Rafael Sosa’s Weblog

The key to understanding the Anti-Cybersquatting Piracy Act (ACPA) is to see it as an extension to the Lanham Act section 43(d), in its quest to determine bad faith, where it states:

(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 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–

Full section

They key phrase here is “bad faith“. See how in the ACPA, there are five determinants to bad faith:

• Intent to divert to a site that could harm the trademark owner’s goodwill – either for commercial gain or with intent to tarnish by creating likelihood of confusion as to source, sponsorship or affiliation, or endorsement of the site.
• Offer to sell the domain name without having used, or having an intent to use, it in the bona fide offering of goods or services, or a prior pattern of such conduct.
• Intentional provision of misleading contact information in the domain name registration application or the history of such conduct.
• Warehousing of multiple domain names known to be identical or confusingly similar to distinctive marks or dilutive of famous marks, without regard to the goods or services of the parties.
• The extent to which a mark is distinctive or famous.

To further understand the international similarities in the establishment of bad faith domain registration, the World Intellectual Property Organization (WIPO), through its Uniform Domain Name Dispute Resolution Policy (UDRP) sets the following guidelines:

• Circumstances indicating that the domain name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the domain name registrant’s out-of-pocket costs directly related to the domain name; or
• The domain name was registered in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the domain name registrant has engaged in a pattern of such conduct; or
• The domain name was registered primarily for the purpose of disrupting the business of a competitor; or
• By using the domain name, the domain name registrant intentionally attempted to attract for financial gain, Internet users to the registrant’s web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the registrant’s web site or location or of a product or service on the registrant’s web site or location.

Yesterday, the well known domain investor Rick Shwartz made the following cybersquatting assumption:

So will we see the anti-cybersquatting CADNA.ORG get swept into court for violating the mark of CADNA.COM?? Did they not do any research? How SLOPPY can this new association be and how IGNORANT can the companies putting their names behind them be?

So either CADNA needs to change its domain name or it is just as guilty as the people they are pointing fingers at and calling cybersquatters.

Determining if this is a violation of the ACPA is very simple. Can you determine the verdict? CADNA.com is a for-profit corporation selling replacement automotive parts. CADNA.org is a non-profit organization for domain names. Evidently, although they share the same name, CADNA.org is:

1. not benefiting from CADNA.com’s trademark
2. not doing business in the same industry
3. unlikely to confuse a customer seeking automotive parts
4. not operating for commercial gain

Thus, CADNA.org is not cybersquatting.

In summary, the ACPA is one of many mechanisms available to try and eliminate the practice of registering domain names for the purpose of hurting, taking advantage of, or profiting from an established mark. It’s that simple! Furthermore, the Lanham Act goes on to protect registrants by saying, “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.”