Northern Light Technology, Inc. v. Club

United States Court of Appeals
For the First Circuit

No. 00-1641

NORTHERN LIGHT TECHNOLOGY, INC.,

Plaintiff, Appellee,

v.

NORTHERN LIGHTS CLUB, JEFFREY K. BURGAR, AND
641271 ALBERTA LTD., D/B/A NORTHERN LIGHTS CLUB,

Defendants, Appellants.

APPEAL FROM THE UNITED STATES DISTRICT COURT

FOR THE DISTRICT OF MASSACHUSETTS

[Hon. Douglas P. Woodlock, U.S. District Judge]

Before

Selya, Boudin and Stahl,
Circuit Judges.

Eric C. Grimm, with whom CyberBrief, PLC, Theodore A. Lund,
and Gaeta, Courville & Lund, were on brief for appellant.
Bernard J. Bonn, III, with whom Barry S. Pollack, and
Dechert Price & Rhoads, were on brief for appellee.

January 8, 2001
 STAHL, Circuit Judge. This case involves a dispute

over the simultaneous use of two similar Internet domain names

by two separate entities. Defendants-appellants Northern Lights

Club, Jeff Burgar and 641271 Alberta Ltd. (collectively

"Northern Lights" or "defendants") appeal a preliminary

injunction entered by the district court requiring the posting

of a specified disclaimer on their World Wide Web site's portal

page. The court entered the injunction after finding that

plaintiff-appellee Northern Light Technology, Inc. ("Northern

Light" or "plaintiff") was likely to prevail on the merits of

its state and federal trademark claims and its claim under the

Anticybersquatting Consumer Protection Act, 15 U.S.C. § 1125(d)

("ACPA").

Defendants assert three bases for relief in this

interlocutory appeal: (1) that the district court lacks personal

jurisdiction, and hence the power to enjoin them; (2) that the

district court erred in concluding that the plaintiff was likely

to succeed on the merits of its claims; and (3) that the

injunction currently in place is overly broad and consequently

infringes their free-speech rights. Finding that the district

court properly acquired jurisdiction over defendants when their

agent was served with process within the forum state, and

discerning no basis for disturbing the district court's

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determination on the likely success of plaintiff's suit, we

uphold the district court's issuance of a preliminary

injunction. And because defendants only obliquely pressed their

First Amendment argument before the district court, we decline

to decide the issue for purposes of this appeal.

I. Background

The facts of this case are extensively chronicled in

the district court's opinion, see Northern Light Tech., Inc. v.

Northern Lights Club, 97 F. Supp. 2d 96 (D. Mass. 2000), and so

we confine our discussion to the events relevant to this appeal.

On September 16, 1996, plaintiff registered the Internet domain

name northernlight.com with Network Solutions, Inc. ("NSI"),

which at that time was the organization exclusively entrusted

with the task of registering domain names on the World Wide Web.1

Plaintiff also filed registration papers for the "Northern

Light" service mark with the United States Patent and Trademark

Office ("PTO") during that same month.2 Nearly a year later, in

August 1997, plaintiff began its operation of the

1As they are commonly used today, Internet domain names
serve two principal functions: (1) providing the addresses for
hypertext markup language ("HTML") sites on the World Wide Web,
and (2) permitting the dissemination of e-mail accounts with a
common suffix that reflects the identity of the accounts'
proprietor.
2
The PTO issued plaintiff a registered trademark for
"Northern Light" on February 23, 1999.

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northernlight.com website (and, consequently, its use of the

"Northern Light" mark in commerce) as a search engine. Search

engines are popular Web-retrieval tools that match a search

query submitted by an Internet user with the websites whose

content best corresponds to the submitted search terms. The

northernlight.com site has remained in continuous existence as

a search engine since August 1997.

Defendant Jeff Burgar, a resident of High Prairie,

Alberta, Canada, is the president and principal shareholder of

641271 Alberta, Ltd., an Alberta corporation that owns the

northernlights.com domain name. Burgar, a self-described

"Internet entrepreneur," has, since the mid-1990s, registered

thousands of "catchy" domain names – i.e., Internet addresses

appropriating, in identical or slightly modified form, the names

of popular people and organizations. He is also the president

of Northern Lights Club, an unincorporated association with a

listed address in Las Vegas, Nevada. While Northern Lights

Club's stated mission is to bring together devotees of the

Northern Lights, or aurora borealis, including businesses that

take their name from the famous celestial phenomenon, Burgar's

testimony indicates that the club has no actual individual

members.

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 In October 1996, approximately one month after

plaintiff registered its northernlight.com website, Burgar, on

behalf of Northern Lights Club, registered the

northernlights.com domain name with NSI.3 Soon after

registration, Burgar licensed the name to FlairMail, a vanity e-

mail service that he manages and that is owned by a local

Alberta newspaper.4 Burgar "believes" that this newspaper is

owned by his wife. Under this arrangement with FlairMail,

defendants offered e-mail accounts under the northernlights.com

domain name that users could access through some other website,

such as flairmail.com, although Internet users who attempted to

visit the northernlights.com page on the World Wide Web would

find that no such site existed.5

The two similar domain-name registrations enjoyed a

peaceful coexistence until March 2, 1999, when a USA Today story

3Plaintiff does not allege that defendants had actual
knowledge of the northernlight.com registration when they
registered the northernlights.com domain name.
4 Vanity e-mail permits a subscriber to choose both the user
name and the domain name for their e-mail address. To use as an
example the service offered by defendants, an admirer of the
aurora borealis named John Doe could choose the vanity e-mail
address "John.Doe@northernlights.com."
5The district court found, at the time of its March 2000
opinion, that approximately 112 individuals used the
northernlights.com domain name as part of their vanity e-mail
address. See 97 F. Supp. 2d at 101.

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on Internet search engines erroneously identified plaintiff's

website as northernlights.com. After ascertaining that

defendants were the owners of this domain name, plaintiff's

marketing director contacted Burgar to find out whether

defendants might be interested in selling it. The parties

exchanged a series of proposals and counterproposals by e-mail

over a two-month period but ultimately no sales or licensing

agreement was consummated. Soon thereafter, in April 1999,

defendants posted an active page on the northernlights.com World

Wide Web site. Visitors to the site saw, among other things, a

site-search function near the top of the screen that enabled

users to perform a search of the northernlights.com site for

specific words or phrases, as well as links to FlairMail and

other members of the "Northern Lights Community." Plaintiff's

Web site was placed third in the list of the Northern Lights

Community "Business Listings."6 Plaintiff had not agreed to this

listing.

On July 14, 1999, plaintiff sent Burgar a cease-and-

desist letter, demanding that the northernlights.com site be

deactivated. Defendants chose not to respond to this letter.

6Plaintiff asserts that it received approximately 300
referrals per day from defendants' site about the time that the
northernlights.com site went online, and that this number later
increased to several thousand referrals per day.

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Fifteen days later, plaintiff asked NSI to strip defendants of

the northernlights.com domain name based on the similarity of

their respective marks, but NSI declined, citing the one-letter

discrepancy between the name of defendant's website and

plaintiff's trademark. On August 6, 1999, plaintiff filed the

instant lawsuit under federal and state theories of unfair

competition, trademark infringement, and trademark dilution. In

its complaint, plaintiff sought both a temporary restraining

order and a preliminary injunction. In December 1999, plaintiff

amended its complaint to add a claim under ACPA (which had been

enacted into law less than one month earlier) and to abandon its

federal trademark-dilution claim and its state-law claims of

unfair competition and trademark dilution.

Moments before the district court hearing on September

1, 1999 to consider the merits of plaintiff's claims and the

court's personal jurisdiction over defendants, plaintiff's agent

physically served process upon Burgar, who had traveled

voluntarily to Boston from Alberta to witness the proceedings

and to make himself available for testimony if needed. Although

the hearing itself focused largely on the convoluted issues of

personal jurisdiction arising from Internet activities, it also

touched upon the merits of plaintiff's request for preliminary

injunctive relief. At the end of the hearing, the district

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court indicated that it would issue a temporary restraining

order modifying the content of the northernlights.com site to

prevent further public confusion, and solicited advice from both

parties as to the appropriate substance of that order.

True to its word, the district court imposed the TRO

the following day, stating that Northern Light had successfully

demonstrated probable personal jurisdiction, that it would be

likely to succeed in its trademark-infringement suit, and that

the balance of hardships and the public interest favored

temporary relief. The court ordered that defendants remove all

content from the northernlights.com site and post in its place

a blacked-out screen containing only an image of the aurora

borealis and links to three websites: (1) flairmail.com (where

users could access their northernlights.com e-mail accounts);

(2) plaintiff's northernlight.com site; and (3) the content page

that formerly existed at northernlights.com, to be described,

for purposes of the link, as "BUSINESSES THAT ARE LISTED WITH

THE NORTHERN LIGHTS COMMUNITY." On the same day that this

ruling was issued, the parties jointly moved the court for a

continuance of "at least 60 days." In this joint motion,

defendants acquiesced in an extension of the restraining order

against them until discovery and further hearings in the matter

were conducted, and the parties agreed to a schedule governing

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the completion of discovery and the filing of any additional

motions. The court granted this motion, and both parties

submitted further motions during this period. After granting

several motions for extensions of time, the district court

ultimately held hearings on January 19 and 21, 2000 on the

personal-jurisdiction issue and the merits of plaintiff's

request for preliminary relief.

In its written opinion issued on March 31, 2000, the

district court ordered, inter alia, that what had become a de

facto preliminary injunction should remain in place.7 In so

doing, the court began by holding that it had personal

jurisdiction over defendants.8 It determined that plaintiff had

satisfied sections 3(c) and 3(d) of the Massachusetts Long-Arm

Statute, see Mass. Gen. Laws ch. 223A, § 3, because defendants

7The record does not clearly reveal when the TRO became a
preliminary injunction. At some point following the submission
of their joint motion for continuance, the parties (and the
district court) started describing the TRO as a preliminary
injunction. Furthermore, in its written opinion, the district
court stated that the preliminary injunction already in place
would not be modified. In any event, the present appeal clearly
is from a preliminary injunction.
8The district court noted that its decision was responsive
to a plethora of pretrial motions pending before it, including
motions to dismiss for lack of personal jurisdiction and for
failure to state a claim; plaintiff's initial motion for a
preliminary injunction; defendants' motions for reconsideration
of the temporary relief that had already been ordered; and the
parties' motions to compel discovery and to impose sanctions.
See 97 F. Supp. 2d at 98.

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had likely caused tortious injury to plaintiffs in

Massachusetts, both through their acts within the Commonwealth

(in the form of their trademark-infringing website) and their

regular solicitation of business through acts outside of the

Commonwealth (by virtue of, inter alia, the site's

"entice[ment]" to users to post material). See 97 F. Supp. 2d

at 104-06. The court also found that defendants had sufficient

contacts with Massachusetts to support the exercise of specific

jurisdiction under International Shoe Co. v. Washington, 326

U.S. 310 (1945), thereby satisfying the constitutional due-

process element of personal jurisdiction. See Northern Light

Tech., Inc., 97 F. Supp. 2d at 106-08.

On the merits of plaintiff's suit, the district court

found that, based on the likelihood of confusion between the two

websites because of their similar form and function, plaintiff's

state and federal trademark-infringement and unfair-competition

causes of action would probably succeed. See id. at 109-15,

120. The court further opined that plaintiff was likely to

succeed on its ACPA claim, based on the confusing similarity of

the two domain names and proof of defendants' bad-faith intent

to profit from plaintiff's northernlight.com mark. See id. at

115-20. On the latter issue, the court reasoned that, although

Burgar's initial reluctance to sell the northernlights.com site

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and defendants' uninterrupted use of the northernlights.com

name for vanity e-mail accounts militated against a bad-faith

finding, defendants' historical practice of "targeting

trademarked names, creating fictional entities to register them,

and offering dubious explanations for the selection of these

domain names" ultimately tipped the scales in favor of such a

preliminary determination. Id. at 119. Finally, the district

court found that plaintiff had established a likelihood of

irreparable harm, that the balance of hardships favored the

plaintiff, and that the public interest favored the preservation

of the preliminary injunction already in place. See id. at 120-

21.

On appeal, defendants dispute the district court's

personal-jurisdiction ruling and aspects of its decision

regarding the likelihood of plaintiff's success on the merits.

Defendants also pursue their argument, not expressly considered

by the district court, that the present injunction unduly

burdens their First Amendment rights.

II. Personal Jurisdiction

Defendants first challenge the injunction entered by

the district court on the ground that the court was without

personal jurisdiction to order such a remedy. At each stage of

the proceedings, the parties have contested whether defendants'

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activities, both in terms of the content of their website and

their discussions with the plaintiff regarding a potential

business venture, meet the personal-jurisdiction criteria of the

Massachusetts Long-Arm Statute and the requirements of due

process. Plaintiff also posited a more conventional basis for

personal jurisdiction in the district court – namely, the

service of process effected upon Burgar just prior to the

September 1, 1999 preliminary injunction hearing. We afford

plenary review to the district court's determination of personal

jurisdiction, and may affirm its judgment for any independent

reason supported by the record. See, e.g., Phillips Exeter

Acad. v. Howard Phillips Fund, Inc., 196 F.3d 284, 288 (1st Cir.

1999).

The district court expressly declined to consider the

validity of personal jurisdiction based on physical service of

process. See 97 F. Supp. 2d at 108 n.12. On appeal, however,

plaintiff continues to press its case that, under the doctrine

of transient jurisdiction, it has satisfactorily created

jurisdiction through its service of process on Burgar prior to

the September 1, 1999 hearing. See Burnham v. Superior Court of

Cal., 495 U.S. 604 (1990) (plurality opinion); Schinkel v. Maxi-

Holding, Inc., 565 N.E.2d 1219, 1222-23 (Mass. App. Ct. 1991)

(holding that personal jurisdiction in Massachusetts need not be

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predicated on Long-Arm Statute when defendant served with

process while in forum under transient-jurisdiction doctrine).

Defendants dispute this proposition, claiming that this method

of service of process is fundamentally unfair in that it

represents a trap for the unwary litigant who travels to the

forum state solely to contest the issue of personal

jurisdiction. Defendants also argue that permitting service of

process under these circumstances is unwise from a public-policy

perspective in that it discourages the litigant from actively

assisting the district court in the jurisdictional- discovery

process.

Although they do not specifically ask for process

immunity, defendants' argument against personal jurisdiction

essentially boils down to a request that Burgar be deemed immune

from service of process since, at the time he was served, he was

present in Massachusetts only for the purpose of attending a

personal-jurisdiction hearing in this lawsuit. This argument

enjoys some measure of historical pedigree, albeit in a related

context. Long before the Supreme Court in Burnham affirmed that

personal jurisdiction can be sustained against a defendant

solely on the basis of his presence in the forum state at the

time of service of process, it had recognized that some parties

temporarily in the forum state enjoy immunity from service by

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virtue of their status as participants in ongoing litigation.

For instance, in Lamb v. Schmitt, 285 U.S. 222 (1932), the Court

noted the potential peril of allowing an individual who is

attending a proceeding in one suit to be served with process in

conjunction with another:

[T]he due administration of justice requires
that a court shall not permit interference
with the progress of a cause pending before
it, by the service of process in other
suits, which would prevent, or the fear of
which might tend to discourage, the
voluntary attendance of those whose presence
is necessary or convenient to the judicial
administration in the pending litigation.

Id. at 225 (internal citations omitted). Similarly, Justice

Scalia's plurality opinion in Burnham referred to several

states' historical imposition of statutory or common-law

prohibitions on the service of process of those individuals

present in the forum as parties or witnesses in unrelated

judicial proceedings – a practice that led him to conclude that

transient jurisdiction comported with constitutional due

process. See 495 U.S. at 613.

Accompanying the courts' repeated recognition of the

validity of the party/witness immunity exception, however, has

been a persistent acknowledgment of the exception's limitations.

The Lamb Court itself noted that, because the privilege exists

for the convenience of the district court in its exercise of

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judicial administration, rather than to protect the individual

seeking to avoid service of process, courts enjoy the discretion

to confer (or deny) immunity in such instances. See 285 U.S. at

225 (citing Stewart v. Ramsay, 242 U.S. 128, 130 (1916)). Just

as importantly, the extension of the privilege has been limited

by the majority of courts to cases in which the party or witness

was participating in an unrelated litigation at the time that he

was served with process in the forum state. See, e.g., ARW

Exploration Corp. v. Aguirre, 45 F.3d 1455, 1460 (10th Cir.

1995) (denying process immunity where party was served with

process in second lawsuit while attending deposition in first

lawsuit alleging similar facts); In re Fish & Neave, 519 F.2d

116, 118 (8th Cir. 1975) (similar); LaCroix v. American Horse

Show Ass'n, 853 F. Supp. 992, 994-95 (N.D. Ohio 1994) (applying

Lamb and denying defendants' claim of entitlement to immunity

based on appearance in forum state solely to contest personal

jurisdiction); 4 Charles A. Wright & Arthur R. Miller, Federal

Practice and Procedure § 1080, at 511 (2d ed. 1987) ("There is

generally no immunity from service of process when the suit in

which immunity is sought is part of, or a continuation of, the

suit for which the person claiming immunity is in the

jurisdiction."); see also Lamb, 285 U.S. at 225 ("[T]he

[process-immunity] privilege should not be enlarged beyond the

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reason upon which it is founded, and . . . should be extended or

withheld only as judicial necessities require.").9 The rationale

for the differing-lawsuit prerequisite to process immunity in

this context is relatively straightforward: while a court can,

in cases before it, choose to protect the jurisdictional status

of a party or witness who is reluctant to come to the forum

state by issuing protective orders or subpoenas, it cannot wield

such power in other cases. The process-immunity exception

therefore fills the gap only where it needs to be filled – that

is, in cases where a district court wishes to shield an

individual from service of process to encourage his or her

travel to the forum state, but would be unable to do so absent

the power to grant immunity.

9
In their brief, defendants cite to other cases, such as
American Centennial Ins. Co. v. Handal, 901 F. Supp. 892, 895
(D.N.J. 1995), which interpret Lamb differently. Those cases
hold that process immunity should be granted to non-residents
present in the forum state to participate in any litigation,
whether or not related to the suit for which the disputed
service has been effected, as long as such immunity does not
obstruct justice in the first suit. See, e.g., Shapiro & Son
Curtain Corp. v. Glass, 348 F.2d 460, 461-62 (2d Cir. 1965);
NASL Marketing, Inc. v. de Vries, 94 F.R.D. 309 (S.D.N.Y. 1982);
United Nations v. Adler, 90 F. Supp. 440, 441 (S.D.N.Y. 1950).
We reject this view, as Lamb definitively retains the
distinction between presence in the forum state for related and
unrelated cases. See 285 U.S. at 225 ("[T]he due administration
of justice requires that a court shall not permit interference
with the progress of a cause pending before it by the service of
process in other suits . . . .") (emphasis added).

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 Turning to the facts of this case, several features of

defendants' litigation posture counsel against a finding that

Burgar is entitled to process immunity. First, and most

apparent, is the fact that defendants have never asked the

district court for such immunity on behalf of Burgar, either

prior to or following the hearing at which Burgar was served

with process. In lieu of a specific request for immunity,

defendants instead have asked this court to fashion a broad, per

se rule precluding the exercise of personal jurisdiction

whenever the served individual is in the jurisdiction to attend

litigation-related proceedings that pertain to him or her. In

light of the admonitions in Lamb and other cases that process

immunity should be meted out sparingly, we reject this

suggestion. Moreover, the circumstances surrounding the service

of process on Burgar are not those that would ordinarily favor

a finding of immunity even in a case where it had been timely

requested. Specifically, Burgar voluntarily entered into

Massachusetts to attend proceedings as a spectator in the same

case in which he was served with process. While we need not

decide the issue, it seems apparent that under these facts, the

district court would have faced a relatively heavy presumption

against granting such immunity if it actually had been sought by

Burgar.

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 For these reasons, we hold that the district court

properly exercised personal jurisdiction over defendants in this

case.10 Based on this determination, we need not reach the

alternate bases for personal jurisdiction discussed in the

district court's opinion.

III. Plaintiff's Likelihood of Success on the Merits

Defendants' second claim in this appeal, which goes to

the merits of plaintiff's suit, is that the preliminary

injunction should be dissolved because it is premised on

erroneous findings by the district court. Specifically,

defendants claim that the court erred as a matter of fact in

determining that Northern Lights manifested a bad-faith intent

to profit from plaintiff's mark, and as a matter of law in

concluding that ACPA should be applied retroactively to

encompass defendants' behavior prior to the enactment of the

statute.

10
We believe that the service of process effected upon
Burgar also conferred personal jurisdiction over the other
defendants. Burgar serves as the president of both Northern
Lights Club, an unincorporated association, and 641271 Alberta,
Ltd., a foreign corporation. See Fed. R. Civ. P. 4(h)(1)
(permitting personal service of process upon officers of
unincorporated associations and foreign corporations).
In all events, defendants have attacked the efficacy of
service of process only in general. They have not attacked its
efficacy vis-à-vis particular defendants. Consequently, we deem
waived any possible argument that personal service upon Burgar
was ineffectual as a means of bringing Northern Lights Club
and/or 641271 Alberta, Ltd. before the court.

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 A. Defendants' Bad Faith

Defendants vehemently contest the district court's

finding that the registration and maintenance of the

northernlights.com domain name represented a bad-faith effort to

profit from plaintiff's Northern Light trademark. The issue of

bad faith is principally relevant to the merits of plaintiff's

suit insofar as "bad faith intent to profit from [another's]

mark" constitutes an essential element of the cause of action

under ACPA. 15 U.S.C. § 1125(d)(1)(A)(i). In this case,

however, it also relates, albeit tangentially, to plaintiff's

trademark-infringement claim. This is so because the district

court's finding with respect to defendants' intent in adopting

the Northern Lights mark, which the court rendered while

considering one of the eight factors under the "likelihood-of-

confusion" test for trademark infringement, see, e.g., I.P. Lund

Trading ApS v. Kohler Co., 163 F.3d 27, 43 (1st Cir. 1998),

expressly incorporated by reference the intent findings it had

made in its ACPA analysis. See 97 F. Supp. 2d at 114. Thus, we

must consider the court's "bad-faith intent to profit" findings

to the extent that they bear on the trademark-infringement

claim. We review the district court's finding of bad faith for

clear error. See American Bd. of Psychiatry & Neurology v.

Johnson-Powell, 129 F.3d 1, 3 (1st Cir. 1997) (noting clear-

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error standard of review applies to findings of fact made in

conjunction with ruling on motion for preliminary injunction)

(citing Keds Corp. v. Renee Int'l Trading Corp., 888 F.2d 215,

222 (1st Cir. 1989)).

On appeal, defendants claim that their conduct did not

meet the statutory guidelines for a finding of bad faith, and

that even if it did, the subjective and objective reasonableness

of their actions should shield them from liability. Defendants

stress that their mere registration of multiple domain names

does not, by itself, indicate that they were acting in bad faith

with regard to any of their individual registrations or website

uses. Defendants also assert that the statements of Burgar have

been taken out of context by the district court, and have been

unfairly used to establish Northern Lights's bad faith.

Along with its inclusion of bad faith among the

essential elements of the ACPA cause of action, Congress

provided nine nonexhaustive guideposts that courts may use to

divine whether or not bad faith exists. See 15 U.S.C. §§

1125(d)(1)(B)(i)(I)-(IX). In addition, the statute provides an

"escape clause" to those whose conduct would otherwise

constitute bad faith if the potential infringer "believed and

had reasonable grounds to believe that the use of the domain

name was a fair use or otherwise lawful." Id. §

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1125(d)(1)(B)(ii). In this case, the district court determined

that defendants' myriad explanations for their use of the

northernlights.com site – e.g., as an experimental new business

model, as a site for aurora borealis admirers, and as a

compilation of businesses that contain the phrase "Northern

Lights" – undermined Northern Lights's claim of subjective

belief in fair use, and hence their entitlement to the "escape

clause" of § 1125(d)(1)(B)(ii). See 97 F. Supp. 2d at 118-19.

Additionally, the court concluded that the defendants' numerous

registrations of domain names containing the trademarks of

others, which defendants accomplished in some cases by creating

fictional "fan clubs" so that they could present a mantle of

legitimacy in their registration requests to NSI, represented

powerful evidence of defendants' bad faith in operating the

northernlights.com site. This conclusion of bad faith was

reinforced, according to the district court, by defendants'

history of disregarding cease-and-desist letters from legitimate

trademark owners, and their apparent openness to sell the

northernlight.com registration to the plaintiff at the right

price. Id. at 119-20.

Based on our review of the record, we see no clear

error in the district court's finding that defendants will

likely be found to have acted in bad faith in operating the

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northernlights.com site. 11 Although defendants are correct in

asserting that their multiple registrations alone are not

dispositive of the bad-faith issue, their well-established

pattern of registering multiple domain names containing famous

trademarks, such as rollingstones.com, evinrude.com, and

givenchy.com, has been made highly relevant to the determination

of bad faith by the list of factors in ACPA. See 15 U.S.C. §

1125(d)(1)(B)(i)(VIII) (noting as relevant factor "the person's

registration or acquisition of multiple domain names which the

person knows are identical or confusingly similar to marks of

others that are distinctive at the time of registration of such

domain names"). Those facts are not clearly trumped by facts

favoring defendants' side of the story, such as their use of

northernlights.com as an e-mail domain name for several years

prior to the dispute with the plaintiff and Burgar's initial

resistance to the plaintiff's efforts to acquire defendants'

domain-name registration. The district court's finding that

defendants were not entitled to the "escape clause" also is not

clearly erroneous; as the court found, defendants' oft-changing

explanations for the purpose of the northernlights.com website

11
The district court found that defendants' posting of a
website at northernlights.com, rather than their initial domain-
name registration, was the act that constituted bad-faith intent
to profit in this case. See 97 F. Supp. 2d at 119 n.27.

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evince a lack of subjective belief in the domain name's fair

use.

Based on defendants' apparent modus operandi of

registering domain names containing the famous trademarks of

others in the hope that the famous trademark holder will be

willing to pay to reclaim its intellectual-property rights, the

district court reasonably concluded that defendants acted

according to script in this case. 12 Accordingly, we determine

that the district court did not err in finding that defendants

will likely be found to have acted in bad faith in operating

their northernlights.com website.

B. Retroactive Application of ACPA

Defendants also ask that we review the district court's

legal determination that the retroactive application of ACPA to

the facts of this case is permissible.13 After reviewing the

12
Defendants claim that since they expected no revenue
stream from the content on the northernlights.com website, they
could not have acted with a bad-faith intent to profit. Based
on their past practices, however, it is reasonable to conclude
that defendants harbored a broader, more long-term notion of
"profit." Instead, defendants likely hoped to cash in on the
confusion surrounding the sponsorship of the websites by finding
famous trademark holders willing to pay defendants to end the
diversion of Internet traffic from their website to defendants'
sites.
13
As we recently noted in Hasbro, Inc. v. Clue Computing,
Inc., 232 F.3d 1 (1st Cir. 2000) (per curiam), courts are split
on the issue of whether recent Lanham Act provisions should be
applied retroactively. Compare, e.g., Sporty's Farm, L.L.C. v.

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district court opinion and the parties' briefs, however, we find

it unnecessary to reach this issue, as even if we were to decide

the matter in defendants' favor, it would not provide an

adequate basis for dissolving the injunction. This is so

because the district court expressly stated that its decision to

impose a preliminary injunction rested principally upon its

finding that Internet users would likely be confused by the

concomitant existence of the northernlight.com and

northernlights.com marks. See 97 F. Supp. 2d at 121 ("Before

turning to the balancing factors, I must emphasize the

importance of the likelihood of confusion findings to the

preliminary injunction calculus."). Because an ACPA violation

does not require a showing of likely confusion,14 the district

court's decision to enter a preliminary injunction must have

been based on its resolution of the non-ACPA claims, such as

plaintiff's trademark-infringement claim. In their appeal,

Sportsman's Market, Inc., 202 F.3d 489, 496-97 (2d Cir.)
(concluding that ACPA should apply retroactively), cert. denied,
120 S. Ct. 2719 (2000) with Thomas & Betts Corp. v. Panduit
Corp., 108 F. Supp. 2d 976 (N.D. Ill. 2000) (holding that new
trade-dress provisions of Lanham Act should not be applied
retroactively).
14
As the district court noted, the "likelihood of confusion"
test of trademark infringement is "more comprehensive" than the
"identical or confusingly similar" requirement of ACPA, as it
requires considering factors beyond the facial similarity of the
two marks. 97 F. Supp. 2d at 117.

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defendants' only argument on the merits that does not impugn the

district court's ACPA findings concerns the determination that

Northern Lights acted in bad faith. And as we have determined

in Part III.A, supra, that finding was not clearly erroneous.

Thus, no matter how we might resolve the ACPA-retroactivity

issue – and we expressly eschew doing so at this time – our

decision would fail to affect the validity of the injunction.15

In sum, we conclude that defendants have identified no

basis for overturning the preliminary injunction already in

place. We therefore affirm its issuance by the district court.

15Defendants do claim that there were other "grossly unfair
factual errors by the trial court" which constituted "an
egregious result-driven pattern of prejudice" against them. But
they have failed to specify those errors in their appellate
briefs.

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 IV. First Amendment Overbreadth of the Injunction

Defendants argue that the scope of the preliminary

injunction violates the First Amendment. We need not, however,

consider that issue here, for although it may have been raised

below, defendants did no more than obliquely refer to the issue

when the district court held the critical hearing, and

subsequently took part in the framing of the preliminary

injunction. Because we do not find waiver, the issue can be

argued in the trial on the merits.

Conclusion

Because the district court obtained personal

jurisdiction over defendants when Burgar was served with process

while in the forum state, we affirm, albeit on different

grounds, the court's personal-jurisdiction finding. We find no

basis for disturbing the court's determination of likelihood of

success on the merits of plaintiff's suit, and therefore affirm

those portions of the district court's opinion. Finally, while

not precluding further consideration of the First Amendment

issue at trial, we decline to resolve defendants' free-speech

challenge to the scope of the injunction at this time.

Affirmed. Costs to appellee.

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