In order for a trademark owner to bring a claim under the ACPA, the trademark owner must establish:
- the owner trademark owner has a valid trademark entitled to protection;
- the trademark owner’s mark is distinctive or famous;
- the domain name and the trademark are either identical or confusingly similar (or dilutive for famous trademarks);
- the domain name owner used, registered, trafficked in the domain name; and
- with a bad faith intent to profit from the mark.
[15 USC § 1125(d)(I)(A)] [Bavaro Palace 256 11Cir 2006] [Bosley 680 9th Cir 2005] [DaimlerChrysler 204 6th Cir 2004] [Shields 482-84 3d Cir 2001] [Career Agents Network Slip p. 7 EDMI 2010] [Rearden NDCA 2010] [Anlin slip 9 DCCA 07]
15 USC § 1125(d) (2009) Cyberpiracy prevention
(1) (A) A person shall be liable in a civil action by the owner of a mark, including a personal name which is protected as a mark under this section, if, without regard to the goods or services of the parties, that person-
(i) has a bad faith intent to profit from that mark, including a personal name which is protected as a mark under this section; and
(ii) 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
Unpacking the individual elements of the cause of action
The ACPA is not available for everyone – it is only available to owners of famous or distinctive trademarks. [Shields 482 3rd Cir 2001] Factors that a Court will look at to determine whether a mark is famous include whether the mark is sufficiently distinctive as opposed to being generic, whether it has been in use for an extended period of time, the amount of the investment made in promoting the mark, the geographic region where the mark is used, and whether there are similar marks in use. In addition, courts will look to see whether the mark has been registered with the Patent and Trademark Office. The Court can recognize that a mark is distinctive without it being famous. Examples of marks that have been found to be famous or distinctive include Sporty’s Farm, Joe Cartoon, Porsche, and VW. However, CLUE, as in Hasbro’s detective board game, has been found to be neither famous or distinctive.
Identical, Confusingly Similar, or Dilutive
The ACPA examines the potential impact of a domain name on the trademark:
- For both famous and distinctive trademarks, the domain name in question must be identical or confusingly similar
- For famous trademarks the domain name can also be dilutive.
- Also barred are trademarks, words, or names protected by 18 U.S.C. § 706 (Red Cross) or 36 U.S.C. § 220506 (Olympics).
The guidelines for consideration (these are court created guidelines not listed in the statute) "are
- a) strength of mark;
- b) degree of similarity between the marks;
- c) the proximity of the products;
- d) the likelihood that the senior user of mark will bridge the gap;
- e) evidence of actual confusion;
- f) the junior user's bad faith in adopting the mark;
- g) the quality of the junior user's product; and
- h) the sophistication of the relevant consumer group.”
"The Committee intends the prohibited ''use'' of a domain name to describe the use of a domain name by the domain name registrant, with the bad-faith intent to profit from the goodwill of the mark of another. The concept of ''use'' does not extend to uses of the domain name made by those other than the domain name registrant, such as the person who includes the domain name as a hypertext link on a web page or as part of a directory of Internet addresses."