ACPA Legislative History: Registering Domain Names of Established Trademarks Is Akin To Cyber-Piracy . Did you ever wonder what Congress and industry experts found in drafting the Anti-Cybersquatting Protection Act (ACPA)? See this extended post for legislative history highlights.
Many judges in the US and abroad simply don't understand the internet, let alone the domain name registration system or ICANN policies. Too often, cybersquatting complaints under the ACPA are met with blank stares - or even worse yawns - from the bench.
- If trademarks can be 'fairly used' to describe products or services consistent with trademark holder rights, why can't a third party use a trademark in a domain name?
- And if trademarks can be used by third parties in certain instances in the folder or file name portion of the domain path (www.domainname/folder/filename.htm), why can't the trademark be used in the domain name itself?
Registering, trafficking or using famous or registered trademarks in a domain name without permission or license from the trademark holder is per se unlawful (of course assuming likelihood of confusion and other elements are satisfied). Other internet uses of trademarks, such as noted above, may be legal. The answer to the question "What Makes Domain Names So Special?" is found in the language of the ACPA statute its legislative history.
Just like a shoe store can use Nike's trademark in a shoe sale advertisement or display, a third party can sometimes claim fair use of a trademark on a web page or in the domain path to the right of the TLD. However, a third party can not use 'Nike' in its company name, store name or domain name since these types of uses suggest common ownership, sponsorship or affiliation with Nike, Inc.
For a full and comprehesive analysis of the legislative history behind the ACPA, keep reading below ..