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Cybersquatting has been a highly litigated issue since Congress passed the Anti-Cybersquatting Consumer Protection Act (the “ACPA”) in 1999, codified under Title 15 U.S.C. § 1125(d). The ACPA establishes a cause of action for the bad faith registration of a domain name that is substantially similar to a trademark or personal name.
Under What Circumstances Will Courts Hold Domain Name Registrants Liable Under the ACPA?
In Xereas v. Heiss, the United States District Court for the District of Columbia found that the ACPA extends to include all registrations of a domain name, not just the initial registration. This federal law’s intent to diminish cybersquatting suggests that the ACPA meant to protect property interests in domain names throughout subsequent registrations.
In the aforesaid case, John Xereas registered the domain name “riotactcomedy.com” in 2005 and 2009 and conducted business under this name for several years. In May 2010, Xereas joined two others–Dawson and Heiss–to form a limited liability company (the “LLC”) and open a new comedy club, called the Riot Act Comedy Club. In January 2011, the LLC hired Squiid, Inc. to create a website for the club using Xereas’ domain name. In January 2012, the LLC instructed Squiid to re-register the domain name, listing the LLC as the owner, without Xereas’ knowledge or consent. Thereafter, Xereas filed suit alleging breach of the ACPA.
The court in this case explained that the case rested on whether the ACPA was meant to protect the re-registration of domain names. Xereas had effectively presented evidence that Dawson and Heiss had engaged in cybersquatting in that they registered a domain name with bad faith intent to profit from a domain name that was identical to Xereas’ distinctive domain name. However, the court found that Squiid was not guilty of cybersquatting because it did not register or use the domain name riotactcomedy.com with bad faith.
What Is The Scope Of Damages Available Under the ACPA?
In Vizer v. Vizernews.com the United States District Court of the District of Columbia found that to maintain an action under the ACPA, a plaintiff must be able to name the party who has registered a domain name in bad faith. This is necessary for a court to effectively determine whether it has jurisdiction over the parties to the suit. Here, Marius Vizer sued under the ACPA to compel a transfer of the domain name “Vizernews.com” to his ownership because the domain name included his last name and was meant to report news about him. The court found that absent a registering party, the court lacked jurisdiction to try the case.
However, in Skydive Arizona, Inc. v. Quattrocchi the United States Court of Appeals for the Ninth Circuit went as far as to award $600,000 in statutory damages for violation of the ACPA.
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