Anticybersquatting
Consumer Protection Act
The Anticybersquatting Consumer Protection Act (ACPA), 15 U.S.C. §
1125(d)(1)(A), reads:
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
inter-national 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.
B(ii) Bad faith intent described under sub-paragraph (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.
2(B) The actions under subparagraph (A)(ii) shall constitute service
of process.
2(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.
2(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.
2D(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.