Professional Documents
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Overview
7. Registrants providing misleading false contact information when applying for registration of the domain name;
9. Extent to which the mark in the domain is distinctive have been a defendant under 15 U.S.C. 1125(d)(1);
or famous.[11]
or (b) through due diligence was not able to nd a person who would have been a defendant under 15 U.S.C.
1125(d)(1) by sending a notice of the alleged violation
The ACPA does not prevent the fair use of trademarks
and publishing notice of the action.[20] This provision is
or any use protected by the First Amendment, which
rarely used, however, because many trademark owners
includes gripe sites.[12] In Mayower Transit, L.L.C. v.
can achieve the same results through a Uniform Domain
Prince, 314 F. Supp. 2d 362 (D.N.J 2004), the court
Name Dispute Resolution Policy (UDRP) proceeding.
found that the rst two prongs of Mayowers ACPA
claim were easily met because (1) their registered trademark was distinctive and (2) Defendants mayowervanline.com was confusingly similar to Plaintis 3 ACPA v. UDRP
Mayower trademark.[13] However, when the court was
examining the third prong of Plaintis ACPA claim, Instead of suing in federal court under the ACPA, a tradewhether Defendant registered its domain name with the mark owner can choose to pursue an administrative probad faith intent to prot from Plainti, the court found ceeding under ICANNs Uniform Domain Name Dispute
Defendant had a bona de noncommercial use of the Resolution Policy (UDRP). The UDRP allows a trademark, therefore, the ACPA claim failed.[14] Defendants mark owner to challenge domain name registrations in
motive for registering the disputed domain names was to expedited administrative proceedings.[3]
express his customer dissatisfaction through the medium
A UDRP proceeding can be faster and cheaper for tradeof the Internet.[15]
mark owners than an ACPA lawsuit.[3] Also, UDRP outThe domain name registrar or registry or other domain comes tend to be pro-plainti because many UDRP arname authority is not liable for injunctive or mone- bitrators are trademark lawyers.[3] However, some tradetary relief except in the case of bad faith or reckless mark owners prefer to bring ACPA claims because they
disregard.[16]
oer more remedies than the cancellation or transfer
While 1125 protects trademark owners, 15 U.S.C. of the domain name (the only remedies available under
[3]
1129 protects any living person from having their per- UDRP proceedings) and a court ruling can lead to a
[3]
sonal name included in a domain name, but only when nal resolution of the matter. Also, a suit under the
ACPA may deter future cybersquatters more eectively
the domain name is registered for protable resale.[17]
than a UDRP proceeding.[3]
The Ninth Circuit Court of Appeals caused a stir in 2013
when it held, in Petroliam Nasional Berhad (Petronas) v.
GoDaddy.com, 737 F.3d 546 (9th Cir. 2013), petition
for cert. led, 2014 WL 1510251 (U.S. Apr. 14, 2014), 4 Domaining and the ACPA
that there is no cause of action for contributory cybersquatting, i.e. secondary liability under the ACPA. It so While the ACPA contemplated the purchase of domain
held notwithstanding the extensive body of case law per- names for resale to trademark owners, it did not conmitting such liability where a registrar is shown to have template the more modern practice of domaining. Doacted outside the normal ministerial bounds of domain maining is the business of registering a domain name and
registration.[18] It also relied on Central Bank of Denver parking it or placing pay-per-click ads on it. Domainers
v. First Interstate Bank of Denver and premised on the rely on type-in trac, which is when Internet surfers type
Circuit Courts determination that the ACPA is not part in the domain name rather than using a search engine.[21]
of the Lanham Act and therefore not included in the rule Domainers can make a lot of money by buying and selling
permitting secondary liability for trademark infringement domain names.[21]
enunciated in Inwood Labs v. Ives Labs, 456 U.S. 844
Some domainers relied on domain tasting, which in(1982).[19]
volves placing pay-per-click ads on the domain for ve
days (or less) to determine whether the ads will make
more than the annual cost of the domain.[22] If the domain is dropped within the ve-day grace period, no
2 In rem Jurisdiction
fee is incurred.[22] An industry has grown up out of
with domainers taking part in these mass
The ACPA also provides that the trademark owner can this business[22]
This practice was largely eliminated by
registrations.
le an in rem action against the domain name in the juICANN
began raising fees to registrars with
2009,
when
dicial district where the domain name registrar, domain
[23]
excessive
domain
tasting.
name registry, or other domain name authority registered
or assigned the domain name is located if (1) the domain name violates any right of the trademark owner and
(2) the court nds that the owner (a) is not able to obtain in personam jurisdiction over the person who would
3
as an Internet registrar accredited by ICANN they could
register domain names on behalf of its customers and
it specialized in bulk registration.[25] Navigation Catalyst Systems, another defendant and a customer of Basic
Fusion, used their proprietary automated tool to nd
domain names that were not already registered and then
registered them using Basic Fusion.[25] Navigation used
the ve days following the registration (the add grace
period) to put advertisements on the websites making
money from the advertisements even when they dropped
the domain name registration before the ve-day window
closed.[26] Plainti Verizon argued that defendants registered 1,392 domain names that were confusingly similar to plaintis trademarks.[25] The Court found that defendants used the confusingly similar domain names with
a bad faith intent to prot.[27]
See also
Microsoft v. Shah
References
7.1
Text
7.2
Images
7.3
Content license