|Remedies Available Under the Anticybersquatting Consumer Protection Act
By Eric Macramalla
The U.S. statute, the Anticybersquatting Consumer Protection Act ("ACPA"), provides a civil cause of action against anyone who, with a bad faith intent to profit, registers, traffics in, or uses a domain name that is confusingly similar, or identical, to a distinctive mark, or confusingly similar, or dilutive of, a famous mark. Courts have the authority to grant injunctions, award damages, including statutory damages between $1,000 and $100,000 per domain name, order the forfeiture, transfer, or cancellation of a domain name, as well as costs and attorney fees.
From a Canadian perspective, the most salient feature of the ACPA is the availability of an in rem action. The ACPA allows a trade-mark owner to file an in rem action against the domain name itself if personal jurisdiction is unavailable, or if the infringer cannot be located following a diligent effort to do so. The judicial district in which the domain name Registrar or Registry is located determines where the action is filed. The remedies in an in rem action are limited to a court order for the forfeiture or cancellation of the domain name or the transfer of the domain name to the owner of the mark.
The Heathmount A.E. Corp. v. Technodome.com, 2000 U.S. Dist. LEXIS 10591 (E.D. Va. July 24, 2000) case illustrates the broad applicability of the ACPA, which involved a Canadian Plaintiff and a Canadian Defendant. The Defendant's only connection to the U.S. was that its domain name was registered with Network Solutions, Inc., located in Virginia. The Plaintiff brought an in rem action against the domain name technodome.com. In denying the Registrant's motion to dismiss the claim based upon forum non conveniens grounds, the Court held that an in rem action is available where a plaintiff has shown that personal jurisdiction cannot be asserted over a defendant.
Subsequent decisions have extended the statute further by allowing claims based on foreign trade-marks and foreign domain name registrations - Barcelona.com v. Excelentisimo Ayuntamiento de Barcelona 189 F. Supp. 2d. 367, 376 (E.D. Va. 2002): the Court held that the ACPA makes no distinction between U.S. and foreign marks within the statute's text; Cable News Network v. Cnnews.com, Cable News Network v. CNNews.com, 162 F.Supp.2d 484 (E.D.Va. Sept. 18, 2001): the Plaintiff was located in Georgia, the Registrant and Registrar in China and the Registry in Virginia. The Court found that in rem jurisdiction was constitutionally proper when a court sits in the same district in which the Registry is located; Globalsantafe Corp. v. Globalsantafe.com, 250 F.Supp.2d 610, 612 (E.D.Va. 2003): the Court ordered the domain name Registry to remove a domain name from the Registry. In an earlier decision, a U.S. court had found that the domain name infringed a trade-mark and had ordered the cancellation of the domain name registration. The Registrar, located in Korea, then secured a Korean Court ruling barring it from complying with the cancellation order. The U.S. Court dismissed any claim of comity, holding that the first court to take jurisdiction over property in rem may exercise that jurisdiction.
Canadian parties with a presence in the U.S., or who are dealing with a Registrant with some connection to the U.S., be it either through commerce or through the registration of a domain name, may wish to consider availing themselves of the ACPA, by either asserting in personam jurisdiction over the Defendant, or in rem jurisdiction over a domain name.