The Anticybersquatting Consumer Protection Act

 

The Anticybersquatting Consumer Protection Act (ACPA) is designed to punish people for registering a domain name with the intent of making money off of someone else’s trademark rights even if a trademark is not registered. For example, if a well-known corporation had failed to register a domain name such as www.famouscorporation.com and someone else did register the domain name and tried to ransom it off for a hefty fee, there would be a violation of the ACPA. The ACPA provides for fines between $1,000 to $100,000 for each domain name, can require an injunction, the transfer of the domain name, and/or the payment of up to three times actual damages and in some cases even attorney’s fees. Damages are fixed by the court in its discretion. There needs to be a bad faith intent to profit off the domain name.

To be found liable, you need to be the person who registered the domain name through a service provider such as GoDaddy, used it (you still need to be the registrant or an authorized licensee to be considered a user) or you have to have trafficked it (i.e. tried to ransom it or transfer it for consideration). The domain name also would have to be identical, confusingly similar or dilutive of someone else’s trademark. The mark needs to have been distinctive or famous at the time of the registration for the ACPA to apply.

In a Florida case, a real estate broker started a web site that would likely be reached when someone was searching for a particular builder. The website criticized the builder’s construction mistakes and invited others to complain. The builder won after arguing that the website’s criticisms were false and that the broker had violated trademark law.

This article is only meant to provide a very brief summary of the ACPA. The Act can be found at 15 U.S.C. 1125 (d) and is part of the Lanham Act. Please consult an attorney for further information.

Cinthia M. Manzano is a shareholder with Frascona, Joiner, Goodman and Greenstein, P.C. Her practice areas include Construction Defect, Construction, Special Needs Education Law, Real Estate, Litigation, and Association Law. Contact Cinthia Manzano.

Disclaimer — Content is general information only. Information is not provided as advice for a specific matter, nor does its publication create an attorney-client relationship. Laws vary from one state to another. For legal advice on a specific matter, consult an attorney.

CINTHIA M. MANZANO