Page 1 LEXSEE 356 F.3D 393 REGISTER.COM, INC., Plaintiff-Appellee, v. VERIO, INC., Defendant-Appellant. Docket No. 00-9596 UNITED STATES COURT OF APPEALS FOR THE SECOND CIRCUIT 356 F.3d 393; 2004 U.S. App. LEXIS 1074; 69 U.S.P.Q.2D (BNA) 1545 January 21, 2001, Argued January 23, 2004, Decided PRIOR HISTORY: [**1] Appeal by defendant Verio, Inc. from preliminary injunction granted by the United OPINION BY: LEVAL States District Court for the Southern District of New York (Jones, J.) on motion of plaintiff Register.com, OPINION: [*395] LEVAL, Circuit Judge: Inc., a registrar of Internet domain names. The order en- Defendant, Verio, Inc. ("Verio") appeals from an or- joined the defendant from using the plaintiff's mark in der of the United States District Court for the Southern communications with prospective customers, accessing District of New York (Barbara S. Jones, J.) granting the plaintiff's computers by use of software programs per- motion of plaintiff Register.com, Inc. ("Register") for a forming multiple automated, successive queries, and preliminary injunction. The court's order enjoined Verio using contact information relating to recent registrants of from (1) using Register's trademarks; (2) representing or Internet domain names ("WHOIS information") obtained otherwise suggesting to third parties that Verio's services from plaintiff's computers for mass solicitation. Regis- have the sponsorship, endorsement, or approval of Regis- ter.com, Inc. v. Verio, Inc., 126 F. Supp. 2d 238, 2000 ter; (3) accessing Register's computers by use of auto- U.S. Dist. LEXIS 18846 (S.D.N.Y., 2000) mated software programs performing multiple successive queries; and (4) using data obtained from Register's da- DISPOSITION: Affirmed. tabase of contact information of registrants of Internet domain names to solicit the registrants for the sale of web site development services by electronic mail, tele- COUNSEL: WILLIAM F. PATRY, New York, NY phone calls, or direct mail. We affirm. n1 (Kenneth A. Plevan, Scott D. Brown, Paul M. Fakler, on the brief), for Appellee. MICHAEL A. JACOBS, San Francisco, CA, (James E. n1 Judge Parker was not in agreement with this disposition. Deliberations have followed an Hough, Mark David McPherson, on the brief) for Appel- lant. unusual course. Judge Parker initially was as- signed to prepare a draft opinion affirming the district court. In the course of preparing the draft, JUDGES: Before: LEVAL, Circuit Judge, and J. F. KEENAN, District Judge. * Judge Parker changed his mind and proposed to rule in favor of the defendant, overturning the in- junction in most respects. Judge Parker's draft * The Honorable John F. Keenan, United States opinion, however, failed to convince the other District Judge for the Southern District of New members of the panel, who adhered to the view that the injunction should be affirmed. Judge York, sitting by designation. The Honorable Fred I. Parker was a member of the panel but died on Parker died shortly thereafter, prior to the circula- August 12, 2003. Judge Parker would have voted tion of a draft opinion affirming the injunction, from which Judge Parker presumably would have to reverse the district court's order. This appeal is being decided by the two remaining members of dissented. the panel, who are in agreement. See Local Rule We attach Judge Parker's draft opinion as an § 0.14(b). Appendix. We do so for two reasons: One is to [**2] expose Judge Parker's views, which would have Page 2 356 F.3d 393, *; 2004 U.S. App. LEXIS 1074, **; 69 U.S.P.Q.2D (BNA) 1545 been set forth in a dissenting opinion, but for his Another section of the ICANN Agreement (upon death; the second is because his opinion contains which appellee Register relies) provides as follows, an exceptionally thorough, detailed and useful statement of facts, including a comprehensive de- scription of the functioning of the domain name No Third-Party Beneficiaries: This system. We have stated the facts more briefly, Agreement shall not be construed to cre- mentioning only those points necessary to the ar- ate any obligation by either ICANN or guments discussed, inviting the reader to consult Registrar to any non-party to this Agree- Judge Parker's very thorough fact statement for a ment . more detailed account. [**3] ICANN Agreement § II.S.2. Third parties could [**5] nonetheless seek enforcement of a registrar's obligations BACKGROUND set forth in the ICANN Agreement by resort to a griev- This plaintiff Register is one of over fifty companies ance process under ICANN's auspices. serving as registrars for the issuance of domain names on In compliance with § II.F.1 of the ICANN Agree- the world wide web. As a registrar, Register issues do- ment, Register updated the WHOIS information on a main names to persons and entities preparing to establish daily basis and established Internet and port 43 service, web sites on the Internet. Web sites are identified and which allowed free public query of its WHOIS informa- accessed by reference to their domain names. tion. An entity making a WHOIS query through Regis- Register was appointed a registrar of domain names ter's Internet site or port 43 would receive a reply fur- by the Internet Corporation for Assigned Names and nishing the requested WHOIS information, captioned by Numbers, known by the acronym "ICANN." ICANN is a a legend devised by Register, which stated, private, non-profit public benefit corporation which was established by agencies of the U.S. government to ad- minister the Internet domain name system. To become a By submitting a WHOIS query, you agree registrar of domain names, Register was required to enter that you will use this data only for lawful into a standard form agreement with ICANN, designated purposes and that under no circumstances as the ICANN Registrar Accreditation Agreement, No- will you use this data to . support the vember 1999 version (referred to herein as the "ICANN transmission of mass unsolicited, com- Agreement"). mercial advertising or solicitation via email. Applicants to register a domain name submit to the registrar contact information, including at a minimum, the applicant's name, postal address, telephone number, The terms of that legend tracked § II.F.5 of the ICANN and electronic mail address. The ICANN Agreement, Agreement in specifying the restrictions Register im- referring to this registrant contact information under the posed on the use of its WHOIS data. Subsequently, as rubric "WHOIS information," requires the registrar, explained below, Register amended the terms of this [**4] under terms discussed in greater detail below, to legend to impose more stringent restrictions on the use of preserve it, update it daily, and provide for free public the information gathered through such queries. access to it through the Internet as well as through an independent access port, called port 43. See ICANN In addition to performing the function of a registrar Agreement § II.F.1. [**6] of domain names, Register also engages in the business of selling web-related services to entities that [*396] Section II.F.5 of the ICANN Agreement maintain web sites. These services cover various aspects (which furnishes a major basis for the appellant Verio's of web site development. In order to solicit business for contentions on this appeal) requires that the registrar "not the services it offers, Register sends out marketing com- impose terms and conditions" on the use made by others munications. Among the entities it solicits for the sale of of its WHOIS data "except as permitted by ICANN- such services are entities whose domain names it regis- adopted policy." In specifying what restrictions may be tered. However, during the registration process, Register imposed, the ICANN Agreement requires the registrar to offers registrants the opportunity to elect whether or not permit use of its WHOIS data "for any lawful purposes they will receive marketing communications from it. except to: . support the transmission of mass unsolic- ited, commercial advertising or solicitations via email The defendant Verio, against whom the preliminary (spam); [and other listed purposes not relevant to this injunction was issued, is engaged in the business of sell- appeal]." (emphasis added). ing a variety of web site design, development and opera- Page 3 356 F.3d 393, *; 2004 U.S. App. LEXIS 1074, **; 69 U.S.P.Q.2D (BNA) 1545 tion services. In the sale of such services, Verio com- mass unsolicited . advertising or petes with Register's web site development business. To solicitations via direct mail, elec- facilitate its pursuit of customers, Verio undertook to tronic mail, or by telephone. obtain daily updates of the WHOIS information relating to newly registered domain names. To achieve this, Verio devised an automated software program, or robot, Register wrote to [**9] Verio demanding that it which each day would submit multiple successive cease using WHOIS information derived from Register WHOIS queries through the port 43 accesses of various not only for email marketing, but also for marketing by registrars. Upon acquiring the WHOIS information of direct mail and telephone. Verio ceased using the infor- [**7] new registrants, Verio would send them marketing mation in email marketing, but refused to stop marketing solicitations by email, telemarketing and direct mail. To by direct mail and telephone. the extent that Verio's solicitations were sent by email, the practice was inconsistent with the [*397] terms of Register brought this suit on August 3, 2000, and the restrictive legend Register attached to its responses to moved for a temporary restraining order and a prelimi- Verio's queries. nary injunction. Register asserted, among other claims, that Verio was (a) causing confusion among customers, At first, Verio's solicitations addressed to Register's who were led to believe Verio was affiliated with Regis- registrants made explicit reference to their recent regis- ter; (b) accessing Register's computers without authoriza- tration through Register.