The Anti Cyber Squatting Consumer Protection Act is a federal law that took effect on November 29, 1999. This new domain name dispute law is intended to give trademark and service mark owner’s legal remedies against defendants who obtain domain names "in bad faith" that are identical or confusingly similar to a trademark or service mark. If a mark is a famous mark, the same remedies are available if the domain name is identical to, confusingly similar to or dilutive of the mark.
Cyber Squatting Evidence
The plaintiff must prove the following elements to be convicted of cyber squatting:
The Defendant has a bad faith intent to profit from that mark, including a defendant name which is protected as a mark;
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;
(II) In the case of a famous mark that is famous at the time of registration of the domain name, is identical or confusingly similar to or dilutive of that mark; or
(III) Is a trademark, word, or name protected by reason of 18 U.S.C. § 706 (the Red Cross, the American National Red Cross or the Geneva cross) or 36 U.S.C. § 220506
*The key element that needs to be proven is that the defendant has bad faith intent to profit from the mark.
Determining Bad Faith
The ACPA gives the court some guidance when deciding whether ‘bad faith,” exists or not. This should make it easier for the courts to follow the “rubric,” in a sense and determine “bad faith.” “Bad faith,” is a mandatory requirement to award the plaintiff with statutory awards of any kind.
1. The trademark or other intellectual property rights of the defendant, if any, in the domain name;
2. The extent to which the domain name consists of the legal name of the defendant or a name that is otherwise commonly used to identify the defendant;
43. The defendant's prior use, if any, of the domain name in connection with the bona fide offering of any goods or services;
. The defendant's bona fide noncommercial or fair use of the mark in a site accessible under the domain name;
5. The defendant's intent to divert consumers from the mark owner's online location to a site accessible under the domain name that could harm the goodwill represented by the mark, either for commercial gain or with the intent to tarnish or disparage the mark, by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the site;
6. The defendant's offer to transfer, sell, or otherwise assign the domain name to the mark owner or any third party for financial gain without having used, or having an intent to use, the domain name in the bona fide offering of any goods or services, or the defendant's prior conduct indicating a pattern of such conduct;
7. The defendant's provision of material and misleading false contact information when applying for the registration of the domain name, the defendant's intentional failure to maintain accurate contact information, or the defendant's prior conduct indicating a pattern of such conduct;
8. The defendant's registration or acquisition of multiple domain names which the defendant knows are identical or confusingly similar to marks of others that are distinctive at the time of registration of such domain names, or dilutive of famous marks of others that are famous at the time of registration of such domain names, without regard to the goods or services of the parties; and
9. The extent to which the mark incorporated in the defendant's domain name registration is or is not distinctive and famous within the meaning of Section 1125(c) (1) of the Lanham Act.
Bad faith intent will not be found in situations where the plaintiff believed they were acting lawfully and not in bad faith.
Violation Remedies
The Act authorizes a court to order the forfeiture or cancellation of a domain name or the transfer of the domain name to the owner of the mark. In lieu of actual damages, the plaintiff may elect statutory damages and the court has discretion to award damages of a minimum of $1,000 and maximum of $100,000 per domain name, as the court considers just.
WHAT IS ICANN? OVERVIEW
The contract for ICANN came from the US Department of Commerce and all other bidders were excluded from being involved. The tasks delegated included managing the assignment of domain names and IP addresses. Currently Paul Twomey heads ICANN and is the CEO. Public participation was decided to be excluded on March 14, 2002, in a public meeting in Accra, in Ghana.
ICANN is the Internet Corporation for Assigned Names and Numbers. Located in California, it is a non-profit corporation that consists largely of Internet society members. It was created on September 18, 1998 in order to take over a number of Internet-related tasks previously performed on behalf of the US Government.
ICANN holds their periodic public meetings with the intent of staying in touch with its members. Critics site that the locations of the meetings are often in countries with small Internet access and far away from locations that the majority of the Internet-using public can afford to reach, therefore making public input and participation quite limited. Some other people criticize ICANN as playing into the hands of US interests, given that the Internet is a worldwide resource and its formation was created through contributions from worldwide scientists. Meanwhile, ICANN is seeking to privatize itself, withdrawing from its connections to the US Government and US Department of Commerce.
FUTURE OF CYBER SQUATTING
The importance of cyber squatting to corporations has been growing since the creation of the ACPA and will continue to grow as time goes on. We predict that cyber squatting will be an issue involved in e-commerce law in the future although the complainant may shift from big businesses to smaller businesses based on recent court decisions. In addition, there are various amendments that could be made to the current cyber squatting acts in order to increase their effectiveness as well as fairness. These changes will need to occur as the Internet expands and online businesses continue to flourish.
There are many current cases which challenge both the powerful individuals’ and businesses’ right to a domain name, as well as challenging the individual’s right to hold the domain for personal use. Earlier this month, a case was tried in the U.S. Court of Appeals in regards to the use of the domain “fallwell.com” as a critical site to the preaching of televangelist Jerry Falwell. Jerry Falwell accused the owner of this site of infringing on trademarks and cyber squatting but his claims were rejected when the courts decided that the site could not be confused with Jerry Falwell’s official domain “falwell.com” due to differences in both appearance and content.
This case is a major victory for individuals who wish to criticize public figures or organizations through the use of the Internet. In the future, granted that the individuals who own and operate the domain have no intent to profit from its use, there is very slim chance that a court could find in favor of either a powerful individual or a large corporation. This lack of “bad faith” intent involved with the operation of a site is used to protect individuals from being bullied out of cyberspace by large businesses.
Bad Faith in the Future
“Bad faith” has been used as a defense for many small businesses and has provided them with a layer of security when their use of the domain does not infringe upon the larger company’s trademark. Non-profit use is one of the strongest defenses and its inclusion in the ACPA is one of the greatest strengths of the act. Many other aspects of the ACPA allow big businesses to push smaller ones out of the Internet market and simply having larger exposure and a larger name has allowed them to bully others out of the e-commerce market [19].
The ability of large companies to force smaller ones to give up domain rights is being challenged by many court cases and the victories of some of these small businesses is paving the way for others in the future. These results are also being looked at in many states as they look to clarify and improve the cyber squatting laws. This is because as we stand now, the Internet may not be able to survive only on the acts which have been passed in the last few years. With the Internet rapidly expanding into new domains, such as “.biz”, “.edu”, “.in”, and many others, the chances of registering common domains increases greatly. Along with this, many individuals and companies are becoming more educated on the technical aspects of cyber squatting. This is only increasing the complicated nature of cases and making it harder for courts to come to a decision regarding the rightful ownership of a domain name.
Changes
Problems can be dealt with through the expansion of the acts that currently deal with cyber squatting. The ACPA, in conjunction with the ICANN, has power over the domain names that are registered and can influence the decisions made in regards to them. By enhancing the ACPA with more individual-friendly sanctions, the government can help to protect the rights of an individual to own and operate a site that may be common to a corporation’s trademark. In addition to this, the ICANN and other such organizations have the authority to sell the rights to a domain to anyone who pays for it, but also have gained the power to transfer these rights to another party if they deem fit. These decisions can be appealed and taken to court; however, a failure to promptly file an appeal with the domain registrar can lead to a loss in court no matter what arguments are brought about.
In order to prevent these organizations from unfairly dictating the law of the Internet, legislation must be passed in order to amend the ACPA in order to correct the flaws that have been found in recent court hearings. This will undoubtedly gather much opposition from large businesses and influential individuals who wish to protect their own rights without concerning the right of the common individual. These laws in the United States act to override the laws of foreign nations and also act to undermine the authority of international efforts such as ICANN in order to avoid complex and costly international lawsuits. The ACPA has received much opposition and typically gains complaints including such grounds as legislative overkill, free speech concerns, and reverse domain hijacking. The future of the ACPA holds legal ramifications that will affect not only U.S citizens, but also foreign citizens and businesses. This holds true in the case of the International Olympic Committee which has used the ACPA as a weapon in order to prevent the use of domains remotely associated with the Olympics.
CONCLUSION
Cyber squatting has been an active threat since the early 1990’s and has increased in severity ever since. The prevention of cyber squatting revolves mainly around two acts, the UDRP and the ACPA. The UDRP was adopted by ICANN in order to provide a mechanism for trademark holders to obtain domain names from cyber squatters. The UDRP states that before a domain name registrar will cancel, suspend, or transfer a domain name that is the subject of a trademark-based dispute, it must have an agreement signed by the parties, a court order, or an arbitration award. The development of the UDRP created a "cyber arbitration" procedure to quickly resolve domain name ownership disputes that involve trademarks. All owners of “.com”, “.net”, and “.org” domain names are subject to the UDRP by virtue of the registration agreements at the time of acquiring their domain names.
The ACPA is a valuable tool intended to protect the infringement of trademarks online and to protect the credibility of a company through the protection of their name as a domain. However, it is also a weapon used by corporations in order to force smaller businesses out of the e-commerce market. For this reason, the ACPA must be modified in order to account for some of the unfair court cases which have been decided in the past years. The rights of the individual must be protected and as it currently stands, courts have been favouring the businesses with the largest name and largest pockets regardless of the intent of the individual who owns the domain.
Both of these systems have their advantages, but they must be used properly in order to achieve the desired result. The UDRP provides a method for quick resolution of a dispute whereas the ACPA allows for an extended legal battle with the potential of large monetary settlements being awarded. However, both systems help to provide security and structure to the complicated and widespread problem of cyber squatting. These acts, along with the legal system, are the only protection available to those who wish to defend themselves from cyber squatters.
Since cyber squatting is going to shift from larger businesses to small businesses in the future, modifications to the cyber squatting acts will need to be made in order to increase protection. The ACPA will need to be modified to protect individuals who own a cite similar to a corporation's trademark because currently the act favours big businesses. Cyber squatting problems are going to continue to develop because of the rapid growth and expansion of the Internet. The issue cannot simply be ignored or else it may hurt the economy. Its important to learn from the victims of cyber squatting so we can prepare ahead of time for the issues to come.
