Federal Internet Law & Policy
An Educational Project
AntiCybersquatting Consumer Protection Act
Elements of Cause of Action
In order for a trademark owner to bring a claim under the ACPA, the trademark owner must establish:
[15 USC § 1125(d)(I)(A)] [DSPT p 7 9th Cir 2010] [Bavaro Palace 256 11th Cir 2006] [Bosley 680 9th Cir 2005] [DaimlerChrysler 204 6th Cir 2004] [Shields 482-84 3d Cir 2001] [Career Agents Network Slip p. 7 EDMI 2010] [Rearden NDCA 2010] [Anlin slip 9 DCCA 07]
15 USC § 1125(d) (2009) Cyberpiracy prevention
(1) (A) A person shall be liable in a civil action by the owner of a mark, including a personal name which is protected as a mark under this section, if, without regard to the goods or services of the parties, that person-
(i) has a bad faith intent to profit from that mark, including a personal name which is protected as a mark under this section; and
(ii) registers, traffics in, or uses a domain name that-
(I) in the case of a mark that is distinctive at the time of registration of the domain name, is identical or confusingly similar to that mark;
(II) in the case of a famous mark that is famous at the time of registration of the domain name, is identical or confusingly similar to or dilutive of that mark; or
(III) is a trademark, word, or name protected by reason of section 706 of title 18 or section 220506 of title 36 .
The individual elements of the cause of action:
the trademark owner has a valid trademark entitled to protection
"A trademark need not be registered to be entitled to protection under [15 U.S.C. § 1125(d)]." DaimlerChrysler v. The Net Inc., 388 F.3d 201, 205 (6th Cir.2004) (citing Wal-Mart Stores, Inc. v. Samara Bros., 529 U.S. 205, 209, 120 S.Ct. 1339, 146 L.Ed.2d 182 (2000) ; Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 768, 112 S.Ct. 2753, 120 L.Ed.2d 615 (1992) ).
FEDERAL TREASURY ENTERPRISE SOJUZPLODOIMPORT v. SPI SPIRITS LIMITED, 2nd Cir. Aug. 5 2013 (no cause of action trademark infringement / cybersquatting where plaintiff is not the owner of the trademark).
Distinctive Or Famous Trademarks
The ACPA is not available for everyone – it is only available to owners of famous or distinctive trademarks. [Shields 482 3rd Cir 2001] [Golf Warehouse DKA 2001 (generic mark not protected under ACPA)] Prime Publishers, Inc. v. American-Republican, Inc., 160 F. Supp. 2d 266, 277 (D. Conn. 2001) ("In contrast to the Federal Trademark Dilution Act (`FTDA'), 15 U.S.C. § 1125(c), which protects marks that are both famous and distinctive from dilution, a mark needs only one of those qualities to merit protection under the ACPA.").
Factors that a Court will look at to determine whether a mark is famous include whether the mark is sufficiently distinctive as opposed to being generic, whether it has been in use for an extended period of time, the amount of the investment made in promoting the mark, the geographic region where the mark is used, and whether there are similar marks in use. In addition, courts will look to see whether the mark has been registered with the Patent and Trademark Office. The Court can recognize that a mark is distinctive without it being famous. Examples of marks that have been found to be famous or distinctive include Sporty’s Farm, Joe Cartoon, Porsche, and VW. However, CLUE, as in Hasbro’s detective board game, has been found to be neither famous or distinctive.
The ACPA looks at the potential impact of a domain name on the trademark:
"The question under the ACPA is not whether the domain names which Purdy registered are likely to be confused with a plaintiff's domain name, but whether they are identical or confusingly similar to a plaintiff's mark. See 15 U.S.C. § 1125(d)(1)(A)(ii). It is the challenged domain name and the plaintiff's mark which are to be compared. See 4 McCarthy § 25:78. The inquiry under the ACPA is thus narrower than the traditional multifactor likelihood of confusion test for trademark infringement. Northern Light Tech., Inc. v. Northern Lights Club, 236 F.3d 57, 66 (1st Cir.2001) (quotations omitted)" Coca-Cola Co. v. Purdy, 382 F.3d 774, 783 (8th Cir. 2004) ; see also N. Light Tech., Inc. v. N. Lights Club, 236 F.3d 57, 66 n.14 (1st Cir. 2001) ("[T]he likelihood of confusion test of trademark infringement is more comprehensive than the identical or confusingly similar requirement of ACPA, as it requires considering factors beyond the facial similarity of the two marks." (internal quotations omitted)). [Newport News 4th Cir. 2011]
The guidelines for consideration (these are court created guidelines not listed in the statute) "are
- a) strength of mark;
- b) degree of similarity between the marks;
- c) the proximity of the products;
- d) the likelihood that the senior user of mark will bridge the gap;
- e) evidence of actual confusion;
- f) the junior user's bad faith in adopting the mark;
- g) the quality of the junior user's product; and
- h) the sophistication of the relevant consumer group.”
[Greenpoint] There is some overlap between these factors and the ACPA bad faith factors.
"consumers are likely to be confused, misled or deceived into the mistaken belief that [the registrant's] websites are endorsed by [the trademark owner]" where the domain names "completely incorporated" the mark into its domain names. [Victoria's Cyber Secret 1347 SDFL 2001] [KSR X-Ray SDFL 2010]
Initial Interest Confusion: "The fact that confusion about a website's source or sponsorship could be resolved by visiting the website is not relevant to whether the domain name itself is identical or confusingly similar to a plaintiff's mark. An example of this distinction is shown in People for Ethical Treatment of Animals v. Doughney [ PETA ], 263 F.3d 359 (4th Cir.2001). There, the Fourth Circuit found peta.org confusingly similar to PETA's mark even though the attached website was a clear parody of the organization, for "an internet user would not realize that they were not on an official PETA web site until after they had used PETA's Mark to access the web page `www.peta.org.'" Id. at 366-67. See also Virtual Works, Inc. v. Volkswagen of Am., Inc., 238 F.3d 264, 266 (4th Cir.2001) (vw.net similar to Volkswagen's "VW" mark even though attached website advertised ISP); Sporty's Farm L.L.C. v. Sportsman's Market, Inc., 202 F.3d 489, 497-98 (2d Cir.2000) (sportys.com confusingly similar to aviation catalog company's "Sporty's" mark even though attached website advertised a Christmas tree farm)." [Coca Cola 783 8th Cir. 2004]
TLDs: "A domain name typically consists of a top level domain extension, such as .com, .org, or .net, and a second level domain name, such as pepsi in pepsi.com. See Virtual Works, 238 F.3d at 266 . Because all domain names end with a top level domain suffix like .com or .org, and domain registrars no longer enforce distinctions between the types of entities that may register names with these extensions, courts generally look to the second level domain name to determine whether it is identical or confusingly similar to a given mark. Id. at 271 (vw.net confusingly similar to "VW" mark); Sporty's Farm, 202 F.3d at 497-98 (sportys.com confusingly similar to "Sporty's" mark). See also S.Rep. No. 106-140, at *10 (ACPA's definition of "domain name" essentially reaches second level domain names)." [Coca Cola 783-84 8th Cir. 2004]; Omega S.A., 228 F. Supp. 2d at 126 n.36 ("When evaluating whether a domain name is confusingly similar to a trademark, a district court disregards the top-level domain name (e.g. `.com', `.org', `.net' etc.).").
In Greenpoint Financial Corp. v. S & H Greenpoints.com, a Brooklyn bank sought to challenge the use of the greenpoints.com domain name by the defendant. Defendant was known for its green stamps marketing program back in the 60s and 70s. Both companies had established intellectual property in the term “greenpoints” although defendant’s use came after plaintiff’s. So this was not exactly a great challenge for plaintiff. Both parties had interests in the term and the term itself was somewhat generic. For plaintiff, Greenpoint is simply the neighborhood in Brooklyn where the bank was located. Furthermore the Brooklyn phone book showed that 50 other companies had Greenpoint somewhere in their name. But looking specifically at the issue of the likeliness of confusion, the court concluded that the name was geographically descriptive and therefore not strong, the services provided by the companies is distinct, it is unlikely that the two companies will directly compete, and there was insufficient evidence of actual confusion. For these and other reasons, the Court denied Greenpoint Financial Corp. attempt to challenge S&H Greenpoints.com use of the domain name. [Greenpoint]
Registered, Used or Trafficed In
Derived From: The AntiCybersquatting Consumer Protection Act, Report 106-140, 106 th Cong., 1 st Sess. Page 8 (Aug. 5, 1999) (Legislative History)
"The Committee intends the prohibited ''use'' of a domain name to describe the use of a domain name by the domain name registrant, with the bad-faith intent to profit from the goodwill of the mark of another. The concept of ''use'' does not extend to uses of the domain name made by those other than the domain name registrant, such as the person who includes the domain name as a hypertext link on a web page or as part of a directory of Internet addresses."
At least one court has concluded that the phrase "`traffics in' contemplates a direct transfer or receipt of ownership interest in a domain name to or from the defendant." Ford Motor Co., Inc. v. GreatDomains, 177 F. Supp. 2d 635, 644-45 (E.D. Mich. 2001)
Verizon California 1095 CDCA 2008 (refusing to distinguish between reserving and registering a domain name, where defendant would reserve a large number of domain names, use the domain names during the grace period, but would not always register the domain name at the end of the grade period - noting that even if this does not constitute registration, it still constitutes "use")
Fare Deals Ltd. DMD 2001 (Defendant motion to dismiss granted where Plaintiff failed to allege any facts supporting claim that Defendant "trafficked in, used and/or licensed the domain name")
Timing of Bad Faith: "Evidence of bad faith may arise well after registration of the domain name." Re-registration constitutes "registration" under the ACPA.
- [Lahoti p 1202 9th Cir. 2009]
- [DSPT p 17 9th Cir. 2010]
- [Gharbi WDTX 2011 (where use was permissive at time of registration but became bad faith at termination of contract between domain name owner and trademark owner)]
- Ricks v. BMEzine.com, LLC, 727 F. Supp. 2d 936, 954 (D. Nev. 2010) ("The statute [§ 1125(d)(1)(A)] does not refer to an original registration or the registration that creates the domain name. . . . The Act provides no exception for re-registrations by the same owner. Any registration thus may bring the registrant within the statute's purview.")
- Ricks, 727 F. Supp. 2d at 954 ("If a domain name was registered in good faith originally, but thereafter re-registered in bad faith, the cybersquatter would escape liability, a result not supportable by the statutory scheme.")
- But compare
- Airfx.com v. AirFX LLC, No. CV 11-1064 FJM, 2012 WL 3638721, at *3-4 (D. Ariz. Aug. 24, 2012) (no bad faith where domain name registration precedes trademark registration)
- Vizer, 869 F. Supp. 2d at 81-82 (citing the GoPets decision for the proposition that re-registration of a domain name is not a "registration" under 15 U.S.C. § 1125(d)(1)
Third level domain names are not covered by the ACPA. "Under 15 U.S.C. § 1125(d)(1)(A), a party can be held liable if it registers, traffics in, or uses a "domain name" that is "identical or confusingly similar" to a distinctive mark, 15 U.S.C. § 1125(d)(1)(A)(ii)(I), with bad faith intent to profit from the mark, id. § 1125(d)(1)(A)(i). Under the statute, "[t]he term `domain name' means any alphanumeric designation which is registered with or assigned by any domain name registrar, domain name registry, or other domain name registration authority as part of an electronic address on the Internet." 15 U.S.C. § 1127. Defendants maintain that a third level domain-the level in question in this case-is outside the scope of the statute, because it is not "registered with or assigned by" a domain name registrar. The court agrees. The only part of a web address that must be registered is the second level domain. Establishing a third level domain does not require registration with or assignment by a domain name registration authority. " [Goforit 723 NDTX 2010]
Bad Faith Intent to Profit
The next element is a determination that the domain name owner acted in bad faith intent to profit
- [Southern Grouts 1246 11th Cir 2009 ("A defendant is liable only where a plaintiff can establish that the defendant had a "bad faith intent to profit. " 15 U.S.C. § 1125(d) (emphasis added). We cannot read the words "intent to profit" out of the statute. See Friends of Everglades v. S. Fla. Water Mgmt. Dist., 570 F.3d 1210 (11th Cir.2009) ("[W]e are not allowed to add or subtract words from a statute; we cannot rewrite it."); Nguyen v. United States, 556 F.3d 1244, 1256 (11th Cir.2009) ("We are not authorized to rewrite, revise, modify, or amend statutory language in the guise of interpreting it....")"]
- [Interstellar Starship 946]
- [Anlin Slip 11]
- Cintas Corp. 580 SDNY 2009 "Cintas alleges that Defendants are using the "CINTAS" marks for profit based on the fact that the www. cintasexposed.org website links to the UNITE HERE website, which in turn links to the UNITE HERE store where the union sells t-shirts, pins and other sundry items; Defendants' are attempting obtain a card-check/neutrality agreement; and Defendants' desire to gain pension and union dues from Cintas's employees. The twice-removed links to a union "store" is at least one bridge too far and insufficient to establish the use of the CINTAS mark for profit. See Utah Lighthouse Ministry v. Found., for Apologetic Info. & Research, 527 F.3d 1045, 1053 (10th Cir.2008) (holding that "the roundabout path to the commercial advertising of others is simply `too attenuated'") (quoting Bosley Med. Inst. v. Kremer, 403 F.3d 672, 679 (9th Cir.2005) ).  Second, an effort to obtain a cardcheck/neutrality agreement does not represent an attempt to profit. See Adcock v. Freightliner LLC, 550 F.3d 369, 374 (4th Cir.2008) (holding that concessions made by employer in a card-check/neutrality agreement do not represent a thing of monetary value to a union). Finally, for Defendants to obtain union dues and pension contributions from Cintas's employees, the employees must sign cards accepting UNITE HERE or the Teamsters as their union. This is too attenuated and independent from the accused conduct to support any inference that the use is an attempt to profit. See Playtex Prods., Inc. v. Procter & Gamble Co., No. 02 Civ. 8046(WHP), 2003 WL 21242769, at *5 (S.D.N.Y. May 28, 2003) (requiring a link between the conduct and damages)."
In order to facilitate court’s determinations of bad faith, Congress provided nine factors for consideration.\
Mitigation Factors (provide some reasonable basis for why a defendant might have registered the domain name of another mark holder
- H.R.Rep. No. 106-412, 1999 WL 970519, at *10 "The first four [factors] suggest circumstances that may tend to indicate an absence of bad-faith intent to profit from the goodwill of a mark, and the others suggest circumstances that may tend to indicate that such bad-faith intent exists."
- [Lucas Nursery 6th Cir. 2004]
- Coca Cola at 783 (8th Cir. 2004) ("The first four factors have been seen as reasons why a defendant might in good faith have registered a domain name incorporating someone else's mark, and the other five are indicia of bad faith intent.")
- [Healix SDTX 2008 ("The first four factors, subsections (I)-(IV), are indicative of good faith, while the last five, subsections (V)-(IX), are indicative of bad faith.")]
- [Eagle Hospital Physicians 1348 NDGA 2007 ("Some courts have described the first four factors noted by Congress as reasons why a defendant might have in good faith registered a domain name incorporating the mark of another party, while the last five factors are indicia of bad faith. See Coca-Cola Co. v. Purdy, 382 F.3d at 785 .")]]
1. the trademark or other intellectual property rights of the person, if any, in the domain name; [Chatam]
- Legislative History: "First, under paragraph (1)(B)(i), a court may consider whether
the domain name registrant has trademark or any other intellectual
property rights in the name. This factor recognizes, as does
trademark law in general, that there may be concurring uses of the
same name that are noninfringing, such as the use of the ''Delta'' mark for both air travel and sink faucets. Similarly, the registration
of the domain name ''deltaforce.com'' by a movie studio would
not tend to indicate a bad faith intent on the part of the registrant
to trade on Delta Airlines or Delta Faucets' trademarks. " [Senate Report]
- Rearden Sec. II (where defendant used name in domain name for website where it provides numerous services and where defendant applied for trademark in name, defendant had demonstrated some intellectual property rights in domain name)
- "This factor takes account of the fact that the same or similar marks can peacefully coexist in the marketplace without a likelihood of confusion when used in widely differing product or service lines or in remote geographic markets." 4 McCarthy on Trademarks and Unfair Competition § 25:78. - SunEarth, NDCA 2013.
- International intellectual property
- "The language of Factor (I) does not speak in terms of United States trademark rights, but refers generally to `intellectual property rights.' This encompasses intellectual property rights irrespective of their territorial origin." Harrods Ltd. v. Sixty Internet Domain Names, 302 F.3d 214, 234 (4th Cir. 2002).
- SunEarth, NDCA 2013 (recognizing that intellectual property rights of defendant to mark in China mitigated a claim of bad faith).
2. the extent to which the domain name consists of the legal name of the person or a name that is otherwise commonly used to identify that person (See also Personal Names);
- Legislative History: "Second, under paragraph (1)(B)(ii), a court may consider the extent
to which the domain name is the same as the registrant's own
legal name or a nickname by which that person is commonly identified.
This factor recognizes, again as does the concept of fair use
in trademark law, that a person should be able to be identified by
their own name, whether in their business or on a web site. Similarly,
a person may bear a legitimate nickname that is identical or
similar to a well-known trademark, such as in the well-publicized
case of the parents who registered the domain name ''pokey.org'' for
their young son who goes by that name, and these individuals
should not be deterred by this bill from using their name online.
This factor is not intended to suggest that domain name registrants
may evade the application of this act by merely adopting
Exxon, Ford, or other well-known marks as their nicknames. It
merely provides a court with the appropriate discretion to determine
whether or not the fact that a person bears a nickname similar
to a mark at issue is an indication of an absence of bad-faith
on the part of the registrant. " [Senate Report]
- Virtual Works, Inc. v. Volkswagen of America Inc., 238 F.3d 264, 269 (4th Cir. 2001) "domain names that are abbreviations of a company's formal name are quite common. To view the use of such names as tantamount to bad faith would chill Internet entrepreneurship with the prospect of endless litigation."
- Rearden, 683 F.3d Sec. II (recognizing "Rearden" as an legitimate abbreviation of "Rearden Commerce")
- Harrods, 302 F.3d at 234-35 (finding that this "factor also favored the Domain Names because Harrods BA is commonly known throughout Argentina and South America as `Harrods'").
- SunEarth, NDCA 2013 ("Defendants are known throughout China and Europe as "Sun Earth" and adopted this nickname in China in 1978. Thus, this factor favors Defendants.")
- Nissan (defendant Uzi Nissan successful as against plaintiff Nissan Motor Corp)
- PTO Guidance, Marks Composed, in Whole or In Part, of Domain Names: Surnames (1999)
3. the person's prior use, if any, of the domain name in connection with the bona fide offering of any goods or services;
- Legislative History: "Third, under paragraph (1)(B)(iii), a court may consider the domain name registrant's prior use, if any, of the domain name in
connection with the bona fide offering of goods or services. Again,
this factor recognizes that the legitimate use of the domain name
in online commerce may be a good indicator of the intent of the
person registering that name. Where the person has used the
domain name in commerce without creating a likelihood of confusion
as to the source or origin of the goods or services and has not otherwise attempted to use the name in order to profit from the goodwill
of the trademark owner's name, a court may look to this as an
indication of the absence of bad faith on the part of the registrant. " [Senate Report]
- "A defendant should have the burden of introducing evidence of lawful use to assist the court in evaluating this factor." H.R. Rep. No. 106-412, 11.
- Bosley Medical Institute, Inc. v. Kremer, 403 F.3d 672, 681 (9th Cir. 2005) (quoting H.R. Rep. No. 106-412 at 11 (1999) "This factor is not intended to create a loophole that otherwise might swallow the bill, however, by allowing a domain name registrant to evade application of the Act by merely putting up a noninfringing site under an infringing domain name."
- [Rearden Sec. II]
- Sporty's Farm 499 2nd Cir. 2000 (when the first use of a web site occurs after litigation is commenced, it undermines any claim that the domain name was registered in good faith
- Carnivale DDel 2010 (Defendant's use must predate the trademark registration of plaintiff - as opposed to predating the domain name registration)
- Intemat'l Bancorp LLC 486 EDVA 2002 ("concluding that third factor supported finding of bad faith where counterclaim plaintiff used mark since 1863, even though counterclaim plaintiff's U.S. trademark application remained pending, because no use by counterclaim defendant companies predated counterclaim plaintiff's use of the mark')
4. the person's bona fide noncommercial or fair use of the mark in a site accessible under the domain name; [Lucas 6th Cir 2004] [Gallo SDTX 2001] [Lampke]
- Legislative History: "Fourth, under paragraph (1)(B)(iv), a court may consider the person's
legitimate noncommercial or fair use of the mark in a web
site that is accessible under the domain name at issue. This factor
is intended to balance the interests of trademark owners with the
interests of those who would make lawful noncommercial or fair
uses of others' marks online, such as in comparative advertising,
comment, criticism, parody, news reporting, etc. Under the bill, the
use of a domain name for purposes of comparative advertising,
comment, criticism, parody, news reporting, etc., even where done
for profit, would not alone satisfy the bad-faith intent requirement.
The fact that a person may use a mark in a site in such a lawful
manner may be an appropriate indication that the person's registration
or use of the domain name lacked the required element
of bad-faith. This factor is not intended to create a loophole that
otherwise might swallow the bill, however, by allowing a domain name registrant to evade application of the Act by merely putting
up a noninfringing site under an infringing domain name. For example,
in the well know case of Panavision Int'l v. Toeppen, 141
F.3d 1316 (9th Cir. 1998), a well known cybersquatter had registered
a host of domain names mirroring famous trademarks, including
names for Panavision, Delta Airlines, Neiman Marcus,
Eddie Bauer, Lufthansa, and more than 100 other marks, and had
attempted to sell them to the mark owners for amounts in the
range of $10,000 to $15,000 each. His use of the ''panavision.com''
and ''panaflex.com'' domain names was seemingly more innocuous,
however, as they served as addresses for sites that merely displayed
pictures of Pana Illinois and the word ''Hello'' respectively.
This bill would not allow a person to evade the holding of that
case-which found that Mr. Toeppen had made a commercial use
of the Panavision marks and that such uses were, in fact, diluting
under the Federal Trademark Dilution Act-merely by posting noninfringing
uses of the trademark on a site accessible under the offending
domain name, as Mr. Toeppen did. Similarly, the bill does
not affect existing trademark law to the extent it has addressed the
interplay between first amendment protections and the rights of
trademark owners. Rather, the bill gives courts the flexibility to
weigh appropriate factors in determining whether the name was
registered or used in bad faith, and it recognizes that one such factor
may be the use the domain name registrant makes of the mark. " [Senate Report]
- "the use of a domain name for purposes of comparative advertising, comment, criticism, parody, news reporting, etc., even where done for profit, would not alone satisfy the bad-faith intent requirement . . . . This factor is not intended to create a loophole that otherwise might swallow the bill, however, by allowing a domain name registrant to evade application of the Act by merely putting up a noninfringing site under an infringing domain name." H.R. REP. NO. 106-412, at 11 (1999).
- Lamparello v. Falwell, 420 F.3d 309, 313 (4th Cir. 2005) ("Congress left little doubt that it did not intend for trademark laws to impinge the First Amendment rights of critics and commentators.");
- Coca Cola 778 8th Cir. 2004 "The ACPA was intended to balance the interests of trademark owners against the interests of those who would make fair uses of a mark online, such as for comment, criticism, parody, and news reporting. Id. at *8. Nevertheless, the use of a domain name "in connection with a site that makes a noncommercial or fair use of the mark does not necessarily mean that the domain name registrant lacked bad faith." Id. at *8-9. See also H.R.Rep. No. 106-412, at *11 (1999). To recognize such an exemption would "eviscerate the protections of the bill by suggesting a blueprint for cybersquatters who would simply create criticism sites in order to immunize themselves from liability despite their bad-faith intentions." S.Rep. No. 106-140, at *9."
- Sound Surgical MDFL 2010"A "bad faith intent to profit" may not be found "in any case in which the court determines that the person believed and had reasonable grounds to believe that the use of the domain name was a fair use or otherwise lawful." See 15 U.S.C. § 1125(d)(1)(B)(ii)."
- International Bancorp, 192 F.Supp.2d at 486 "[t]he purpose of this factor is to protect domain name registrants and users engaged in protected activities, such as political criticism."
- Harrods Ltd. v. Sixty Internet Domain Names, 157 F. Supp. 2d 658, 673 (E.D. Va. 2001) ("To ensure that speech protected by the First Amendment is not jeopardized by the ACPA, a court should consider a registrant's 'legitimate noncommercial or fair use of the mark in a website that is accessible under the domain name at issue'").
- Safe Harbor Provision
- Mayflower 369 DNJ 2004 " The purpose of this element is to protect domain name registrations and users engaged in protected activities such as critical commentary. Eurotech, Inc. v. Cosmos European Travels Aktiengesellschaft, 213 F.Supp.2d 612, 624-25 (E.D.Va.2002) . This factor should be examined in tandem with the "safe harbor" in the ACPA which provides that bad faith intent shall "not be found in any case in which the court determines that the person believed and had reasonable grounds to believe that the use of the domain name was a fair use or otherwise lawful." 15 U.S.C. § 1125(d )(1)(B)(ii)."
- [Pinehurst 429 MDNC 2003] "
"A parody must `convey two simultaneous-and contradictory-messages: that it is the original, but also that it is not the original and is instead a parody.'" PETA, 263 F.3d at 366 (quoting Cliffs Notes, Inc. v. Bantam Doubleday Dell Publ'g Group, Inc., 886 F.2d 490, 494 (2d Cir.1989) ). Defendants' domain names, however, do not simultaneously convey two contradictory messages. Looking at Defendants' domain names alone, there is no suggestion of a parody. "PinehurstResort.com" and "PinehurstResorts.com" simply copy Plaintiffs marks. The domain names convey the first message, that it is the original, but the second message, that it is not the original and that it is a parody, is discovered only by accessing the website and reading through the website's content. Wick, 94 F.Supp.2d at 1134-35 . "Thus, the messages are not conveyed simultaneously and do not constitute a parody." PETA, 263 F.3d at 367 ; see also Bucci 42 U.S.P.Q.2d at 1435 (rejecting parody defense because "[s]eeing or typing the [protected] mark and accessing the web site are two separate and nonsimultaneous activities"). "
- Gripe Sites
- Utah Lighthouse 1058 10th Cir. 2008 "a website that critiques a product and uses the product's trademark as the website's domain name may be a fair use"
- Lamparello 320 4th Cir. 2005 "
After close examination of the undisputed facts involved in this case, we can only conclude that Reverend Falwell cannot demonstrate that Lamparello "had a bad faith intent to profit from using the [www.fallwell.com] domain name." PETA, 263 F.3d at 367 . Lamparello clearly employed www.fallwell.com simply to criticize Reverend Falwell's views. Factor IV of the ACPA, 15 U.S.C. § 1125(d )(1)(B)(i)(IV), counsels against finding a bad faith intent to profit in such circumstances because "use of a domain name for purposes of ... comment, [and] criticism," H.R.Rep. No. 106-412, 1999 WL 970519, at *11, constitutes a "bona fide noncommercial or fair use" under the statute, 15 U.S.C. § 1125(d )(1)(B)(i)(IV). That Lamparello provided a link to an Amazon.com webpage selling a book he favored does not diminish the communicative function of his website. The use of a domain name to engage in criticism or commentary "even where done for profit" does not alone evidence a bad faith intent to profit, H.R.Rep. No. 106-412, 1999 WL 970519, at *11, and Lamparello did not even stand to gain financially from sales of the book at Amazon.com. Thus factor IV weighs heavily in favor of finding Lamparello lacked a bad faith intent to profit from the use of the domain name. "
- Lucas Nursery and Landscaping, Inc. 6th Cir.2004 (affirming dismissal of ACPA case where the defendant created website lucasnursery.com to share her story and complaints about Lucas Nursery , plaintiff's business)
- "The paradigmatic harm that the ACPA was enacted to eradicate-the practice of cybersquatters registering several hundred domain names in an effort to sell them to the legitimate owner of the mark-is simply not present [in a disgruntled customer's Web site.] One of the ACPA's main objectives is the protection of consumers from slick internet peddlers who trade on the names and reputations of established brands. The practice of informing fellow consumers of one's experience with a particular service provider is surely not inconsistent with this ideal. " p 810
- TMI, Inc. v. Maxwell, 368 F.3d 433, 439 (5th Cir.2004) (Gripe site where Deft registered domain name in order to provide information about bad experience with plaintiff's company. "As in Lucas Nursery , here "[t]he paradigmatic harm that the ACPA was enacted to eradicate - the practice of cybersquatters registering several hundred domain names in an effort to sell them to the legitimate owners of the mark - is simply not present." Id. at 810. Also here, as in Lucas Nursery , the site's purpose as a method to inform potential customers about a negative experience with the company is key.")
- Mayflower 369 - 371DNJ 2004 "
The totality of circumstances in this case demonstrate that Defendant's motive for registering the disputed domain names and posting his criticism was to express his customer dissatisfaction through the medium of the Internet. Defendant's "cyber-griping" is a far cry from the "squatting" activity made illegal by the ACPA, in which a person purchases numerous domain names of prominent companies cheaply with the purpose of selling the domain names at a higher price to those companies. Whereas Defendant's activity may be actionable under other statutory provisions, a question the Court need not decide today, it is clear that these actions do not fall within the ambit of the ACPA...
The ACPA's congressional record consistently signals the drafters' intention to target a narrow class of cyber-squatters consisting of those who have the bad faith intent to profit, and not to tread on the rights of those with any other motives. H.R. Rep. 106-412, 10; S. Rep. 106-40, 13; Ford Motor Co., 177 F. Supp.2d at 642 (the "ACPA was designed to target persons who commandeer a domain name for no reason other than to profit by extortion, yet bypass persons with legitimate interests in the domain name.") The bad-faith statutory factors were designed specifically to "balance the property interests of trademark owners with the legitimate interests of Internet users and others who seek to make lawful uses of others' marks, including for purposes such as comparative advertising, comment, criticism, parody, news reporting, fair use etc." H.R. Rep. 106-412, 10 (emphasis added). "[N]oncommercial uses of a mark, such as for comment, criticism, parody, news reporting, etc .... are beyond the scope of the bill's prohibitions." S. Rep. 106-40, 9 (emphasis added). "Under the bill, the use of a domain name for purposes of comparative advertising, comment, criticism, parody, news reporting, etc., even where done for profit, would not alone satisfy the bad-faith intent requirement." S.Rep. 106-140, 14; H.R. Rep. 106-412, 11 (emphasis added). "
- Rohr-Gurnee Motors, Inc. v. Patterson, 2004 WL 422525 (N.D.Ill. Feb. 9, 2004)
- Toronto-Dominion Bank v. Karpachev, 188 F.Supp.2d 110 (D.Mass.2002) (bad faith found; not a gripe site)
- Northland Ins. Cos. v. Blaylock, 115 F.Supp.2d 1108 (D.Minn.2000)
- Lucent Technologies, Inc. v. Lucentsucks.com, 95 F.Supp.2d 528, 535-36 (E.D.Va.2000) ("A successful showing that lucentsucks.com is effective parody and/or a cite for critical commentary would seriously undermine the requisite elements for [the ACPA].")
Bad Faith Factors (5-8) [Lucas Nursery 6th Cir. 2004 (finding no bad faith where none of the bad faith factors were present)] [Healix SDTX 2008 ("The first four factors, subsections (I)-(IV), are indicative of good faith, while the last five, subsections (V)-(IX), are indicative of bad faith.")]
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; [Toronto]
- Legislative History:
- "Fifth, under paragraph (1)(B)(v), a court may consider whether,
in registering or using the domain name, the registrant intended
to divert consumers away from the trademark owner's website to
a website that could harm the goodwill of the mark, either for purposes
of 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. This factor recognizes
that one of the main reasons cybersquatters use other people's trademarks is to divert Internet users to their own sites by
creating confusion as to the source, sponsorship, affiliation, or endorsement
of the site. This is done for a number of reasons, including
to pass off inferior goods under the name of a well-known
markholder, to defraud consumers into providing personally identifiable
information, such as credit card numbers, to attract eyeballs
to sites that price online advertising according to the number of
''hits'' the site receives, or even just to harm the value of the mark.
Under this provision, a court may give appropriate weight to evidence
that a domain name registrant intended to confuse or deceive
the public in this manner when making a determination of
bad-faith intent. " [Senate Report]
- Official Airline Guides, 6 F.3d at 1394. "an alleged infringer knowingly adopts a mark similar to another's, courts will presume an intent to deceive the public."
- Utah Lighthouse 1058 10th Cir 2008
can violate ACPA by "diverting consumers from the website of the trademark owner to the defendant's own website, where those consumers would purchase the defendant's products or services instead of the trademark owners."
- Fagnelli, WD PA Feb. 2011: Where Defendant (a plumbing company) registered fagnelli.com (a plumbing company) , accessing fagnelli.com redirected the visitor to Defendant's site, and "Defendant admits that it registered close to 100 other domain names containing in whole or in part the names of many other plumbing, heating, cooling, and electrical contractors in Western Pennsylvania."
- KSR X-Ray SDFL 2010: Where Def registered as a domain name KSRX-RAY.com which is a misspelling of Plaintiff's trademark "KSR X-RAY" and diverted traffic from KSRX-RAY.com to defendant's own website XraySUPERCENTER.COM, court found Def violated of ACPA
- New York New York Hotel & Casino DNV 2010 Defendant registration of newyorknewyork.com was in bad faith where it was used for a website which contained name of plaintiff's hotel, with a link to Expedia for hotel reservations in Las Vegas, from which defendant received a commission when reservations were made.
- Healix SDTX 2008 "
Although the document could arguably show an attempt to divert, to qualify as evidence of bad faith HIT must show that Murphy intended to divert consumers to a site that could harm the goodwill represented by HIT's mark "either for commercial gain or with the intent to tarnish or disparage the mark[.]" 15 U.S.C. § 1125(d)(1)(B)(i)(V). HIT has not presented evidence or even argument indicating that the Helix Health Web site (the "site" that the helixhealth.org domain name diverts consumers to) could harm the goodwill associated with HIT's mark for commercial gain. Cf. Sporty's Farm, 202 F.3d at 499 (evidence indicated that defendant used owner's mark in a domain name to prevent plaintiff from competing with the defendant). Moreover, although HIT has both alleged and asserted that the Helix Health Web site will tarnish its mark, it has not submitted any evidence indicating that the Helix Health Web site was intended to tarnish or disparage the HIT's mark. Cf. E. & J. Gallo Winery v. Spider Webs Ltd., 286 F.3d 270, 276 (5th Cir. 2002) (evidence showed that after defendant used owner's mark in its domain name, it opened a Web site critical of the owner and its business); PETA v. Doughney, 263 F.3d 359, 369 (4th Cir. 2001) (evidence showed that defendant used owner's mark to divert Internet users to a Web site that contained information antithetical to the owner's purpose and goodwill)."
- Confusion / No Way of Knowing Until Accessed Website
/ Initial Impression Confusion
- E&J Gallo Winery 1046 SDTX 2001 "Similarly, in this instance, an Internet user accessing the domain name "ERNESTANDJULIOGALLO.COM" would have no way of knowing that the web site is not connected to Gallo until after reaching it, where he would encounter anti-alcohol messages, anti-corporate sentiment, and disparaging remarks about Gallo itself."
- Taubman Co. v. Webfeats, 319 F.3d 770, 777-78 (6th Cir. 2003) (defendant's domain name "taubmansucks.com" not confusing because it plainly conveyed criticism of trademark owner)
- PETA 4th Cir 2001 (The court noted that "[u]ntil an internet user actually reached the `PETA.ORG' web site, where the screen read `People Eating Tasty Animals,' 1046 *1046 the user had no way of knowing that the `PETA.ORG' web site was not owned, sponsored or endorsed by PETA." Id. The court found the defendant in violation of the ACPA in part because "Defendant clearly intended to confuse, mislead and divert internet users into accessing his web site which contained information antithetical and therefore harmful to the goodwill represented by the PETA mark." Id. at 920.)
- Harrison DMass 2005 "So foreseeable was it that persons interested in contacting or learning about Leasecomm might be misled into thinking "leasecomm.org" was the company's own address that Harrison's use of it in the circumstances can only be understood as a purposeful effort to use the likely confusion as a way of getting his criticism about Leasecomm to an intended audience of the company's customers or potential customers."
- "Take, for example, the child who in a ``hunt-and-peck'' manner mistakenly types in the domain for ``dosney. com'', looking for the rich and family-friendly content of Disney's home page, only to wind up staring at a page hard-core pornography because someone snatched up the ``dosney'' domain in anticipation that just such a mistake would be made." [Senate Hearing 1999 (Sen. Hatch)]
- " Still other cybersquatters use marks, particularly those famous or well-known, as addresses for pornographic sites. Mobil Corporation reported to INTA that their MOBIL 1 trademark was used to direct people to a site containing adult material." [Senate Hearing 1999 (Statement of Anne Chasser, President, International Trademark Association)]
- "Exhibit 2, which I understand has been censored, is the Web site that appears at porschecar.com. It is a pornographic Web site. We have had many of our customers complain about that Web site and wonder why Porsche isn't doing something about it. And I will explain that we haven't been able to find the registrar of that domain name. " [Senate Hearing 1999 (Statement of Gregory D Phillips)]
- "Or imagine logging on to what you is your favorite online retailer only to find out later that the site was not that retailer at all, but rather a facade for an unscrupulous individual who is collecting your credit card and other personal information for unknown and possibly nefarious purposes " [Senate Hearing 1999 (Sen. Hatch)]
- "AT&T reports that a cybersquatter registered attphonecard.com and then solicited credit card information for those visiting the site." [Senate Hearing 1999 (Statement of Anne Chasser, President, International Trademark Association)]
- Sour Relationships
- Gharbi, WDTX March 2011 Bad Faith found where Defendant had franchise agreement with Plaintiff Century 21, contract between parties terminated, and Defendant continued to use domain names with Plaintiff's mark to redirect traffic to Defendant's website.
- Translucent Communications, DMD Feb. 2010 (bad faith found where former partner changed company's domain name's DNS registration so that the domain name now pointed to his new company's website, and provided to the domain name registrar false contact information, resulting in plaintiff being unable to access the DNS record and make any changes to it)
- Eagle Hospital Physicians 1350 NDGA 2007 (defendant was contractor to plaintiff, Pltf motion for SJ denied;
This case is unique among cybersquatting suits because at the time Defendants registered the numerous domain names at issue, there was an agreement among the parties that Defendants would develop and utilize web sites as a means of attracting clients to Plaintiff's business. At that time, therefore, there was no evidence of bad faith on the part of Defendants. For this reason, Defendants' actions do not fit the "paradigmatic harm" that the AntiCybersquatting Act was designed to protect against, i.e. "the practice of cybersquatters registering several hundred domain names in an effort to sell them to the legitimate owners of the mark." See Lucas Nursery & Landscaping, .Inc. v. Grosse, 359 F.3d 806, 810 (6th Cir.2004) . "
There is no question, however, that a dispute arose among the parties and that the true owner of the marks, Plaintiff, at some point demanded that Defendants return the domain names to Plaintiff. Defendants refused to do so because Defendant, Gerst believed that Plaintiff owed him money and unfairly terminated the Marketing and Sales Agreement. It is clear from Defendant Gerst's own testimony that he seeks more than merely the costs of developing and maintaining the web sites as compensation for turning over the domain names to Plaintiff. In essence, therefore, Defendant Gerst is holding the domain names hostage or as leverage to secure what he believes to be a more appropriate level of commissions out of Plaintiff than he has received thus far. This testimony would certainly indicate an intent to "profit" although not through means of the web sites themselves. See Coca-Cola Co. v. Purdy, 382 F.3d at 786 ("profit' includes an attempt to procure an `advantageous gain or return'"). The court finds there is evidence that Defendant Gerst intended to profit from the transfer of the domain name to Plaintiff, but there is no evidence that Defendants intended to "divert" customers. For this reason, the court DENIES Plaintiffs motion for summary judgment on the cybersquatting claim. "
- Northwest Airlines D MN 2004 No bad faith where Airlines sued affiliated credit union for ACPA
- Non Competing Sites
- Rearden Sec. II NDCa 2010 where litigants lines of business are vastly different, "there does not exist a strong likelihood of confusion amongst the relevant consuming public regarding the products and services offered by the parties."
- Yellowbrix p 582 NDCA 2001("Because Defendant is not a competitor of Plaintiff, it did not seek to "syphon off" Plaintiff's customers by adopting the "www.yellowbricksolutions.com" domain name. " )
- Hartog p 540 EDVA 2001 ("
Through SID, Bürgin runs an Internet services business that is entirely different from plaintiff's ski products business. Bürgin never had any intent to divert plaintiff's customers from plaintiff's own web site, and plaintiff does not contend that he did. Because Bürgin's business is so different from plaintiff's, the court has found no likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of either plaintiff's site or those operated by SID. ")
- Shields v. Zuccarini, 254 F.3d 476, 484 (3d Cir.2001) ("A reasonable interpretation of conduct covered by the phrase `confusingly similar' is the intentional registration of domain names that are misspellings of distinctive or famous names, causing an Internet user who makes a slight spelling or typing error to reach an unintended site.")
- Verizon California, 1095 CDCA 2008 (Defendant found to have bad faith where defendant allegedly reserved 1392 domain names that essentially constituted typos of Verizon trademarks, and during registration grace period displayed websites with advertisements, even though at end of grace period defendant may not have registered the domain name)
- Gripe Sites
- Lucas Nursery p 810 6th Cir 2004 Where trademark owner did not have an online location, creation of gripe site to complain about plaintiff "could not have been intended to divert customers from the mark owners' online location.
- "Grosse never offered to sell the site to Lucas Nursery"
- Coca Cola 787 8th Cir. 2004 "This distinguishes his case from Lucas Nursery, 359 F.3d 806, and TMI, Inc. v. Maxwell, 368 F.3d 433 (5th Cir.2004), each of which involved a disgruntled customer of the plaintiff company who had purchased a domain name identical to that company's mark in order to establish a website critical of its business practices. Neither customer in those cases had registered multiple infringing domain names or offered to transfer the names in exchange for valuable consideration. Neither had linked the names to websites about issues other than the company's business or to websites that solicited donations or sold merchandise. Although the defendants in Lucas Nursery and TMI registered domain names that were identical or confusingly similar to the plaintiff marks, neither exhibited a bad faith intent to profit from their marks. "
- TMI, Inc . v. Maxwell, 368 F.3d 433, 440 (5th Cir. 2004) ("Maxwell never offered to sell the domain name")
- Taubman Co. v. Webfeats, 319 F.3d 770, 778 (6th Cir.2003) (taubmansucks.com permissible because it removes any confusion as to source)
- Levinson DNJ 2010 Where defendant, allegedly a former attorney at plaintiff Levinson Axelrod (levinsonaxelrod.com), registered levinsonaxelrod.net and allegedly wrote material critical of plaintiff on that site, along with information that defendant had set up its own legal services and was allegedly soliciting clients, plaintiff has made out a claim for relief based on bad faith intent to divert customers, and defendant's motion to dismiss is denied.
- Career Agents Network Slip p 11, 14 EDMI 2010 Where defendant created a gripe site about trademark owner, but only posted defendant's complaint, did not include a link to defendant's website, did not include contact information, used a privacy service so that even the domain name registration would not reveal who defendant was, court found that it could not be found that defendant sought to divert traffic from plaintiff's site to defendant's site.
- Career Agents Network Slip p 12 EDMI 2010 Where domain name owner created a gripe site that complained about plaintiff, and domain name owner provided no means of learning who domain name owner was, it could not be said that domain name owner was still trying to divert business from plaintiff to domain name owner where the parties did not compete directly with each other in the marketplace.
- Some courts have found that merely the attempt to confuse potential visitors and divert traffic to your website could constitute a bad faith intent to profit. [Utah 1048-49 ("A defendant could also intend to profit by diverting customers from the website of the trademark owner to the defendant's own website, where those consumers would purchase the defendant's products or services instead of the trademark owner's.")] Other course have rejected arguments that gripe sites could be construed as using the "mark in commerce" or were created in order to gain an advantage in negotiations.
- Smith NDGa 2008 (granting domain name owners Motion for Summary Judgment, concluding that there was no likelihood of confusion between Smith's Wal-Mart gripe site, and Wal-Mart)
- Mayflower Transit, LLC v. Prince, 314 F. Supp.2d 362, 368-69 (D.N.J. 2004) ("Defendant did not make an `offer to sell' his domain name to Plaintiff")
6. the person's offer to transfer, sell, or otherwise assign the domain name 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; [VW] [Anlin Slip 11 (offering to sell five domains for $100,000)]
- Legislative History:
- "Sixth, under paragraph (1)(B)(vi), a court may consider a domain name registrant's offer to transfer, sell, or otherwise assign the domain name to the mark owner or any third party for substantial
consideration, where the registrant has not used, and did not have
any intent to use, the domain name in the bona fide offering of any
goods or services. This factor is consistent with the court cases, like
the Panavision case mentioned above, where courts have found a
defendant's offer to sell the domain name to the legitimate mark
owner as being indicative of the defendant's intent to trade on the
value of a trademark owner's marks by engaging in the business
of registering those marks and selling them to the rightful trademark owners. It does not suggest that a court should consider the
mere offer to sell a domain name to a mark owner or the failure
to use a name in the bona fide offering of goods or services is sufficient
to indicate bad faith. Indeed, there are cases in which a person
registers a name in anticipation of a business venture that simply
never pans out. And someone who has a legitimate registration
of a domain name that mirrors someone else's domain name, such
as a trademark owner that is a lawful concurrent user of that
name with another trademark owner, may, in fact, wish to sell that
name to the other trademark owner. This bill does not imply that
these facts are an indication of bad-faith. It merely provides a court
with the necessary discretion to recognize the evidence of bad-faith
when it is present. In practice, the offer to sell domain names for
exorbitant amounts to the rightful mark owner has been one of the
most common threads in abusive domain name registrations. " [Senate Report]
- "Exhibit 3 to my testimony is a Web site from bestdomains.com in Australia, where they sell domain names. It starts out, ``What's in a name? Ask Coca-Cola.'' The first domain name that is listed is 911porsche.com. ``Porsche. Do I need to say anything more?'' $60,911--that is what they are selling it for, almost as much as the price of a new Porsche." [Senate Hearing 1999 (Statement of Gregory D Phillips)]
- Bosley p 680 (9th Cir. 2005) cybersquatting "occurs when a person other than the trademark holder registers the domain name of a well known trademark and then attempts to profit from this by either ransoming the domain name back to the trademark holder or by using the domain name to divert business from the trademark holder to the domain name holder." (quoting DaimlerChrysler v. The Net Inc., 388 F.3d 201, 204 (6th Cir. 2004)).
- Coca-Cola Co. v. Purdy, 382 F.3d 774, 786 (8th Cir. 2004) (defendant "offered to stop using the Washington Post domain names in exchange for space on the editorial page in that newspaper" and "tr[ied] to force a settlement of this action by threatening to publish private emails of [Washingtonpost Newsweek Interactive Company] WPNI employees received at wpni.org")
- Ford Motor Co. v. Catalanotte, 342 F.3d 543, 549 (6th Cir. 2003) ("Registering a famous trademark as a domain name and then offering it for sale to the trademark owner is exactly the wrong Congress intended to remedy when it passed the ACPA.")
- People for the Ethical Treatment of Animals, 263 F.3d at 369 ("Doughney made statements on his web site and in the press recommending that PETA attempt to `settle' with him and `make him an offer'").
- Healix SDTX 2008 "As noted above, to constitute evidence of bad faith an offer to sell a domain name must also be "for financial gain without . . . having an intent to use the domain name in the bona fide offering of any goods or services[.]" 15 U.S.C. § 1125(d)(1)(B)(i)(VI). In his affidavit and deposition Murphy made it clear that his purpose in registering the Helix Health domain names was "[t]o start a business," specifically "the business of genetic counseling and the practice of medicine under the name Helix Health." HIT has not produced evidence that would indicate anything to the contrary. "
- TCPIP Holding, 2004 WL 1620950, at *5 (finding bad faith intent to profit where a defendant "submitted no less than three offers to sell back various packages of domain names (the vast majority of which [he] acquired after he received Plaintiff's cease and desist letter) for exorbitant demands of approximately half a million dollars").
- Refusal to Sell
- Southern Grouts 1246 11th Cir. 2009: Refusal to sell domain name of lapsed trademark in order to prevent others from using the domain name cannot constitute bad faith intent to profit.
- Mere Offer to Sell Does Not Equal Bad Faith - Price must be exorbitant
- "[A] mere offer to sell a domain name is not itself evidence of unlawful trafficking." Virtual Works, Inc., 238 F.3d at 270 (citing H.R. Conf. Rep. No. 106-464, at 111 (1999)).
- Sound Surgical Technologies MDFL 2010 "Although Rubinstein states that Plaintiff initiated the negotiations to purchase the domain names and Rubinstein at first refused to sell them, this evidence is not dispositive. Rubinstein refused to stop using the domain names and he demanded $200,000 for their transfer. As the practice of holding domain names for ransom with an intent to profit from selling the domain names to the mark owner is "the `paradigmatic harm' targeted by the [ACPA]," Southern Grouts & Mortars, Inc. v. 3M Co., 575 F.3d at 1246 (quoting Lucas Nursery and Landscaping v. Grosse, 359 F.3d 806, 810 (6th Cir. 2004)), Rubinstein's exorbitant demand supports a finding that he trafficked in the domain names with a bad faith intent to profit. See Ford Motor Co. v. Catalanotte, 342 F.3d 543, 549 (6th Cir. 2003) (defendant trafficked in the domain name fordworld.com when he offered to sell it to Ford). Although an offer to sell a domain name does not by itself evidence unlawful trafficking, see Virtual Works, Inc. v. Volkswagen of America, Inc., 238 F.3d at 270, an exorbitant offer (i.e., one far beyond any out-of-pocket-costs associated with registering and maintaining the domain names) by a licensee who had no right to use the domain names in the only way he had ever used them supports a finding of a bad faith intent to profit."
- Settling Disputes
- Settling Litigation: Note a trap within the bad faith elements. Reasonable people who find themselves in disputes frequently are able to come to reasonable settlement. Reasonable courts like to encourage this type of behavior. But ACPA could cause trouble for legitimate settlement of disputes. Say there is a situation where one individual legitimately holds the domain name and another legitimately wants the domain name. In order to resolve their dispute, the parties may wish to come to an amicable agreement. But it might be a mistake for the domain name holder to say, “This domain name is valuable to me but it is more valuable to you, so I will sell it to you for $5000.” This $5000 might appropriately go towards new branding including new stationary, new work with search engines, and new advertisements. If the owner of the domain name attempts to settle, the individual who want the domain name could hold it against the owner, arguing that the owner was attempting to speculate and profit from the domain name, which could amount to “bad faith.” This is exactly what happened to Doughney who sought to settle his case with PETA; there was no other way that the court could establish that his parody site was for profit. [Lucas 6th Cir. 2004] In other words, a reasonable domain name owners who attempt to settle disputes could have their good behavior backfire on them. [See also Northland]
- Lucas 6th Cir. 2004 (seemingly accepting that settling a case could be a bad faith attempt to profit, stating "
Lucas Nursery contends that the Fourth Circuit's decision in People For Ethical Treatment of Animals (PETA) v. Doughney, 263 F.3d 359 (4th Cir.2001), is applicable to the instant action. Although the defendant in Doughney did not make commercial use of his web site, the court concluded that he had, nonetheless, acted with a bad faith intent to profit. Doughney had "made statements on his website and in the press recommending that PETA attempt to `settle' with him and `make him an offer'" and that he had "registered other domain names that [were] identical or similar to the marks or names of other famous people and organizations." Id. at 369. Here, Grosse has engaged in no such offensive conduct."
- Rearden NDCa 2010 Sec. II Recognizing that attempts to settle legal conflicts is not tantamount to attempts to sell and extort a mark owner: "[Defendant] offered to "voluntarily maintain the nondirecting nature" of some of the contested domain names if [Plaintiff] withdrew its May 2007 trademark applications-applications that included the term "Rearden Commerce Email" and were filed subsequent to the initiation of litigation. Id. at 3 (emphasis added). Although [Defendant] sought value for these domain names, it did so in the context of litigation, and not extortion. This mitigates [Defendant]'s actions as it did not act as a traditional cybersquatter, where a third party intentionally registers domain names in order to hold the mark owner hostage. [Defendant] also made this offer after it ceased directing traffic from these sites. Although it has continued to retain control of the domains and could resume using them at any time, at oral argument, [Defendant] offered to unconditionally transfer the ReardenLLC domain names to [Plaintiff]. This action mitigated any attempt to improperly seek value for the domain names. Thus, this factor favors [Defendant]. " (emphasis added)
- Hartog p 540 EDVA 2001 ("
Plaintiff attaches great significance to Bürgin's e-mail to plaintiff's agent, Sawyer, expressing willingness for plaintiff to use a third level domain name including "swix". Plaintiff has characterized this as an offer to sell the domain name in exchange for the distributorship rights to Swix Sports USA's products. Bürgin did couple that offer with an inquiry about a Swiss franchise for plaintiff's products. However, the offer of the third level domain name was a separate proposal, which appears (as he testified) was made in an effort to reach an amicable resolution of the situation. Bürgin has consistently taken the position that he cannot sell the domain names because they are essential to his own business. He never made any offer to transfer, sell, or otherwise assign or to plaintiff or anyone else. His conduct is precisely opposite to that of the typical "cybersquatter" targeted by the ACPA. ")
- Contract Disputes w Web Designers
- DSPT p 11 9th Cir. 2010: Where defendant had registered the domain name as a contractor of plaintiff trademark owner, and where defendant was no longer employed by trademark owner and had made no use of the domain name, use of the domain name to gain leverage in negotiations with plaintiff over disputed debts constitutes a bad faith intent to profit. "[Defendant] testified that he would transfer the domain to [Plaintiff] after [Defendant] and [Plaintiff] were able to resolve the "monetary issues regarding [Defendant's] commissions." [Defendant]'s subsequent employer testified that [Defendant] told him that [Plaintiff] wanted the website returned to them, but [Defendant] was keeping it to use it as leverage in order to get the money he said [Plaintiff] owed him. This is evidence of an "intent to profit" under the Act."
- Airoom NDIll 2011: Under artful pleading doctrine, a contract dispute between parties cannot be cloaked as a trademark dispute. Where the relationship between the parties, and the use of the mark, is based on contract, and that contract has soured, the trademark claim is entirely derivative of the contract claim
given that "[b]ut for the dispute relating to the contract between the parties, there would not be allegations of trademark violations."
- Mayflower 369 DNJ 2004
"This Court does not believe that Plaintiff's vague allegations of Defendant's intent to use the website as a "bargaining chip" to exert settlement pressure on Mayflower constitutes an offer to sell. Once viewed in the context of Plaintiff's extreme dissatisfaction with his moving experience, and considered with the entirety of his statements on the website, Defendant's comments regarding making Mayflower "do something" about the dispute can be reasonably read as signifying his hopes that publication of criticism would induce changes in Plaintiff's future performance "
- Flow Control Industries WDWa 2003 (Def registration of plaintiff's trademark, and use of domain name to drive traffic to Def website, with the intent to get Pltf to negotiate Pltf's use of Def's trademarks in Pltf's metatags - was bad faith).
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;
- Particularly relevant to in rem actions where the defendant can not be identified or served.
- Legislative History:
- "Seventh, under paragraph (1)(B)(vii), a court may consider the
registrant's intentional provision of material and misleading false
contact information in an application for the domain name registration.
Falsification of contact information with the intent to evade
identification and service of process by trademark owners is also a
common thread in cases of cybersquatting. This factor recognizes
that fact, while still recognizing that there may be circumstances
in which the provision of false information may be due to other factors,
such as mistake or, as some have suggested in the case of political
dissidents, for purposes of anonymity. This bill balances
those factors by limiting consideration to the person's contact information,
and even then requiring that the provision of false information
be material and misleading. As with the other factors, this
factor is nonexclusive and a court is called upon to make a determination
based on the facts presented whether or not the provision
of false information does, in fact, indicate bad-faith. " [Senate Report]
- "Finally, some cybersquatters provide false and misleading contact information, making it impossible for the trademark owner to initiate legal action. We know, for example, Mr. Chairman, that Chanel, Inc. has written to you about the www.chanelparis.com domain name. For the benefit of all Senators, in that instance, a fictitious name and street address in Cairo, Egypt were given to the registrar. As a consequence of false information being given to the registration authority, many courts have been unable to provide assistance to trademark owners.
" [Senate Hearing 1999 (Statement of Anne Chasser, President, International Trademark Association)]
If you look at Exhibit 4, you will see the ``who is'' page for a company that operated a porn site, porsch.com, without the ``e.'' The registrant there was so brazen that he registered the domain name under ``Domain 4 sale & company.'' He also provided a fictitious address when he registered that domain name so that we could not find him to effect service of process in trying to get that domain name back." [Senate Hearing 1999 (Statement of Gregory D Phillips)]
- The use of a privacy service to cloak the domain name owners contact information in WHOIS does not constitute misleading information "The record indicates that Defendants provided accurate contact information, but that they utilized a privacy protection service so as to not make their contact information readily available to the general public. Use of the privacy protection service is not the same thing as providing false or misleading contact information.". [Career Agents Network Slip p 10]
- Hartog p 541 EDVA 2001 ( Innocent oversight in failure to update NSI records does not constitute bad faith)
8. the person's registration or acquisition of multiple domain names which the person knows are identical or confusingly similar to marks of others 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 of the parties; [Gallo] and
- Legislative History: "Eighth, under paragraph (1)(B)(viii), a court may consider the domain name registrant's acquisition of multiple domain names that
are identical to, confusingly similar to, or dilutive of others' marks.
This factor recognizes the increasingly common cybersquatting
practice known as ''warehousing'', in which a cybersquatter registers
multiple domain names-sometimes hundreds, even thousands- that mirror the trademarks of others. By sitting on these
marks and not making the first move to offer to sell them to the
mark owner, these cybersquatters have been largely successful in
evading the case law developed under the Federal Trademark Dilution
Act. This bill does not suggest that the mere registration of
multiple domain names is an indication of bad faith, but allows a
court to weigh the fact that a person has registered multiple domain names that infringe or dilute the trademarks of others as
part of its consideration of whether the requisite bad-faith intent
exists. " [Senate Report]
- Harrods Ltd. v. Sixty Internet Domain Names, 302 F.3d 214, 239 (4th Cir. 2002) "Congress warned that the ACPA `does not suggest that the mere registration of multiple domain names is an indication of bad faith.' This is presumably because many companies legitimately register many, even hundreds, of domain names consisting of various permutations of their own trademarks in combination with other words. `Just as they can have several telephone numbers, companies can register multiple domain names in order to maximize the chances that customers will find their web site.'"
- NUA Holdings DCO 2010 ("Lastly and perhaps most importantly, the paradigmatic harm that the ACPA was enacted to eradicate - the practice of cybersquatters registering several hundred domain names in an effort to sell them to the legitimate owners of the mark - is also not alleged to be present here.")
- Healix SDTX 2008 "
A person's mere registration of several domain names, without more, is not evidence of bad faith. See 15 U.S.C. § 1125(d)(1)(B)(i)(VIII). To qualify as evidence of bad faith the evidence must show that Murphy not only registered multiple domain names, but that he did so knowing that his domain names are identical or confusingly similar to the marks of other owners at the time of registration, that the other owners' marks are distinctive, and that those marks were distinctive at the time Murphy registered the several domain names. See 15 U.S.C. § 1125(d)(1)(B)(i)(VIII). "
- Rearden Sec. II finding factor favors defendant where all of multiple domain names registered incorporate some part of the defendant's company name
9. the extent to which the mark incorporated in the person's domain name registration is or is not distinctive and famous within the meaning of subsection (c)(1) of this section.
15 U.S.C. § 1125(d)(1)(B)(i).
Safe Harbor Provision: Fair Use or otherwise lawful
Bad faith intent described under subparagraph (A) shall not be found in any case in which the court determines that the person believed and had reasonable grounds to believe that the use of the domain name was a fair use or otherwise lawful.
15 U.S.C. § 1125(d)(1)(B)(ii). See also 15 U.S.C. § 1125(d)(1)(B)(i)(IV) (fair use).The safe harbor protects uses
such as parody and comment. [Mattel p 906-07 9th Cir 2002] and use by persons ignorant
of another’s superior right to the mark. [15 U.S.C. § 1114 (innocent infringement by publishers)] [15
U.S.C. § 1115 (innocent infringement as a defense to right to use a mark)] TCPIP Holding Co., Inc. v. Haar Commc'ns, Inc., 244 F.3d 88, 103 (2d Cir. 2001) (Describing fair use in infringement context as "one party's exclusive right to use a mark will not prevent others from using the word or image constituting the mark in good faith in its descriptive sense, and not as a trademark."); H.R. Rep. No. 106-412, at 11 (fair use factor balances interests of trademark holder with interests of those who make "non-commercial or fair uses of others' marks online, such as in comparative advertising, comment, criticism, parody, news reporting, etc.").
Safe Harbor does not protect individual who had registered domain name on behalf of trademark owner employer but who no longer was employed by owner. [DSPT p 10 9th Cir. 2010]
Courts "cautioned that "courts should `make use of this "reasonable belief" defense very sparingly and only in the most unusual cases.'" Lahoti v. VeriCheck, Inc., 586 F. 3d 1190, 1203 (9th Cir. 2009) (quoting Audi AG v. D'Amato, 469 F .3d 534, 549 (6th Cir. 2006)). SunEARTH, NDCA 2013. Otherwise, the defense would `undermine the rest of the statute' because `[a]ll but the most blatant cybersquatters will be able to put forth at least some lawful motives for their behavior.'" Id. (quoting Virtual Works, Inc. v. Volkswagen of Am., Inc., 238 F. 3d 264, 270 (4th Cir. 2001) (alterations in original))"; Trump, EDNY 2013.
Balancing the Factors:
"These factors are designed to balance the property interests of trademark owners with the legitimate interests of Internet users and others who seek to make lawful uses of others' marks. . ." H.R. Rep. No. 106-412, at 10 (1999) (Conf. Rep.); Clearly, 1264 (DCO 2009).
There is no particular manner in which a court has to consider these factors, nor is the court limited to or required to follow these factors – they are merely guidelines. 15 U.S.C. § 1125(d)(1)(B)(i). [DSPT p 10 9th Cir. 2010] [Lucas Nursery 811 6th Cir 2004] [Sporty's Farm 498 2nd Cir 2000] [E&J Gallo Winery 1044 SDTX 2001] According to the Legislative History,
Each of these factors reflect indicators that, in practice, commonly suggest bad-faith intent or a lack thereof in cybersquatting cases. The Committee understands that the presence or absence of any of these factors may not be determinative. For example, while noncommercial uses of a mark, such as for comment, criticism, parody, news reporting, etc. * * *, are beyond the scope of the bill's prohibitions, the fact that a person uses the domain name at issue in connection with a site that makes a noncommercial or fair use
of the mark does not necessarily mean that the domain name registrant lacked bad faith. To recognize such an exemption would eviscerate the protections of the bill by suggesting a blueprint for cybersquatters who would simply create criticism sites in order to immunize themselves from liability despite their bad-faith intentions. By the same token, the fact that a defendant provided erroneous information in applying for a domain name registration or registered multiple domain names that were identical to, confusingly similar to, or dilutive of distinctive marks does not necessarily show bad-faith. The Committee recognizes that such false information may be provided without a bad-faith intent to trade on the goodwill of another's mark, and that there are likely to be instances in which multiple domain name registrations are consistent with honest business practices. Similar caveats can be made for each of the eight balancing factors, which is why the list of factors is nonexclusive and nonexhaustive. Courts must ultimately weigh the facts of each case and make a determination based on those facts whether or not the defendant registered, trafficked in, or used the domain name with bad-faith intent to profit from the goodwill of the mark of another. [Senate Report p 8]
A court is left to weigh the different factors pursuant to the unique facts of individual cases. Different factors may have different strengths in different situations. [H.R.Rep. No. 106-412, at 10 (1999) (Conf.Rep.)
Sporty's Farm L.L.C., 202 F.3d at 499 . ("The most important grounds for our holding that Sporty's Farm acted with a bad faith intent, however, are the unique circumstances of this case, which do not fit neatly into the specific factors enumerated by Congress but may nevertheless be considered under the statute.")
- Southern Grouts 1244 11th Cir 2009 ("As other courts have observed, the statute clearly makes consideration of those factors permissive ("may consider" being the key language)")
- Green p 106 3rd Cir 2007 (applying these factors "is a holistic, not mechanical, exercise.")
- Harrods 234 4th Cir 2002 ("[T]here is no simple formula for evaluating and weighing these factors . . . courts do not simply count up which party has more factors in its favor after the evidence is in.")
- Virtual Works 269 4th Cir 2001 ("We need not ... march through the nine factors seriatim because the ACPA itself notes that use of the listed criteria is permissive.")
The list is not exhaustive and courts can consider unique circumstances.
- Newport News Holdings Corp. v. Virtual City Vision, Inc., 650 F.3d 423, 436 (4th Cir. 2011) cert. denied, 132 S. Ct. 575 (2011) (refusing to apply a "formalistic approach" to application of the enumerated factors and noting that doing so could "undermine the purpose of the ACPA, which seeks to prevent the bad-faith and abusive registration of distinctive marks as Internet domain names with the intent to profit from the goodwill associated with such marks" (quotation marks and citations omitted))
- Southern Grouts 1244 11th Cir 2009
- Sporty's Farm L.L.C., 202 F.3d at 499. 2nd Cir 2000 (
"[T]he factors are ... expressly described as indicia that `may' be considered along with other facts." "The most important grounds for our holding that Sporty's Farm acted with a bad faith intent, however, are the unique circumstances of this case, which do not fit neatly into the specific factors enumerated by Congress but may nevertheless be considered under the statute.")
- Interstellar Starship Servs., Ltd. v. Epix, Inc., 304 F.3d 936, 946-47 (9th Cir. 2002) ("the most important grounds for finding bad faith are `the unique circumstances of the case, which do not fit neatly into the specific factors enumerated by Congress.")
- Shields 484 3rd Cir. 2001
- "Even where both companies possess some rights to use of the domain names in different geographic areas, courts have found ACPA violations where the evidence establishes that one company intends to use the domain name to expand into the other's territory." SunEARTH, NDCA 2013 (citing Harrods, 302 F.3d at 241)
The factors are not meant to be applied mechanically, and then tallied up. "The role of the reviewing court is not simply to add factors and place them in particular categories, without making some sense of what motivates the conduct at issue. The factors are given to courts as a guide, not as a substitute for careful thinking about whether the conduct at issue is motivated by a bad faith intent to profit." [Lucas Nursery 811 6th Cir 2004] [NAU Holdings DCO 2010 ("The role of this Court is not simply to add factors and place them in categories, but to discern what motivates the alleged conduct.")]
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