Making american trademark law the law of the internet. Cybersquatting also known as domain squatting, according to the united states federal law known as the anticybersquatting consumer protection act, is registering, trafficking in, or using an internet domain name with bad faith intent to profit from the goodwill of a trademark belonging to someone else. Under the newly enacted section 43d of the lanham act, trademark holders now have a cause of action against anyone who, with a bad faith intent to profit from the goodwill of anothers trademark, registers, traffics in, or uses a domain name that is identical to, or. A recent case1 from a federal court in kentucky shows why the anticybersquatting consumer protection act 15 u. The introduction of this act basically meant that those who have rights to trademarks also have rights to the associated domain name, so nobody besides coca cola can. The lanham act is a federal trademark law to provide for the registration of trademarks and to provide remedies for infringement of those marks, which requires proof that there is a likelihood of confusion between plaintiff and defendants marks. In response to the tremendous amount of litigation that occurred as a result of cybersquatting, the anticybersquatting consumer protection act acpa was passed in 1999. Anticybersquatting consumer protection act internet library.
Anticybersquatting consumer protection act listed as acpa. Jun, 2008 the anticybersquatting consumer protection act acpa applies to any person who registers, traffics in, or uses a domain name that is identical or confusingly similar to a distinctive mark, or. At about the same time, the anticybersquatting consumer protection act acpa, part of the trademark act under 15 usc 1125d, went into effect in the united states. On december 4 th the ninth circuit court of appeals issued a decision that will reverberate for years to come in cybersquatting cases brought under the anticybersquatting consumer protection act acpa. The court holds that the provisions of the anticybersquatting consumer protection act that permit a trademark holder to proceed with an in rem action against a domain name do not violate the due process clause of the united states constitution. Essentially, it illegalized the practice of buying another partys trademarked domain with bad faith intent to profit. The anticybersquatting consumer protection acts in rem provision. Violations of the anticybersquatting consumer protection act. Anticybersquatting consumer protection act law and legal.
Anticybersquatting consumer protection act acpa of 1999. Acpa abbreviation stands for anticybersquatting consumer protection act. The first was that the icann domain name dispute resolution process that had begun in 1998 was finalized. The anticybersquatting consumer protection act, report 106140, 106 th cong. The decision but because it is a magistrate ruling it is really. Beside the anticybersquatting consumer protection act, domain name disputes are typically resolved using the uniform domain name resolution policy udrp process developed by the internet corporation for assigned names and numbers icann. If someone has registered a domain name which is the same or confusingly similar to your trademark or business name, you may be able to have that domain name transferred to you under the uniform domainname dispute resolution policy udrp or under the anticybersquatting consumer protection act acpa. At about the same time, the anticybersquatting consumer protection act acpa, part of the trademark act under 15 usc 1125 d, went into effect in the united states. The anticybersquatting consumer protection act acpa applies to any person who registers, traffics in, or uses a domain name that is identical or. Cybersquatting is the attempt to profit by reserving and later reselling the domain name to the companies or individuals that have the trademarked right to the domain name.
The acpa, however, only applies to cases involving unauthorized use of protected trademarks with bad. In the case of erven warnink v townend the advocaat case, lord. List of anticybersquatting cases cases us encyclopedia. In november 1999, two big things happened in the domain name world. In 1999, the us congress passed the anticybersquatting consumer protection act acpa, allowing trade mark owners to obtain monetary damages and injunctive relief in a federal court when a third party with a bad faith intent to profit. See also the anticybersquatting consumer protection act, 15 u. The anticybersquatting consumer protection act of 1999 provides a range of factors which courts may consider to determine which party is entitled to an internet domain name claimed by a trademark holder on the one hand and a prior registrant of the same or. The courts in india have decided many cases related to cybersquatting. Our firm has filed many lawsuits in federal court under this statute, including cybersquatting in rem cases filed against the domain name itself when there was no jurisdiction over the international domain name registrant. This law provides that persons are liable for civil damages if they register, use.
The acpa allows a plaintiff to bring a cybersquatting case in federal court against a person that registers or uses a domain name in bad faith that is identical or confusingly similar to the trademark or the personal name of the plaintiff. The anticybersquatting consumer protection act establishes a cause of action for registering, trafficking, or using a domain name confusingly similar to, or dilutive of a trademark or personal name. Anticybersquatting piracy act acpa harvard university. See also the anticybersquatting consumer protection act, 15.
Ptab, patent and trademark lawsuits in us district courts. What is the abbreviation for anticybersquatting consumer protection act. Anticybersquatting consumer protection act internet. Magistrate judge theresa carroll buchanan granted plaintiff metropark usa a permanent injunction transferring ownership of defendant. Anticybersquatting consumer protection act how is anticybersquatting consumer protection act abbreviated. Whether the mark was registered under the act of march 3, 1881, or the act of february 20, 1905, or on the principal register. Statutory damages under the anticybersquatting consumer. The anticybersquatting consumer protection act colorado. This act governs trademark infringement through domain names on the internet. On november 29, 1999, the president signed the anticybersquatting consumer protection act the act, creating a new cause of action against cybersquatters. Anticybersquatting consumer protection act as of oct 26, 1999 passed the house with an amendment version. The law was designed to thwart cybersquatters who register internet domain names containing trademarks with no intention of.
Traverse legal, plc and the tenzer pllc in miami represent heron development corp. Congress cracked down on this problem in 1999 when it passed the anticybersquatting consumer protection act acpa, 15 u. B for purposes of paragraph 1, dilution by blurring is association arising from the similarity between a mark or trade name and a famous mark that impairs the distinctiveness of the famous mark. Jan 10, 2000 on november 29, 1999, the president signed the anticybersquatting consumer protection act the act, creating a new cause of action against cybersquatters. In deciding to apply the act to the facts of this case, the court noted that the act was passed specifically to provide courts with an alternative to stretching federal dilution law to apply to cybersquatting cases.
Cybersquatting refers to the registration of a domain name in which the person has no legitimate interest. The act thus provides for the payments of damages and attorneys fees in cases of wrongful site shutdowns. Dec 23, 2019 practices in which the anti cybersquatting consumer protection act is effectively used to accomplish the act of infringement on intellectual property it is intended to avoid are called reverse domain hijacking. The kishore lal filed a complaint under the consumer protection act, 1986. The anticybersquatting consumer protection acts in rem. Anticybersquatting consumer protection act defines cybersquatting as the unauthorized registration or use of trademarks as internet domain names, or. The anticybersquatting consumer protection act finding that cybersquatting results in consumer fraud and public confusion, impairs ecommerce, deprives legitimate trademark owners of revenues and goodwill, and places burdens on trademark owners,10 con. Trademark owners are facing a new form of piracy on the internet caused by acts of cybersquatting, which refers to the deliberate, badfaith, and abusive registration of internet domain names in violation of the rights of trademark owners. The anticybersquatting consumer protection act acpa, 15 u. The anticybersquatting consumer protection act september 1, 2015 june 1, 2010 by cinthia manzano for example, if a wellknown corporation had failed to register a domain name such as.
Anticybersquatting consumer protection act defines cybersquatting as the unauthorized registration or use of trademarks as internet domain names, or other identifiers of online locations. May 01, 2001 the anticybersquatting consumer protection act of 1999 provides a range of factors which courts may consider to determine which party is entitled to an internet domain name claimed by a trademark holder on the one hand and a prior registrant of the same or similar internet domain name on the other. Compensation towards mental agony, harassment, physical torture, pains, sufferings and monetary loss for the negligence of the authorities direction for removal of, and improvement in, the deficiencies, direction for payment of interest on the amount of reimbursement. If you cant reach an agreement for the sale of the domain with the squatter, you can contact lawyers to start a case file. Child internet protection act cipa 2001, requires public libraries and schools to use filtering software to block access to certain web content in order to receive public funds. The icann procedure doesnt require an attorney, so its faster and cheaper than using the acpa. The cybersquatter then offers to sell the domain to the person or company who owns a. This paper will look at the phenomenon of trademark infringement through cybersquatting and discuss how the anticybersquatting consumer protection act contributes to regulating cyberspacerelated trademark infringement. Jul 09, 2014 bad faith intent on part of seller of triathlon equipment to profit from triathlons trademarks supported triathlons cybersquatting claim under the anticybersquatting consumer protection act acpa, where seller had no intellectual property rights in the domain name, since it had not used the name in commerce prior to registration, it did. The anticybersquatting consumer protection act acpa. Cybersquatting is the act of purchasing a domain name that uses the names of. Anticybersquatting consumer protection act of 1999. Make sure you have control of your domain or prepare to pay the.
S can either sue under the provisions of the anticybersquatting consumer protection act acpa or use the internet corporation of assigned names and numbers icann, which is an arbitration system. Anticybersquatting consumer protection act wikipedia. The second method is the anticybersquatting consumer protection act acpa. While the courts declaration that the acpa does not provide a cause of action for contributory cybersquatting is important in itself, its dicta regarding the history of the acpa. Neon network then filed a declaratory judgment action in arizona asking the court to determine that it had not violated the anticybersquatting consumer protection act. Another amendment in 1999 saw the introduction of the anticybersquatting consumer protection act. Hatch, from the committee on the judiciary, submitted the following r e p o r t to accompany s. Because cybersquatting has led to so much litigation, congress enacted the anticybersquatting consumer protection act acpa, which amended the lanham actthe federal law protecting trademarks, discussed in chapter 14. Anticybersquatting consumer protection act cybertelecom. Practices in which the anti cybersquatting consumer protection act is effectively used to accomplish the act of infringement on intellectual property it is intended to avoid are called reverse domain hijacking. The acpa makes cybersquatting illegal when both of the following are true. Anticybersquatting consumer protection act cybertelecom acpa.
Anticybersquatting consumer protection act govinfo. The acpa gives a trademark holder the ability to bring a federal lawsuit against someone for cybersquatting. While the courts declaration that the acpa does not provide a cause of action for contributory cybersquatting is important in itself. The object of the act is to tackle the problem of cybersquatting. Cybersquatting and trademark infringement 2000 muruejl 26. Oct 08, 2008 cases also address a number of issues that arise under the anticybersquatting consumer protection act, including whether the domain owner acted with a bad faith intent to profit from his use of anothers mark in his domain name, and the applicability of the anticybersquatting consumer protection act to typo domains. District court for the eastern district of virginia found that computer seller violated the anticybersquatting consumer protection act of 1999. Sep 01, 2015 the anticybersquatting consumer protection act september 1, 2015 june 1, 2010 by cinthia manzano for example, if a wellknown corporation had failed to register a domain name such as. In both these processes, a trademark holder can hold a domain name which is made up, entirely or in part, of a trademark he owns transferred to him as use of his trademark without. The court determined that the acpa could be used prospectively to require transfer of a domain name that was registered in bad faith. Anticybersquatting consumer protection act of 1999 and the practice. Prior to the enactment of the anticybersquatting consumer protection act.
The united states was the first nation to pass anticybersquatting legislation. The anticybersquatting consumer protection act acpa prohibits cybersquatting. Ninth circuit says anticybersquatting act was separated at. Trademark cyberpiracy prevention act amends the trademark act of 1946 to make liable in a civil action by the owner of a trademark or service mark any person who, with a bad faith intent to profit from the mark, regardless of the parties goods or services, registers, traffics. B for purposes of paragraph 1, dilution by blurring is association arising from the similarity between a mark or trade name and a famous mark that impairs the distinctiveness of. False designations of origin, false descriptions, and dilution forbidden. Federal officials passed the godfather of domain dispute laws. Cases also address a number of issues that arise under the anticybersquatting consumer protection act, including whether the domain owner acted with a bad faith intent to profit from his use of anothers mark in his domain name, and the applicability of the anticybersquatting consumer protection act to typo domains. The acpa makes cybersquatting illegal when both of. The court shall remit statutory damages in any case in which an infringer believed.
Recent case in federal court shows inefficiencies of. Bad faith intent on part of seller of triathlon equipment to profit from triathlons trademarks supported triathlons cybersquatting claim under the anticybersquatting consumer protection act acpa, where seller had no intellectual property rights in the domain name, since it had not used the name in commerce prior to registration, it did. The anticybersquatting consumer protection act, or acpa, is a law passed in 1999 to prevent the infringement of a trademark related to an internet domain name or presence. What follows is a brief overview of this new law which, in addition to providing protection against the unauthorized registration of personal names as domain names, adds a new section. It first provides a summary critique of cases predating the recently enacted acpa. The amendments, passed into law by the anticybersquatting consumer protection act may prove to be of assistance to trademark owners who wish to recover domain names that have been. In the first appellate application of the new legislation, the second circuit applied the acpa to a case initially brought under the federal trademark dilution act. Entitled the anticybersquatting consumer protection act, the statute protects the domain names of trademark owners.
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