|So apparently in Arizona you can beat an AntiCybersquatter Consumer Protection Act cause of action if your domain name registration dates back before the registration of the trademark. AIRFX. COM v. AirFX LLC, Dist. Court, D. Arizona 2012. |
Well, okay, that makes sense at first blush. It would be kind of hard to cyberpirate a trademark if the trademark doesnt exist. The ACPA protects trademarks only.
But registration isnt the end of the story. Plenty of courts have held that a domain name registration that was made in good faith at the time of registration can become bad faith after registration. [Lahoti p 1202 9th Cir. 2009] [DSPT p 17 9th Cir. 2010] [Gharbi WDTX 2011 (where use was permissive at time of registration but became bad faith at termination of contract between domain name owner and trademark owner)]
Furthermore, the element of the cause of action in question is that the defendant "registers, traffics in, or uses" the domain name in question. The operative work here being "or". Even if the registration was in good faith, the use of the domain name could be in bad faith. 15 USC § 1125(d)(I)(A).
Finally, according to the Arizona court, the domain name holder can defeat an ACPA cause of action by tracing the registration back through re-registrations and transfers. A chain of custody which includes sales, transfers, and reregistrations which places the original domain name registration back before the registration of the trademark gives the domain name owner a free "Get Out Of ACPA Jail Free Card."
Here's what the court said:
AIRFX. COM v. AirFX LLC, Dist. Court, D. Arizona 2012: http://scholar.google.com/scholar_case?case=11801389341969505828
Cybertelecom ACPA: http://www.cybertelecom.org/dns/acpa.htm
Saturday, September 08, 2012
In Which the Court Finds a "Get Out of #ACPA Cause of Action Free Card" - AIRFX.COM v AirFX LLC DCAz 2012
at 6:21 PM