The Anticybersquatting Consumer Protection Act (15 U.S.C. § 1125(d)) (“ACPA”), a federal law that took effect on November 29, 1999, governs cybersquatting claims. In accordance with the ACPA, “trademark holders now have a cause of action against anyone who, with a bad faith intent to profit from the goodwill of another’s trademark, registers, traffics in, or uses a domain name that is identical to, or confusingly similar to a distinctive mark, or dilutive of a famous mark, without regard to the goods or services of the parties.” (15 U.S.C. § 1125(d)) (Harvard Law). Before the ACPA was enacted, trademark owners relied heavily on the Federal Trademark Dilution Act to sue domain name registrants.
Instead of suing in federal court under the ACPA, a trademark owner may choose to pursue an administrative proceeding under the Internet Corporation for Assigned Names and Numbers (ICANN)’s Uniform Domain Name Dispute Resolution Policy.
SEE Uniform Domain Name Dispute Resolution Policy.
Establishing a Claim
Per 15 U.S.C. § 1125(d), a plaintiff must prove the following elements to establish a claim of cybersquatting:
- The defendant has a bad faith intent to profit from that mark, including a defendant name which is protected as a mark; and
- Registers, traffics in, or uses a domain name that:
o i. In the case of a mark that is distinctive at the time of registration of the domain name, is identical or confusingly similar to that mark;
o ii. In the case of a famous mark that is famous at the time of registration of the domain name, is identical or confusingly similar to or dilutive of that mark; or
o iii. Is a trademark, word, or name protected by reason of 18 U.S.C. § 706 (the Red Cross, the American National Red Cross or the Geneva cross) or 36 U.S.C. § 220506.
Determining Bad Faith
In determining whether a person has a bad faith intent described above, a court may consider factors such as, but not limited to:
- The trademark or other intellectual property rights of the person, if any, in the domain name;
- The extent to which the domain name consists of the legal name of the person or a name that is otherwise commonly used to identify that person;
- The person’s prior use, if any, of the domain name in connection with the bona fide offering of any goods or services;
- The person’s bona fide noncommercial or fair use of the mark in a site accessible under the domain name;
- The person’s intent to divert consumers from the mark owner’s online location to a site accessible under the domain name that could harm the goodwill represented by the mark, either for commercial gain or with the intent to tarnish or disparage the mark, by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the site;
- The person’s offer to transfer, sell, or otherwise assign the domain name to the mark owner or any third party for financial gain without having used, or having an intent to use, the domain name in the bona fide offering of any goods or services, or the person’s prior conduct indicating a pattern of such conduct;
- The person’s provision of material and misleading false contact information when applying for the registration of the domain name, the person’s intentional failure to maintain accurate contact information, or the person’s prior conduct indicating a pattern of such conduct;
- 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, or dilutive of famous marks of others that are famous at the time of registration of such domain names, without regard to the goods or services of the parties; and
- The extent to which the mark incorporated in the person’s domain name registration is or is not distinctive and famous.
The ACPA authorizes a court to order the “forfeiture or cancellation of a domain name or the transfer of the domain name to the owner of the mark. In lieu of actual damages, the plaintiff may elect statutory damages and the court has discretion to award damages of a minimum of $1,000 and maximum of $100,000 per domain name, as the court considers just.” (PSU).