Now the first thing you need to know is that the ACPA, the Anti-cybersquatting Consumer Protection Act, has a very limited number of cases that have been decided under it. The language of the statute is fairly clear, but, as with any law, there's room for disagreement about what the statute really means. One of the defenses a cybersquatter will put forward if you sue them under the ACPA is that they did not have the bad faith intent to profit from your trademark when they registered, used, or trafficked in the domain.
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My name is cybersquatting law attorney Enrico Schaefer. Today what we're going to do is we're going to talk a little bit about a lawsuit that we concluded recently, an Anti-cybersquatting Consumer Protection Act lawsuit brought by our client, the plaintiff, against a number of defendants who had registered en masse, not tens, not dozens, but hundreds of typographical variations of our client's famous and incontestable trademarks. There were a lot of lessons learned along the way, and I want to share some of those lessons with you as we talk about what kinds of defenses you might expect to see if you file an anti-cybersquatting consumer protection act lawsuit as a plaintiff against a defendant in court.
Now, in a mass cybersquatting case where someone has registered a number of typographical variations of your domain, what they will sometimes say is that there are so many words that are trademarked that, in fact, virtually every word or combination of words has a trademark associated with it, that there is simply no way to avoid the registration of typo-domain names which have some trademark implications. The argument that they will make is that until they receive notice from you that you have trademark rights in a particular word or phrase and that their domain is typographically similar to your trademark, that until you give them that specific notice that they have no obligation to avoid you as a trademark.
What they're really saying is that they didn't have the bad faith intent to profit from your trademark because they were unaware that you existed prior to your notice letter, and that if they transfer the domain name to you after you send a cease and desist letter to them, alleging trademark infringement and cybersquatting, that they're off the hook, that in fact their willingness to transfer the domain name to your control after you provide them with notice of your trademark is evidence of good faith.
Now in some instances the defendant or defendants who you sue in court will have registered thousands or tens of thousands or hundreds of thousands or millions of typographical domain names, where they actually measure the traffic on typos and then register those typos that, in fact, look like they can generate enough money to cover the registration fee of the domain name and perhaps leave a little profit at the end of the day if they put up a parking page or a lander page on the domain. What those defendants will sometimes say is that Congress did not intend the Anti-cybersquatting Consumer Protection Act to apply to mass domain registration.
They will also say that they didn't have any specific intent to infringe your trademark because there was software that was essentially auto-registering domain names in bulk. Bulk registration defendants who get sued tend to want to heighten the requirement of bad faith intent to profit from your mark. What they will say is that they had no bad faith intent to profit from your mark because they didn't know that you existed. They didn't know of your trademark.
These are the types of defenses that you're going to see in a ACPA lawsuit, and you need to be aware of them. You need to be able to deal with them on the front end. We were very successful because we saw those defenses coming, and we had tremendous amounts of evidence that, in fact, even after the defendants received notice of trademark infringement they continued to hold and register new typographical variations of those trademarks. They didn't really try and avoid anything at all. They simply turned over domains once they got caught.
My name is cybersquatting attorney Enrico Schaefer, and we'll see you next time.
You’ve been listening to Cybersquatting Law Radio. Whether you are filing or defending a claim of cybersquatting under the Uniform Domain Name Dispute Resolution Policy (UDRP) or Anticybersquatting Consumer Protection Act (ACPA), whether you have a cybersquatting and domain dispute issue, out internet lawyers are ready to answer your questions.