What is the Anti-Cybersquatting Consumer Protection Act?
The Anti-Cybersquatting Consumer Protection Act ("ACPA"), 15 U.S.C § 1125(d), was enacted into law in 1999. This domain name dispute law was intended to give trademark and service mark owners legal remedies against people who obtain a domain name in bad faith that isidentical or confusingly similar to the trademark or service 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 of cancellation of the [offending] domain name or [its] transfer…to the owner of the mark.” §1125(D) (1) (c).
The owner of any trademark protected under U.S. federal law, whether registered or not, can bring suit as long as the mark:
1) is distinctive at the time of registration of the domain name, or 2) is a famous mark at the time of registration of the domain name, or 3) is a mark, word, or name that is protected because it is reserved for use by the Red Cross or the U.S. Olympic Committee.
The ACPA provides that cyberpriates can be fined between $1,000 and $100,000 per domain name for which they are found liable, as well as being forced to transfer the domain name to the trademark holder.
Under the ACPA, a trademark owner must prove that a person has a bad faith intent to profit from a domain name and registered, used, or trafficked in a domain name that is identical to, confusingly similar to, or dilutive of certain trademarks. The trademark does not have to be registered.
EXAMPLES OF PAST LIGITIGATED CASES:
Microsoft vs. MikeRoweSoft:
In 2003, Canadian student Mike Rowe was in the 12th grade of high school and ran a small part-time web design business. He decided to register the domain name MikeRoweSoft.com for the business. He thought that it would be funny to add the “soft” to his name. He had no idea that this joke would bring more attention than he ever anticipated.
When Microsoft discovered the domain name in 2004, it sent a letter sent to Mike Rowe accusing him of trademark infringement and demanding that he take the website down. Rowe replied, asking to be compensated for the name. Microsoft agreed and offered him $10, the original cost to set up the name. The offer only angered Rowe, and he countered for $10,000.
Microsoft declined the offer and sent a 25 page cease and desist letter accusing Rowe of setting up the site in order to try to force them into a large financial settlement. Rowe went to the press, creating publicity for the case and garnering support for his cause, including donations of over $6,000 and an offer of free advice from a lawyer. The case, portrayed as a David vs. Goliath struggle by the media, portrayed Microsoft in a negative light and, therefore, in January 2004, the parties came to an out-of-court settlement. Microsoft took control of the domain name and in return they agreed to pay all of the expenses that were incurred by Rowe. Additionally, they provided Rowe with a subscription to the Microsoft Developer Network, an all-expense paid trip for him and his family to the Microsoft Research Tech Fest, training for Microsoft certification, and, most importantly, an Xbox with a selection of games.
Rowe attempted to auction off the original cease and desist letter, e-mails between him and Microsoft, and other items. The auction received more than half a million page views and bidding rose to more than $200,000 with the higher bids ultimately proven to be fraudulent. After restarting from the reserve price of $500, the documents eventually sold for $1,037.
People for the Ethical Treatment of Animals, Inc. ("PETA") promotes a healthy vegan diet; they are against animal testing and cruelty to animals and are anti-fur, which has given us a barrage of naked celebrities flexing their own activism muscles for the entire world to see on large billboards and glossy magazines.
You can imagine their surprise and disgust to find that, in 1995, Michael Doughney registered the domain name PETA.org, branding it as the internet home page for “People Eating Tasty Animals,” a site with links to pages promoting the sale of meats and leather goods. PETA sued, claiming trademark infringement, unfair completion, and cybersquatting. The district court ruled in PETA’s favor and turned the domain name over to them, but denied their application for costs, deciding that Doughney did not act maliciously. Maybe in bad taste (no pun intended), but not maliciously.
Career Agents Network:
Career Agents Network, Inc. (“CAN”) sued a former customer, Lawrence R. White, who had developed a web site called careeragentsnetwork.biz with the following warning about doing business with them:
Warning! :If you are considering investing in this "business opportunity", be aware that it is highly improbable that you will earn an adequate income. If you proceed with this company you have been warned by those that know and have lost tens of thousands of dollars by trusting them and their "agent approach.”
The suit alleged that White registered the web site in bad faith in an effort to profit from his use of CAN’s trademark. The court found that his site was simply meant as a tool to gripe about CAN and was not developed for monetary gain or to steal customers. Thus, the judge ruled that CAN’s claims were unfounded and that they had brought the suit in an oppressive manner and therefore ordered them to pay for White’s legal fees which totaled $23,000.
In lieu of bringing a lawsuit in federal court, trademark owners can opt to use the Uniform Domain Name Dispute Resolution Policy ("UDRP"). The UDRP is an online dispute resolution option administered by Internet Corporation for Assigned Name and Number ("ICANN"). A UDRP proceeding can be resolved faster and at less expense than an ACPA lawsuit; however, remedy options are limited to cancellation or transfer of the domain name.
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