Anticybersquatting Consumer Protection Act

The Anticybersquatting Consumer Protection Act (ACPA), 15 U.S.C. § 1125(d), is a U.S. law enacted in 1999 that established a cause of action for registering, trafficking in, or using a domain name confusingly similar to, or dilutive of, a trademark or personal name. The law was designed to thwart “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 the trademark owner or a third party. Critics of the ACPA complain about the non-global scope of the Act and its potential to restrict free speech, while others dispute these complaints. Before the ACPA was enacted, trademark owners relied heavily on the Federal Trademark Dilution Act (FTDA) to sue domain name registrants. The FTDA was enacted in 1995 in part with the intent to curb domain name abuses. The legislative history of the FTDA specifically mentions that trademark dilution in domain names was a matter of Congressional concern motivating the Act. Senator Leahy stated that “it is my hope that this anti-dilution statute can help stem the use of deceptive Internet addresses taken by those who are choosing marks that are associated with the products and reputations of others”.

For example, in Panavision Int’l L.P. v. Toeppen, 141 F.3d 1316 (9th Cir. 1998), Dennis Toeppen registered the domain name Panavision.com. Panavision, the trademark owner, learned that Toeppen had registered their trademark when they attempted to register the trademark “Panavision” as a domain name. Toeppen was using the domain panavision.com to display photographs of Pana, Illinois, and, when asked to cease, he offered to sell the domain name to Panavision for $13,000. After Panavision refused to buy the domain name from Toeppen, he registered their other trademark, Panaflex, as a domain name. The Court held that the FTDA could be violated without the traditional tarnishing or blurring the courts had required. Rulings like this extended the FTDA substantially.

Under the ACPA, a trademark owner may bring a cause of action against a domain name registrant who

A trademark is famous if the owner can prove that the mark “is widely recognized by the general consuming public of the United States as a designation of source of the goods or services of the mark's owner”.

“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.

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