Date: Jan 10, 2000
On November 29, 1999, the President signed the Anti-Cybersquatting Consumer Protection Act ("the Act"), creating a new cause of action against
"cybersquatters." What follows is a brief overview of this new law which, in
addition to providing protection against the unauthorized registration of personal names as domain names, adds a new Section 43(d) to the Lanham Act, 15 U.S.C. Section 1125(d).
Identical or confusingly similar to a mark that was distinctive when the domain name was registered;
Identical, confusingly similar, or dilutive of a mark that was famous when the domain name was registered;
Infringes marks and names protected by statute
A. Factors evidencing bad faith include:
Registrant’s intent to divert customers;
Registrant’s offer to sell domain name(s);
Registrant’s warehousing of multiple domain names comprised of the trademarks of others;
Intent to tarnish or disparage a brand.
B. Factors evidencing a lack of bad faith include:
Registrant’s genuine prior use of the domain name;
Any trademark or other intellectual property rights in the domain name;
Whether the domain name is the legal name or commonly known name of the registrant;
Registrant’s valid non-commercial or fair use of the domain name.
Additional cause of action under Section 43(d) of the Lanham Act;
In rem against the domain name after exercising due diligence to locate the owner of the domain name.
U.S. Federal Civil Procedure rules applied to determine jurisdiction;
For in rem actions:
Actual damages and costs or statutory damages from $1,000 to $100,000 per infringing domain name, attorney’s fees and costs, recovery of the domain name, injunctive relief, defendant’s profits;
In rem actions: forfeiture, cancellation or transfer of domain name;
Reduced relief available for "in rem" and retroactive actions (domain names
registered/misappropriated prior to effective date of the act).
For more information on cybersquatting or other Internet related issues, please contact Sheila A. Millar at (202) 434-4143 or by e-mail at firstname.lastname@example.org