IN THE UNITED STATES DISTRICT COURT

FOR THE EASTERN DISTRICT OF VIRGINIA

Alexandria Division

MADURO DISTRIBUTORS, INC.,

Plaintiff,

v. Case No. l:24-cv-01865 (PTG/LRV)

LOONVAPE.COM,

Defendant.

ORDER OF PUBLICATION

This matter is before the Court on Plaintiffs Motion for an Order to Publish Notice of In Rem Action (Dkt. No. 2) pursuant to the Anti-Cybersquatting Consumer Protection Act (“ACPA”), 15 U.S.C. § 1125(d). Plaintiff requests an order directing that Plaintiff publish notice of this in rem action regarding the domain name loonvape.com in either The Washington Post or The Washington Times within fourteen (14) days after entry of the order. Plaintiff also requests that “[o]nce such publication has occurred and twenty-one (21) days have passed. Plaintiff shall be deemed to have complied with any notice requirements of 15 U.S.C. §1125(d)(2)(A)(ii)(II) that are applicable to this matter. (Dkt. No. 2-3 at 1.) Plaintiff noticed the motion for a hearing on February 7,2025. (Dkt. No. 3.) The Court dispenses with a hearing on Plaintiffs motion because oral argument would not aid in the decisional process. See E.D. Va. L. Civ. R. 7(J).

The ACPA provides that for in rem actions, service of process shall be made by:

(aa) sending a notice of the alleged violation and intent to proceed under this paragraph to the registrant of the domain name at the postal and e-mail address provided by the registrant to the registrar; and

(bb) publishing notice of the action as the court may direct promptly after filing the action.

15 U.S.C. § 1125(d)(2)(A)(ii)(II). Completion of subsections (aa) and (bb) constitutes service of an in rem action. Id. § 1125(d)(2)(B).

Plaintiff argues that it has complied with the requirements of subsection (aa). With respect to the requirement to send notice to the postal address provided by the domain registrant to the registrar, Plaintiff states that the “Domain Name does not have any employees, agents, or a legitimate office present ... to receive service of process” at the registrant’s place of address, Kalkofnsvegur 2, Reykjavik, Capital Region, 101 IS. (Dkt. No. 2-2 paragrah 6.) Indeed, the aforementioned address appears to belong to Sideline Sports XPS Network. (Id.) Plaintiff nevertheless sent, via first class mail, copies of the Motion for Order to Publish Notice of In Rem Action and supporting memorandum to the domain registrant at Kalkofnsvegur 2, Reykjavik, Capital Region, 101 IS, and to NameCheap, Inc., the registry of the Domain Name, at 4600 E. Washington St., Ste 305, Phoenix, AZ 85034. (See Dkt. Nos. 2 at 2, 2-1 at 5.) Plaintiff also sent, via first class mail, a copy of the Complaint to the postal address for NameCheap, Inc. (See Dkt. No. 2-2 paragraph 8.)

With respect to the requirement that Plaintiff send notice to the email address provided by the domain registrant to the registrar. Plaintiff states that the contact information associated with the Domain Name is not listed under the domain registration or on the website. (Dkt. No. 2-1 at 3.) Having reviewed the publicly available “Whois” and “NameCheap” records for the Domain Name (see Dkt. Nos. 1-2, 1-3), however, the Court notes that both records include the following Registrant Email:

321830a2f3274612ac3afb925a0d8749.protect@withheldforprivacy.com

(Dkt. Nos. 1-2 at 3, 1-3 at 2.) Plaintiff does not state whether it has sent notice to the domain registrant at the aforementioned email address.1 Additionally, Plaintiff does not state whether it has sent notiee to NameCheap, Inc., the domain registry. The publicly available “Whois” and “NameCheap” records for the Domain Name inelude the following Registrar Abuse Contact

Email:

abuse@namecheap.com

(Dkt. Nos. 1-2 at 2, 1-3 at 3.) The Court thus finds that Plaintiff has not fully complied with the notice requirements of 15 U.S.C. § 1125(d)(2)(A)(ii)(II)(aa). Accordingly, it is hereby

ORDERED that Plaintiffs Motion for an Order to Publish Notice of In Rem Action (Dkt. No. 2) is GRANTED IN PART and DENIED IN PART. Plaintiffs motion is GRANTED with respect to Plaintiffs request for a publication order. Plaintiffs motion is DENIED with respect to Plaintiffs request that once such publication has occurred and twenty-one (21) days have passed, Plaintiff shall be “deemed to have complied with any notice requirements of 15 U.S.C. § 1125(d)(2)(A)(ii)(II) that are applicable to this matter.” (Dkt. No. 2-3 at 1.) It is further

ORDERED that Plaintiff shall publish notice of this action in the manner specified below.

1. A copy of this Order shall be published in either The Washington Times or The Washington Post once within fourteen (14) days after the entry of this Order and an affidavit shall be filed on Plaintiffs behalf, no later than twenty-one (21) days

_________________________

1 When a registrant enables NameCheap’s Domain Privacy service, “it puts the Withheldforprivacy.com protected information to the public instead of your contact details to protect you from potential spam and even identity theft.” The registrant’s “personal email address will be replaced with a unique Withheldforprivacy.com one. . . and every email sent to this email address will be forwarded to your Registrant email address" How Does Domain Privacy Work?, NameCheap (July 27,2022)

https://www.namecheap.com/support/knowledgebase/article.aspx/344/37/

how-does-domainprivacy-work/ (last visited Feb. 3, 2025) (emphasis added).

after the entry of this Order, describing the steps that have been taken to comply with this Order.

2. All persons having any interest in the Internet domain name loonvape.com (the “Domain Name”) are hereby advised: A. Maduro Distributors, Inc. has charged the Domain Name in an in rem complaint with violations of the Anti-Cybersquatting Consumer Protection Act of 1999 (the “Act”), 15 U.S.C. § 1125(d).

a. A copy of the verified complaint may be obtained from Plaintiff s attorney, Eric N. Heyer, Thompson Hine LLP, 1919 M Street, NW, Suite 700, Washington, DC 20036, telephone: (202) 263-4128.

b. If Plaintiff prevails against the Domain Name under the Act, remedies could include the forfeiture or cancellation of the Domain Name or the transfer of the Domain Name to Plaintiff Maduro Distributors, Inc.

c. Any answer, claim, or other response to the complaint should be filed with the Clerk of the Court, United States District Court for the Eastern District of Virginia, Alexandria Division, 401 Courthouse Square, Alexandria, Virginia 22314-5798, within twenty-one (21) days from the date of publication of this Order in The Washington Times or The Washington Post. If no appearance or pleading is filed as required by this Order, this Court may render a judgment against the Domain Name which could include the forfeiture or cancellation of the Domain Name or the transfer of the Domain Name to Plaintiff Maduro Distributors, Inc.

It is further

ORDERED that Plaintiff is directed to send notice of this action and Plaintiff s intent to email 0) the domain registrant at proceed in rem via to

321830a2f3274612ac3afb925a0d8749.protect@withheldforprivacy.com, and (2) the domain registry, NameCheap, Inc., at abuse@namecheap.com. It is further

ORDERED that Plaintiff is directed to file a declaration describing the steps that have been taken to provide notice of this action and Plaintiffs intent to proceed in rem to the domain registrant and domain registry via email. The affidavit shall be filed no later than twenty-one (21) days after the entry of this Order.

ORDERED that the February 7, 2025 hearing on Plaintiffs motion is CANCELLED.

ENTERED this 3rd day of February, 2025.

Alexandria, Virginia

/s/ Lindsey Robinson Vaala

United States Magistrate Judge

Run date: February 14th, 2025

AD#90692