Category Archives: Anticybersquatting Consumer Protection Act

Safe Harbor Under the ACPA: Reasonable Grounds for Believing Use Not Unlawful

Posted on March 12, 2013 by Gmlevine

Both the Anticybersquatting Consumer Protection Act (ACPA) and the Uniform Domain Name Resolution Policy, paragraph 4(c)(i-iii) (UDRP) prescribe safe harbor defenses, but the ACPA provides a defense not expressly found in the UDRP: bad faith “shall not be found in any case in which the court determines that the person believed and had reasonable grounds to believe that the use of the domain name was a fair use or otherwise lawful.”15 U.S.C. §1125(d)(1)(B)(ii). The question is, How is the statute to be construed, narrowly or forgivingly? A good review of the answer, narrowly, can be found in Web-Adviso v. Trump, 11-cv-1413 (EDNY, February 28, 2013).

The ACPA imposes civil liability on a person who, “without regard to the goods … Read the rest

Posted in Anticybersquatting Consumer Protection Act, Cybersquatting, UDRP | Tagged , | Leave a comment

Use in Bad Faith Alone Is Insufficient to Prove Cybersqatting

Posted on January 17, 2013 by Gmlevine

I have pointed out in earlier Notes that the Uniform Domain Name Resolution Policy (UDRP) and the Anticybersquatting Protection Act (ACPA) are constructed on different models for proof of cybersquatting. The UDRP requires proof of bad faith in the conjunctive; while the standard demanded under the ACPA is either registration or use in bad faith. There are federal cases in which complainant trademark owner has subsequently prevailed on use in bad faith even where defendant registered the domain name in good faith. Under UDRP use in bad faith may support (inferentially) registration in bad faith, but only if the facts align for proof of targeting, but not otherwise. Where complainant trademark owner admits it authorized respondent to register the disputed … Read the rest

Posted in Abusive intent, Acquiescence, Anticybersquatting Consumer Protection Act, Cybersquatting / Not cybersquatting, Drawing inferences, Para. 4(a)(ii) of the Policy, Para. 4(a)(iii) of the Policy, Post termination of contract | Tagged , , | Leave a comment

Allegations of Cybersquatting of Personal Names

Posted on November 22, 2012 by Gmlevine

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The Report of the Second WIPO Internet Domain Name Process, The Recognition of Rights and the Use of Names In the Internet Domain Name System, dated September 3, 2001 concludes that “the application of the UDRP to the protection of personal names [is authorized only] when they constitute trademarks,” Paragraph 179.  Despite the exclusion, UDRP Panels recognize unregistered trademarks for persons whose names have come to signify sources of goods or services.  This generally favors movie stars, athletes, authors, etc. who … Read the rest

Posted in Anticybersquatting Consumer Protection Act, Commercial gain, Consent, Cyberpiracy, Intent / Tartgeting, Lanham Act, Personal name, UDRP | Tagged , , | Leave a comment

Anticybersquatting Consumer Protection Act’s In Rem Jurisdiction

Posted on July 2, 2012 by Gmlevine

An owner of a trademark registered in any jurisdiction or whose unregistered right is recognized under any national law satisfies the threshold requirements for standing in a UDRP proceeding. The UDRP and Rules provide for a simplified procedure for obtaining personal jurisdiction, but whether the registrant/respondent answers the complaint or not the Panel is authorized to determine the rights to the disputed domain name. Because the procedure for obtaining personal jurisdiction in federal court is not simple the Anticybersquatting Consumer Protection Act (ACPA) grants both subject matter jurisdiction where in personam jurisdiction can be obtained as well as in rem jurisdiction where it cannot. 15 U.S.C. §1125(d)(2)(A) provides that “[t]he owner of a mark may file an in rem civil … Read the rest

Posted in Anticybersquatting Consumer Protection Act, Standing | Tagged , | Leave a comment

Suspending or Terminating a UDRP Proceeding

Posted on June 27, 2012 by Gmlevine

Paragraph 18(a) of the Rules of the Policy authorizes the Panel in its discretion to suspend or terminate a UDRP proceeding or proceed to a decision “[i]n the event of any legal proceedings initiated prior to or during an administrative proceeding in respect of a domain name dispute.” The Rule contemplates that such a filing be made by respondent; if by a complainant, initiating a UDRP proceeding after commencing a legal proceeding would be abusive. Ordinarily, termination decisions are not published, but the Panel in Visible Technologies, Inc. v. Visibli Inc., D2012-0904 (WIPO June 15, 2012) explained why it was necessary in that case:

The fact that the Complainant has also brought the Complaint appears to be an unnecessary

… Read the rest

Posted in Anticybersquatting Consumer Protection Act, Lanham Act, Suspension / termination, UDRP Rule 18(a) | Tagged | 1 Comment