Anticybersquatting Consumer Protection Act

Identical or confusingly similar to a distinctive

mark

The Anticybersquatting Consumer Protection Act

(ACPA), 15 U.S.C. 1125(d), is an American law enacted in 1999 that established a cause of action for
registering, tracking in, or using a domain name
confusingly similar to, or dilutive of, a trademark or
personal name.[1][2] The law was designed to thwart
cybersquatters who register Internet domain names
containing trademarks with no intention of creating a legitimate web site, but instead plan to sell the domain
name to the trademark owner or a third party.[3] Critics of the ACPA complain about the non-global scope of
the Act and its potential to restrict free speech,[4] while
others dispute these complaints. Before the ACPA was
enacted, trademark owners relied heavily on the Federal
Trademark Dilution Act (FTDA) to sue domain name
registrants.[3] The FTDA was enacted in 1995 in part with
the intent to curb domain name abuses.[5] The legislative
history of the FTDA specically mentions that trademark
dilution in domain names was a matter of Congressional
concern motivating the Act.[6] Senator Leahy stated that
it is my hope that this anti-dilution statute can help stem
the use of deceptive Internet addresses taken by those
who are choosing marks that are associated with the products and reputations of others.[6]

Identical or confusingly similar to or dilutive

of a famous mark
Is a trademark protected by 18 U.S.C. 706
(marks involving the Red Cross) or 36 U.S.C.
220506 (marks related to the Olympics)[7]
A trademark is famous if the owner can prove that the
mark is widely recognized by the general consuming
public of the United States as a designation of source of
the goods or services of the marks owner.[8]
Tracking in the context of domain names includes,
but is not limited to sales, purchases, loans, pledges, licenses, exchanges of currency, and any other transfer for
consideration or receipt in exchange for consideration.[9]
The ACPA also requires that the mark be distinctive or
famous at the time of registration.[10]
In determining whether the domain name registrant has
a bad faith intent to prot, a court may consider many
factors, including nine that are outlined in the statute:
1. Registrants trademark or other intellectual property
rights in the domain name;

For example, in Panavision Intl L.P. v. Toeppen, 141

F.3d 1316 (9th Cir. 1998), Dennis Toeppen registered
the domain name Panavision.com. Panavision, the trademark owner, learned that Toeppen had registered their
trademark when they attempted to register the trademark
Panavision as a domain name.[6] Toeppen was using the
domain panavision.com to display photographs of Pana,
Illinois, and, when asked to cease, he oered to sell the
domain name to Panavision for $13,000.[6] After Panavision refused to buy the domain name from Toeppen, he
registered their other trademark, Panaex, as a domain
name.[6] The Court held that the FTDA could be violated
without the traditional tarnishing or blurring the courts
had required.[3] Rulings like this extended the FTDA substantially.

2. Whether the domain name contains the registrants

legal or common name;
3. Registrants prior use of the domain name in connection with the bona de oering of goods or services;
4. Registrants bona de noncommercial or fair use of
the mark in a site accessible by the domain name;
5. Registrants intent to divert customers from the
mark owners online location that could harm the
goodwill represented by the mark, for commercial
gain or with the intent to tarnish or disparage the
mark;
6. Registrants oer to transfer, sell, or otherwise assign the domain name to the mark owner or a third
party for nancial gain, without having used the
mark in a legitimate site;

Overview

7. Registrants providing misleading false contact information when applying for registration of the domain name;

Under the ACPA, a trademark owner may bring a cause

of action against a domain name registrant who
Has a bad faith intent to prot from the mark

8. Registrants registration or acquisition of multiple

domain names that are identical or confusingly similar to marks of others; and

Registers, tracs in, or uses a domain name that is

1

4 DOMAINING AND THE ACPA

9. Extent to which the mark in the domain is distinctive have been a defendant under 15 U.S.C. 1125(d)(1);
or famous.[11]
or (b) through due diligence was not able to nd a person who would have been a defendant under 15 U.S.C.
1125(d)(1) by sending a notice of the alleged violation
The ACPA does not prevent the fair use of trademarks
and publishing notice of the action.[20] This provision is
or any use protected by the First Amendment, which
rarely used, however, because many trademark owners
includes gripe sites.[12] In Mayower Transit, L.L.C. v.
can achieve the same results through a Uniform Domain
Prince, 314 F. Supp. 2d 362 (D.N.J 2004), the court
Name Dispute Resolution Policy (UDRP) proceeding.
found that the rst two prongs of Mayowers ACPA
claim were easily met because (1) their registered trademark was distinctive and (2) Defendants mayowervanline.com was confusingly similar to Plaintis 3 ACPA v. UDRP
Mayower trademark.[13] However, when the court was
examining the third prong of Plaintis ACPA claim, Instead of suing in federal court under the ACPA, a tradewhether Defendant registered its domain name with the mark owner can choose to pursue an administrative probad faith intent to prot from Plainti, the court found ceeding under ICANNs Uniform Domain Name Dispute
Defendant had a bona de noncommercial use of the Resolution Policy (UDRP). The UDRP allows a trademark, therefore, the ACPA claim failed.[14] Defendants mark owner to challenge domain name registrations in
motive for registering the disputed domain names was to expedited administrative proceedings.[3]
express his customer dissatisfaction through the medium
A UDRP proceeding can be faster and cheaper for tradeof the Internet.[15]
mark owners than an ACPA lawsuit.[3] Also, UDRP outThe domain name registrar or registry or other domain comes tend to be pro-plainti because many UDRP arname authority is not liable for injunctive or mone- bitrators are trademark lawyers.[3] However, some tradetary relief except in the case of bad faith or reckless mark owners prefer to bring ACPA claims because they
disregard.[16]
oer more remedies than the cancellation or transfer
While 1125 protects trademark owners, 15 U.S.C. of the domain name (the only remedies available under
[3]
1129 protects any living person from having their per- UDRP proceedings) and a court ruling can lead to a
[3]
sonal name included in a domain name, but only when nal resolution of the matter. Also, a suit under the
ACPA may deter future cybersquatters more eectively
the domain name is registered for protable resale.[17]
than a UDRP proceeding.[3]
The Ninth Circuit Court of Appeals caused a stir in 2013
when it held, in Petroliam Nasional Berhad (Petronas) v.
GoDaddy.com, 737 F.3d 546 (9th Cir. 2013), petition
for cert. led, 2014 WL 1510251 (U.S. Apr. 14, 2014), 4 Domaining and the ACPA
that there is no cause of action for contributory cybersquatting, i.e. secondary liability under the ACPA. It so While the ACPA contemplated the purchase of domain
held notwithstanding the extensive body of case law per- names for resale to trademark owners, it did not conmitting such liability where a registrar is shown to have template the more modern practice of domaining. Doacted outside the normal ministerial bounds of domain maining is the business of registering a domain name and
registration.[18] It also relied on Central Bank of Denver parking it or placing pay-per-click ads on it. Domainers
v. First Interstate Bank of Denver and premised on the rely on type-in trac, which is when Internet surfers type
Circuit Courts determination that the ACPA is not part in the domain name rather than using a search engine.[21]
of the Lanham Act and therefore not included in the rule Domainers can make a lot of money by buying and selling
permitting secondary liability for trademark infringement domain names.[21]
enunciated in Inwood Labs v. Ives Labs, 456 U.S. 844
Some domainers relied on domain tasting, which in(1982).[19]
volves placing pay-per-click ads on the domain for ve
days (or less) to determine whether the ads will make
more than the annual cost of the domain.[22] If the domain is dropped within the ve-day grace period, no
2 In rem Jurisdiction
fee is incurred.[22] An industry has grown up out of
with domainers taking part in these mass
The ACPA also provides that the trademark owner can this business[22]
This practice was largely eliminated by
registrations.
le an in rem action against the domain name in the juICANN
began raising fees to registrars with
2009,
when
dicial district where the domain name registrar, domain
[23]
excessive
domain
tasting.
name registry, or other domain name authority registered
or assigned the domain name is located if (1) the domain name violates any right of the trademark owner and
(2) the court nds that the owner (a) is not able to obtain in personam jurisdiction over the person who would

In Verizon California, Inc. v. Navigation Catalyst Systems,

568 F. Supp. 2d 1088 (C.D. Cal. 2008), the domainer
lost under the ACPA.[24] One of the defendants, Basic
Fusion, Inc. argued that they were not cybersquatters, but

3
as an Internet registrar accredited by ICANN they could
register domain names on behalf of its customers and
it specialized in bulk registration.[25] Navigation Catalyst Systems, another defendant and a customer of Basic
Fusion, used their proprietary automated tool to nd
domain names that were not already registered and then
registered them using Basic Fusion.[25] Navigation used
the ve days following the registration (the add grace
period) to put advertisements on the websites making
money from the advertisements even when they dropped
the domain name registration before the ve-day window
closed.[26] Plainti Verizon argued that defendants registered 1,392 domain names that were confusingly similar to plaintis trademarks.[25] The Court found that defendants used the confusingly similar domain names with
a bad faith intent to prot.[27]

See also

[14] Mayower Transit, L.L.C. v. Prince, 314 F. Supp. 2d

362, 367, 369 (D.N.J 2004)
[15] Mayower Transit, L.L.C. v. Prince, 314 F. Supp. 2d
362, 369 (D.N.J 2004)
[16] 15 U.S.C. 1125(d)(2)(D)(ii)
[17] 15 U.S.C. 1129(1)(A) (transferred to 15 U.S.C. 8131)
[18] Ninth Circuit Holds There is No Cause of Action for Contributory Cybersquatting.
http://www.
secondarytrademarkinfringement.com/''. Retrieved Oct 1,
2014.
[19] How the 9th Circuit Veered O Course in Petroliam Nasional Berhad (Petronas) v. GoDaddy.com: The Misapplication of Central Bank of Denver, N.A. v. First Interstate Bank of Denver, N.A. (Central Bank)". http://www.
secondarytrademarkinfringement.com/''. Retrieved Oct 1,
2014.
[20] 15 U.S.C. 1125(d)(2)(A)

Microsoft v. Shah

[21] Paul Sloan, Masters of their Domains, http:

//money.cnn.com/magazines/business2/business2_
archive/2005/12/01/8364591/

References

[22] ICANN Issues: Domain name tasting, http://public.icann.

org/issues/domain-name-tasting

[1] Jane C. Ginsberg, Trademark and Unfair Competition Law

748 (Robert C. Clark et al. eds., Foundation Press 4th ed.
2007)(2001)
[2] Cybertelecom :: Anticybersquatting Consumer Protection
Act Providing Legislative History, Caselaw, and References
[3] 2-7A Gilson on Trademarks 7A.06, Trademark Cyberpiracy and Cybersquatting (Matthew Bender & Co. 2009)
[4] Serena C. Hunn, Anticybersquatting Consumer Protection
Act: A Powerful Remedy in Domain Name Disputes? Or a
Threat to Electronic Commerce?, http://www.fmew.com/
archive/cybersquat/index.html
[5] Panavision Intl L.P. v. Toeppen, 141 F.3d 1316, 1326
(9th Cir. 1998)
[6] Panavision Intl L.P. v. Toeppen, 141 F.3d 1316, 1326
(9th Cir. 1998); TeleTech Customer Care Mgmt., Inc.
v. Tele-Tech Co., 977 F. Supp. 1407, 1413 (C.D. Cal.
1997)
[7] 15 U.S.C. 1125(d)(1)(A)
[8] 15 U.S.C. 1125(c)(2)(A)
[9] 15 U.S.C. 1125(d)(1)(E)
[10] 15 U.S.C. 1125(d)(1)(A)(ii)
[11] 15 U.S.C. 1125(d)(1)(B)
[12] 15 U.S.C. 1125(d)(1)(B)(ii)
[13] Mayower Transit, L.L.C. v. Prince, 314 F. Supp. 2d
362, 367 (D.N.J 2004)

[23] The End of Domain Tasting | AGP Deletes Decrease

99.7%". ICANN. 2009-08-12. Retrieved 2013-09-22.
[24] Verizon California, Inc. v. Navigation Catalyst Systems,
Inc., 568 F. Supp. 2d 1088 (C.D. Cal. 2008)
[25] Verizon California, Inc. v. Navigation Catalyst Systems,
Inc., 568 F. Supp. 2d 1088, 1092 (C.D. Cal. 2008)
[26] Verizon California, Inc. v. Navigation Catalyst Systems,
Inc., 568 F. Supp. 2d 1088, 1092-93 (C.D. Cal. 2008)
[27] Verizon California, Inc. v. Navigation Catalyst Systems,
Inc., 568 F. Supp. 2d 1088, 1094-97 (C.D. Cal. 2008)

7 TEXT AND IMAGE SOURCES, CONTRIBUTORS, AND LICENSES

Text and image sources, contributors, and licenses

7.1

Text

Anticybersquatting Consumer Protection Act Source: http://en.wikipedia.org/wiki/Anticybersquatting%20Consumer%20Protection%

20Act?oldid=651156457 Contributors: The Anome, SimonP, Lquilter, Neilc, The Inedible Bulk, Seth Finkelstein, Alansohn, Gary, PaulHanson, EsonLinji, PullUpYourSocks, Bookandcoee, Brianwc, Uncle G, GoldRingChip, BD2412, FlaBot, Trademarx, Juanpdp, Abuerer,
SmackBot, Stie, KD5TVI, Mike hayes, Cybercobra, GavinOB, Ckatz, Rcannon100, Ankon Ray, Skapur, Radiant chains, Cydebot,
Ntsimp, Jneuenhaus, Crana, Yale s, Oven, Flowanda, CliC, Insinuendo, Sherdor, Nick Levinson, Kbrose, Lightmouse, Maitreg, XLinkBot,
Imagine Reason, Addbot, Ronhjones, The Earwig, Jeremyleader, Ericgoldman, Haeinous, CliordHyra, Jel78, EmausBot, Angrytoast,
Checkingfax, BattyBot, Soni, KH-1 and Anonymous: 42

7.2

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7.3

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