Archives For ACPA

Anticybersquatting Consumer Protection Act (ACPA) – Strong Medicine for Trademark Trolls

July 17, 2017 — Leave a comment

The Anticybersquatting Consumer Protection Act exists to protect and give a remedy to owners of trademarks whose rights are being violated by a third party.  Often referred to as “trademark trolls” these third parties may be liable to the owner of the trademark if with “a bad faith intent to profit from that mark… registers, traffics in or uses a domain name” that creates a likelihood of confusion to the owners’ registered trademarks.  Unfortunately these domain holdups are far too common and present real business issues for legitimate trademark owners.

Here’s how the holdup games works and how you can prevent it.  Generally speaking you likely just started a new business or launched a new product.  You’ve generated some digital press, people are visiting your website, and you’re making money.  Your customers are taking note of your success but so are domain pirates.  One such “enterprising” individual registers a similar domain name to yours.  They may have even copied some of your website’s images or text.  You probably don’t even know they exist until a customer tells you they stumbled on a possibly fake site looking for yours.  Alternatively the trademark troll emailed you to let you know they coincidentally own a similar domain as yours.  Huh… what a coincidence!

So what can you do to prevent or mitigate this behavior?  First you need to be smart about your IP.  Before you go to market secure any trademarks with an intent-to-use trademark.  Second, you need to lock down and register any similar website domains that a trademark troll could profit from.  Common misspellings and pluralization are common methods used by the domain pirates.  Third, do not respond to the baiting email.  Contact your trademark attorney for a strategy discussion.

Your trademark attorney can advise you about what steps should be taken next.  While monetary damages and possibly attorney’s fees are available under the ACPA you’re more likely to receive a court order canceling the offending parties domain registration.  Contact Mighty Marks for a free consultation

 

In Trademark Disputes
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Domain Law 101: The Anticybersquatting Consumer Protection Act

August 4, 2015 — Leave a comment

Startups and businesses of all sizes often struggle to obtain the right domain name for their companies. Many third parties own domain names you may want to use and they often have a legal right to do so. However, when they don’t have such a legal right, and when you have a valid trademark claim to the domain, the Anticybersquatting Consumer Protection Act (ACPA) may allow you to force them to transfer the domain to you.

Let’s take a look at the law and what it means to you and your business.

What is Cybersquatting

The ACPA can be used to resolve a lot of different types of abuses. For example, if someone registers a domain using your trademark and offers to sell the domain to you for a large sum of money, that may be a violation of the ACPA. It can also be used to prohibit someone from improperly profiting from the commercial use of your trademark. Further, you can use the ACPA to prevent someone from tarnishing your mark, for example using your trademark in a phonographic website name.

How to Win a ACPA Claim

To win such an argument, you must show certain things, some of which can be hard. Below is a summary of things to consider when deciding if you have a good claim.

1. Valid trademark rights

You must show that you have valid trademark rights. But not just any trademark rights – rather, you must have a trademark that is distinctive or famous. This can sometimes be hard to prove.

2. Where and how your mark is used

To win a ACPA claim you will have to show that the other party registered or trafficked in or otherwise used a domain name that improperly uses your trademark.

Further, you often cannot win a ACPA claim if your mark is used after the top level domain. For example, if someone used “MightyMarks” in a path (like domain.com/mightymarks) it would be hard for us to win a claim. But if they used it in the second level domain (like WeAreMightyMarks.com) we would have a good chance of winning our claim.

3. Time of registration

To prevail under an ACPA claim, you must also be able to show that the registration of the domain in question was made after your trademark became distinctive or famous. This obviously makes it hard for new companies to win under a ACPA claim.

4. Typo domains are also covered

Often times you will find misspelling and typo domains that create problems. For example, if someone created MightyMarksBl0g.com (note the zero in place of the “o”), that would be considered a typo domain. In such a circumstance, even though the domain is not identical to our domain, a court would still likely find in our favor because it would still be confusingly similar to our domain.

5. Bad faith

You must also prove that the other party acted in mad faith. This is probably the hardest element of winning an ACPA claim. Specifically, you must show that the other party acted with “a bad faith intent to profit from” your trademark.

As a result, if another party is using your trademark in a different geographic region, or for a different type of goods or services, even if the use is only minimal, you may have an uphill battle in front of you. Another example is when someone registers their name or nickname. In those situations, even if they are similar to your trademark, they may have a legitimate use and therefore it may be hard to win a claim against that person.

On the other hand, if someone registers a domain incorporating your trademark and immediately tries to sell you the domain for a high price, that is usually pretty good evidence of a bad faith intent. In these situations, you can often win a claim against that person.

What should you do?

If you find yourself with a possible ACPA claim, you should definitely speak to an attorney about your case. he or she can advise you of your rights and talk about what damages and equitable remedies are available to you (we will cover those in a future post).

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Image: Thinkstock/TheaDesign
*This article is very general in nature and does not constitute legal advice. Readers with legal questions should consult with an attorney prior to making any legal decisions.

In Trademark Law , , , ,
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