COUNSEL:
For WORLDSPORT NETWORKS LIMITED, PLAINTIFF: EDWARD F. MANNINO, AKIN GUMP STRAUSS HAUER & FELD L.L.P., PHILADELPHIA, PA USA.

ARTINTERNET S.A., DEFENDANT, Pro se, DEUIL LA BARRE FRANCE.

CEDRIC LOISON, DEFENDANT, Pro se, DEUIL LA BARRE FRANCE.

For NETWORK SOLUTIONS, INC., RESPONDENT: CARL A. SOLANO, SCHNADER HARRISON SEGAL& LEWIS, PHILA, PA USA. PHILIP L. SBARBARO, HANSON & MOLLOY, WASHINGTON, DC USA.

For ASSOCIATION FOR THE CREATION AND PROPAGATION OF INTERNET POLICIES, RESPONDENT: KATHRYN A. KLEIMAN, A-TCPIP/DOMAIN NAME RIGHTS COALITION, ALEXANDRIA, VA USA.

JUDGES:
BRUCE W. KAUFFMAN, J.

OPINIONBY:
BRUCE W. KAUFFMAN

OPINION:

ORDER
AND NOW, this 3rd day of January, 2000, upon consideration of the unopposed joint proposal by Plaintiff Worldsport Networks Limited and Intervenor Network Solutions, Inc., it is ORDERED that:

1. Paragraph 5 of the Order entered March 4, 1999, as amended, is further amended to add a sentence that shall read:
 

Defendants also shall file with the Court and serve upon Worldsport and its counsel a report in writing and under oath setting forth their compliance with this Order at any time any Defendant registers a domain name with any registrar in any top-level domain.

Paragraph 3 of the Order dated March 4, 1999 is amended to read, in its entirety, as follows: "NSI shall remove Artinternet's registration of the domain name worldsports.com and shall register the domain name worldsports.com to Plaintiff."

4. The Motion by Plaintiff to strike Intervenor Network Solutions, Inc.'s Reply brief in Support of the Motion for Clarification or Reconsideration of the Court's Order dated April 27, 1999, or in the Alternative, Motion by Plaintiff for Leave to File a Sur-Reply brief is DENIED as moot.

BY THE COURT:
BRUCE W. KAUFFMAN, J.
 
 

COUNSEL:
For WORLDSPORT NETWORKS LIMITED, PLAINTIFF: EDWARD F. MANNINO, AKIN GUMP STRAUSS HAUER & FELD L.L.P., PHILADELPHIA, PA USA.

ARTINTERNET S.A., DEFENDANT, Pro se, DEUIL LA BARRE FRANCE.

CEDRIC LOISON, DEFENDANT, Pro se, DEUIL LA BARRE FRANCE.

For NETWORK SOLUTIONS, INC., RESPONDENT: CARL A. SOLANO, SCHNADER HARRISON SEGAL& LEWIS, PHILA, PA USA. PHILIP L. SBARBARO, HANSON & MOLLOY, WASHINGTON, DC USA.

For ASSOCIATION FOR THE CREATION AND PROPAGATION OF INTERNET POLICIES, RESPONDENT: KATHRYN A. KLEIMAN, A-TCPIP/DOMAIN NAME RIGHTS COALITION, ALEXANDRIA, VA USA.

JUDGES:
BRUCE W. KAUFFMAN, J.

OPINIONBY:
BRUCE W. KAUFFMAN

OPINION:

AMENDED ORDER

Kauffman, J.
January 3, 2000
THIS CAUSE came before the Court on the Complaint of Worldsport Networks Limited ("Worldsport") against Defendants Artinternet S.A. and Cedric Loison ("Defendants").
Defendants have made the following admissions to this Court:

1. Defendants admit that they have no right to use Worldsport, Worldsports, worldsport.com, worldsports.com, worldsport.org, worldsports.org, worldsport.net or worldsports.net or any other similar word, name or term as Defendants' marks, domain name, or in connection with the advertising or promotion of their goods, services or web sites.

2. Defendants also admit that they registered, used and offered to sell the domain name worldsports.com and such actions constitute infringement of Plaintiff's WORLDSPORT.COM trademark and unfair competition with Plaintiff and create a likelihood of confusion among consumers and irreparably harmed Plaintiff.

In light of the above admissions, having read the pleadings, Plaintiff's Motion for Preliminary Injunction and Plaintiff's Motion for Temporary Restraining Order and the supporting affidavits and papers, and having held a hearing on Plaintiff's Motion for a Temporary Restraining Order on February 23, 1999, is hereby ORDERED AND ADJUDGED, without objection, that:

1. Defendants, all persons acting for, with, by or through them, and their Internet Service Providers ("Defendant Group") having notice of this Order by personal service, e-mail, or otherwise are permanently enjoined and restrained from:

a) using in any manner Worldsport, Worldsports, worldsport.com or worldsports.com, worldsport.org or worldsports.org, worldsport.net or worldsports.net and any other similar word, name or term;
b) using Worldsport, Worldsports, worldsport.com or worldsports.com, worldsport.org or worldsports.org, worldsport.net or worldsports.net and any other similar word, name or term as their domain name, in buried code or metatags on their home page or web pages, in connection with the retrieval of data or information, on other goods or services, or in connection with the advertising or promotion of their goods, services or web sites;
c) selling or offering for sale the web site www.worldsports.com and the domain name worldsports.com or any other similar web sites or domain names;
d) otherwise representing or engaging in conduct which is likely to cause consumers to erroneously believe or be confused about whether Defendants' goods and/or services are in any way affiliated, connected, associated, sponsored and/or approved by Worldsport;
e) otherwise diminishing Worldsport's goodwill.

2. Defendant Group are permanently enjoined and restrained from claiming the right to use the domain name worldsports.com or any other similar word, name or term on the Internet and within three (3) days of this Order shall submit a copy of this Order to Network Solutions, Inc. ("NSI") by e-mail and by overnight mail.

3.  NSI shall remove Artinternet's registration of the domain name worldsports.com and shall register the domain name worldsports.com to Plaintiff.

4. Defendant Group shall submit a copy of this Order and direct in writing all publishers of directories or lists, including Internet search engines, in which Defendants' use of Worldsport, Worldsports, worldsport.com, worldsports.com or any similar word, name or term appears, to delete references to such words, names or terms from their public databases, search engine directories, directory assistance and from directories in which said names and marks are to appear, and to delete all forwarding or "cache memory" or storage mechanisms referencing worldsports.com.

5. Defendants shall file with the Court and serve upon Worldsport's counsel within thirty (30) days after entry of this Order a report in writing and under oath setting forth in detail the manner and form in which Defendants have complied with the requirements of this Order. Defendants also shall file with the Court and serve upon Worldsport and Worldsport's counsel a report in writing and under oath setting forth their compliance with this Order at any time that any Defendant registers a domain name with any registrar in any top-level domain.

6. Defendants shall post this Order on their web sites and give notice thereof to all of their customers, correspondents, members and subscribers.
This Court retains jurisdiction over this matter to the extent necessary to enforce the terms and conditions of this Order.

BY THE COURT:
BRUCE W. KAUFFMAN, J.
 
 

DISPOSITION:
Plaintiff's Motion to Modify (dckt. # 13) GRANTED IN PART and DENIED IN PART, Plaintiff's Motion for an Order of Civil Contempt (dckt. # 14) DENIED; NSI's Motion to Intervene (dckt. # 17) GRANTED; NSI's Petition to Modify (dckt. # 18) GRANTED IN PART and DENIED IN PART.

COUNSEL:
For WORLDSPORT NETWORKS LIMITED, PLAINTIFF: MARI M. SHAW, LYNN COLLINS, J. KEVIN FEE, AKIN, GUMP, STRAUSS, HAUER & FELD, L.L.P., PHILADELPHIA, PA USA.

ARTINTERNET S.A., DEFENDANT, Pro se, DEUIL LA BARRE FRANCE.

CEDRIC LOISON, DEFENDANT, Pro se, DEUIL LA BARRE FRANCE.

For NETWORK SOLUTIONS, INC., RESPONDENT: CARL A. SOLANO, SCHNADER HARRISON SEGAL & LEWIS, PHILA, PA USA.

For NETWORK SOLUTIONS, INC., RESPONDENT: PHILIP L. SBARBARO, HANSON & MOLLOY, WASHINGTON, DC USA.

JUDGES:
Bruce W. Kauffman, J.

OPINIONBY:
Bruce W. Kauffman

OPINION:

MEMORANDUM

Kauffman, J.
April 27, 1999
This case demonstrates the increasing need to reconcile trademark rights with the vast and dynamic new medium of information, the Internet. Plaintiff, Worldsport Networks Limited ("Plaintiff"), brought this trademark action against Defendants, Artinternet S.A. and Cedric Loison ("Defendants"). On March 4, 1999, the parties stipulated to a Court Order finding Defendants in violation of Plaintiff's trademark rights by reason of action taken through the Internet, and enjoining Defendants from further violation. The Order also compelled Network Solutions, Inc. ("NSI") to take certain measures to prevent additional infringement of Plaintiff's rights. n1 Presently before the Court are the following motions: (1) Plaintiff's Motion to Modify the March 4, 1999 Order; (2) Plaintiff's Motion for an Order of Civil Contempt against NSI; (3) NSI's Motion to Intervene; and (4) NSI's Petition to Modify the March 4, 1999 Order. For the reasons detailed below, NSI's Motion to Intervene will be granted, Plaintiff's Motion to Modify will be granted in part and denied in part, NSI's Petition to Modify will be granted in part and denied in part, and Plaintiff's Motion for an Order of Civil Contempt will be denied.

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n1 As explained infra, this action was taken in reliance upon Plaintiff's representation that NSI had consented to the Order.

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I. BACKGROUND
Plaintiff is an Irish corporation involved in international sport; in particular, Plaintiff operates and maintains the official website for the General Association of International Sports Federations. In that regard, Plaintiff has registered the Internet domain name "worldsport.com" and has filed applications for registration of the mark WORLDSPORT.COM in the United States Patent and Trademark Office. Defendants, a French organization and its president, admitted, in a written stipulation, that they registered, used, and offered to sell the domain name "worldsports.com" and that such actions infringed Plaintiff's WORLDSPORT.COM trademark. Plaintiff instituted the present action on February 5, 1999 and, armed with said admission from Defendants, submitted to the Court a stipulated proposed Order enjoining Defendants from further use of the names "Worldsport," "Worldsports," "worldsport.com," or "worldsports.com" and from further offering for sale the domain name "worldsport.com." The Court entered the Order on March 4, 1999.
NSI is a public corporation headquartered in Virginia. Pursuant to a contract with the National Science Foundation, NSI is the exclusive worldwide registrar of many popular domain names, including those ending in ".com" and ".org." n2 Currently, NSI registers over 300,000 domain names per month, at an approximate rate of one every ten seconds. (Graves Decl. P 10.) Registration is effected on a "first-come, first-served" basis; before they are registered, NSI screens proposed domain names to ensure that they have not already been registered. (Graves Decl. P 12.) Under NSI's Domain Name Dispute Policy (the "Policy"), NSI does not analyze proposed domain names to determine whether they infringe the rights of others, but registrants are required to represent that the proposed registration is not for any unlawful or improper purpose. (Policy P 2.) In the Policy, NSI also represents that, when presented with proof of a valid trademark and proof that one of its customers has breached this warranty of non-infringement, it will respect the rights of trademark holders and place the disputed domain name on "hold" status. (Policy P 8.) The Policy also asserts that NSI will abide by all temporary and final Court Orders directing the disposition of a domain name without being named as a party to the litigation. (Policy P 10.)

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n2 For a detailed and well-written explanation of the Internet and the domain name system, see Lockheed Martin Corp. v. Network Solutions, Inc., 985 F. Supp. 949, 951-53 (C.D. Cal. 1997).

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NSI repeated its willingness to abide by Court Orders in letters to Plaintiff, who in turn represented to the Court that NSI, although not a party to the litigation, would obey any Order entered by the Court with respect to the instant dispute. Thus, in its proposed Order, Plaintiff included the following language: "3. NSI shall remove [Defendants'] registration of the domain name worldsports.com, shall register the domain name worldsports.com to Plaintiff, and shall not permit the registration as a domain name of any similar word, name or term by any party other than Plaintiff." Informed that the parties and NSI agreed to the proposal, The Court entered the Order.
NSI complied with the Order by transferring the "worldsports.com" domain name to Plaintiff. It objected, however, to the requirement that it deny the registration of "any similar word, name or term by any party other than Plaintiff," arguing that the Order "presented significant legal, practical, and public policy concerns." (NSI Br. at 13.) Plaintiff and NSI attempted to resolve the dispute, but on March 19, 1999, Plaintiff moved for an Order of Civil Contempt against NSI and to modify the March 4, 1999 Order by annexing the following sentence to the conclusion of paragraph 3: "For Purposes of this Order, any words, names or terms containing the following string of characters will be treated as similar to worldsport.com: worldsport, worldsports, world-sport, and world-sports." n3 This attempt to help define "similar" terms did not satisfy NSI's concerns, and, on March 26, 1999, it moved to intervene and filed its own Petition to Modify, seeking the removal from the Order of the phrase: "and shall not permit the registration as a domain name of any similar word, name or term by any party other than Plaintiff."

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n3 Plaintiff also submitted proof that Defendants consent to Plaintiff's proposed modification.

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II. DISCUSSION
A. Motion to Intervene
Rule 24(a) of the Federal Rules of Civil Procedure provides for intervention of right

when the applicant claims an interest relating to the property or transaction which is the subject of the action and the applicant is so situated that the disposition of the action may as a practical matter impair or impede the applicant's ability to protect that interest, unless the applicant's interest is adequately represented by existing parties.

Fed. R. Civ. P. 24(a)(2). A non-party is permitted to intervene in litigation under Rule 24(a)(2) only if: (1) the application for intervention is timely; (2) the applicant has a sufficient interest in the litigation; (3) the interest may be affected or impaired as a practical matter by the disposition of the action; and (4) the interest is not adequately represented by an existing party in the litigation.  Harris v. Pernsley, 820 F.2d 592, 596 (3d Cir. 1987).
The Court concludes that NSI qualifies for Rule 24(a) intervention. First, while this litigation began seven weeks before NSI moved to intervene and while it appears that NSI was on notice of the suit, NSI reasonably expected that any order resulting from this case would involve the disposition of Defendants' domain name alone, and not domain names registered to non-parties. Once the March 4, 1999 Order was entered, it appears that NSI acted expeditiously to protect its interests. Thus, the timeliness requirement has been met. Second, the March 4, 1999 Order requires NSI to change its pre-registration screening process to spot the vast number of potential domain names that may be similar to Plaintiff's. This constitutes a direct and protectable interest that was affected by the March 4, 1999 Order that was not adequately represented by the existing parties. Accordingly, NSI's Motion to Intervene will be granted. n4

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n4 Plaintiff's Motion for an Order of Civil Contempt against NSI will be denied. The Court was informed that NSI consented to the March 4, 1999 Order before it was entered, and NSI's timely request for modification of the Order is reasonable.

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B. Motions to Modify
NSI moves under Rule 60(b) of the Federal Rules of Civil Procedure for a modification of the March 4, 1999 Order. Rule 60(b) permits a court to relieve a party from a final order when, inter alia: (1) it is tainted by mistake or inadvertence; (2) it is void; or (3) when the Court, in its discretion, deems that reasonable cause exists for relief from the order. Fed. R. Civ. P.  60(b)(1), (4), (6).
Rule 65(d) of the Federal Rules of Civil Procedure provides that an injunction "is binding only upon the parties to the action, their officers, agents, servants, employees, and attorneys, and upon those persons in active concert or participation with them who receive actual notice of the order by personal service or otherwise." Fed. R. Civ. P. 65(d). Plaintiff and Defendants stipulated that Defendants had violated Plaintiff's trademark rights and should be enjoined from doing so in the future. Defendants committed these violations in part through the registration and naming of their website. Thus, NSI, although unwittingly and without culpability, acted in concert with Defendants in violating Plaintiff's trademark rights. Therefore, the Court possesses the authority to enjoin NSI from aiding Defendants in said violations and in future violations. See also 15 U.S.C. §  1114(2)(A); Coca-Cola Co. v. Gemini Rising, Inc., 346 F. Supp. 1183, 1193 (E.D.N.Y. 1972) ("The Lanham Act itself, 15 U.S.C. §  1114(2) (a) and (b), recognizes that even newspapers, magazines and periodicals, as well as printers, may be enjoined from innocent infringement of another's mark as to future publication."). NSI has consented to this exercise of the Court's authority.
The March 4, 1999 Order, however, reaches beyond future infringement by Defendants, who have admitted their violations, but also extends to the registration of any domain name similar to Plaintiff's mark by any applicant. This would place an unreasonable burden on NSI without its consent. Accordingly, to the extent that it seeks relief from that part of the March 4, 1999 Order requiring it to refuse domain name registration to any entity other than Defendants, NSI's Petition to Modify will be granted.
In so far as it precludes NSI from cooperating in future infringements of Plaintiff's mark by Defendants, the injunction will remain in full force and effect. Defendants have agreed to be enjoined from using any name or term "similar" to "worldsports.com," and they have also agreed that any name or term containing the following string of characters shall be deemed "similar": "worldsport," "worldsports," "world-sport," or "world-sports." The March 4, 1999 Order shall be amended accordingly and Plaintiff's Motion to Modify will be granted to that limited extent.
An appropriate Order follows.
BY THE COURT:
Bruce W. Kauffman, J.
ORDER
AND NOW, this 27th day of April, 1999, upon consideration of Plaintiff's Motion to Modify the March 4, 1999 Order, Plaintiff's Motion for an Order of Civil Contempt against NSI, NSI's Motion to Intervene, and NSI's Petition to Modify the March 4, 1999 Order, it isORDERED that:

1. Plaintiff's Motion to Modify (dckt. # 13) is GRANTED IN PART and DENIED IN PART, as explained in the accompanying Memorandum;

2. Plaintiff's Motion for an Order of Civil Contempt (dckt. # 14) is DENIED;

3. NSI's Motion to Intervene (dckt. # 17) is GRANTED;

4. NSI's Petition to Modify (dckt. # 18) is GRANTED IN PART and DENIED IN PART, as explained in the accompanying Memorandum; and

5. Paragraph 3 of the Order dated March 4, 1999 is amended to read, in its entirety, as follows: "3. NSI shall remove Artinternet's registration of the domain name worldsports.com, shall register the domain name worldsports.com to Plaintiff, and shall not permit the registration by Defendants of any words, names or terms containing the following string of characters: worldsport, worldsports, world-sport,  world-sports."
BY THE COURT:
Bruce W. Kauffman, J.