Before the Anticyberquatting Consumer Protection Act (ACPA) was enacted,
trademark owners relied on the Federal Trademark Dilution Act (FTDA) to sue
domain name registrants. In Panavision
Int’l L.P. v. Toeppen, Toeppen registered the domain name Panavision.com.
The trademark owner, Panavision, discovered the usage when they attempted to
register the trademark “Panavision” as a domain name. When asked to cease,
Toeppen offered to sell the domain name for $13,000. When Panavision refused,
Toeppen registered another Panavision trademark. The court held that the FTDA
could be violated without the traditional tarnishing or blurring the courts had
required in the past, which extended the FTDA.
The ACPA more effectively deals with such issues by granting a cause of action for registering, trafficking, or using a domain name confusingly similar to a trademark. The law’s intention was to prevent cybersquatters who register Internet domain names containing trademarks with no intention of creating a legitimate web site, but instead plan to sell the domain name to a trademark owner or a third party.
Under the ACPA, a trademark owner may bring a cause of action against a domain name registrant who (1) has a bad faith intent to profit from the mark, and (2) registers, traffics in, or uses a domain name that is either an identical or confusingly similar to a distinctive mark, a identical or confusingly similar to or dilutive of a famous mark, or is a trademark protected by 18 U.S.C. § 706 (marks relating to the Red Cross) or 36 U.S.C. § 220506 (marks relating to the Olympics). “Trafficking” in the context of domain names includes, but is not limited to “sales, purchases, loans, pledges, licenses, exchanges of currency, and any other transfer for consideration or receipt in exchange for consideration.” The ACPA also requires that the mark be distinctive or famous at the time of registration
In determining whether the domain name registrant has a bad faith intent to profit, a court may consider factors, such as, but not limited to: