 |
|
||
| Home | About Us | Contact Us | News | Web Hosting | Sell Domains | Search Domains |  |
||
 |
|||
|
“Bad Faith” And The Acpa - A Thumbnail Sketch”By Howard NeuThe ANTICYBERSQUATTING CONSUMER’S PROTECTION ACT was enacted into law for the primary purpose of preventing a person from registering a domain in “bad faith” or using that domain in “bad faith” after registration. It was intended to protect trademark holders from being extorted by cybersquatters who registered their trademark name and then either tried to sell it to the trademark holder, use it to compete with the trademark holder, or profited from the use of someone else’s trademark. The ACPA is enforceable in any United States District Court, provided that the court chosen by the Plaintiff Trademark holder has jurisdiction over the person or over the res (domain). To that end, it has been determined by the courts that if the registrant of the domain in question is unknown or cannot be served, the Plaintiff may obtain jurisdiction over the domain itself if the law suit is brought in the Judicial District in which the Registrar, the Registry, or other domain authority is located. Many law suits have been brought in the Eastern District of Virginia because that is where the DOTCOM Registry is located. Whether Plaintiff’s attorneys have done a better job for their clients in U.S. Federal Courts than in WIPO or NAF under the UDRP is up for conjecture, but Domainers lose more cases decided by U.S. Federal Judges than they do from decisions by WIPO or NAF arbitration panels. This is partly due to the fact that it is very expensive for Domainers to defend their domains in court as they MUST be represented by counsel and counsel must know the very exact and demanding rules required by the courts. Therefore, many decisions are by default. The major problem with just ignoring the law suit is that it doesn’t just go away. While under the UDRP procedures, the Complainant can only get the domain transferred, under the ACPA, they can also obtain actual damages incurred or Statutory damages in an amount up to $100,000.00 per offending domain. AND, if it is an “extraordinary” case, the Complainant can also obtain a Judgment for its costs and attorneys fees, which often run more than $30,000.00. The courts have additionally expanded the original intent of the law from preventing the use of a trademark through a domain name to including mistyped trademarks. The Internet is an unforgiving medium. If a user types in the wrong “address” or URL, he will not arrive at the destination he is seeking. If it is a misspelling of a trademark in the domain name, it will not get him to the trademark holders’ web site. Thus, the courts have determined that a “ typosquatter” is the same thing as a “ cybersquatter” and is subject to the provisions of the ACPA .. The fact that the “ typosquatter” may be using the domain for a completely different purpose than the trademark is of little or no consequence. The courts have generally ruled that the Domainer acted in “bad faith” in registering and using the domain and must give it up and pay damages to the Plaintiff. One of the biggest problems that the courts have dealt with is whether a particular court has jurisdiction either over the Domainer or the domain itself. The Courts have determined that foreign nationals have standing to sue in U.S. Courts as their domains and web sites can be accessed from anywhere in the world. Further, the courts have determined that not only U.S. Trademarks are protected, but foreign trademarks as well. On the other hand, if the Registrant of the domain does not live or have an office in a particular state and the web site is a “passive” one as opposed to in interactive one, the courts have held that they do not have jurisdiction to determine a case under the ACPA. For example, a Registrant who lives and works in Texas with a “passive” web site that just links to affiliates not operated by the registrant, cannot be sued in Utah. One other note that is important: a Registrant can not file a Counterclaim for Reverse Domain Hijacking in U.S. Federal Court as there is no provision for bringing such an action in the ACPA or the Lanham Act of which it is a part. The ACPA can be found at 15 U.S.C .§112. We have only touched very lightly on some of the effects of the ACPA in this article. Next time, we will explore what constitutes “bad faith” in the registration and use of a domain. HOWARD NEU has been practicing law since 1968, and, prior to that time, was a practicing Certified Public Accountant. As a former Municipal Judge and Mayor and Councilman of the City of North Miami, Florida, Past President of the North Dade Bar Association, the Dade County League of Cities, Gold Coast League of Cities and lecturer for the Florida Bar, he is well-known and well-respected in the South Florida legal, judical and governmental communities.
Mr Neu is a member of the Florida Bar, U.S. Courts of Appeals for the Third, Fourth and Eleventh Circuits, the U.S. Court of Federal Claims and has practiced in U.S. District Courts around the United States as well as the World Intellectual Property Organization (WIPO) and the National Arbitration Association (NAF).
|
|
|
|
|
||||||||||||||||||||||||||||||
