| Our law firm receives a lot of calls from people and | | | | Because of this bad faith factor, it is important for all |
| companies who are being threatened with an | | | | domain name owners to check their domain |
| Anti-Cyber Squatting Consumer Protection Act claim | | | | registrations regularly in the Who's database to |
| because they registered a domain name identical or | | | | determine if their contact information is correct. |
| similar to a trademark held by someone else. | | | | If you should decide to file an ACPA lawsuit, you |
| Inevitably, we hear the words "Network Solutions | | | | have a variety of remedies which are available to |
| allowed me to register the domain, so there is no | | | | you under the act. The most important one is |
| way someone can say that I did anything wrong." | | | | potential forfeiture or cancellation of the domain |
| Of course, Network Solutions and the other | | | | name or transfer of the domain name to the plaintiff. |
| registrars do little to ensure that a person registering | | | | In lieu of actual damages, the plaintiff may elect |
| a domain has legal right to do so. In fact, about the | | | | statutory damages and has discretion to award |
| only thing registrars do is make each person who | | | | between $1,000 and $100,000 in damages for bad |
| purchases a domain affirm that they are not | | | | faith registration. Attorney's fees are also available |
| interfering with some else's legitimate trademark | | | | for a bad faith registration. Sometimes, the domain |
| rights. The fact that you are able to register a | | | | owner cannot be found or served with a Summons |
| domain doesn't mean that you won't get sued for | | | | and Complaint because they have provided false |
| having done so under federal law. | | | | information or are not located within the United |
| The ACPA is a federal law that took effect in | | | | States. In these instances, a trademark owner may |
| November 1999, in order to preclude bad faith | | | | bring in "In Rem" action against the domain name in |
| registration of domain names. This new domain name | | | | the judicial district in which the domain name registrar, |
| dispute law is intended to give trademark and service | | | | domain name registry or other domain name |
| mark owners legal remedies against defendants who | | | | authority that registered or assigned the domain |
| obtain domain names "in bad faith" that are identical | | | | name is located. Money damages are not available in |
| or confusingly similar to a trademark or service mark. | | | | an "In Rem" lawsuit. Typically, the trademark owner |
| In order to win a case of cyber squatting, plaintiff | | | | is more focused at having the domain name |
| must prove that defendant has a bad faith intent to | | | | transferred to them. |
| profit from the mark that is identical or confusingly | | | | One recent Sixth Circuit Court of Appeals case, |
| similar or dilutes plaintiff's mark. The key element is | | | | Interactive Products, Corporation v. A2Z Mobile |
| that plaintiff must prove that defendant has"bad faith | | | | Office, No. 01-3590 (6th Cir., April 10, 2003), was not |
| intent to profit from the mark." What this means is | | | | good news for trademark holders in our jurisdiction. |
| that if defendant merely registers the domain and | | | | The Court held that the "post-domain path of a URL |
| does nothing with it commercially, plaintiff will have a | | | | (the sub-file directory). . . does not typically signify |
| difficult if not impossible time proving bad faith. | | | | source (of goods or services). The post-domain path |
| Typically, intent to profit is shown by the use of the | | | | merely shows how the website's data is organized |
| domain as a commercial site which sells goods or | | | | within the host computer files." Accordingly, the Sixth |
| services. For an alleged domain violator who does not | | | | Circuit held that the presence of plaintiff's trademark |
| develop a website, bad faith intent to profit is often | | | | in the path of the domain name of a competitor was |
| shown when the defendant tries to sell the domain | | | | unlikely to cause consumer confusion. Interestingly, |
| name to the trademark holder. Any transfer of the | | | | the Court reached this result even though the |
| domain for consideration will typically satisfy the | | | | defendant, A2Z, was selling competing products. It |
| profit test. | | | | should be noted that the Court did not hold that |
| Another bad faith factor is if the registrant provides | | | | using some else's trademark in the top level domain, |
| false contact information to the registrar or fails to | | | | on the website itself or in the meta tags is exempt |
| maintain correct contact information moving forward. | | | | from ACPA liability. |