Our law firm receives many calls from individuals and businesses who are being threatened with an Anti-Cyber Squatting Consumer Protection Act claim because they registered a domain name identical or similar to someone else’s trademark. Inevitably, we hear the words “Network solutions allowed me to register the domain, so there is no way anyone can say that I did something wrong.”
Of course, Network Solutions and the other registrars do little to ensure that a person registering a domain has the legal right to do so. In fact, all that registrars do is make every person who buys a domain claim that they are not interfering with someone else’s legitimate trademark rights. Just because you can register a domain doesn’t mean you won’t be sued for doing so under federal law.
The ACPA is a federal law that came into effect in November 1999, in order to exclude the registration of domain names in bad faith. This new domain name dispute law is intended to provide service mark and trademark owners with legal recourse against defendants who obtain domain names “in bad faith” that are identical or confusingly similar to a trademark or trademark. service. To win a cyber occupation case, the plaintiff must show that the defendant has bad faith intentions to profit from the trademark that is identical or confusingly similar or dilutes the plaintiff’s trademark. The key element is that the plaintiff must prove that the defendant has “a bad faith intention to profit from the trademark.” What this means is that if the defendant simply registers the domain and does nothing commercially with it, the plaintiff will have difficulty, if not impossible, in proving bad faith. Usually, the intention to make a profit is shown by using the domain as a business site that sells goods or services. In the case of an alleged domain infringer who does not develop a website, bad faith of profit intent is often demonstrated when the defendant attempts to sell the domain name to the trademark owner. Any domain transfer for your consideration will generally satisfy the earnings test.
Another factor in bad faith is if the registrant provides false contact information to the registrar or does not maintain correct contact information in the future. Due to this bad faith factor, it is important that all domain name owners check their domain records regularly against the Who database to determine if their contact information is correct.
If you decide to file an ACPA lawsuit, you have a variety of remedies that are available to you under the law. The most important is the possible loss or cancellation of the domain name or the transfer of the domain name to the plaintiff. Instead of actual damages, the plaintiff may elect for statutory damages and has the discretion to award between $ 1,000 and $ 100,000 in damages for bad faith registration. Attorneys’ fees are also available for a bad faith record. Sometimes the domain owner cannot be found or served with a summons and complaint because they have provided false information or are not located within the United States. In these cases, the owner of a trademark can initiate an “In Rem” action against the domain name in the judicial district in which the domain name registrar, domain name registry or other naming authority is located. domain name that registered or assigned the domain name. Money damages are not available in an “In Rem” lawsuit. Typically, the trademark owner is more focused on having the domain name transferred to them.
A recent Sixth Circuit Court of Appeals case, Interactive Products, Corporation v. A2Z Mobile Office, No. 01-3590 (6th Cir., April 10, 2003), was not good news for trademark holders in our jurisdiction. The Court held that the “path after the domain of a URL (the subfile directory) … does not usually mean the source (of goods or services). The path after the domain simply shows how the website data is organized within from the host Computer Files. “Consequently, the Sixth Circuit held that the presence of the plaintiff’s trademark in the path of a competitor’s domain name was unlikely to cause consumer confusion. Interestingly, the Court reached this result despite the fact that the defendant, A2Z, was selling competing products. It should be noted that the Court did not hold that the use of someone else’s trademark in the top-level domain, on the website itself, or in the meta tags is exempt from ACPA liability.
Each ACPA case revolves around the particular facts presented. It should also be noted that the Interactive Products plaintiff did not submit any evidence that the presence of his trademark on the post-domain path caused real confusion or could cause confusion to the consumer. If such evidence existed and was presented, the result could have been different. The ACPA is an important weapon for trademark holders in protecting their intellectual property in the online world. If you do not protect your trademarks, you may lose the rights to those marks entirely. Also, if you don’t protect your brands, who will?