ACPA

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ACPA (Anticybersquatting Consumer Protection Act) was legislated by the United States Congress and signed into law by President Bill Clinton as Title III of P.L.106-113 [1] to protect the service or trademarks of individuals and businesses in the United States against cybersquatting, an act of abusively, deliberately and in bad faith registering domain names that are confusingly identical or similar to certain trademarks and taking advantage of the good will of the legal owners of the trademark to gain profit.

Legislative History

Senator Spencer Abraham from Michigan introduced S.1255 (Trademark Cyberpiracy Prevention Act) in the Senate on July 21, 1999; it was co-sponsored by Senators John Breaux, Orrin Hatch, Patrick Leah, Trent Lott, John McCain and Robert Torricelli. The bill is an amendment of the Trademark Act of 1946, which allows the legal owner of a trade or service mark to file a civil action against any person, who in bad faith intentionally registers a domain name that is confusingly similar or identical to a distinct mark or dilutive or popular mark to gain profit.[2] A related bill H.R. 3028 was sponsored by Rep. James Rogan in the House of Representatives.

Subsequently on July 22, the Judiciary Committee chaired by Sen. Hatch conducted a hearing regarding the bill. Several individuals testified in the hearing, including: Anne H. Chasser, president of the International Trademark Association, Christopher D. Young, president and CEO of Cyveillance, Inc. and Gregory D. Phillips, Partner at Howard, Phillips & Anderson Law Firm in Salt Lake City, Utah.[3]

On June 19, 1999, the Judiciary Committee conducted an executive session to consider the bill. Sen. Hatch and Sen. Patrick Leahy,offered a substitute amendment to the bill, which received unanimous consent. The bill was placed on the Senate Legislative Calendar under General Orders. Calendar 240.

On August 5, 1999, Sen. Hatch filed the Judiciary Committee's Report, Senate Report 106-140, citing "Anticybersquatting Consumer Protection Act" as the short title of the Act. Section 2 of the report also cited the Congress' findings, which include:[4]

1. The registration, trafficking in, or use of a domain name that is identical to, confusingly similar to, or dilutive of a trademark or service mark of another that is distinctive at the time of registration of the domain name, without regard to the goods or services of the parties, with the bad-faith intent to profit from the goodwill of another’s mark (commonly referred to as "cyberpiracy" and "cybersquatting".

  • results in consumer fraud and public confusion as to the true source or sponsorship of goods and services;
  • impairs electronic commerce, which is important to interstate commerce and the United States economy;
  • deprives legitimate trademark owners of substantial revenues and consumer goodwill; and
  • places unreasonable, intolerable, and overwhelming burdens on trademark owners in protecting their valuable trademarks.

2. Amendments to the Trademark Act of 1946 would clarify the rights of a trademark owner to provide for adequate remedies and to deter cyberpiracy and cybersquatting.

Section 3 of Senate Report 106-140 introduced the Cyberpiracy Prevention, an amendment of Section 43 of the Trademark Act of 1946 (15 U.S.C. 1125) by inserting the factors that will be considered by a court to determine if a domain name is registered in bad faith. Sen. Brownback also filed an amendment S.AMDT.1609 to clarify the rights of domain name registrants and Internet users with respect to lawful uses of Internet domain names, and for other purposes. The bill passed the Senate with unanimous consent on August 5, 1999. On September 8, 1999, the House of Representatives received S.1255. In October, it was referred to the House Committee on Judiciary and House Sub-committe on Courts and Intellectual Property. On October 26, the House inserted similar provisions to the bill from H.R. 3028 and it was agreed to without objection.[5]

The Anticybersquatting Protection Act is Title III of S. 1948, 106th Congress, the Intellectual Property and Communications Omnibus Reform Act of 1999.[6] It was enacted as final appendix to Public Law 106-113, [7] which was signed into law by President Bill Clinton on November 29, 1999.[8]

Court cases related to violations of ACPA

  • Newport News Holdings Corporation (NNHC) vs. Virtual City Vision, Inc. (VCV)- This case was first resolved under the ICANN Uniform Dispute Resolution Policy (UDRP) in 2000 when NNHC accused VCV's newportnews.com website of being registered in bad faith and confusingly similar to its Newport News website. The ICANN UNDRP panel dismissed NNHC's allegations citing that even if the domain names are similar, visitors to NNHC's branded website were looking for women's clothing and home fashions. VCV's website offers city information. The panel also cited that there in no competition between the two companies business offering. VCV's website remained unchanged until 2004 when it started to show women's clothing advertisements. In 2007, NNHC offered to buy VCV's website, however, its owner declined and changed newportnews.com's business offerings from providing city information to women's fashions. In 2008, the website became highly dominated with women's clothing and this prompted NNHC to file trademark infringement case agains VCV.[9]
  • DSPT International Inc. vs. Lucky Nahum- The cased was tried by a jury and found that Nahum registered, trafficked in and used his www.eq-italy.com domain name in bad faith as it is confusingly identical and with the intention to make profit from DSPT's trademark.[10]

References