Anticybersquatting Consumer Protection Act - Overview of The ACPA

Overview of The ACPA

Under the ACPA, a trademark owner may bring a cause of action against a domain name registrant who (1) has a bad faith intent to profit from the mark and (2) registers, traffics in, or uses a domain name that is (a) identical or confusingly similar to a distinctive mark, (b) identical or confusingly similar to or dilutive of a famous mark, or (c) is a trademark protected by 18 U.S.C. § 706 (marks involving the Red Cross) or 36 U.S.C. § 220506 (marks relating to the “Olympics”).

A trademark is famous if the owner can prove that the mark “is widely recognized by the general consuming public of the United States as a designation of source of the goods or services of the mark's owner.”

“Trafficking” in the context of domain names includes, but is not limited to “sales, purchases, loans, pledges, licenses, exchanges of currency, and any other transfer for consideration or receipt in exchange for consideration.” The ACPA also requires that the mark be distinctive or famous at the time of registration.

In determining whether the domain name registrant has a bad faith intent to profit, a court may consider many factors, including nine that are outlined in the statute:

1. the registrant’s trademark or other intellectual property rights in the domain name;
2. whether the domain name contains the registrant’s legal or common name;
3. the registrant’s prior use of the domain name in connection with the bona fide offering of goods or services;
4. the registrant’s bona fide noncommercial or fair use of the mark in a site accessible by the domain name;
5. the registrant’s intent to divert customers from the mark owner’s online location that could harm the goodwill represented by the mark, for commercial gain or with the intent to tarnish or disparage the mark;
6. the registrant’s offer to transfer, sell, or otherwise assign the domain name to the mark owner or a third party for financial gain, without having used the mark in a legitimate site;
7. the registrant’s providing misleading false contact information when applying for registration of the domain name;
8. the registrant’s registration or acquisition of multiple domain names that are identical or confusingly similar to marks of others; and
9. the extent to which the mark in the domain is distinctive or famous.

The ACPA does not prevent the fair use of trademarks or any use protected by the First Amendment, which includes gripe sites. In Mayflower Transit, L.L.C. v. Prince, 314 F. Supp. 2d 362 (D.N.J 2004), the court found that the first two prongs of Mayflower's ACPA claim were easily met because (1) their registered trademark was distinctive and (2) Defendant’s “mayflowervanline.com” was confusingly similar to Plaintiff’s Mayflower trademark. However, when the court was examining the third prong of Plaintiff’s ACPA claim, whether Defendant registered its domain name with the bad faith intent to profit from Plaintiff, the court found Defendant had a bona fide noncommercial use of the mark, therefore, the ACPA claim failed. “Defendant’s motive for registering the disputed domain names was to express his customer dissatisfaction through the medium of the Internet.”

The domain name registrar or registry or other domain name authority is not liable for injunctive or monetary relief except in the case of bad faith or reckless disregard.

While § 1125 protects trademark owners, 15 U.S.C. § 1129 protects any living person from having their personal name included in a domain name, but only when the domain name is registered for profitable resale.