damages and attorneys’ fees, there have
been a relatively small number of cases in
which courts have discussed issues relating
directly to statutory damages, and an even
smaller number of cases in which statutory
damages have been awarded. When awarding damages, the courts look at factors such
as the egregiousness or willfulness of the
defendant’s conduct, 23 repeat violators, 24
and how the domain name was used by the
defendant. 25
How is a claim made?
Cybersquatting cases under the Lanham
Act may be filed in state or federal court. In
addition, a plaintiff can bring an in rem suit
against the domain name in the judicial
district where the domain name registrar,
domain name registry, or other domain
name authority registered or assigned the
domain name is located. In order to proceed in rem, the plaintiff must show that the
domain name violates a right of the trademark owner and the trademark owner is not
able to obtain in personam jurisdiction over
the registrant (e.g., the registrant is in
another country) or, after due diligence, the
trademark owner was not able to find the
defendant after sending a notice of the
alleged violation by mail and email and publishing notice of the action. 26 Monetary
damages are not available in an in rem suit
under the ACPA. 27
How much does it cost?
To get the case going, you must file a complaint in court and pay the applicable filing
fee. If the complainant is a legal entity, it
must be represented by counsel. As with
any litigation, it is difficult to predict how
the defendant will respond and how long
the case will go on—with the resulting
attorneys’ fees.
How long does it take?
The length of an ACPA case is hard to
determine. ACPA cases move through the
court system at the same pace as other civil
actions. Unless there is a default judgment
or early settlement, the case could take
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many months or even years to resolve.
If the plaintiff is suffering irreparable
harm from the bad faith use of or trafficking
in the disputed domain name, it may be
possible to obtain a preliminary injunction
or temporary restraining order preventing
the defendant from using or transferring the
domain name to anyone while the litigation
is pending. The U.S. District Court for the
District of Nevada recently ordered that
domain names bearing the plaintiff’s trademarks be locked, placed on hold and
deposited into the registry of the court
pending a full trial. 28 As justification for its
ruling, the court found that the plaintiff
“will suffer irreparable injury to its valuable
trademarks and associated goodwill” if the
court did not act to seize the domains. The
court added, “Plaintiff is likely to succeed
on the merits of its claims for cybersquatting and trademark infringement.” 29
What trademark rights are enforceable?
The ACPA provides a cause of action for
registering, trafficking in, or using a domain
name confusingly similar to, or dilutive of,
established trademark rights. The trademark
must be distinctive at the time of defendant’s registration, traffic in, or use of
the domain name. In addition, the ACPA
allows and action based on rights in personal names protected as a trademark.
What is the plaintiff’s burden?
To successfully prosecute an ACPA case, the
plaintiff must demonstrate protectable
trademark rights and establish that the
defendant has “registered,” “trafficked in”
or “used” the offending domain name with
a “bad faith intent to profit from the mark.”
Next, the plaintiff must establish that
the domain name is “identical or confusingly similar” to a “distinctive” mark, or
identical, confusingly similar or dilutive of
a “famous” mark. 30
Finally, the plaintiff must prove that the
defendant has a bad faith intent to profit
from that mark (including a personal name
which is protected as a mark).
How is bad faith determined? Bad faith
can arise either at the time of registration
or at any time thereafter. Thus, a domain
name initially registered in good faith can
be the subject of an ACPA claim when
bad faith actions follow. 31 In determining
whether a particular domain name was
registered or used in bad faith, the use
made of the domain name just prior to the
commencement of the parties’ dispute is
particularly important. Switching after a
dispute arises from an illegitimate to legit-
imate use will not cure the original bad
faith registration. 32
