The Anticybersquatting Consumer Protection Act (ACPA) allows a trademark holder to pursue a third party that registers or uses a domain name that is confusingly similar to the holder’s trademark in bad faith.
Specifically, if a person or entity registers, traffics or uses a domain name that is identical or confusingly similar to a distinctive trademark, the person or entity is liable to the trademark holder if the registration, trafficking or use was done with a bad faith intent to profit from the good will of the mark.
If a Court determines that there is a violation of the ACPA, a court can order the forfeiture or cancellation of the offending domain name or its transfer to the owner of the mark. The mark owner can also recover up to three times his actual damages as well as injunctive relief.
Mark holders have used the ACPA to combat a number of different issues. For example, the ACPA has been used to fight classic “cybersquatting;” i.e., where a wrongdoer registers a domain name and then attempts to ransom it to the mark holder. Some other examples of where the ACPA has been successfully used are listed below:
1) Preventing the sale of advertisements for competing products on a website that includes the mark holders mark in its domain name.
2) Preventing the tarnishment of a mark by its use in the domain name of a pornographic web site.
The ACPA has also been used to attack sites setup by persons that are dissatisfied with the business of a mark holder.
To prosecute a claim under the ACPA, a mark holder must 1) establish that the defendant registers, traffics in or uses a domain name that is identical or confusingly similar to a trademark of the mark holder, and 2) that the defendant had a bad faith intent to profit from the mark.
It should be noted that a case under the ACPA can be filed “in rem,” meaning that it can be filed directly against the domain name. To proceed in rem, a mark holder must demonstrate either that a) personal jurisdiction cannot be established over the defendant or b) that the identify of the registrant of the domain name is not known. To show that the identity of the registrant is not known the mark holder must show that he cannot locate the defendant by 1) sending notice to the address listed with the domain registrar, and 2) by publishing notice as directed by the court.