Wisconsin Law Journal

Within three days, the 7th Circuit issued two different opinions addressing whether an out-of-state business could be sued for cybersquatting.

On Sept. 29, the court held that Internet giant GoDaddy could be sued in Illinois, even though its operations were based almost entirely in Arizona, in large part because GoDaddy advertises nationally. (See “GoDaddy subject to Illinois suit,” David Ziemer, Wisconsin Law Journal, Oct. 4, 2010.)

But on Oct. 1, it held that Dr. Eric Chan, an anesthesiologist from Houston, Texas, could not be sued in Illinois, even if the Internet domain name of his company is confusingly similar to that of an anesthesiologist in Chicago.

Because the Houston doctor is not licensed in Illinois, and his website only solicited Houston-area doctors to contract with him, the court concluded that Illinois courts lacked personal jurisdiction over him.

The case involves two medical companies that contract with medical offices to provide mobile anesthesia services: Mobile Anesthesiologists Chicago, LLC; and Anesthesia Associates of Houston Metroplex, P.A. (hereinafter Mobile/ Chicago; and Mobile/Houston).

Mobile/Chicago sued Mobile/Houston in federal court in Illinois, claiming that Mobile/Houston violated the AntiCybersquatting Consumer Protection Act, by registering a domain name similar to Mobile/Chicago’s registered trademark, www.mobileanesthesiologists.com.

The district court dismissed the suit for lack of personal jurisdiction and the 7th Circuit affirmed in an opinion by Judge David F. Hamilton.

Mobile/Chicago did not contend that the Illinois court had general jurisdiction over Mobile/Houston, but argued that it did have specific jurisdiction.

The court disagreed, finding that Mobile/Houston merely maintained a website that was accessible to residents of Illinois, and that this is insufficient to confer personal jurisdiction.

Citing the GoDaddy case as an example of an out-of-state defendant that did target customers in the forum state, the court contrasted Mobile/Houston’s purely local activities. “Dr. Chan is not licensed to practice medicine outside of Texas. His website does not contain much, but it does contain a Houston-area phone number, an e-mail address, and an invitation to doctors in the ‘greater Houston area’ to contract for his services. If a doctor in Chicago stumbled upon Dr. Chan’s website and called for an appointment, their conversation would be very short.”

The opinion is relevant not just to attorneys whose practices include trademark or cybersquatting litigation, but to all attorneys with websites.

Domain names for law firms will unavoidably be confusingly similar to those of other law firms, some of which may be firms in other states.

If an attorney named John Smith, licensed to practice only in Wisconsin, registers a domain name that includes the terms “attorney” and “johnsmith”, his site will come up when customers in other states look for lawyers named John Smith via a search engine.

Attorneys in other states named John Smith might wish to gain control of that domain name.

Under the court’s reasoning, however, attorney Smith can only be sued in Wisconsin; he cannot be haled into court in another state, in which he is not even licensed to practice, to defend his domain name.

Case: Mobile Anesthesiologists Chicago, LLC, v. Anesthesia Associates of Houston Metroplex, P.A., No. 09-2658 (PDF)

Issues: Is a doctor subject to personal jurisdiction in another state for cybersquatting?

Holdings: No. Where the doctor is not licensed in the forum state, and his website was aimed at local business only, the court lacks personal jurisdiction over him.