Are You The Master of Your Domain?

C. Protection for Individual Names

The ACPA also provides cybersquatting protection for the names of individuals in certain circumstances.

1. Elements of a Claim for Individual Name Cyberpiracy

Specifically, 15 U.S.C. § 1129 of the Act provides that any person who registers a domain name consisting of

(1) the name of another living person, or a name substantially and confusingly similar thereto;

(2) without that person’s consent; and

(3) with the specific intent to profit from the name by selling the domain name for financial gain to that person or any third party,

shall be liable in a civil action to the person whose name consists of the domain name. Section 1129 only prohibits the selling of the domain name itself; it does not prohibit a cybersquatter from using the individual’s name to profit by, for example, operating a gambling or pornographic website located at the subject domain name address. To stop such activities, an individual would be forced rely on other claims such as defamation or violation of rights of publicity, among others. If, however, the individual’s name is protected as a mark under federal trademark or unfair competition laws, i.e., Elvis Presley or Cindy Crawford, regardless of whether they are a “living person” as required by § 1129, that person would have a remedy under the ACPA as discussed in sections IV(A)-(B) above.

2. Exception to Liability

There is an exception to liability for registration of an individual’s name as a domain name if the registrant registers a domain name consisting of a living person’s name, or a name substantially identical and confusingly similar thereto, if

(1) the name is used in, affiliated with, or related to a work of authorship protected by federal copyright law;

(2) the registrant is the copyright owner or licensee of the work;

(3) the registrant intends to sell the domain name in conjunction with the lawful exploitation of the work; and

(4) the registration is not prohibited by a contract between the registrant and the named person.

The exception set forth above applies only to claims brought under § 1129, and does not limit protections afforded under the Trademark Act of 1946 or other provisions of federal or state law.

For example, assume that BMG Records (Britney Spears’ record label) owns the copyright in the sound recordings of the masters contained on the Britney Spears’ album “Oops…I Did It Again”, and that there exists no contractual provision between Spears and BMG prohibiting BMG from registering her name as a domain name. Section 1129 would not prohibit BMG from registering and selling the domain name www.britneyspears.com, as long as it was done “in conjunction with the lawful exploitation” of the album. If, however, Spears objected to BMG’s registration and sale of the domain name, she would be able to invoke other remedies available under the Trademark Act and other federal and state laws.

3. Remedies for Cyberpiracy of Individual Names

Under § 1129, a court is limited to awarding injunctive relief, including the forfeiture or cancellation of the domain name, or the transfer of the domain name to the plaintiff. Additionally, a court has discretion to award attorney’s fees and costs to the party prevailing in an action brought under § 1129.

D. In Rem Jurisdiction Available In Certain Cases

Recognizing that obtaining personal jurisdiction over a defendant in Japan, for example, would often be exceedingly difficult, and sometimes impossible, Congress wisely included a provision in the ACPA authorizing in rem jurisdiction (Latin for “jurisdiction over the thing”) in certain cases. In rem jurisdiction allows trademark owners to file suit against the domain name itself. In rem jurisdiction is available only when the court finds that the mark owner (1) is not able to obtain personal jurisdiction over the registrant of the domain, or (2) has exercised due diligence by following statutorily specified procedures but been unable to locate the registrant. In these limited circumstances, a lawsuit may be brought in the judicial district in which the domain name registrar that registered or assigned the domain name is located. In an in rem proceeding, a plaintiff’s remedies are limited to the forfeiture or cancellation of the domain, or transfer of the domain name to the owner of the mark.

V. Conclusion

The United States’ and international laws are struggling to keep up with the breakneck speed at which the Internet is forcing a rewrite of the legal landscape. The UDRP and the ACPA are critical first steps in providing trademark owners with a mechanism for enforcing their intellectual property rights online. Other laws on the horizon, such as the Uniform Computer Information Transactions Act, will undoubtedly have important ramifications on Internet intellectual property issues. Buckle down—it’s going to be a long, bumpy ride.

For further information regarding this subject, or if your rights as a trademark owner have been violated and you would like to discuss the options available to you to protect and enforce your trademark rights, please feel free to contact:

Henry J. Fasthoff, IV
Stumpf Craddock Massey & Pulman
1400 Post Oak Blvd., Suite 400Houston,
Texas 77056

713-871-0919 / 713-871-0408
hfasthoff@scmplaw.com
www.scmplaw.com