IV. Anticybersquatting Consumer Protection Act

Like the UDRP, the Anticybersquatting Consumer Protection Act (“ACPA”) gives a trademark owner a mechanism by which to protect and enforce its trademark rights on the Internet. Unlike the UDRP, however, the ACPA is not a policy enforced through a contractual arrangement. Instead, it is a U.S. federal law, the violation of which can impose severe consequences on one who violates the law.

A. Elements Of A Claim Under The ACPA

The ACPA applies to all marks that are protected under Section 43 of the Lanham Act, which includes both registered and unregistered trademarks. The ACPA distinguishes the between protection that is available for distinctive marks and famous marks. If the mark is distinctive, the plaintiff must prove that the person (1) has a bad faith intent to profit from the mark, (2) and either “registers, traffics in, or uses” a domain name that is identical or confusingly similar to that mark. If the mark is famous, the plaintiff must prove that the person (1) has a bad faith intent to profit from the mark, and (2) either “registers, traffics in, or uses” a domain name that is either identical or confusingly similar to that mark, or is dilutive of that mark.

1. Evidence Of Bad Faith Intent To Profit From A Mark Under The ACPA

The ACPA identifies are nine nonexclusive factors which a court can consider in determining whether there exists a bad faith intent, including:

(1) the trademark or other intellectual property rights of the person in the domain name;

(2) the extent to which the domain name consists of the legal name or other name commonly used to identify the person;

(3) the person prior use of the domain in connection with the bona fide offering of any goods or services;

(4) the person’s bona fide noncommercial or fair use of the mark in a site accessible under the domain name;

(5) 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;

(6) the person’s offer to transfer, sell, or otherwise assign the domain 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;

(7) 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;

(8) the person’s registration or acquisition of multiple domain names which the person knows are identical or confusingly similar to mark of other 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; and

(9) the extent to which the mark incorporated in the persons’ domain name registration is or is not distinctive and famous within the meaning of 15 U.S.C. § 1125(c) [the Trademark Dilution Act].

If the court determines, however, that the person believed and had reasonable grounds to believe that the use of the domain name was a fair use or otherwise lawful use, the court cannot find that there was a bad faith intent to profit from the mark.

B. Remedies

The ACPA entitles a successful plaintiff to temporary and permanent injunctive relief, lost profits, actual damages, costs of court, and attorney’s fees. In addition, if the mark at issue is registered with the U.S. Patent & Trademark Office, the plaintiff may also be entitled to treble damages. Alternatively, instead of going to the expense of proving actual damages, a plaintiff may choose at any time before final judgment in rendered by the court to recover statutory damages of between $1,000 and $100,000, as the court considers just. The option of choosing statutory damages applies only to cases where the domain name was registered after the November 29, 1999 effective date of the ACPA. Finally, the remedies available to a plaintiff under the ACPA are in addition to any remedies that may otherwise be available to the plaintiff.