AntiCybersquatting Consumer Protection Act (ACPA)
The Anticybersquatting Act provides a federal cause of action for the bad faith registration and use of a trademark as a domain by someone other than the mark's holder.
Under certain conditions, the the statute provides trademark holders an in rem cause of action against an infringing domain name.
Note the similarities between the ACPA, set out below, and the UDRP. A complainant is generally well advised to attempt to resolve a domain dispute via the UDRP in advance of filing suit in Federal court. A party losing a UDRP action may nevertheless file suit under the ACPA, either for declaratory relief in the case of a losing domain name registrant Respondent or for affirmative relief in the case of a losing Complainant, thereby a party may get a "second bite of the apple."
PMD Law can assist you in determining the merits of a suit under the ACPA and otherwise, and if warranted we can act was your attorney to prosecute, defendant or seek declaratory relief under the ACPA.
We are also available to work with attorneys who would like assistance in this area of the law or need local counsel in the Southern District of California.
TITLE 15. US CODE. COMMERCE AND TRADE
CHAPTER 22. TRADEMARKS
GENERAL PROVISIONS
15 USCS § 1125
§ 1125.
False designations of origin, false descriptions, and dilution
forbidden
***
(d) Cyberpiracy prevention.
(1)
(A) A person shall be liable in a civil action by the owner of a mark,
including a personal name which is protected as a mark under this
section, if, without regard to the goods or services of the parties,
that person--
(i) has a bad faith intent to profit from that mark, including a
personal name which is protected as a mark under this section; and
(ii) 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
section 706 of title 18, United States Code, or section 220506 of
title 36, United States Code.
(B) (i) In determining whether a person has a bad faith intent described
under subparagraph (A), a court may consider factors such as, but not
limited to--
(I) the trademark or other intellectual property rights of the
person, if any, in the domain name;
(II) 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;
(III) the person's prior use, if any, of the domain name in
connection with the bona fide offering of any goods or services;
(IV) the person's bona fide noncommercial or fair use of the mark
in a site accessible under the domain name;
(V) 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;
(VI) 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;
(VII) 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;
(VIII) 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
(IX) the extent to which the mark incorporated in the person's
domain name registration is or is not distinctive and famous within the
meaning of subsection (c).
(ii) Bad faith intent described under subparagraph (A) shall 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.
(C) In any civil action involving the registration, trafficking, or use
of a domain name under this paragraph, a court may order the forfeiture
or cancellation of the domain name or the transfer of the domain name to
the owner of the mark.
(D) A person
shall be liable for using a domain name under subparagraph (A) only if
that person is the domain name registrant or that registrant's
authorized licensee.
(E) As used in this paragraph, the term "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.
(2)
(A) The owner of a mark may file an in rem civil action against a domain
name in the judicial district in which the domain name registrar, domain
name registry, or other domain name authority that registered or
assigned the domain name is located if--
(i) the domain name violates any right of the owner of a mark
registered in the Patent and Trademark Office, or protected under
subsection (a) or (c); and
(ii) the court finds that the owner--
(I) is not able to obtain in personam jurisdiction over a person
who would have been a defendant in a civil action under paragraph (1);
or
(II) through due diligence was not able to find a person who
would have been a defendant in a civil action under paragraph (1) by--
(aa) sending a notice of the alleged violation and intent to
proceed under this paragraph to the registrant of the domain name at the
postal and e-mail address provided by the registrant to the registrar;
and
(bb) publishing notice of the action as the court may direct
promptly after filing the action.
(B) The actions under subparagraph (A)(ii) shall constitute service of
process.
(C) In an in rem action under this paragraph, a domain name shall be
deemed to have its situs in the judicial district in which--
(i) the domain name registrar, registry, or other domain name
authority that registered or assigned the domain name is located; or
(ii) documents sufficient to establish control and authority
regarding the disposition of the registration and use of the domain name
are deposited with the court.
(D) (i) The remedies in an in rem action under this paragraph shall be
limited to a court order for the forfeiture or cancellation of the
domain name or the transfer of the domain name to the owner of the mark.
Upon receipt of written notification of a filed, stamped copy of a
complaint filed by the owner of a mark in a United States district court
under this paragraph, the domain name registrar, domain name registry,
or other domain name authority shall--
(I) expeditiously deposit with the court documents sufficient to
establish the court's control and authority regarding the disposition of
the registration and use of the domain name to the court; and
(II) not transfer, suspend, or otherwise modify the domain name
during the pendency of the action, except upon order of the court.
(ii) The domain name registrar or registry or other domain name
authority shall not be liable for injunctive or monetary relief under
this paragraph except in the case of bad faith or reckless disregard,
which includes a willful failure to comply with any such court order.
(3) The civil action
established under paragraph (1) and the in rem action established under
paragraph (2), and any remedy available under either such action, shall
be in addition to any other civil action or remedy otherwise applicable.
(4) The in rem
jurisdiction established under paragraph (2) shall be in addition to any
other jurisdiction that otherwise exists, whether in rem or in personam.