PUBLISHEDUNITED STATES COURT OF APPEALSFOR THE FOURTH CIRCUIT HARRODS LIMITED,Plaintiff-Appellant,v.SIXTY INTERNET DOMAIN NAMES;HARRODSARGENTINA.COM;No. 00-2414HARRODSARGENTINA.NET;HARRODSARGENTINA.ORG;HARRODSBUENOSAIRES.COM;HARRODSBUENOSAIRES.NET;HARRODSBUENOSAIRES.ORG,Defendants-Appellees. HARRODS LIMITED,Plaintiff-Appellee,v.FIFTY-FOUR INTERNET NAMES;HARRODSSUDAMERICA.COM;HARRODSSUDAMERICA.NET;HARRODSSUDAMERICA.ORG;HARRODSSOUTHAMERICA.COM;No. 01-1928HARRODSOUTHAMERICA.NET;HARRODSSOUTHAMERICA.ORG;HARRODSBRASIL.COM;HARRODSBRASIL.NET;HARRODSBRASIL.ORG;HARRODSBRAZIL.COM;HARRODSBRAZIL.NET;HARRODSBRAZIL.ORG;CIBERHARRODS.COM;CIBERHARRODS.NET;CIBERHARRODS.ORG;CYBERHARRODS.COM;CYBERHARRODS.NET;CYBERHARRODS.ORG;HARRODSBANK.COM;HARRODSBANK.NET;HARRODSBANK.ORG;HARRODSBANKING.COM;HARRODSBANKING.NET;HARRODSBANKING.ORG;HARRODSFINANCIAL.COM;HARRODSFINANCIAL.NET;HARRODSFINANCIAL.ORG;HARRODSSERVICES.COM;HARRODSSERVICES.NET;HARRODSSERVICES.ORG;HARRODSVIRTUAL.COM;HARRODSVIRTUAL.NET;HARRODSVIRTUAL.ORG;HARRODSSTORE.COM;HARRODSSTORE.NET;HARRODSSTORE.ORG;TIENDAHARRODS.COM;TIENDAHARRODS.NET;TIENDAHARRODS.ORG;HARRODSAMERICA.COM;HARRODSAMERICA.NET;HARRODSAMERICA.ORG;SHOPPINGHARRODS.COM;SHOPPINGHARRODS.NET;SHOPPINGHARRODS.ORG;HARRODSSHOPPING.COM;HARRODSSHOPPING.NET;HARRODSSHOPPING.ORG;HARRODSBASHOPPING.COM;2 HARRODS LIMITED v. SIXTY INTERNET DOMAIN NAMESHARRODSBASHOPPING.NET;HARRODSBASHOPPING.ORG;HARRODSSHOPPINGBA.COM;HARRODSSHOPPINGBA.NET;HARRODSSHOPPINGBA.ORG,Defendants-Appellants.Appeals from the United States District Courtfor the Eastern District of Virginia, at Alexandria.Leonie M. Brinkema, District Judge.(CA-00-262-A)Argued: April 3, 2002Decided: August 23, 2002Before WILKINS and MICHAEL, Circuit Judges, andHAMILTON, Senior Circuit Judge.Affirmed in part, reversed in part, and remanded by published opin-ion. Judge Michael wrote the opinion, in which Judge Wilkins andSenior Judge Hamilton joined. COUNSELARGUED: Ralph Arthur Taylor, Jr., DORSEY & WHITNEY,L.L.P., Washington, D.C., for Appellants. Susan J. Kohlmann,PILLSBURY WINTHROP, L.L.P., New York, New York, for Appel-lees. ON BRIEF: Kevin B. Bedell, DORSEY & WHITNEY, L.L.P.,Washington, D.C.; Bruce R. Ewing, Lile H. Deinard, DORSEY &WHITNEY, L.L.P., New York, New York, for Appellants. Rodney H.Glover, Attison L. Barnes, III, Charles C. Lemley, GARDNER, CAR-TON & DOUGLAS, Washington, D.C., for Appellees. 3HARRODS LIMITED v. SIXTY INTERNET DOMAIN NAMESOPINIONMICHAEL, Circuit Judge: This case involves a dispute over Internet domain names betweentwo companies named "Harrods," both with legitimate rights to the"Harrods" name in different parts of the world. The plaintiff, HarrodsLimited ("Harrods UK"), is the owner of the well-known Harrods ofLondon department store. The defendants are 60 Internet domainnames ("Domain Names" or "Names") registered in Herndon, Vir-ginia, by Harrods (Buenos Aires) Limited ("Harrods BA"). HarrodsBA, once affiliated with Harrods UK, is now a completely separatecorporate entity that until recently operated a "Harrods" departmentstore in Buenos Aires, Argentina. Harrods UK sued the 60 DomainNames under 15 U.S.C. § 1125(d)(2), the in rem provision of therecently enacted Anticybersquatting Consumer Protection Act(ACPA), Pub. L. No. 106-113, 113 Stat. 1501A-545 (codified in scat-tered sections of 15 U.S.C.) (1999). Harrods UK alleged that theDomain Names infringed and diluted its American "Harrods" trade-mark and that Harrods BA registered the Names in bad faith as pro-hibited by 15 U.S.C. § 1125(d)(1).1 The district court dismissed theinfringement and dilution claims, holding that in rem actions couldonly be maintained for bad faith registration claims under§ 1125(d)(1). As discovery was just beginning, the district courtgranted summary judgment to six of the Domain Names on HarrodsUK’s bad faith registration claim. After full discovery and a benchtrial, the court awarded judgment to Harrods UK against the remain-ing 54 Domain Names and ordered those names to be transferred toHarrods UK. Both sides now appeal. For the reasons that follow, we1Harrods UK actually brought four claims against the Domain Namesunder various sections of Title 15. Count One alleged infringement of aregistered mark under § 1114. Count Two alleged dilution of a famousmark under § 1125(c). Count Three alleged bad faith registration under§ 1125(d)(1). Count Four alleged unfair competition under § 1125(a),which, roughly speaking, is an infringement claim that can be broughtregardless of whether the mark is registered. See 4 J. Thomas McCarthy,McCarthy on Trademarks and Unfair Competition § 27:14 (4th ed.2002). We will refer to Harrods UK’s claims under § 1114 and § 1125(a)together as a claim for infringement. 4 HARRODS LIMITED v. SIXTY INTERNET DOMAIN NAMESaffirm the judgment as to the 54 Domain Names, reverse the dismissalof Harrods UK’s infringement and dilution claims, reverse the grantof summary judgment to the six Domain Names, and remand for fur-ther proceedings. I.Harrods UK and its predecessors have operated a department storenamed "Harrods" in the Knightsbridge section of London, England,since 1849. In 1912 Harrods UK created a wholly owned subsidiary,Harrods South America Limited, to carry on business in South Amer-ica. Harrods South America Limited created Harrods BA as an inde-pendent company, and in 1914 Harrods BA opened a departmentstore under the name "Harrods" in a new building in downtown Bue-nos Aires designed to look like Harrods UK’s historic London build-ing. Over the following decades Harrods BA registered "Harrods" asa trademark in Argentina, Brazil, Paraguay, Venezuela, and a numberof other South American countries. Harrods UK and Harrods BAquickly drifted apart: by the 1920s Harrods BA was operating largelyindependently of Harrods UK, and the last remaining legal tiesbetween the two companies were severed in 1963. In the early 1990s Harrods UK and Harrods BA entered into nego-tiations for Harrods UK to buy Harrods BA’s South American trade-mark rights in the name "Harrods." At one point Harrods UK offered$10 million for the rights, but the parties never reached agreement.Later, in 1995, Harrods UK sued Harrods BA in British court, alleg-ing breach of contract, breach of fiduciary duty, and passing off, allarising from Harrods BA’s use of the name "Harrods" in South Amer-ica.2 The British High Court of Justice, Chancery Division, dismissedthe contract and fiduciary duty
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