Lewis & Lin Obtains Fee Award in Personal Name Cybersquatting Case

In a case of first impression under 15 U.S.C. 8131 — the personal name cybersquatting provision of the Anticybersquatting Consumer Protection Act — Lewis & Lin obtained a court order awarding attorneys’ fees as the prevailing party under the ACPA.

Section 8131 of the ACPA imposes civil liability on “[a]ny person who registers a domain name that consists of the name of another living person, or a name substantially and confusingly similar thereto, without that person’s consent, with the specific intent to profit from such name.  Under the ACPA, the court may issue and injunction and, “in its discretion, award costs and attorneys fees to the prevailing party.”

Noting that “[t]here is little caselaw providing guidance on an award of fees under section 8131 of the ACPA,” the U.S. District Court for the Southern District of New York analyzed Lewis & Lin’s request under 15 U.S.C. 1117(a) — the standard for an award of fees under the Lanham (U.S. Trademark) Act.  Citing a California case, the court ruled that in determining whether to award attorneys’ fees, courts should consider “a number of factors, including the egregiousness or willfulness of the defendant’s cybersquatting . . . and other behavior by the defendant evidencing an attitude of contempt towards the court of the proceedings.”  The court found that in the current case, the defendant’s conduct merited an award of attorneys’ fees.

First, “the defendant’s use of plaintiff’s name in the domains was sufficiently willful.”  Second, the “defendant has evidenced contempt towards the Court throughout these proceedings.”  Accordingly, the Court ordered that “attorneys’ fees are warranted in this ACPA action.”  

Lewis & Lin Partner David D. Lin was the lead attorney on this matter.  The case is No. 11 Civ. 8093 (KBF) in the U.S. District Court for the Southern District of New York.  Please contact us if you would like a copy of the opinion.

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