A Future in Flux: Why the Anti- Cybersquatting Consumer Protection Act Created More Questions Than Answers

Abstract

Since its enactment in 1999, the AntiCybersquatting Consumer Protection Act (ACPA) has carried its controversies like a shadow. The analysis for good and bad faith intent under the ACPA is driven by these factors: (i) the trademark rights of the person in the domain name; (ii) whether the domain name is the legal name of a person; (iii) the person's prior use of the domain name in connection with goods or services; (iv) the person's fair use of the mark in a site accessible under the domain name; (v) the person's intent to divert consumers to a site under the domain name that would harm the goodwill represented by the mark, either for commercial gain or for intent to tarnish the mark; (vi) the person's offer to transfer, sell, or assign the domain name to the mark owner for substantial consideration without having used, or having an intent to use, the domain name for commercial purposes; (vii) the person's intentional and misleading false contact information when applying to register the domain name; and (viii) the person's registration or acquisition of multiple domain names that are identical or confusingly similar to trademarks or service marks of others that are distinctive at the time of domain name registration.8 The first four factors indicate a good faith use of the domain name, while the last four apply to bad faith use. [...]trademark rights accrue based on use in commerce. [...]this factor is especially important because it allows evidence of use of the domain name to support bad faith intent. "14 In Jysk Bed'N Linen v. Dutta-Roy, the defendant re-registered the bydesignfurniture.com domain name after the previous registration had expired, and then refused to transfer the domain name to his employer.15 The U.S. Court of Appeals for the Eleventh Circuit agreed with the district court's analysis, which held the defendant liable under the AcPa.