Frequently Asked Questions (and Answers) about ACPA
Q: What is the Anti-Cybersquatting Consumer Protection Act (ACPA)?
Q: Who can use the ACPA?
Q: I registered the domain first. Why can't I keep it?
Q: How does the ACPA apply to domain names?
Q: What does "distinctive" mean?
Q: What does "traffics in" mean?
Q: What constitutes a violation of the Act?
Q: What constitutes "bad faith" use of a domain name?
Q: How do I know which marks are famous and what difference does it make?
Q: Is it possible to hold a domain name in good faith even if it is identical or confusingly similar to another's trademark?
Q: What about noncommercial uses?
Q: What if I think that my domain name is OK? Am I still in trouble?
Q: What if I don't live in the US? Can I still lose my domain name under the ACPA?
Q: How does a mark owner use the ACPA against cybersquatters?
Q: What if the mark owner can't find the domain name holder?
Q: What are the possible penalties for violating the ACPA?
Q: I'm a web designer and I posted the site at the direction of my client. Am I liable under the ACPA?
Q: Are domain name registration authorities liable under the Act?
Q: Where can I find the text of the ACPA?
Q: What if I need to contact an attorney?
Question: What is the Anti-Cybersquatting Consumer Protection Act (ACPA)?
Answer: The ACPA [codified as 15 USC 1125(d)] is aimed at people who register a domain name with the intention of taking financial advantage of another's trademark. For instance, if BURGER KING did not have a web site, and you registered www.BURGERKING.com with the intent of selling the site to BURGER KING for a royal ransom, you could be liable under ACPA.
ACPA applies to people who:
(1) have a bad faith intent to profit from a domain name; and
(2) register, use or traffic in a domain name;
(3) that is identical, confusingly similar, or dilutive of certain trademarks. The trademark does not have to be registered.
ACPA provides that cyberpirates can be fined between $1,000 and $100,000 per domain name for which they are found liable, as well as being forced to transfer the domain name.
Somewhat more broadly, the Act is meant to reduce consumers' confusion about the source and sponsorship of Internet web pages. The idea is to provide customers with a measure of reliability, so that when they visit www.burgerking.com, they will be able to find actual Burger King products, not something entirely different. It also protects mark owners from loss of customer goodwill that might occur if others used the trademark to market disreputable goods or services.
See the module on ACPA to find out more about bad faith and legitimate defenses.
Question: Who can use the ACPA?
Answer: The owner of any trademark protected under US federal law, whether registered or not, so long as the mark
- is distinctive at the time of registration of the domain name, or
- is a famous mark at the time of registration, or
- is a "mark, word or name" that is protected because it is reserved for use by the Red Cross or the U.S. Olympic Committee.
Question: I registered the domain first. Why can't I keep it?
Answer: Maybe you can. The ACPA only protects trademark owners against cybersquatters. If your registration or use doesn't violate the Act, you should be able to keep the domain. However, being the first to register a name doesn't give you special rights or protections if you violate the law. Just as in physical space, you cannot use another's trademark to your own commercial advantage if the result is to "steal" the value of the trademark's goodwill and turn it to your own advantage. Read the remaining FAQs that explain what the ACPA actually forbids.
Question: How does the ACPA apply to domain names?
Answer: It makes it illegal to register, "traffic in" or use a domain name is identical or confusingly similar to a distinctive or famous mark (or which dilutes a famous mark).
Question: What does "distinctive" mean?
Answer: "Distinctive" is a term of art in trademark law and is determined by analyzing several factors. Essentially, a mark is distinctive when the consumers have come to recognize it as the source or origin of certain goods or services. Take the word "bronco": consumers recognize it as a brand of automobile; therefore it is distinctive as to automobiles. But it is not distinctive as to horses, where it would be generic, nor as to baby diapers since there is no one offering such goods under that label. Some words can never become distinctive as marks if they generically describe the very good or service for which they are used (i.e., one cannot trademark the word "basketball" to describe a brand of basketballs.) In general, if a word has been in substantially exclusive and continuous use as a mark in commerce for five years, it will be deemed distinctive as to those goods/services 15 USC 1052(f).
Question: What does "traffics in" mean?
Answer: According to the ACPA, it refers to "transactions that include, but are not limited to, sales, purchases, loans, pledges, licenses, exchanges of currency," and any other transfer for payment. In other words, any transaction involving the domain name that generates value for the cybersquatter.
Question: What constitutes a violation of the Act?
Answer: In addition to having a domain name that steps on the toes of an existing trademark as mentioned above, a person will be held liable only if he or she has a "bad faith intent to profit from the mark, including a personal name which is protected as a mark." An example of a personal name that is protected as a mark would be the name of a Hollywood celebrity whose name is used as a trademark to identify his or her performance services.
Question: What constitutes "bad faith" use of a domain name?
Answer: The ACPA instructs the courts to consider a number of factors to determine the presence of bad faith. These are enumerated in the paragraphs below, but many involve new concepts that are rather vaguely defined. It may take some time before courts decide exactly how these new terms should be interpreted.
- A court is likely to decide that a domain name registrant acquired or used the name in bad faith if s/he sought to divert customers from a trademark owner's website to another that, either for purposes of commercial gain or to tarnish the mark, could harm the goodwill represented by the mark. "Goodwill" is a legal term indicating the valuable relationship or familiarity that exists between businesses and their customers and is often embodied in their trademark symbols. It can be harmed if the domain name is likely to cause confusion about what organization created or sponsored a website. Bad faith from attempted commercial gain can arise if a domain name holder steals customers because the name is so similar to a trademark. For example, a shoe retailer might hold www.reabok.com, hoping to steal shoe buyers from customers looking for Reebok shoes. Bad faith from tarnishing can arise if a domain name similar to a trademark leads web surfers to a site, such as a pornographic website, that tends to harm the "good name" of the trademark owner. Or a pornographic website at www.reabok.com could create an unwholesome association that Reebok would like to avoid. (Although, Reebok may be considered a famous mark
Question: How do I know which marks are famous and what difference does it make?
Answer: Owners of "famous" marks have special privileges. They can block new uses of any similar name even if consumers wouldn't be confused by it. They are protected against "dilution" and "tarnishment" as well.
If you walk up to someone on the street and ask someone if they recognize the word or symbol, and they recognize it right away, it is probably famous. If you have to remind them ("The Berkman Center is this crazy thing at Harvard
Question: Is it possible to hold a domain name in good faith even if it is identical or confusingly similar to another's trademark?
Answer: The ACPA is forgiving of legitimate uses of domain names. There is less likely to be a violation of the Act if the domain name holder actually has some intellectual property rights in the name, or if the person has previously used the domain name in connection with bona fide offering of goods or services. Operating a domain name to which you have fairly entrenched trademark rights, or having operated a sales website under the domain name for a long time, is somewhat safer.
Take note, however, that this safety is illusory if your domain name resembles (or is) a famous mark. Thus an Internet service provider, Virtual Works, lost a case to Volkswagen, over its domain name www.vw.net, because the "VW" mark is famous, even though VW is the abbreviation of Virtual Works, and even though they had operated the site for several years.
If your domain name is your own name, or a name by which you are often referred, this is more likely to be deemed a good faith use. Edwin Von Aschenbach will probably be safe in registering www.vonaschenbach.com, even if Von Aschenbach, Co., manufactures high quality desks and "Von Aschenbach" is a trademark in the sale of desks. Edwin Pepsy should be more careful.
Question: What about noncommercial uses?
Answer: According to the Fourth Circuit Court of Appeals, "the Federal Trademark Dilution Act of 1995 ("FTDA") and the Anticybersquatting Consumer Protection Act of 1999 ("ACPA"), Congress left little doubt that it did not intend for trademark laws to impinge the First Amendment rights of critics and commentators. The dilution statute applies to only a 'commercial use in commerce of a mark,' 15 U.S.C.
Question: What if I think that my domain name is OK? Am I still in trouble?
Answer: The ACPA provides that there is no bad faith if the domain name holder believes, and had reasonable grounds to believe, that his or her use of the domain name was a fair use or otherwise lawful. It is not so clear that this provision will really keep you out of trouble. However, in doubtful cases, if you are using a domain name in which you have some intellectual property rights, and under which you have sold goods or services, and if someone else claims infringement upon a slightly-but-not-very famous mark, it might be of some use as an additional factor in your favor.
Question: What if I don't live in the US? Can I still lose my domain name under the ACPA?
Answer: Indeed, you can. If the mark owner is protected by US law (uses the mark in the US) then that mark owner can bring an ACPA action in a US court regardless of the domain holder's location. If the domain holder fails to show up in court, s/he may lose by default, in which case the US court will issue an order to the domain registrar or registry to cancel or transfer the domain registration to the mark owner. If the domain holder cannot be identified or located, the mark owner can bring an in rem action to obtain the domain name (see "What if the mark owner can't find the domain name holder?"). But the court must have authority over the registry or registrar holding the domain registration. All .com, .org and .net domain names are subject to the ACPA because the registry, Network Solutions, is located in the US. If the court does not have jurisdiction over the domain name registrar or registry, however, it will be difficult for the court to enforce its order outside the US. If neither the domain holder nor the mark owner has any contact in the US, then it isn't likely either can seek protection under US domestic laws, however, this is a question decided under treaties that govern international protection of trademarks. In such cases, the UDRP may be a more useful forum for the trademark owner to use.
Question: How does a mark owner use the ACPA against cybersquatters?
Answer: The ACPA creates a private right of action for trademark owners. This means that the owner of a trademark can sue the holder of a confusingly similar domain name. The suit must be brought in Federal Court - in a U.S. District Court.
- To summarize what has been said above
Question: What if the mark owner can't find the domain name holder?
Answer: The mark owner can bring suit in the judicial district in which the domain name registration authority (registrar or registry) which registered the domain name is located either if the court there finds that it does not have jurisdiction over the domain name holder in person, or if the domain holder cannot be located.
- To claim that a mark owner "can't find" the domain name holder, s/he must first try, by sending notice - of the alleged violation and intent to sue - to the domainholder's postal and e-mail addresses as provided by the holder to the registrar, and, by publishing notice of the suit as the court deems appropriate.
- Then, if the mark owner really can't find the domain name holder, s/he can bring an in rem suit against the domain name itself. This means that the suit is formally on the thing itself - the domain name - and not against the holder. In such a suit, the court may either cancel the registration of the domain name, or order its transfer to the mark owner, but may not award any money damages.
Question: What are the possible penalties for violating the ACPA?
Answer: Normally, the domain name holder will not evaporate, and can be sued directly. In such a case, the court can order the cancellation or transfer of the domain registration, as well as require the payment of money damages to the plaintiff trademark owner.
The trademark owner can recover (1) the domain holder's profits from use of the mark, (2) the trademark owner's damages resulting from harm to the value of mark, and (3) court costs as "actual damages." In determining the award to be paid, the court can choose to award up to three times the amount of actual damages. Attorney fees may be awarded in exceptional circumstances, such as when there was a willful and malicious violation.
Instead of having to prove the amount of "actual" damages suffered as above, the mark owner can instead request payment of "statutory damages" from $1000 and $100,000 per domain name.
Question: I'm a web designer and I posted the site at the direction of my client. Am I liable under the ACPA?
Answer: A person shall be liable under the ACPA for using a domain name under subparagraph only if that person is the domain name registrant or that registrant's authorized licensee.
However, for use of trademarks elsewhere on the site (in metatags or in the page content, for example) be aware that there may still be a risk of liablity as a trademark infringer or contributing infringer. The protections offered to
Question: Are domain name registration authorities liable under the Act?
Answer: A domain name registration authority is not liable for money damages for the registration or maintenance of a domain name for another absent a showing of bad faith intent to profit from such registration or maintenance.
- A domain name registration authority is subject to court injunction if it refuses to provide the court with documentation concerning the domain name that would establish the court's control over it in an in rem suit, or if it transfers, changes, or cancels the domain name during an in rem suit.
Question: Where can I find the text of the ACPA?
Answer: The Anti-cybersquatting Consumer Protection Act as enacted may be found at http://www.mama-tech.com/1948.html.
Most of the ACPA provisions are now found in the Lanham Act at 15 USC 1125(d), 15 USC 1114 and 15 USC 1117.
Question: What if I need to contact an attorney?
Answer: This website is meant as an aid to help you decipher Cease and Desist notices so you can make informed decisions about your course of action. If, after reading this, you think the C&D you received might have some merit, or you think you might engage your opponent in battle even if the C&D is, in your opinion, baseless, consultation with an attorney is always a good idea.
The Online Media Legal Network (OMLN) is a network of law firms, law school clinics, in-house counsel, and individual lawyers throughout the United States willing to provide pro bono (free) and reduced fee legal assistance to qualifying online journalism ventures and other digital media creators.
You can find an intellectual property attorney at www.martindale.com or by calling your state or local Bar Association and asking for a referral.