Lewis & Lin Victory In Personal Name Cybersquatting Case
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.
When is a registration not a registration under the ACPA?
Recently, the Ninth Circuit created an apparent circuit split in its ruling in GoPets Ltd. v. Hise, No. 08-56110 (9th Cir. Sept. 22, 2011) on the issue of bad faith domain name registration under the Anti-Cybersquatting Consumer Protection Act.
(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 . . .
15 U.S.C. § 1125(d)(1) (emphasis added). Thus, to prevail on an ACPA claim, a plaintiff must show (1) registration of a domain name, (2) that was “identical or confusingly similar to” a mark that was distinctive at the time of registration, and (3) “bad faith intent” at the time of registration. See 15 U.S.C. § 1125(d)(1).
The question in GoPets was what counts as a “registration.” Is it only the initial registration of a domain name by the very first registrant, or does it also include subsequent renewal registrations by other parties who came to acquire the domain name at issue? If it includes subsequent renewals, then those renewals must independently be in good faith.
The only other appellate court to consider the issue was the Third Circuit in Schmidheiny v. Weber, 319 F.3d 581 (3d Cir. 2003). In Schmidheiny, which was decided under the ACPA’s personal name cybersquatting provision (15 U.S.C. § 8131 (then § 1129)), defendant Weber, the original registrant of the domain name <schmidheiny.com>, registered the name in February 1999, several months before the ACPA went into effect. In June 2000, after the Act went into effect, Weber transferred the domain name to a corporation of which he was the president and treasurer. The corporation then re-registered the domain name with a different registrar. In November 2000, Weber offered to sell the domain name, now owned by the corporation, to plaintiff Schmidheiny.
The district court in Schmidneiny held that re-registering the domain name to the corporation was not a registration within the meaning of § 8131 and therefore did not newly subject the domain name to the ACPA’s provisions. The Third Circuit disagreed, holding that “the word ‘registration’ includes a new contract at a different registrar and to a different registrant.” 319 F.3d at 583. The reason for this, according to the court, was that “the language of the statute does not limit the word ‘registration’ to the narrow concept of ‘creation registration.’” Id.
Against this precedent, the Ninth Circuit was confronted with same issue for § 1125. The court, however, declined to follow the Third Circuit’s reasoning. Instead, it chose to view the provision of the ACPA in light of traditional property law and concluded that “Congress meant ‘registration’ to refer only to the initial registration.” In so ruling, the court reasoned:
It is undisputed that Edward Hise could have retained all of his rights to gopets.com indefinitely if he had maintained the registration of the domain name in his own name. We see no basis in ACPA to conclude that a right that belongs to an initial registrant of a currently registered domain name is lost when that name is transferred to another owner. The general rule is that a property owner may sell all of the rights he holds in property. GoPets Ltd.’s proposed rule would make rights to many domain names effectively inalienable, whether the alienation is by gift, inheritance, sale, or other form of transfer. Nothing in the text or structure of the statute indicates that Congress intended that rights in domain names should be inalienable.
As one would expect, GoPets creates some confusion about the reach of the ACPA. Should domain names be treated as property, such that owners are free to transfer them to third parties together with all the attendant rights that have been acquired as a result of registration? Or should they be more like individual contracts with registrars, the terms of which may vary upon each subsequent registration with a different registrar or registrant. It remains to be seen which view will ultimately be seen as the prevailing one.
In the meantime, both domainers and trademark holders need to be aware of the potential effects of the ACPA. For more information about how cybersquatting law affects your business, contact the internet attorneys at Lewis & Lin LLC.
Domain Name Alert: Watch Out for Shady Sales Tactics
From time to time, we get solicited by individuals looking to sell domain names to lawyers. It happened today, but what caught my eye with the domain name in question was the boast that, “searching the term ‘[CITY] [STATE] Attorney’ on Google, yields approximately 1.2 million results with numerous paid ads.” Well, yes. If one searches the four word term on Google, there are over 1.2 million pages that contain the words “city,” “state” and “attorney” in the same character string, but a quick search using Google’s keyword traffic tool reveals that fewer than 10 people every month actually search for the phrase. In other words, the name has virtually no organic traffic, and little inherent value.
This happened to a client once, but on a much larger scale, and we were able to prevent the client from losing hundreds of thousands of dollars on a scam. That’s not to say that the individual who emailed us was operating a scam, but the information in his email was misleading. It just highlights the need to be careful and do diligence before engaging in any domain name transactions.
Lewis & Lin Defeats UDRP Claim; Panel Cites Complainant’s “Utter Lack of Proof” in the Face of L&L’s Overwhelming Evidence
Emeshel, LLC v. DomRegistrar.com, WIPO Case No. D2011-1596.
Lewis & Lin received word that an administrative panel of the World Intellectual Property Organization ruled in favor of our client in a Uniform Domain Name Dispute Resolution Policy proceeding. The case involved a dispute over the domain name <emeshel.com>. Click here to read the full decision.
Reverse Domain Hijacking Case Proceeds Despite UDRP Loss
A federal district court in Arizona (where domain name registrar GoDaddy.com, Inc. is located) has allowed a reverse domain name hijacking claim to proceed, despite a UDRP proceeding ordering transfer of the domain name and defendant’s argument that plaintiff failed to plead that defendant harassed plaintiff.
Plaintiff Mark Lurie was an indoor skydiving enthusiast with investments in wind tunnel facilities. In 2006, Lurie embarked on a marketing effort to adopt a new brand for his wind tunnels, “AIRFX.” In preparation for launching his new brand, Lurie identified a manufacturing partner, consulted with an aerodynamic specialist, and located a potential first customer. After Lurie decided to use the trademark AIRFX, he purchased the airfx.com domain name from the then-owner, who transferred it to him in 2007. Lurie planned on officially launching the airfx.com website when his first completed facility was launched.