Celeste 341 Report post Posted December 26, 2006 What is the ACPA? The Anticybersquatting Consumer Protection Act is a federal law that took affect on November 29, 1999. This new domain name dispute law is intended to give trademark and service mark owners legal remedies against defendants who obtain domain names "in bad faith" that are identical or confusingly similar to a trademark or service mark. If a mark is a famous mark, the same remedies are available if the domain name is identical to, confusingly similar to or dilutive of the mark. What Must a Mark Owner Show to Win a Case of Cybersquatting? The plaintiff must prove the following elements: The Defendant has a bad faith intent to profit from that mark, including a defendant name which is protected as a mark; registers, traffics in, or uses a domain name that-- (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; (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 (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 The key element that must be proven is that the defendant has a "bad faith intent to profit from the mark." ''Traffics in'' refers to transactions that include, but are not limited to, sales, purchases, loans, pledges, licenses, exchanges of currency, and any other transfer for consideration or receipt in exchange for consideration. What is Bad Faith Intent to Profit from a Mark? The ACPA gives the court some guidance to assist it in determining if the requisite bad faith exists. In determining if the defendant has bad faith, the court may consider the following non-exclusive factors: the trademark or other intellectual property rights of the defendant, if any, in the domain name; the extent to which the domain name consists of the legal name of the defendant or a name that is otherwise commonly used to identify the defendant; the defendant's prior use, if any, of the domain name in connection with the bona fide offering of any goods or services; the defendant's bona fide noncommercial or fair use of the mark in a site accessible under the domain name; the defendant'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 defendant'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 defendant's prior conduct indicating a pattern of such conduct; the defendant's provision of material and misleading false contact information when applying for the registration of the domain name, the defendant's intentional failure to maintain accurate contact information, or the defendant's prior conduct indicating a pattern of such conduct; the defendant's registration or acquisition of multiple domain names which the defendant 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 defendant's domain name registration is or is not distinctive and famous within the meaning of Section 1125©(1) of the Lanham Act. Bad faith intent will not be found in any case in which the court determines that the person believed and had reasonable grounds to believe that the use of the domain name was a fair use or otherwise lawful. What's the Quickest & Easiest Way for Domain Name Owner to Lose an ACPA Lawsuit? If the domain name owner, including a domain name owner that may not otherwise be liable under the ACPA, offers at any time to sell or transfer the domain name for value, most courts will find that the owner has acted in bad faith and if the other elements of the case are proven, the plaintiff will win. Another easy way for the plaintiff to prevail is if the domain name owner supplied material misleading contact information on the domain name registration application or if the defendant intentionally fails to maintain accurate contact information with the domain name registrar. Because of this bad faith factor, it is important for all domain name owners to check their domain name registrations at their registrars Whois database to determine if the contact information is correct. See Who Owns Your Domain Name and Who Controls Your Domain Name. What Remedies May be Granted by the Court for Violations of the Act? The Act 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 not less than $1,000 and not more than $100,000 per domain name, as the court considers just. 15 U.S.C. § 1117(d). An infamous cybersquatter named John Zuccarini lost an ACPA lawsuit in October of 2000, when the court awarded the plaintiff statutory damages of $500,000 for each of five domain names that were obtained in bad faith and that were confusingly similar to the plaintiff's trademark. The court also ordered Mr. Zuccarini to pay attorneys' fees of more than $30,000. See Electronics Boutique Holdings Corp. v. Zuccarini, Mousetrapping Cybersquatter Slapped With $530,000 in Damages and Fee and In Search Of: 'Cybersquatter' John Zuccarini This is only a portion of the article published on April 20, 2001. About the Author Richard Keyt is a business, transactions and internet law attorney licensed to practice law in Arizona, but he may represent clients from any state with respect to federal internet law, cybersquatting and domain name disputes, domain name law, e-commerce law, copyright and trademarks. Rick can be reached by telephone at 602-906-4953, email at rickkeyt@keytlaw.com and fax at 602-297-6890. Rick's internet, e-commerce and domain name law web site is KEYTLaw, located at www.keytlaw.com. Communicating with Richard Keyt via email or otherwise does not cause you to become a client or cause your communications to be confidential or subject to the attorney client privilege. Share this post Link to post Share on other sites
Celeste 341 Report post Posted December 26, 2006 This is another good article on a related subject: Who Owns Your Domain Name? by Richard Keyt Are you sure you own your domain name? Chances are that neither you nor anybody in your company has ever checked to see who actually owns your domain name. It is very common for domain names to be owed by a company employee, a web site designer or an internet service provider. The initial owner (technically called the "licensee") of a domain name is the person or entity that is listed as the "registrant" on the application for the domain name submitted to the domain name registrar. Using the internet, it is very easy to determine who actually owns a domain name. A domain name is "owned" by or licensed to the person or entity shown as the "registrant" on the "whois" database of the registrar. The registrar is the name given to an entity that is authorized by ICANN to issue domain names to the public. The first and most well known registrar is Network Solutions, Inc. A "whois" database is a database maintained by all registrars that lists pertinent information about all domain names issued by the registrar. Each registrar's Whois database may be searched online. To check the ownership of a domain name, go to the Whois database of either Network Solutions or Better-Whois.com. Simply type in the name of the domain name and the top level domain name such as .com, .net, .org, .biz, .info or .name and click the search button. If the domain name is in the Whois database, the search results will display the following pertinent information about the domain name: Registrant: The person or entity listed here is the "owner" of the domain name. Administrative Contact: The person designated to receive communications from the registrar related to administration of the domain name. Billing Contact: The person designated to receive notices from the registrar concerning renewing the domain name by paying the registration fee. Technical Contact: The person designated to receive communications related to technical matters associated with the domain name. Record Expiration Date: The date the domain name will terminate and be revoked unless the renewal fee has been paid Record Creation Date: The date the domain name was first issued to the registrant or the registrant’s predecessor. Important Note: Any person or entity named as a contact on the Whois database has the power to adversely affect the domain name. Make sure the people who are named as administrative, billing and technical contacts are correct. These people should be trusted individuals or companies that will not use their power as designated contacts to adversely affect the domain name. The billing person should be somebody who can be trusted to make sure the domain name renewal fee is paid before the expiration date. Verify that the names, addresses, email addresses and phone numbers for the registrant and all contacts are correct. If any information is not correct or if you want to change any or all of the contacts, you should initiate the changes on your registrar's web site. The fact that a domain name owner has incorrect information in the Whois database can be used against the registrant in disputes involving ownership of the domain name. See the Anticybersquatting Consumer Protection Act FAQ. Sometimes when you do a Whois search, you may not get much information other than the name of the registrar. Many of the registrars do not share domain name information or have access to other registrars' Whois databases. If you cannot get the information you need when you do a Whois search, make a note of the name of the registrar and then go to the web site of the registrar to do the search for the domain name information. ICANN maintains a list of all accredited registrars with their contact information. Domain names are valuable assets. By taking the time now to check the ownership record of your domain name, you may prevent the loss of your domain name in the future. This article was first published on May 1, 2001. About the Author Richard Keyt is a business, transactions and internet law attorney licensed to practice law in Arizona, but he may represent clients from any state with respect to federal internet law, cybersquatting and domain name disputes, domain name law, e-commerce law, copyright and trademarks. Rick can be reached by telephone at 602-906-4953, email at rickkeyt@keytlaw.com and fax at 602-297-6890. Rick's internet, e-commerce and domain name law web site is KEYTLaw, located at www.keytlaw.com. Communicating with Richard Keyt via email or otherwise does not cause you to become a client or cause your communications to be confidential or subject to the attorney client privilege. Share this post Link to post Share on other sites
