 L.Ed.2d 268 (1989) (plurality opinion). “Because the preponderance-of-the-evidence standard results in a roughly equal allocation of the risk of error between litigants, we presume that this standard is applicable in civil actions between private litigants unless ‘particularly important individual interests or rights are at stake.’ ” Grogan v. Garner, 498 U.S. 279, 286, 111 S.Ct. 654, 112 L.Ed.2d 755 (1991) (quoting Herman & MacLean v. Huddleston, 459 U.S. 375, 389, 103 S.Ct. 683, 74 L.Ed.2d 548 (1983)). The Supreme Court has applied a heightened standard of proof in proceedings to terminate parental rights, involuntary commitment proceedings, and deportation proceedings. See Herman, 459 U.S. at 389, 103 S.Ct. 683 (listing cases). The interests implicated by the cybersquatting provision of the ACPA are important, but they are not in the same category as those listed in Herman.

The Domain Names argue that even if this case does not involve “particularly important individual interests” of the type referred to in Herman, the clear and convincing standard still applies because § 1125(d)(1) requires proof of bad faith. Indeed, in Addington v. Texas, 441 U.S. 418, 424, 99 S.Ct. 1804, 60 L.Ed.2d 323 (1979), the Supreme Court acknowledged that “[o]ne typical use of the [clear and convincing] standard is in civil cases involving allegations of fraud or some other quasicriminal wrongdoing by the defendant.” A leading treatise adds that “[n]ot all instances of requirements of proof more than [by a preponderance of the evidence] concern cases involving individual liberty.” 2 McCormick on Evidence § 340, at 426 (John W. Strong et al. eds., 5th ed.1999). In addition to cases involving the important interests of individual liberty, “this special standard of persuasion commonly has been applied [to, among other things,] ... charges of fraud.” Id. The Domain Names argue that the clear and convincing standard of proof should apply because the bad faith element of § 1125(d)(1) is equivalent to an element of fraud.

We acknowledge that the clear and convincing evidence standard has been applied in certain cases involving fraudulent or bad faith conduct. See, e.g., Grossman v. Comm’r of Internal Revenue, 182 F.3d 275, 277 (4th Cir.1999) (clear and convincing evidence required to prove intent to defraud in civil tax fraud case under the Internal Revenue Code); Shepherd v. ABC, 62 F.3d 1469, 1477-78 (D.C.Cir.1995) (litigation misconduct must be proven by clear and convincing evidence in order for the district court to enter default judgment as a sanction for such misconduct). Indeed, courts have required clear and convincing evidence for the proof of certain fraud-based claims under the Lanham Act, such as a claim of fraudulent registration or a claim for attorneys’ fees when the infringer’s conduct was fraudulent or in bad faith. See Resorts of Pinehurst, Inc. v. Pinehurst Nat'l Corp., 148 F.3d 417, 420 (4th Cir.1998) (fraudulent registration); Pebble Beach Co. v. Tour 18 I Ltd., 155 F.3d 526, 555 (5th Cir.1998) (attorneys’ fees). The heightened burden of proof was imposed in these instances by the courts and not by the text of the Lanham Act. But while clear and convincing evidence is required for some fraud-based *227 claims, in many instances a heightened burden of proof is not required. See, e.g., Grogan, 498 U.S. at 288-89, 111 S.Ct. 654 (listing federal fraud-related statutes to which the preponderance standard applies); United States v. Truesdale, 211 F.3d 898, 908 (5th Cir.2000) (criminal defendants whose convictions were reversed must show by a preponderance of the evidence that the government’s position was in bad faith in order to recover attorneys’ fees under the Hyde Amendment); Donald v. Liberty Mut. Ins. Co., 18 F.3d 474, 484 (7th Cir.1994) (under Indiana law, tort of bad faith dealing by an insurer is proved by a preponderance of the evidence). Moreover, the Supreme Court has applied the presumption that the preponderance standard applies even in civil cases that involve fraud. For example, in Grogan the Court held that a claim that a debt was incurred through actual fraud, which would exempt the debt from general discharge under the Bankruptcy Act, need only be proven by a preponderance of the evidence. Grogan, 498 U.S. at 290-91, 111 S.Ct. 654.

We can see no clear, overarching principle that separates the fraud or bad faith claims requiring proof by clear and convincing evidence from those fraud or bad faith claims requiring proof by a preponderance of the evidence. Even so, the Supreme Court’s analysis of the relevant standard of proof in Herman does provide some guidance. The Court explained that the heightened burden of proof requirement arose out of a concern by courts of equity that charges of fraud could be fabricated too easily. Herman, 459 U.S. at 388 n. 27, 103 S.Ct. 683. This concern, the Court reasoned, is not necessarily valid when modern statutes are involved. In this case, for example, guidelines for establishing the element of bad faith under the ACPA are set forth and explained in detail both in the statute and in the legislative history. As we discuss fully in part III, infra, § 1125(d)(1)(B)® contains nine factors to guide courts in determining whether bad faith exists in a given case. These factors include, among other things, any trademark rights of either party in the domain name, any bona fide prior use of the domain name, and any offer by the registrant to sell the domain name to the owner of the mark in question. 15 U.S.C. §§ 1125(d)(l)(B)(i)(I), (HI), (VI) & (IX). The nine factors are also explained at length in the legislative history to the ACPA. See, e.g., Sen. Rep. No. 106-140, at 13-16 (1999); H.R.Rep. No. 106-412, at 10-13 (1999). The detailed guidelines for proving a claim of bad faith registration under the ACPA relieve the worry that claims can be easily fabricated, the worry that motivated courts of equity to impose a higher burden of proof in routine fraud cases. Because Congress spelled out the bad faith factors so thoroughly, we expect that Congress would have explicitly imposed a heightened burden of proof had it intended for one to apply. In Grogan the Supreme Court explained that “silence [in the text and the legislative history of the bankruptcy code] is inconsistent with the view that Congress intended to require a special, heightened standard of proof.” Grogan, 498 U.S. at 286, 111 S.Ct. 654. Faced with a similar silence in the ACPA’s text and legislative history, both of which explain the bad faith requirement in detail, we conclude that the usual preponderance of the evidence standard applies to claims of bad faith registration of domain names under § 1125(d)(1).

C.

The final issue we must consider before reaching the question of bad faith is the scope of the in rem provision of the ACPA, 15 U.S.C. § 1125(d)(2). Harrods UK argues that § 1125(d)(2) provides for *228 in rem jurisdiction against domain names for traditional infringement and dilution claims under §§ 1114, 1125(a) & (c) as well as for claims of bad faith registration with the intent to profit under § 1125(d)(1). The Domain Names argue that the district court correctly limited the scope of the in rem provision to claims under § 1125(d)(1) for bad faith registration of a domain name with the intent to profit. This argument has not yet been settled by any federal circuit court. Only a handful of district courts have considered the issue, and most of them agree with the district court here that § 1125(d)(2) applies only to violations of § 1125(d)(1), bad faith registration with intent to profit. See Cable News Network L.P. v. CNNEWS.com, 177 F.Supp.2d 506, 522-23 (E.D.Va.2001); Hartog & Co. v. SWIX.com, 136 F.Supp.2d 531, 539-40 (E.D.Va.2001); BroadBridge Media, L.L.C. v. Hypercd.com, 106 F.Supp.2d 505, 511 (S.D.N.Y.2000). At least one district court and two commentators have endorsed the contrary view that § 1125(d)(2) authorizes an in rem action for the violation of several substantive provisions of federal trademark law. See Jack in the Box, Inc. v. Jackinthebox.org, 143 F.Supp.2d 590, 591 (E.D.Va.2001); 4 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 25:79, at 25-290 (4th ed.2002); Jonathan S. Jennings, Significant Trademark/Domain Name Issues in Cyberspace, 663 PLI/Pat 649, 664 (2001). While we consider this to be a close question of statutory interpretation, we ultimately conclude that § 1125(d)(2) is not limited to violations of § 1125(d)(1); it also authorizes in rem actions for certain federal infringement and dilution claims.

We begin our analysis with the text of the statute. Section 1125(d)(2)(A) provides that the “owner of a mark” may file an in rem action against a domain name if:

(i) the domain name violates any right of the owner of a mark registered in the Patent and Trademark Office, or protected under subsection (a) [infringement] or (e) [dilution]; and

(ii) ... the owner—

(I) is not able to obtain in personam jurisdiction over a person who would have been a defendant in a civil action under paragraph (1) [§ 1125(d)(1)]; or (ID through due diligence was not able to find a person who would have been a defendant in a civil action under paragraph (1)....

15 U.S.C. § 1125(d)(2)(A). We start with the first clause, subsection (d)(2)(A)(i), which provides that an in rem action is available if “(i) the domain name violates any right of the owner of a mark registered in the Patent and Trademark Office, or protected under subsection (a) or (c).” 15 U.S.C. § 1125(d)(2)(A)© (emphasis added). The broad language “any right of the owner of a mark” does not look like it is limited to the rights guaranteed by subsection (d)(1), but appears to include any right a trademark owner has with respect to the mark. This language, by itself, would include rights under § 1125(d)(1), and it would also include, for example, rights under § 1125(a) against trademark infringement and rights under § 1125(c) against trademark dilution. If Congress had intended for subsection (d)(2) to provide in rem jurisdiction only for subsection (d)(1) claims, it could easily have said so directly. For example, Congress could have said that an in rem action is available if “the domain name violates subsection (d)(1).” Again, if the first key phrase Congress gave us — “any right of the owner of a mark” — is considered in isolation, it would authorize the in rem pursuit of any of the actions that could be brought in personam under U.S. trademark law, including infringement (subsection (a)), dilution (sub *229 section (c)), and cybersquatting (subsection (d)(1)). See 4 McCarthy § 25:79, at 25-290; Jennings, supra, at 664.

Of course, subsection (d)(2)(A)® does not create a claim for the owner of any mark, but rather for the owner of “a mark registered in the Patent and Trademark Office [PTO], or protected under subsection (a) or (c).” Thus, to understand the scope of subsection (d)(2)(A)®, we must also consider the implications of this additional language. Generally speaking, trademark protection is a common law right that arises from the use of a mark to identify the source of certain goods or services. Brittingham v. Jenkins, 914 F.2d 447, 452 (4th Cir.1990); 3 McCarthy § 19:3. By its terms, subsection (d)(2)(A)® does not provide an in rem action for the owner of any type of mark protected under trademark law, but only for the owner of a mark that is either (1) registered in the PTO or (2) protected under §§ 1125(a) or (c).

First, we consider the protection offered a mark registered in the PTO. The owner of a mark may register that mark with the PTO. 15 U.S.C. § 1051. While it is the use of a mark, not its registration, that confers trademark protection, Brittingham, 914 F.2d at 452, registration does confer certain benefits on the owner; for example, it serves as prima facie evidence of the mark’s validity. Id.; 15U.S.C. § 1057(b). Subsection (d)(2)(A)® provides an additional benefit for registration of a mark: registration now entitles the owner of the mark to proceed on an in rem basis under § 1125(d)(2). The rights of an owner whose mark is registered in the PTO are not limited to rights under § 1125(d)(1), however. They also include, for example, rights against infringement of a registered mark under § 1114.

Second, subsection (d)(2)(A)® ends with the provision that even if a mark is not registered, the mark’s owner may proceed on an in rem basis under § 1125(d)(2) if the mark is “protected under subsection (a) or (c).” Subsections (a) and (c) are the infringement and dilution provisions of § 1125. Because subsection (d)(2) provides for an in rem action for the violation of “any right ... of a mark ... protected under subsection (a) or (c),” it seems to provide in rem jurisdiction over a domain name that infringes a mark under § 1125(a) or dilutes a famous mark under § 1125(c). See Jennings, supra, at 664 (“The explicit language of the in rem provision ... suggests a broader application [than just subsection (d)(1) claims], by stating that it protects against domain names violating the rights of owners of marks registered in the PTO, or protected under Section 43(a) or Section 43(c) of the Lanham Act.”). The Domain Names do not offer a competing interpretation of this last provision of subsection (d)(2)(A)® that reconciles this provision with their argument that subsection (d)(2) applies only to bad faith claims under subsection (d)(1). If in rem jurisdiction is only available for subsection (d)(1) bad faith claims, we cannot understand why Congress described the types of marks covered under subsection (d)(2) as those “registered in the [PTO], or protected under subsection (a) or (c).” Subsection (d)(2)(A)(i)’s reference to a mark “registered in the [PTO], or protected under subsection (a) or (c)” reinforces our sense that the phrase “any right” includes more than just subsection (d)(1) rights.

According to the Domain Names, the problem with interpreting subsection (d)(2) as covering more than just bad faith claims under subsection (d)(1) is that subsection (d)(2)(A)(ii) conditions the availability of in rem jurisdiction on proof that the plaintiff is unable to find or obtain personal jurisdiction over the “person who would have *230 be