The Anticybersquatting Consumer Protection Act (ACPA) was passed in 1999 in order to provide protections for companies and individuals who had a third party register their company name as a domain. At that time, people were buying up the domain names of famous individuals, companies of all sizes, trademarked names, and a variety of other things with the intent of simply holding them until another party wanted to buy them. They could then charge large sums of money for the trademark holder to buy the domain back (or they could also sell it to a competitor).
When Can the ACPA Be Used?
Companies or individuals can bring a case against another party using the ACPA when a domain was registered by someone who engages in any or all of the following activities:
- Profit from the Domain Without Intent to Build Site – When someone buys a site but does not build a website, or intend to build a website, on their own. They instead plan on making a profit from the domain name alone.
- Registers, buys, or traffics in Distinctive Names – When someone registers or buys domain names that are trademarked, or those that are confusingly similar to trademarked domain names.
- Registers Names of Famous People – When someone intentionally registers domain names of celebrities or other famous people without the intent to make their own website.
In order to meet the above-mentioned standards, the trademark owner needs to be able to show that name or phrase used as the domain is widely recognized as being associated with the trademark owner or their company. This must be clear to the general public.
What Do the Courts Consider?
When reviewing cases related to the ACPA, the courts will look at a variety of different factors. These factors include things like the registrant’s trademark, their intellectual property, whether the domain name contains things like a legal or common name, whether the domain in question has a connection with offering goods or services, and much more.
When to File a Case
If you think that someone has registered a domain name that you are entitled to under the ACPA, you will want to start by gathering as much information as possible. While the courts are certainly reasonable when it comes to protecting the rights of trademark owners, they also want to allow others the right to register reasonable domain names. Contact us to discuss the specifics of your situation and see if a lawsuit is a good idea.
Lexero LLC
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