Anticybersquatting Consumer Protection Act

ACPA (Anticybersquatting Consumer Protection Act) was enacted by the United States Congress to protect the trademark of individuals and businesses in the United States against cybersquatters who abusively register domain names that are confusingly identical or similar to certain trademarks and take 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 which 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 that will allow the legal owner of a trade or service mark to file a civil action against any person, who in bad faith intentionally register a domain name that is confusingly similar or identical to a distinct mark or dilutive or popular mark to gain profit. 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 which include 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.

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 a unanimous consent. The bill was place on the Senate Legislative Calendar under General Orders. Calendar 240.

On Ausgut 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:

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 on unanimous consent on August 5, 1999. On September 8, 1999, the House of Representatives received S.1255. On 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 without objection.

The Anticybersquatting Protection Act was signed into law by President Bill Clinton on November 29, 1999.