Cyber Squatting 

 

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Introduction/Abstract

History of Cyber Squatting

ACPA

ICANN

UDRP

Cyber Squatting Cases

Future of Cyber Squatting

Conclusion

References

 

 

What is the ACPA?

 

The Anti Cyber Squatting Consumer Protection Act is a federal law that took affect on November 29, 1999.  This new domain name dispute law is intended to give trademark and service mark owner’s legal remedies against defendants who obtain domain names "in bad faith" that are identical or confusingly similar to a trademark or service mark.  If a mark is a famous mark, the same remedies are available if the domain name is identical to, confusingly similar to or dilutive of the mark [3, 4].

 

 

Cyber Squatting Evidence

 

The plaintiff must prove the following elements to be convicted of cyber squatting: [5]

  1. The Defendant has a bad faith intent to profit from that mark, including a defendant name which is protected as a mark; 
  2. 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 18 U.S.C. § 706 (the Red Cross, the American National Red Cross or the Geneva cross) or 36 U.S.C. § 220506

 

*The key element that needs to be proven is that the defendant has bad faith intent to profit from the mark.

 

 

Determining Bad Faith

 

The ACPA gives the court some guidance when deciding whether ‘bad faith,” exists or not.  This should make it easier for the courts to follow the “rubric,” in a sense and determine “bad faith.”  “Bad faith,” is a mandatory requirement to award the plaintiff with statutory awards of any kind [5].

1.      The trademark or other intellectual property rights of the defendant, if any, in the domain name;

2.      The extent to which the domain name consists of the legal name of the defendant or a name that is otherwise commonly used to identify the defendant;

3.      The defendant's prior use, if any, of the domain name in connection with the bona fide offering of any goods or services;

4.      The defendant's bona fide noncommercial or fair use of the mark in a site accessible under the domain name;

5.      The defendant'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;

6.      The defendant'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 defendant's prior conduct indicating a pattern of such conduct;

7.      The defendant's provision of material and misleading false contact information when applying for the registration of the domain name, the defendant's intentional failure to maintain accurate contact information, or the defendant's prior conduct indicating a pattern of such conduct;

8.      The defendant's registration or acquisition of multiple domain names which the defendant 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

9.      The extent to which the mark incorporated in the defendant's domain name registration is or is not distinctive and famous within the meaning of Section 1125(c)(1) of the Lanham Act.

Bad faith intent will not be found in situations where the plaintiff believed they were acting lawfully and not in bad faith.

 

 

Violation Remedies

The Act authorizes a court to order the forfeiture or cancellation of a domain name or the transfer of the domain name to the owner of the mark.  In lieu of actual damages, the plaintiff may elect statutory damages and the court has discretion to award damages of a minimum of $1,000 and maximum of $100,000 per domain name, as the court considers just [5].

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