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Anti Cybersquatter Protection Act

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Law

• The Anticybersquatter Protection Act (Nov. 29, 1999) codified at 15 U.S.C. § 1125.
  • S.Rep. No. 106-140, The Anticybersquatting Consumer Protection Act at 4 (1999).
  • House Report 106-412, 106 Cong. 1 Sess (1999), at 5-6.

Caselaw

Circuit Court Cases

• Bosley Medical Institute, Inc. v. Kremer, 403 F.3d 672 (9th Cir. 2005)
• Lamparello v. Falwell, No. 04-2011 (4th Cir. August 24, 2005)
  • Supreme Court declines Falwell Web appeal, MSNBC 4/18/2006
  • Jerry Falwell Critic Can Keep Domain Name, Appeals Court Says, CircleID 8/30/2005
  • Fallwell.com back in the hands of gripe site owner, Internet Cases 8/30/2005
• Coca-Cola v. Purdy, 382 F3d 774 (8th Cir. 2004)
  • at 778 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."
• Lucas Nursery & Landscaping v. Grosse, No. 02-1668, __ F.3d __ (6th Cir. Mar. 5, 2004)
  • “The first four factors are those that militate against a finding of bad faith by providing some reasonable basis for why a defendant might have registered the domain name of another mark holder. These factors focus on: whether the defendant has trademark or other rights in the domain name; the extent to which the domain name consists of the defendant’s legal name or other common name; any prior use of the domain name for the offering of goods and services; and the bona fide noncommercial use of the site.”)
  • "The paradigmatic harm that the ACPA was enacted to eradicate – the practice of cybersquatter's registering several hundred domain names in an effort to sell them to the legitimate owners of the mark – is simply not present in any of Grosse’s actions. In its report on the ACPA, the Senate Judiciary Committee distilled the crucial elements of bad faith to mean an “intent to trade on the goodwill of another’s mark.” S. R EP. N O. 106-140, at 9. See also Ford Motor Co. v. Catalan, 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.”)”).
  • “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.”
• Taubman Co. v. Webfeats, 319 F.3d 770 (6th Cir. 2003) (personal name case)
• PETA v. Doughney, No. CIV.A. 99-1336-A. (E.D.Va. Jun. 12, 2000), aff’d, 263 F.3d 359 (4th Cir. 2001)
  • PETA Peeved By Web Parody Canoe 6/28
• Virtual Works, Inc. v. Volkswagen of America, Inc., 238 F.3d 264 (4th Cir. 2001) plaintiff violated ACPA by registering "vw.net" and offering for sale to defendant)
• Sporty's Farm LLC v. Sportsman's Market, Inc., 202 F.3d 489 (2nd Cir), cert denied, 530 US 1262.
• Panavision v. Toeppen, 945 F.Supp. 1296 aff'd 141 F.3d 1316 (9th Cir. 1999)

District Court Cases

• Anlin Industries, Inc. v. Burgess, 1:05cv1317 DLB (EDCA March 5, 2007)
• HER, Inc. v. RE/MAX First Choice, LLC, 2:06-CV-492, __ FSupp 2d __ (SDOH Jan 5 2007) (where gripe site was in direct commercial competition with plaintiff, and gripe domain direct visitors to defendant's commercial site, gripe-fair-use exception did not apply)
• Silpada Designs, Inc. v O'Malley CA No 04-2303-CM (DKan 2006) (affirming statutory damages where domain name was registered after cease and desist letter was received)
• Harrison v. Microfinancial, Inc., 2005 WL 435255 (D.Mass., February 24, 2005)
• Ficker v. Touhy, 305 F.Supp.2d 569 (D.Md. 2004)
• Mayflower Transit v. Prince, 314 F. Supp.2d 362 (D.N.J. 2004)
• Ficker v. Tuohy, 305 F.Supp.2d 569, 572 (D. Md. 2004)
• Bosley Medical v. Kremer, 2004 WL 964163 (S.D. th Cal.)
• Toronto- Dominion Bank v. Karpachev, 188 F. Supp. 2d 110 (D. Mass. 2002)
  • "There, the district court granted Toronto-Dominion’s motion for summary judgment against the defendant, concluding that there was sufficient evidence to show that the defendant had acted in bad faith under the ACPA. The defendant, a disgruntled customer, registered sixteen domain names composed of various misspellings of the name tdwaterhouse.com. Id. at 111. On the web sites associated with these names, the defendant attacked Toronto-Dominion for “webfacism” and involvement with white collar crime, among other things. Id. at 112. The court concluded that the defendant had acted in bad faith, citing four factors: (1) his intention to divert customers from the “tdwaterhouse” web site by creating confusion as to its source or sponsorship; (2) the fact that he had registered sixteen domain names; (3) the fact that he offered no goods or services on the site; and (4) the fact that he had no intellectual property rights in the site."
  • registration of 16 gripe sites by defendant was noted by court as a significant element of defendant’s bad faith.
• Chatam International v. Bodum, Inc., 157 F.Supp. 549 (EDPa August 7, 2001): Plaintiff held a federal trademark for "Chambord" in relation to the sale of liqueur and food; defendant held a federal trademark for "Chambord" in relation to the sale of coffee makers. Defendant registered domain name chambord.com. Court held that under the ACPA defendant had not acted in bad faith.)
• E. and J. Gallo Winery v. Spider Webs Ltd., 129 F.Supp.2d 1033 (SD Tex. Jan. 24, 2001), aff'd, 286 F.3d 270 (5th Cir. 2002): Court ordered defendant to transfer "ernestandjuliogallo.com" to plaintiffs, noting that defendant had registered approximately 2000 other domain names including many famous companies and places. Attempts to ad non commercial fair use criticism is a mere ruse.)
• Strick Corp. v. Strickland, 162 F. Supp.2d 372 (E.D. Pa. 2001)
• Shields v. Zuccarini, No. CIV. A. 00-494, 89 F.Supp.2d 634, 638-39 (EDPa Mar. 27, 2000) (Joe Cartoon)
• Lucent Technologies v. Lucentsucks.com, 95 F. Supp.2d 528 (E.D. Va 2000)
• Porsche Cars North America, Inc., v. Spencer, No. Civ. S-00-471GEB PAN., 2000 WL 641209, 2 (E.D.Cal. May 18, 2000)
• Harrods Limited v. Sixty Internet Domain Names, 110 F.Supp. 2d 420 (EDVa 2000) : ACPA cause of action dismissed without prejudice for failure to allege bad-faith intent
• Bihari v. Gross , No. OO Civ. 1664 (SAS), 7 (SDNY Sept. 25, 2000)
• Bigstar Entertainment, Inc ., v. Next Big Star, Inc., No. 00 Civ. 0911 VM, 105 F.Supp.2d 185, 191 (SDNY April 17, 2000).
• Morrison & Foerster LLP, v. Brian Wick and American Distribution Systems, Inc., No. CIV.A.00-B-465., 94 F.Supp.2d 1125, 1133 (D.Co. April 19, 2000).
• AOL v Huang, 106 FSupp2d 848 (ED Va 2000) :  Case dismissed, including ACPA cause of action, for failure of court to have jurisdiction over defendants; mere registration of domain name with NSI a Virginia corporation was insufficient to haul defendant into Virginia court.
• Greenpoint Financial Corp. v. The Sperry & Hutchinson Company, 116 F.Supp.2d 405 (SDNY 2000) : Plaintiff's use of "Greenpoints" is merely geographically descriptive and had not taken on a secondary meaning.
• Northern Light Technology v. Northern Lights Club, 97 F Supp 2d 96 (D Mass 2000) : Regular changing of explanation of use of domain name on defendant's website was evidence of bad faith intent.
• Northland Ins. Cos. v. Blaylock, 115 F. Supp.2d 1108 (D. Minn. 2000)
• Cello Holdings v. Lawrence-Dahl Companies, 89 F. Supp.2d 464 (S.D.N.Y. 2000)
• Hasbro, Inc., v. Clue Computing, Inc., No. CIV. A. 97-10065-DPW, 66 F.Supp.2d 117, 130-32 (DMA Sept. 2, 1999).
  • Clue's account of the conflict, Hasbro, Inc. sues Clue® Computing, Inc. <www.clue.com/legal/>.
• Intermatic v. Toeppen, 947 F.Supp. 1227 (N.D. Ill. 1996)
• Bally Total Fitness Holding Corp. v. Faber, 29 F. Supp. 2d 1161 (C.D. Cal. 1998) (use of "Bally" in the metatags of a "Bally Sucks" consumer commentary website).

Cases :: In Rem Proceedings

• CNF Inc v THECNF.COM, No. C-05-04083 SC (NDCa Nov. 22, 2006) (in rem action denied where complaint was served on registrar and not owner)
• Agri-Supply Co., Inc. v. Agrisupply.com (EDVA 2006) (In Rem remedy 'shall be in addition to any other civil action or rememdy otherwise applicable' and the Lanham Act provides for the recovering of attorney's fees in exceptional cases)
• Yahoo! v. Yahooahtos.com and 1865 Other Domain Names, 1:05cv1441(JCC) (EDVA Aug 8, 2006) (constructive notice pursuant to 15 USC s 1125(d)(2)(A)(ii)(II)(bb) waived where defendant had actual notice)
• Continental Airlines, Inc. v. continentalairlines.com, 390 FSupp2d 501, 505 (EDVA 2005) ("It is well settled that ... waiver of the publication requirement is appropriate where the domain name registrant has actual notice of the action against his property.")
• Shri Ram Mission v Sahajmarq.org, 139 FSupp2d 721 (EDVA 2001) (in rem publication requirement discretion is over the form of the notice, not whether the notice may be waived).
• Cable News Netword LP LLLP v CNNews.com, 162 FSupp2d 484, 494 (EDVA 2001) (proof of receipt of these communications by the registrants is not required by ACPA)
• Bano Inverlat, SA v www.inverlat.com, 111 FSupp2d 521 (EDVA 2000) (in rem publication requirement is within a court's discretion)
• Harrods Limited v. Sixty Internet Domain Names, 110 F.Supp. 2d 420 (EDVa 2000) (notice by publication ws unnecessary to effect service of proess, because the record reflected that HBAL had received actual notice)

Papers

• Zohar Efroni, A Guidebook to Cypersquatting Litigation: The Practical Approach in a Post-Barcelona.com World, SSRN 3/25/2005
• Zohar Efroni, The Anticybersquatting Consumer Protection Act and the Uniform Dispute Resolution Policy: New Opportunities for International Forum Shopping?, SSRN 2/25/2005
• Catherine T. Struve & R. Polk Wagner, Realspace Sovereigns in Cyberspace: Problems with the Anticybersquatting Consumer Protection Act, 17 Berkeley Tech. L.J. 989 (Summer, 2002)
• Aaron L. Melville, New Cybersquatting Law Brings Mixed Reactions From Trademark Owners , 6 B.U.J. Sci. & Tech. L. 13 (June 1, 2000).
• Jeremy D. Mishkin, Master of Your Domain - An Overview of the Anticybersquatting Consumer Protection Act , 18-SPG Comm. Law. 3 (Spring 2000)
• Elizabeth Robinson Martin, Note, "Too Famous to Live Long!"  The Anticybersquatting Consumer Protection Act Sets its Sights to Eliminate Cybersquatter Opportunistic Claims on Domain Names , 31 St. Mary's L.J. 797 (2000).
• Sarah B. Deutsch, Squatting The Cybersquatters - The Anticybersquatting Consumer Protection Act Helps Fight Cyberpiracy of Brand Names , 4 No. 6 Elec. Banking L. & Com. Rep. 1 (Nov. 1999).
• AntiCybersquatting Consumer Protection Act: A Powerful Remedy In Domain Name Disputes? Or a Threat to Electronic Commerce ? By Serena C. Hunn Of Ford Marrin Esposito Witmeyer & Gleser, L.L.P.