(Cite as: 1999 WL 117760 (Va. Cir. Ct.))
UMBRO INTERNATIONAL, INC., Judgment Creditor v. 3263851
CANADA, INC. Judgment Debtor, and Network Solutions, Inc., Garnishee, At
Law No. 174388. No. 174388. Circuit Court of Virginia. March 12, 1999.
James J. Casey, Esquire, Christopher B. Roblyer, Esquire,
Alston & Bird, P.C., Washington, D.C. Philip L. Sbarbaro, Esquire,
Kevin C. Golden, Esquire, Hanson & Malloy, Washington, D.C. KEITH.
*1 Dear Counsel:
In this case of apparent first impression, Umbro International,
Inc. ("Umbro") seeks to garnish socalled domain name registrations
that were registered by the Judgment Debtor with the garnishee, Network
Solutions, Inc. ("NSI"). In response to Umbro's attempted garnishment,
NSI filed an answer denying that it held any property of 3263851 Canada,
Inc. ("Judgment Debtor") that was subject to garnishment. Umbro
then filed a motion seeking to require NSI to show cause why it had not
deposited control of the domain name registrations into the registry
of the Court for their judicial sale. NSI opposed the motion and a hearing
was held on December 18, 1998. The Court took the case under advisement
and, having further reviewed the briefs and arguments of counsel, rules
that domain names are subject to garnishment for the reasons
set forth below. 1. Background. Umbro is an internationally known manufacturer
of soccer clothing and equipment that, over ten years ago, registered the
UMBRO name as a trademark.
The Judgment Debtor is a Canada corporation that has
registered domain names with NSI [FN1]. Most of the Judgment Debtor's
registered domain names indicate that the Judgment Debtor distributes
pornography over the Internet. [FN2] But, along with its salacious Internet
addresses, the Judgment Debtor also registered the domain name "umbro.com."
In August of 1997, the Judgment Debtor faxed a demand letter to Umbro stating
that it would transfer the umbro.com domain name to Umbro if Umbro
would agree to pay it $50,000.00, pay the same amount to an Internet charity
and provide the owner of the Judgment Debtor, one James Tombas, a free,
unlimited, lifetime supply of Umbro products. Understandably, Umbro refers
to the Judgment Debtor as "classic domain name pirate." [FN3] It
also sued the Judgment debtor for trademark infringement and obtained a
default judgment against the Judgment Debtor in the United States District
Court for the District of South Carolina, Greenville Division. The District
Court judgment enjoined the Judgment Debtor from any use of the word "umbro,"
directed that the Judgment Debtor relinquish all interest in the domain
name "umbro.com." and further ordered that the Judgment Debtor pay
Umbro reasonable attorneys' fees and expenses in the amount of $23,489.98.
Umbro International, Inc., et al. v. 3263851 Canada, Inc., et al., No.
6:97 277920 (D.S.C., Dec. 30, 1997).
Umbro then obtained a Certification of Registration in
another District from the United States District Court for the District
of South Carolina and filed it in the United States District Court for
the Eastern District of Virginia. That Court issued an Exemplification
Certificate which Umbro filed, along with an affidavit and the required
filing fee in order to obtain a writ of fieri facias from this Court. After
the issuance of the writ, Umbro instituted a garnishment proceeding
to force the judicial sale of the Judgment Debtor's remaining domain
names. In response, NSI filed an answer denying that it held any "money
or garnishable property of the Judgment Debtor." As noted above, this action
Internet computers use a numeric addressing system to
locate other computers on the Internet. This numeric addressing system
requires that each computer connected to the Internet have its own numeric
address called an Internet Protocol ("IP") number. An IP number is a set
of four numbers each separated by a period (e.g., 184.108.40.206). Since
people remember names better than numbers but network computers must use
numbers, an intermediary system called the Domain Name System translates
the web addresses used by people into the IP numbers used by the network.
Web addresses always contain two or more components separated by periods,
called in computerese "dots." The last part of a web address (the letters
at the far right) is called the "toplevel domain." To the left of
the top level domain is what is called the "second level domain."
In umbro.com, "umbro" represents a secondlevel domain within the toplevel
domain of ".com." See the Network Solutions, Inc. website Search &
Site Index for more detailed information concerning web addresses and
domain names. (visited on Feb. 1, 1999) <http://www.networksolutions.com/SEARCH/>.
See also Intermatic, Inc. v. Toeppen, 947 F.Supp. 1227, 123033 (N.D.Ill.1996).
Network Solutions, Inc. has an exclusive contract with
the federal government to register the popular Internet toplevel domains
of . com, .edu, .net and .org. Jeri Clausing, Network Solutions Joins Internet
HighFliers, N.Y. TIMES, Dec. 22, 1998. FN2. The Judgment Debtor's
websites include sites with names such as "picsofchics.com," "sexxx.com,"
"pornplaza.com," and "slutpix .com." Affidavit of David M. Graves, Director,
Business Affairs, Network Solutions, Inc. These domain names are
associated with web sites and are not just registered to reserve the names.
(Hearing Transcript, December 18, 1998 at 25). FN3. People such as the
Judgment Debtor are also commonly referred to as a "cybersquatters."
Intermatic, Inc., 947 F.Supp. at 1233. A cyber squatter attempts to
profit from reserving and later reselling or licensing domain names
back to the companies that spent millions of dollars developing the goodwill
of their trademarks. Sometimes these sales involve "huge" amounts of money.
Id. at 123334. See, Gary W. Hamilton, Trademarks on the Internet:
Confusion, Collusion or Dilution?, 4 TEX. INTELL. PROP J. 1 (1995) <http://www.utexas.edu/law/journals/tiplj>.
*2 2. Findings of Fact and Conclusions of Law. The issue in this
case is whether the domain names registered by the Judgment Debtor
with NSI are the kind of property that is subject to garnishment.
The Supreme Court of Virginia has succinctly set forth
the parameters of a garnishment action in the case of Lynch v. Johnson,
196 Va. 516, 520(1954): Garnishment is a proceeding which exists
only by virtue of statutory enactment. Under our statutes, [ Va.Code Ann.
' 8.01511, et seq. ],
garnishment is the process by which a judgment creditor enforces the
lien of his execution against any debt or property due his judgment debtor
in the hands of a third person, garnishee. The word "garnishment"
is derived from the Norman French word "garnir," meaning to warn. 38 C.J.S.,
Garnishment, ' 1, p. 200.
Thus, a summons of garnishment under our statutes is a warning to
the garnishee not to pay the money or deliver the property of the judgment
debtor in his hands, upon penalty that if he does he may subject himself
to personal judgment. The proceeding of garnishment is in many respects
similar to attachment by levy, but as indicated, differs in at least on
particular, that is, the creditor "does not acquire a clear and full lien
upon the specific property in the garnishee's possession, but only such
a lien as gives him the right to hold the garnishee personally liable for
it or its value." Bickle v. Chrisman's Adm'x, 76 Va. 678, 691, 692.
If it appear upon proof or upon confession the garnishee
that he owes the judgment debtor any debt or property, the court "may give
judgment against him for any amount found due the execution debtor, and
order him to deliver any estate for which there is such liability, or pay
the value of such estate to any officer whom it may designate." Code '
8444 [repealed. Replaced by Va.Code Ann. '
8.01516.1]. However, the garnishee, being a mere stakeholder or custodian
of such debt or property, may avoid all personal liability by surrendering
to the court for its proper disposition any amount of money or any specific
property due the judgment debtor. The court cannot, therefore enter any
order or judgment against the garnishee unless he is found either to be
indebted to the judgment debtor, or to have possession of property of such
debtor for which debt or property the judgment debtor himself could maintain
an action at law [ citations omitted ]. 196 Va. at 52021.
Va.Code Ann. '
8.01501 clearly states that a writ of fieri facias is a lien on all
the intangible property of the judgment debtor. Boisseau v. Bass, 100 Va.
207, 209 (1902)(statute covers "every species of personal estate or interest");
Evans v. Greenhow 56 Va. (15 Gratt.) 153 (1859); Virginia CLE, Debt Collection
for Virginia LawyersA Systematic Approach at '
7.201(1995). The lien, however, only attaches "to the extent that the judgment
debtor has a possessory interest in the intangible property subject to
the writ." International Fidelity Ins. v. Ashland Lumber, 250 Va. 507,
511 (1995). *3
The more precise issue in this case then, is does the
Judgment Debtor have a possessory interest in the domain names it
registered with NSI? For the reasons set forth below I find that it does.
The Domain Name Registration Agreement (Exhibit 1 to David M. Graves
affidavit, hereinafter the "Registration Agreement") provides among other
things that the registration of a domain name "does not confer immunity
from objection to either the registration or use of the domain name."
The Registration Agreement also obligates the registrant to comply with
NSI's dispute policy (Exhibit 2 to David M. Graves affidavit, hereinafter
the "Dispute Policy"). The Dispute Policy gives NSI the right on thirty
days notice to "revoke, suspend, transfer or otherwise modify a domain
name registration," Dispute Policy '
7. In the event of a trademark litigation NSI may deposit control of the
domain name into the registry of the court. This was done in Umbro
v. 3263851 Canada, Inc., et al, (D.S.C., Dec. 30, 1997), supra. (Exhibit
3 to David M.Graves affidavit, hereinafter the "Declaration"). In the Declaration
NSI stated that it "hereby deposits to the Court complete control and authority
regarding the disposition of the registration and use of the UMBRO.COM
domain name." Declaration &
5. The Dispute Policy also provides that NSI "will abide by those provisions
of temporary or final court orders, or arbitration awards directing the
disposition of the domain name, without being named as a party to
the civil action." Dispute Policy '
10(c). However, once a registrant has paid the required fee, it is entitled
to use the domain name to identify its site on the internet, subject
to the requirements of the Registration Agreement.
NSI argues that a writ of fi. fa. cannot extend to
domain names because the contract rights set forth in the Registration
Agreement are dependent on unperformed conditions. These conditions include
NSI's rights to indemnification and the registrant's continuing obligation
to maintain an accurate registration record.
This argument fails on several grounds. First, in the
Dispute Policy NSI undertakes to abide by any court order. Such orders
have included mandatory injunctions that a registrant "take all actions
necessary to transfer" a disputed domain name to a third party.
Panavision Int'l, L.P. v. Toeppen, 945 F.Supp. 1296, 1306 (C.D.Cal.1996).
Thus in the Dispute Policy NSI has agreed to subject itself to the very
conditions it argues here would be unfair and contractually inappropriate.
Second, property can be garnished that may be subject to other liens that
affect the value of the property. Any bidder would have to discount its
bid by factoring in the impact of a lien on the value of the property.
Here a domain name is subject to the Registration Agreement and
the Dispute Policy but those contract provisions do not of themselves destroy
a domain name as a subject of garnishment. Nor do those contract
obligations render a registrant's rights "conditional" or so uncertain
that the rights cannot be garnished. There is no unperformed condition
under the Registration Agreement that could prevent a registrant from the
full use of the domain name registration. The fact that the registration
is subject to various conditions subsequent are not the kind of conditions
that the Court dealt with in Tipco Homes, Inc. v. Sutton Woods, Inc., 9
Va. Cir. 95 (Fairfax County, 1987). *4
NSI next argues that the contract right to the performance
of a service is not garnishable because among other things it would force
NSI "to perform services for those with whom it may not desire to do business."
This assertion is entitled to little weight, as in the short time of its
existence, NSI has registered some 3.5 million domain names (Hearing
Transcript, December 18, 1998 at 10) and registration applications are
made by email without human intervention in 90% of registration transactions.
Lockheed Martin Corp. v. Network Solutions, Inc. 985 F.Supp. 949, 953 (C.D.Cal.1997).
Moreover, as Umbro points out in its reply brief, NSI did not balk at registering
the domain names in question to the Judgment Creditor; a Judgment
Creditor who certainly appears to be a pornographer. In fact, NSI does
not vet its registrants nor does it monitor how its registrants use the
domain names they register and NSI has avoided liability for trademark
infringement because of this passive role in the registration process.
See, e.g., Lockheed Martin Corp., 985 F.Supp. at 96468. In parts II,
III and IV of its opposition, NSI makes what can be collectively treated
as its "intellectual property" arguments. There can be little question
that domain names are a form of intellectual property. Domain
names can receive trademark protection from the patent office. See
Hamilton, Trademarks on the Internet, supra note 3. The fact that this
form of intellectual property results from a service that NSI provides
does not (as NSI argues) preclude the property from garnishment
any more than the service provided by the Patent Office in issuing a patent
immunizes patents from garnishment. McClaskey v. HarbisonWalker
Ref. Co., 138 F.2d 493 (3d Cir.1943); see Cherie L. Lieurance, Judgment
Creditors' Access to Intellectual Property RightsIs Simple Execution
in Sight?, 7 WHITTIER L. REV. 375 (1985).
Nor can NSI prevail when it argues that because domain
names do not have a readily ascertainable value they cannot be the
subject of garnishment. The writ of fi. fa. extends to all manner
of property. The cases cited by Umbro demonstrate that there is indeed
a market of domain names and domain names have substantial
value. Intermatic, Inc., 947 F.Supp. 1227 (N.D.Ill.1996); Panavision Int'l,
L.P., 945 F.Supp. 1296 (C.D.Cal.1996). Since Virginia's fi. fa. and
garnishment procedures provide that a garnishee may be ordered to deliver
a judgment debtor's property for "proper disposition," Lynch, 196 Va. at
520; Va.Code Ann. ' 8.01516,
it appears that domain names can be subjected to garnishment.
Until Umbro's effort, domain names apparently have not been subjected
to garnishment, but that is no reason to conclude that this new
form of intellectual property is therefore immune. The problem of shaping
the new to the old, of reconciling the dual demands of stability and change,
is surely congenial to legally trained minds. Just as our profession combines
the theoretical and practical so also it furnishes insights into the perennial
push of new demands pressing upon older interests. "History," to use Paul
Freund's arresting phrase, "is itself a tension between heritage and heresy
which law in its groping way seeks to mediate." *5 HARDY CROSS DILLARD,
WRITINGS AND SPEECHES 41 (Daniel J. Meador ed ., 1995).
There is no reason apparent to this court why a judgment
creditor should be precluded from satisfying a valid judgment just because
his creditor has a possessory interest in intangible intellectual property
resulting from technology of recent vintage.
Mr. Roblyer will kindly prepare a draft order requiring
NSI to deliver the domain names into the registry of the Court,
whereupon they will be sold by the Sheriff to the highest bidder. He shall
circulate the draft to Mr. Sbarbaro for his endorsement and then file the
draft with the Clerk to my attention for entry. If the parties cannot agree
on the form of the order, I have placed this matter on my 10:00 o'clock
docket for Friday, March 5, 1999 for entry of an order unless counsel notify
me that this is an inconvenient date.
END OF DOCUMENT