What is the Anti-Cybersquatting Consumer Protection Act of and does it prohibit The act provides a cause of action to a trademark holder when someone. What is cybersquatting? Cybersquatting is the act of purchasing a domain name that uses the names of existing businesses, which are usually trademarked. The Anticybersquatting Consumer Protection Act (“ACPA”)’ provides a cause of action for trademark owners against cybersquatters2, who regis- ter domain.
|Published (Last):||13 December 2015|
|PDF File Size:||1.34 Mb|
|ePub File Size:||14.8 Mb|
|Price:||Free* [*Free Regsitration Required]|
Designer Skin LLC v. The ACPA renders one liable to the owner of a trademark who, with “a bad faith intent to profit from that mark,” “registers, traffics in or uses a domain name” that is either identical or confusingly similar to a “distinctive” mark or is identical, confusingly similar or dilutive of a “famous mark. If a violation of the ACPA is found, a court can “order the forfeiture or cancellation of the [offending] domain name or [its] transfer.
The mark owner can also recover up to three times his actual damages and obtain injunctive relief. Actual damages include the profits the domain name registrant made from his use of the mark, as well as losses sustained by the mark holder as a result of the domain name registrant’s actions, such as lost sales or harm to the mark’s reputation. The actual amount awarded is fixed by the court in its discretion. In “exceptional cases,” attorney’s fees can also be recovered. The ACPA has been effectively used to combat a number of wrongs.
These include “cybersquatting,” which occurs when a registrant obtains a domain name containing another’s mark and offers to sell it to the mark holder for a tidy sum.
The ACPA has also been used to prevent domain registrants from improperly profiting from the commercial use of another’s mark, such as by selling or displaying ads for products that compete with those of the mark holder at a domain containing the mark. The ACPA has also been successfully used to prevent the tarnishment of a mark by its use in the domain of a Web site containing pornographic or other materials with which the mark holder does not wish his mark associated.
In addition, the ACPA has been used to combat gripe sites — Web sites critical of the mark holder set up at a domain containing his mark. To successfully prosecute an ACPA claim, you must first establish that the defendant “registers, traffics in or uses” the offending domain name.
The party that obtains this registration is known as the “domain name registrant. Only “the domain name registrant or that registrant’s authorized licensee” can be held liable for such “use. Finally, one “traffics in” an offending domain when he transfers or receives the domain in exchange for consideration, such as via a sale, purchase, loan, pledge or license. Next, you must establish that the domain name is “identical or confusingly similar” to a “distinctive” mark, or identical, confusingly similar or dilutive of a “famous” mark.
In comparing the mark to the domain name, courts do not consider the generic top-level domain component of the domain name, such as the. Nor do they consider a domain name’s path, such as the phrase “Kohler faucets” in the domain homedepot. Instead, courts compare the mark to the second-level domain component of the domain at issue, the Home Depot in homedepot.
Courts regularly find “typo” domains — domain names that misspell the owner’s mark — to be confusingly similar and thus to trigger liability under the ACPA. The ACPA protects both registered and unregistered common-law marks. If your mark is “famous,” you can prevail not only if the domain name at issue is identical or confusingly similar to your mark, but also if it is “dilutive. The final element you need to establish is the most difficult to demonstrate, namely the motivation for defendant’s conduct.
To prevail on an ACPA claim, you must show that defendant acted with “a bad faith intent to profit from [your] mark. Three of these factors focus on potential legitimate uses by the defendant of the domain, the presence of which support a finding that defendant did not act in bad faith.
The same mark can legitimately be used by different concerns in different markets, or geographic areas. Application of this principle allowed a defendant to defeat an ACPA claim brought by plaintiff arising out of defendant’s registration of the domain chambord.
Similarly, individuals whose name or nickname are identical to a company’s mark have been held to have legitimate claims on a domain containing that mark. In determining whether a particular domain name was registered or used in good faith, the use made of the domain name prior to the commencement of the parties’ dispute is particularly important.
Switching after a dispute arises from an illegitimate to legitimate use will not cure the original bad faith registration. Switching uses after registration from a legitimate to illegitimate use can, however, evidence the requisite bad faith necessary to trigger ACPA liability. Thus, a domain name initially registered legally can become illegal through bad faith actions which follow. Four of the statute’s nine factors evidence a bad faith intent to improperly profit from another’s mark.
Cybertelecom :: ACPA
Most of these factors are self-explanatory and require little comment. As observed by the U. Court of Appeals for the Sixth Circuit “registering a famous trademark as a domain name and then offering it for sale to the trademark owner is exactly the wrong Congress intended to remedy when it passed the ACPA. CatalanotteF3d 6th Cir. Courts thus routinely look to offers by the defendant to sell the domain name as evidence of his bad faith.
Anticybersquatging is also true of the submission of false contact information to a domain name registrar, which is taken as a sign the defendant neither wants to be identified nor held accountable for his conduct.
Registration of multiple domain names containing marks owned by third parties also evidences bad faith. Evidence of such registrations can be obtained by performing a reverse “who is” search. Unlike a typical “who is” search, which only identifies who registered a particular domain name, a reverse “who is” search allows you to find out each domain a particular individual registered.
The statute enumerates two final factors courts may consider in determining defendant’s motivation. The first is the relative strength of the mark at issue. Use of a strong well-known mark evidences bad faith. Conversely, “the fact that a mark is not well-known may. The final factor is whether defendant is making a “bona fide noncommercial or fair use of the mark on a site accessible under the domain name.
While such a use is evidence of defendant’s good faith, it is not dispositive as “to recognize such an exemption would eviscerate the protection of the bill by suggesting a blueprint for cybersquatters who would simply create criticism sites in order to immunize themselves from liability despite their bad faith intentions.
PurdyF3d 8th Cir. Similarly, that defendant has made no antivybersquatting use anticybersquahting his domain, or the mark, is also not dispositive on this issue. If you can establish each of these elements — that the defendant registered, trafficked in or used a mark identical or confusingly similar to a distinctive or famous mark with a bad faith intent to profit therefrom — you can use the ACPA to prevent the misuse of your mark in another’s domain.
That is, provided the court does not find that the defendant “believed and had reasonable grounds to believe that the use of the domain name was a fair use or otherwise lawful. Such a finding prevents a determination that defendant acted with the requisite “bad faith. Otherwise, anticyebrsquatting cybersquatter would solemnly aver that its conduct was lawful.
But what if the domain registrant has provided false contact information, preventing you from knowing who to sue? Or what if the registrant resides outside of the United States? Relief can still be obtained under the ACPA’s in rem provisions. In in rem proceedings, the court’s remedial powers are limited to directing that the domain name anticybersquaatting issue be forfeited, cancelled or transferred to the mark holder.
The court cannot award monetary relief. To proceed in rem, the mark holder must demonstrate that he cannot establish personal jurisdiction over the defendant.
This can proteciton done where the domain name registrant resides in a foreign country.
Alternatively, for registrants whose identity is unknown, anticybeersquatting mark holder must establish that he cannot locate the defendant both by sending notice to the address listed with the domain registrar, and by publishing notice of the lawsuit as directed by the court. In rem proceedings can be commenced in a judicial district “in which the domain name registrar, domain name registry, or other domain name authority that registered or assigned the domain name [at issue] is located.
This requires proof of defendant’s bad faith, even though he is not present before the court. As shown above, the ACPA is a useful weapon against those who improperly register a domain containing anticybersqutting mark. For example, it was used by E.
Anticybersquatting Consumer Protection Act Law and Legal Definition
anticybersquattnig Gallo Winery, owners of the “Ernest and Julio Gallo” mark, to obtain from defendants the domain name ernestandjuliogallo.
Plaintiff prevailed despite the fact that defendants neither offered the domain for sale, nor used it to sell wine products. The court held defendants acted in bad faith because they had registered the domain as “real estate” on which they had intended to make a profit, and had registered some 2, additional domains containing the prktection of famous companies, cities and buildings.
There, the court found that a disgruntled customer violated the ACPA by registering a domain name containing defendant’s trademark, at which he operated a Web site critical of defendant.
The court’s finding of bad faith rested in large part on its determination that plaintiff had offered to transfer the domain to defendant if it refunded certain lease payments plaintiff had made which were at the heart of his dispute with defendant, as well as funds plaintiff claimed defendant improperly received from third parties.
A similar result was reached protecion Lamparello v.
Statutory damages under the Anticybersquatting Consumer Protection Act
FalwellFSupp2d E. As shown by the foregoing, the ACPA can be an effective tool to prevent the misuse of your mark in anticybrrsquatting domain. Zuccarini, F3d 3d Cir. To hold that all such individuals may qualify for cobsumer safe harbor would frustrate Congress’ purpose by artificially limiting the statute’s reach.
Further Duplication without permission is prohibited. The Anticybersquatting Consumer Protection Act: Misspelling the Owner’s Mark Courts regularly find “typo” domains — domain names that misspell the owner’s mark — to be confusingly similar and thus to trigger liability under the ACPA.
Names or Nicknames Similarly, individuals whose name or nickname are identical to a company’s mark have been held to have legitimate claims on a domain containing that mark. Offers to Sell Domain Name Most of these factors are self-explanatory and require little comment. Registered, Trafficked, Used If you can establish each of these elements — that the defendant registered, trafficked in or used a mark identical or confusingly similar to a distinctive or famous mark with a bad faith intent to profit therefrom — you can use the ACPA to prevent the misuse of your mark in another’s domain.
Purdy, F3d 8th Cir. Help support this site.