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Anticybersquatting Consumer Protection Act ("ACPA")

 
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Intellectual Property Litigation : Pretrial Practice
Business and Commercial Litigation in Federal Courts
 by Robert L. Haig, Esq. 
Price: $480.00



The ACPA 

The ACPA, which became law on November 29, 1999, is designed to "'protect consumers and American
businesses, . . . promote the growth of online commerce, and . . . provide clarity in the law for trademark owners by prohibiting 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 -- a practice commonly referred to as "cybersquatting."'" Sporty's Farm L.L.C. v. Sportsman's Market, Inc., 202 F.3d 489, 495 (2d Cir. 2000) (quoting S. Rep. No. 106-140, at 4). The ACPA, which amended 43 of the Lanham Act, provides as follows:(3) 

(d) 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, United States Code, or
Section 380 of Title 36, United States Code. 

(B)(i) In determining whether a person has a bad faith intent described under subparagraph (A), a court
may consider factors such as, but not limited to- 

(I) the trademark or other intellectual property rights of the person, if any, in the domain name; 

(II) 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; 

(III) the person's prior use, if any, of the domain name in connection with the bona fide offering of any
goods or services; 

(IV) the person's bona fide noncommercial or fair use of the mark in a site accessible under the domain
name; 

(V) 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; 

(VI) 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; 

(VII) 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; 

(VIII) 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; and 

(IX) 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 section 43. 

(ii) 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. 

(C) In any civil action involving the registration, trafficking, or use of a domain name under this paragraph, a court may order the forfeiture or  cancellation of the domain name or the transfer of the domain name to the owner of the mark. 

(D) A person shall be liable for using a domain name under subparagraph (A) only if that person is the
domain name registrant or that registrant's authorized licensee. 

(E) As used in this paragraph, the term "traffics in" refers to transactions that include, but are not limited
to, sales, purchases, loans, pledges, licenses, exchanges of currency, and any other transfer for
consideration or receipt in exchange for consideration. 
 




S.1948

Intellectual Property and Communications Omnibus Reform Act of 1999
(Introduced in the Senate)
 
 
 

TITLE III--TRADEMARK CYBERPIRACY PREVENTION

SEC. 3001. SHORT TITLE; REFERENCES.

    (a) SHORT TITLE- This title may be cited as the `Anticybersquatting Consumer Protection Act'.

    (b) REFERENCES TO THE TRADEMARK ACT OF 1946- Any reference in this title to the Trademark Act
    of 1946 shall be a reference to the Act entitled `An Act to provide for the registration and protection
    of trademarks used in commerce, to carry out the provisions of certain international conventions, and
    for other purposes', approved July 5, 1946 (15 U.S.C. 1051 et seq.).

SEC. 3002. CYBERPIRACY PREVENTION.

    (a) IN GENERAL- Section 43 of the Trademark Act of 1946 (15 U.S.C. 1125) is amended by inserting
    at the end the following:

    `(d)(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, United
          States Code, or section 220506 of title 36, United States Code.

    `(B)(i) In determining whether a person has a bad faith intent described under subparagraph (A), a
    court may consider factors such as, but not limited to--

       `(I) the trademark or other intellectual property rights of the person, if any, in the domain name;

       `(II) 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;

       `(III) the person's prior use, if any, of the domain name in connection with the bona fide offering
       of any goods or services;

       `(IV) the person's bona fide noncommercial or fair use of the mark in a site accessible under the
       domain name;

       `(V) 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;

       `(VI) 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;

       `(VII) 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;

       `(VIII) 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;
       and

       `(IX) 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 section 43.

    `(ii) 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.

    `(C) In any civil action involving the registration, trafficking, or use of a domain name under this
    paragraph, a court may order the forfeiture or cancellation of the domain name or the transfer of the
    domain name to the owner of the mark.

    `(D) A person shall be liable for using a domain name under subparagraph (A) only if that person is
    the domain name registrant or that registrant's authorized licensee.

    `(E) As used in this paragraph, the term `traffics in' refers to transactions that include, but are not
    limited to, sales, purchases, loans, pledges, licenses, exchanges of currency, and any other transfer
    for consideration or receipt in exchange for consideration.

    `(2)(A) The owner of a mark may file an in rem civil action against a domain name in the judicial
    district in which the domain name registrar, domain name registry, or other domain name authority
    that registered or assigned the domain name is located if--

       `(i) the domain name violates any right of the owner of a mark registered in the Patent and
       Trademark Office, or protected under subsection (a) or (c); and

       `(ii) the court finds that the owner--

          `(I) is not able to obtain in personam jurisdiction over a person who would have been a
          defendant in a civil action under paragraph (1); or

          `(II) through due diligence was not able to find a person who would have been a defendant
          in a civil action under paragraph (1) by--

              `(aa) sending a notice of the alleged violation and intent to proceed under this
              paragraph to the registrant of the domain name at the postal and e-mail address
              provided by the registrant to the registrar; and

              `(bb) publishing notice of the action as the court may direct promptly after filing the
              action.

    `(B) The actions under subparagraph (A)(ii) shall constitute service of process.

    `(C) In an in rem action under this paragraph, a domain name shall be deemed to have its situs in
    the judicial district in which--

       `(i) the domain name registrar, registry, or other domain name authority that registered or
       assigned the domain name is located; or

       `(ii) documents sufficient to establish control and authority regarding the disposition of the
       registration and use of the domain name are deposited with the court.

    `(D)(i) The remedies in an in rem action under this paragraph shall be limited to a court order for the
    forfeiture or cancellation of the domain name or the transfer of the domain name to the owner of the
    mark. Upon receipt of written notification of a filed, stamped copy of a complaint filed by the owner of
    a mark in a United States district court under this paragraph, the domain name registrar, domain
    name registry, or other domain name authority shall--

       `(I) expeditiously deposit with the court documents sufficient to establish the court's control and
       authority regarding the disposition of the registration and use of the domain name to the court;
       and

       `(II) not transfer, suspend, or otherwise modify the domain name during the pendency of the
       action, except upon order of the court.

    `(ii) The domain name registrar or registry or other domain name authority shall not be liable for
    injunctive or monetary relief under this paragraph except in the case of bad faith or reckless
    disregard, which includes a willful failure to comply with any such court order.

    `(3) The civil action established under paragraph (1) and the in rem action established under
    paragraph (2), and any remedy available under either such action, shall be in addition to any other
    civil action or remedy otherwise applicable.

    `(4) The in rem jurisdiction established under paragraph (2) shall be in addition to any other
    jurisdiction that otherwise exists, whether in rem or in personam.'.

    (b) CYBERPIRACY PROTECTIONS FOR INDIVIDUALS-

       (1) IN GENERAL-

          (A) CIVIL LIABILITY- Any person who registers a domain name that consists of the name of
          another living person, or a name substantially and confusingly similar thereto, without that
          person's consent, with the specific intent to profit from such name by selling the domain
          name for financial gain to that person or any third party, shall be liable in a civil action by
          such person.

          (B) EXCEPTION- A person who in good faith registers a domain name consisting of the name
          of another living person, or a name substantially and confusingly similar thereto, shall not be
          liable under this paragraph if such name is used in, affiliated with, or related to a work of
          authorship protected under title 17, United States Code, including a work made for hire as
          defined in section 101 of title 17, United States Code, and if the person registering the
          domain name is the copyright owner or licensee of the work, the person intends to sell the
          domain name in conjunction with the lawful exploitation of the work, and such registration is
          not prohibited by a contract between the registrant and the named person. The exception
          under this subparagraph shall apply only to a civil action brought under paragraph (1) and
          shall in no manner limit the protections afforded under the Trademark Act of 1946 (15 U.S.C.
          1051 et seq.) or other provision of Federal or State law.

       (2) REMEDIES- In any civil action brought under paragraph (1), a court may award injunctive
       relief, including the forfeiture or cancellation of the domain name or the transfer of the domain
       name to the plaintiff. The court may also, in its discretion, award costs and attorneys fees to the
       prevailing party.

       (3) DEFINITION- In this subsection, the term `domain name' has the meaning given that term in
       section 45 of the Trademark Act of 1946 (15 U.S.C. 1127).

       (4) EFFECTIVE DATE- This subsection shall apply to domain names registered on or after the
       date of the enactment of this Act.

SEC. 3003. DAMAGES AND REMEDIES.

    (a) REMEDIES IN CASES OF DOMAIN NAME PIRACY-

       (1) INJUNCTIONS- Section 34(a) of the Trademark Act of 1946 (15 U.S.C. 1116(a)) is amended in
       the first sentence by striking `(a) or (c)' and inserting `(a), (c), or (d)'.

       (2) DAMAGES- Section 35(a) of the Trademark Act of 1946 (15 U.S.C. 1117(a)) is amended in the
       first sentence by inserting `, (c), or (d)' after `section 43(a)'.

    (b) STATUTORY DAMAGES- Section 35 of the Trademark Act of 1946 (15 U.S.C. 1117) is amended by
    adding at the end the following:

    `(d) In a case involving a violation of section 43(d)(1), the plaintiff may elect, at any time before final
    judgment is rendered by the trial court, to recover, instead of actual damages and profits, an award
    of statutory damages in the amount of not less than $1,000 and not more than $100,000 per domain
    name, as the court considers just.

SEC. 3004. LIMITATION ON LIABILITY.

    Section 32(2) of the Trademark Act of 1946 (15 U.S.C. 1114) is amended--

       (1) in the matter preceding subparagraph (A) by striking `under section 43(a)' and inserting
       `under section 43(a) or (d)'; and

       (2) by redesignating subparagraph (D) as subparagraph (E) and inserting after subparagraph (C)
       the following:

       `(D)(i)(I) A domain name registrar, a domain name registry, or other domain name registration
       authority that takes any action described under clause (ii) affecting a domain name shall not be
       liable for monetary relief or, except as provided in subclause (II), for injunctive relief, to any
       person for such action, regardless of whether the domain name is finally determined to infringe
       or dilute the mark.

       `(II) A domain name registrar, domain name registry, or other domain name registration
       authority described in subclause (I) may be subject to injunctive relief only if such registrar,
       registry, or other registration authority has--

          `(aa) not expeditiously deposited with a court, in which an action has been filed regarding
          the disposition of the domain name, documents sufficient for the court to establish the
          court's control and authority regarding the disposition of the registration and use of the
          domain name;

          `(bb) transferred, suspended, or otherwise modified the domain name during the pendency
          of the action, except upon order of the court; or

          `(cc) willfully failed to comply with any such court order.

       `(ii) An action referred to under clause (i)(I) is any action of refusing to register, removing from
       registration, transferring, temporarily disabling, or permanently canceling a domain name--

          `(I) in compliance with a court order under section 43(d); or

          `(II) in the implementation of a reasonable policy by such registrar, registry, or authority
          prohibiting the registration of a domain name that is identical to, confusingly similar to, or
          dilutive of another's mark.

       `(iii) A domain name registrar, a domain name registry, or other domain name registration
       authority shall not be liable for damages under this section for the registration or maintenance of
       a domain name for another absent a showing of bad faith intent to profit from such registration
       or maintenance of the domain name.

       `(iv) If a registrar, registry, or other registration authority takes an action described under clause
       (ii) based on a knowing and material misrepresentation by any other person that a domain name
       is identical to, confusingly similar to, or dilutive of a mark, the person making the knowing and
       material misrepresentation shall be liable for any damages, including costs and attorney's fees,
       incurred by the domain name registrant as a result of such action. The court may also grant
       injunctive relief to the domain name registrant, including the reactivation of the domain name or
       the transfer of the domain name to the domain name registrant.

       `(v) A domain name registrant whose domain name has been suspended, disabled, or
       transferred under a policy described under clause (ii)(II) may, upon notice to the mark owner, file
       a civil action to establish that the registration or use of the domain name by such registrant is
       not unlawful under this Act. The court may grant injunctive relief to the domain name registrant,
       including the reactivation of the domain name or transfer of the domain name to the domain
       name registrant.'.

SEC. 3005. DEFINITIONS.

    Section 45 of the Trademark Act of 1946 (15 U.S.C. 1127) is amended by inserting after the
    undesignated paragraph defining the term `counterfeit' the following:

    `The 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.

    `The term `Internet' has the meaning given that term in section 230(f)(1) of the Communications Act
    of 1934 (47 U.S.C. 230(f)(1)).'.

SEC. 3006. STUDY ON ABUSIVE DOMAIN NAME REGISTRATIONS INVOLVING
PERSONAL NAMES.

    (a) IN GENERAL- Not later than 180 days after the date of the enactment of this Act, the Secretary of
    Commerce, in consultation with the Patent and Trademark Office and the Federal Election
    Commission, shall conduct a study and report to Congress with recommendations on guidelines and
    procedures for resolving disputes involving the registration or use by a person of a domain name that
    includes the personal name of another person, in whole or in part, or a name confusingly similar
    thereto, including consideration of and recommendations for--

       (1) protecting personal names from registration by another person as a second level domain
       name for purposes of selling or otherwise transferring such domain name to such other person or
       any third party for financial gain;

       (2) protecting individuals from bad faith uses of their personal names as second level domain
       names by others with malicious intent to harm the reputation of the individual or the goodwill
       associated with that individual's name;

       (3) protecting consumers from the registration and use of domain names that include personal
       names in the second level domain in manners which are intended or are likely to confuse or
       deceive the public as to the affiliation, connection, or association of the domain name registrant,
       or a site accessible under the domain name, with such other person, or as to the origin,
       sponsorship, or approval of the goods, services, or commercial activities of the domain name
       registrant;

       (4) protecting the public from registration of domain names that include the personal names of
       government officials, official candidates, and potential official candidates for Federal, State, or
       local political office in the United States, and the use of such domain names in a manner that
       disrupts the electoral process or the public's ability to access accurate and reliable information
       regarding such individuals;

       (5) existing remedies, whether under State law or otherwise, and the extent to which such
       remedies are sufficient to address the considerations described in paragraphs (1) through (4);
       and

       (6) the guidelines, procedures, and policies of the Internet Corporation for Assigned Names and
       Numbers and the extent to which they address the considerations described in paragraphs (1)
       through (4).

    (b) GUIDELINES AND PROCEDURES- The Secretary of Commerce shall, under its Memorandum of
    Understanding with the Internet Corporation for Assigned Names and Numbers, collaborate to
    develop guidelines and procedures for resolving disputes involving the registration or use by a person
    of a domain name that includes the personal name of another person, in whole or in part, or a name
    confusingly similar thereto.

SEC. 3007. HISTORIC PRESERVATION.

    Section 101(a)(1)(A) of the National Historic Preservation Act (16 U.S.C. 470a(a)(1)(A)) is amended
    by adding at the end the following: `Notwithstanding section 43(c) of the Act entitled `An Act to
    provide for the registration and protection of trademarks used in commerce, to carry out the
    provisions of certain international conventions, and for other purposes', approved July 5, 1946
    (commonly known as the `Trademark Act of 1946' (15 U.S.C. 1125(c))), buildings and structures on
    or eligible for inclusion on the National Register of Historic Places (either individually or as part of a
    historic district), or designated as an individual landmark or as a contributing building in a historic
    district by a unit of State or local government, may retain the name historically associated with the
    building or structure.'.

SEC. 3008. SAVINGS CLAUSE.
    Nothing in this title shall affect any defense available to a defendant under the Trademark Act of
    1946 (including any defense under section 43(c)(4) of such Act or relating to fair use) or a person's
    right of free speech or expression under the first amendment of the United States Constitution.

SEC. 3009. TECHNICAL AND CONFORMING AMENDMENTS.

    Chapter 85 of title 28, United States Code, is amended as follows:

       (1) Section 1338 of title 28, United States Codes, is amended--

          (A) in the section heading by striking `trade-marks' and inserting `trademarks';

          (B) in subsection (a) by striking `trade-marks' and inserting `trademarks'; and

          (C) in subsection (b) by striking `trade-mark' and inserting `trademark'.

       (2) The item relating to section 1338 in the table of sections for chapter 85 of title 28, United
       States Code, is amended by striking `trade-marks' and inserting `trademarks'.

SEC. 3010. EFFECTIVE DATE.

    Sections 3002(a), 3003, 3004, 3005, and 3008 of this title shall apply to all domain names registered
    before, on, or after the date of the enactment of this Act, except that damages under subsection (a)
    or (d) of section 35 of the Trademark Act of 1946 (15 U.S.C. 1117), as amended by section 3003 of
    this title, shall not be available with respect to the registration, trafficking, or use of a domain name
    that occurs before the date of the enactment of this Act.


 
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