In one of the first cases dealing with the Anticybersquatting Consumer Protection Act’s provision on personal name cybersquatting, Lewis & Lin has obtained a preliminary injunction in the Southern District of New York.
The ACPA’s cyberpiracy protection for individuals provides:
Any 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 by selling the domain name for financial gain to that person or any third party, shall be liable in a civil action by such person.
15 U.S.C. § 8131. The statute also provides for one exception to civil liability:
A person who in good faith registers a domain name consisting of the name of another living person, or a name substantially and confusingly similar thereto, shall not be liable under this paragraph if such name is used in, affiliated with, or related to a work of authorship protected under title 17, including a work made for hire as defined in section 101 of title 17, and if the person registering the domain name is the copyright owner or licensee of the work, the person intends to sell the domain name in conjunction with the lawful exploitation of the work, and such registration is not prohibited by a contract between the registrant and the named person.
Id. § 8131(1)(B) (emphasis added).
In the case handled by Lewis & Lin, the defendant purchased two domain names—multiple versions of the plaintiff’s real name—for less than twenty dollars in total, and, within several days, posted an offer to sell the domain names for $1,000,000 each. The court concluded that such acts were “strongly probative of a specific intent to profit,” thus violating the ACPA’s provisions.
The defendant had argued that the exception under § 8131(1)(B) applied, because the domain names were being sold in conjunction with a “work of authorship” that also bore the plaintiff’s name. After a thorough analysis of both the websites associated with the domain names and the purported artwork, the court concluded that it was “simply not convinced that the defendant has made any showing of good faith here to qualify for the statutory exception.” For these reasons, the court ruled that Lewis & Lin had demonstrated a likelihood of success on the merits of the claim, and issued a preliminary injunction ordering the defendant to remove all existing content from the domain names.
The case is Bogoni v. Gomez, No. 11 CV 8093 (S.D.N.Y. Dec. 28, 2011). The full opinion is available here.