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Your client, ABC Drug Company ("ABC Drug"), a nationally recognized producer of a variety of pharmaceuticals, comes to you with peculiar problem. Several years ago, ABC Drug
created a web site using the domain name "www.abcdrug.com," which provides doctors and the general public with a variety of information on diseases, developments in drug
therapy, and general information about ABC Drug. The web site has been quite successful, generating more than 10,000 hits per day. Several weeks ago, the General Counsel of ABC Drug
received a letter from an individual in the United Kingdom stating that the individual had registered the domain names "abcdrug.net," "abcdrug.biz,"
"abcdrugcompany.com" and "abc-drug.com" with an U.S.-based domain name registry. In addition, ABC Drug has learned that the individual has registered the domain name
"aventia.com," which just happens to be the name of ABC Drug's newest and most promising pharmaceutical drug for treating Alzheimer's disease. For a substantial fee, the person
is willing to transfer the domain names using "ABC Drug" back to your client. Otherwise, the individual intends to begin using some of the names for her own purposes, sell them
to ABC Drug's competitors, or create an "anti-ABC Drug" web site. How can you help your client regain control of its name and rights without paying the demanded ransom?
The Internet and the Changing Nature of Trademark Protection
Stated simply, the Internet and the exploding growth of the World Wide Web (the "Web") permanently changed the nature of intellectual property law. The Web posed a series of new
problems, including the nature of Web search engines, domain names, HTML code and a variety of other nuances never contemplated by prior laws. During the 1990's, the U.S. Congress and
other organizations struggled to catch up with the ingenuity of those determined to profit from the wrongful exploitation of others' intellectual property on the Web.
Prior to 1995, the Lanham Act1 offered the primary remedy for those whose trademarks were infringed on the Web. Under the Lanham Act, a trademark holder must show that (1) it has rights in the trademark and (2) that the unauthorized use of the trademark by another in commerce will likely cause consumer confusion, deception or mistake.2 The Lanham Act's standards are not necessarily difficult to apply to another competitor using the marks to provide similar services. The Web, however, spawned the ubiquitous "cybersquatter" - an individual less interested in offering similar goods in commerce than simply extorting payments for the potential value of a domain name. Thus, the very nature of cybersquatting frequently made it impossible to prove several elements of the prima facie Lanham Act case: the cybersquatter was neither using the name in commerce nor seeking to market similar goods. Instead, he or she simply wanted payment for the domain name. Commerce and communication on the Web made application of the Lanham Act inconsistent and, to a large degree, ineffective.3
In 1995, Congress passed the Federal Trademark Dilution Act ("FTDA")4 which, at the time, was regarded as a superior means to combat cybersquatting and trademark infringement.5 Unfortunately, as noted by numerous commentators and courts, the FTDA suffered from its own shortcomings.6 The FTDA lacked clear statutory definitions of such fundamental concepts as "dilution," leaving the circuits to engage in a conflicting set of interpretations regarding (1) which marks deserved protection and (2) what conduct constituted a violation of those marks.7 Moreover,
the FTDA applies only to "famous" marks, requiring the mark holder to prove the "famous" nature of its mark.8 And, perhaps most glaringly, the FTDA did not directly address "cybersquatting" or provide for any penalty for such behavior. As one commentator bluntly put it, "the once wildly celebrated FTDA turn[ed] out to lack much luster."9
The Anticybersquatting Consumer Protection Act
President Clinton signed the Intellectual Property and Communications Omnibus Reform bill (the "Bill") into law on November 29, 1999. The Bill included a new law entitled the
Anticybersquatting Consumer Protection Act ("ACPA"),10 which had been cosponsored, in part, by Senator Orrin Hatch.11 The legislative purpose behind the
ACPA was "[t]o protect consumers and American businesses, to promote the growth of online commerce, and to provide clarity in the law for trademark owners by prohibiting bad-faith
and abusive registration of distinctive marks as Internet domain names with the intent to profit from the goodwill associated with such marks - a practice commonly referred to as
“cybersquatting.'"12 "Cybersquatting" is the practice of registering well-known brand names as Internet domain names in order to force the rightful owners of the marks to pay for the right to engage in electronic commerce under their own brand name.13 In doing so, the ACPA drafters intended to remedy "the perceived shortcomings of applying the [FTDA] to cybersquatting cases."14 The
ACPA adds both a new cause of action and a new injunctive remedy against cybersquatters.15
Under the ACPA, a person is liable for civil damages if they (1) register, use or traffic in a domain name that is (2) identical or confusingly similar to (3) a distinctive or famous mark
owned by the plaintiff, and (4) the person has a "bad faith intent to profit" from such activity.16 As a remedy against cybersquatters, the ACPA is much better tailored than either the Lanham Act or the FTDA. Unlike the FTDA, the ACPA contains no requirement that the plaintiff prove "dilution" of an existing famous mark. The ACPA also adds a unique in rem jurisdiction provision to give domestic plaintiffs the ability to obtain control over their marks against international, or absentee, defendants who would be beyond the reach of U.S. courts. Each of these aspects of the ACPA is addressed below.
1. Register, Use or Traffic in a Domain Name
This standard broadens the traditional definition of a cybersquatter, which initially addressed the individual who simply registered domain names with trademarks for the purpose of selling
them to the trademark holder (or its competitors).17 The ACPA's definition includes persons who "register, use or traffic" in domain names. Thus, even the act of registering a domain name can give rise to liability if the other prima facie elements are present. For example, a person who "warehouses" the domain names of various companies (i.e. registers the domain names and pays the required registration fee), but otherwise takes no action with respect to the names, may be liable under the ACPA. Likewise, an individual who uses a domain name containing trademarks by establishing a website to compete with, or criticize, the trademark holder may also run afoul of the ACPA.18 Finally,
the ACPA still includes the more traditional definition of cybersquatting - those who "traffic" in domain names containing trademarks of others. In sum, a variety of conduct
using domain names containing others' trademarks can result in liability under the ACPA.
2. Identical or Confusingly Similar
Although the term "confusingly similar" is not defined by the ACPA, at least one commentator has suggested that "[t]he plain language of the statute suggests a simple,
direct comparison between the trademark and the domain name."19 This is a different and presumably lower standard than the multi-factor "likelihood of confusion" test developed under the Lanham Act.20 And, in fact, this interpretation appears to be the approach chosen by a majority of courts construing the ACPA. In Shields v. Zuccarini,21 the plaintiff trademark holder owned a domain name entitled "joecartoon.com," which he alleged was infringed by the defendant's registration of "joescartoon.com," "joecarton.com," "joescartons.com," "joescartoons.com."22 The United States Court of Appeals for the Fourth Circuit, affirming the district court's analysis of "confusingly similar," found that "[t]he strong similarity between these domain names and joecartoon.com persuades us that they are "confusingly similar.""23 The comparison made by the Shields court was essentially a facial comparison of the plaintiff's marks and the defendant's domain names. The Shields court also found that evidence of actual confusion by Web consumers looking for the plaintiff's website demonstrated the confusing quality of the defendant's domain names.24 Other courts have also made such direct comparisons, such as finding a Swiss defendant's registration of the terms "swix.net" and "swix.com" to be confusingly similar to a ski wax company's trademark on the term "SWIX."25 As an interesting aside, courts have rejected the argument that different Top Level Domain names (e.g., ".net" or ".com") create sufficient dissimilarity between existing domain names and infringing, similar names.26 In sum, it appears the key evidence to prove this element will be contained in the facial similarity between the defendant's domain name and the plaintiff's existing marks. Additionally, evidence of actual confusion by Web consumers, or others, will substantially bolster the plaintiff's position.
3. Distinctive or Famous Mark
The ACPA requires that the domain name be identical to, or confusingly similar with, a "distinctive" or "famous" mark in existence at the time the allegedly infringing
domain name is registered.27 This is an easier standard to satisfy for the plaintiff than the "dilution" and "fame" elements required under the FTDA. Nonetheless, neither "distinctive" nor "famous" are defined by the ACPA. What does it mean, then, to be a "distinctive" or "famous" trademark? Some courts, simply examining the nature of the name and the marketplace without more detailed analysis, have found certain marks to be famous. For example, without citing any specific test to determine "famousness," one court found that "Ernest and Julio Gallo Winery" was a famous mark and that the website "ERNESTANDJULIOGALLO.COM" infringed that mark under the ACPA.28 Other courts have suggested that the term "famous" in the ACPA should be interpreted using the statutory factors established in the FTDA.29 "Fame under the ACPA is measured by the same Ôrigorous criteria' set forth in the FTDA."30 The FTDA sets forth a variety of factors to determine whether a mark is famous, including the extent and use of the mark, the mark's distinctiveness, use of similar marks by other parties, the use of advertising and publicity of the mark, among others.31 Regardless, even if a mark is not "famous" by FTDA, or other, standards, the ACPA provides a lower threshold for plaintiffs to satisfy than the FTDA because it also affords protection to "distinctive" marks.
Like the term "famous," the ACPA does not define "distinctive." The term "distinctiveness" is a term of art in trademark law.32 Distinctiveness is the degree of uniqueness, or inherent qualities, that a particular mark possesses.33 Importantly, a trademark can be distinctive before it has been used, or is "famous."34 Furthermore, as the Second Circuit has explained, "distinctiveness" is different from "fame": "Distinctiveness refers to inherent qualities of a mark and is a completely different concept from fame. A mark may be distinctive before it has been used - when fame is nonexistent. By the same token, even a famous mark may be so ordinary, or descriptive as to be notable for its lack of distinctiveness."35 For example, in Advance Magazine Publishers, Inc. v. Vogue International,36 the district court found that the trademarks of the magazine "Vogue" were distinctive because the plaintiff had registered the marks, used the marks for more than 100 years and spent millions of dollars promoting the marks.37 By contrast, lesser-known trademarks are also accorded "distinctiveness" protection. The terms REDI and REDIBOOK, although not "famous" or well-known marks, were found to be distinctive marks of the plaintiff's on-line stock trading service, which it had used and promoted for 8 years.38
In either case, the plaintiff should be prepared to present evidence regarding its use of the mark, including length of use, advertising, unique uses, and any other evidence showing the
plaintiff's particular relationship to the mark. Many marks likely will not meet the "famous" criteria set forth in the FTCA. However, much of the "famous" proof also
bears directly on the distinctiveness of the mark. If the plaintiff also takes particular care to demonstrate its unique uses of the mark, the plaintiff should at least be able to satisfy
the distinctiveness test.
4. Bad Faith Intent to Profit
As a practical matter, this final element frequently becomes the pitched battleground for ACPA cases. The plaintiff must prove that the defendant had a "bad faith intent to
profit" from its use of the allegedly infringing domain name.39 This is obviously a subjective inquiry into the defendant's state of mind that may be proved either through direct or circumstantial evidence.40 Ostensibly to assist with the bad faith determination, the ACPA provides a non-exhaustive list of factors that the court may examine:
1.the trademark or other intellectual property rights of the person, if any, in the domain name; 2.the extent to which the domain name consists of the legal name of the person or a name
that is otherwise commonly used to identify that person;
3.the person's prior use, if any, of the domain name in connection with the bona fide offering of any goods or services;
4. the person's bona fide noncommercial or fair use of the mark in a site accessible under the domain name;
5.the person's intent to divert consumers from the mark owner's online
location to a site ... that could harm the goodwill represented by the mark, either for commercial gain or with the intent to tarnish or disparage the mark ...;
6. the person's offer
to transfer, sell, or otherwise assign the domain name to the mark owner or any third party for financial gain without having used ... the domain name in the bona fide offering of any
goods or services ...;
7. the person's provision of material and misleading false contact information when applying for the registration of the domain name ...;
8. the person's
registration or acquisition of multiple domain names which the person knows are identical or confusingly similar to marks of others ...; and
9. the extent to which the mark incorporated in the person's domain name registration is or is not distinctive and famous....
In addition, in several seminal ACPA cases, courts have suggested that "the most important grounds for finding bad faith “are the unique circumstances of th[e] case, which do not fit
neatly into the specific factors enumerated by Congress but may nevertheless be considered under the statute.'"41 In essence, this means a court is going to look directly into the eyes of the defendant and ask "What did you intend to do?" Almost universally, if the plaintiff is able to produce evidence that the defendant was aware of the similarity with the plaintiff's mark and the defendant intended to exploit that similarity, either through diverting Web traffic, or through a direct sale of the domain name, courts have found that the bad faith element is satisfied.42 For example, in Virtual Works v. Volkswagen of America,43 the defendant was using "vw.net" as its domain name for its own business, but had also attempted to sell the domain name to Volkswagen.44 Unfortunately (for them anyway), the defendants admitted in their depositions that they were aware that "vw.net" would likely divert Web traffic from consumers looking for Volkswagen's site.45 They also said they hoped that they would be able to sell the domain name to Volkswagen "for a lot of money."46 To the court, this testimony was the talisman of bad faith - the defendants knew their domain name was confusingly similar to the plaintiff's trademark and they hoped to exploit that fact either directly, or indirectly, for profit.47 Bad faith conduct also is not limited to trying to sell the domain name or steal Web consumer traffic. In Morrison & Foerster v. Wick,48 a defendant who had created a web site using a domain name virtually identical to a law firm's trademarked name (i.e., Morrison & Foerster) was found to have acted in bad faith because the purpose of the website was to damage the reputation of the law firm and post links to anti-Semitic and racist sites.49
As ACPA case law has developed on bad faith, courts have also had the chance to determine what is not bad faith. For instance, the fact that the defendant was aware of the existence of a
pre-existing trademark similar to the domain name is not, standing alone, sufficient to establish bad faith.50 Even a domain name that essentially copies the plaintiff's trademark will not give rise to liability without additional evidence of bad faith on the part of the defendant.51
The ACPA also contains a "safe harbor" provision for defendants who register domain names in good faith. Namely, a court will not find bad faith if the defendant both
"believed and had reasonable grounds to believe that the use of the domain name was fair use or otherwise lawful."52 For example, in Newport Electronics, Inc. v. Newport Corp.,53 the
court found that evidence that both parties "possess[ed] trademark rights to some portion of the domain names" and that neither party had attempted to sell the names presented
evidence of lawful use, making summary judgment on bad faith inappropriate.54 Cybersquatters, however, should not rely too heavily on the safe harbor provision. After all, "[a]ll but the most blatant cybersquatters will be able to put forth at least some lawful motives for their behavior."55 Aware of that possibility, one court has already reasoned that the safe harbor provision should be construed narrowly to prevent the ACPA's purpose from being undermined.56 Consequently, "[a] defendant who acts even partially in bad faith in registering a domain name is not, as a matter of law, entitled to benefit from the Act's safe harbor provision."57 Following this reasoning, once a court has made the "bad faith" inquiry and found a number of applicable bad faith factors, a court is unlikely thereafter to find "good faith" under the safe harbor provision.58
To satisfy the bad faith element, the plaintiff under the ACPA needs to develop evidence as outlined in the nine statutory factors. Furthermore, following the case law, the plaintiff
should focus on the defendant's intent to profit from its registration of the domain name. Is the defendant seeking to capitalize on the goodwill associated with the plaintiff's marks by
setting up a competing web site with the domain name? If so, how is the defendant doing this? Is the defendant using trademarks in its HTML code, or meta tags, which guide Web consumers
to a particular web site? This is the type of evidence that points directly to the defendant's intent in registering and using the domain name.
Remedies under the ACPA
The ACPA provides for both injunctive relief and damages. The ACPA incorporates previously existing Lanham Act injunctive remedies and applies them to violations of the ACPA.59 A court may grant the trademark owner an injunction "as the court may deem reasonable, to prevent the violation of any right of the registrant of a mark registered in the Patent and Trademark Office or to prevent any violation under section 1125(a) of this title."60 As a practical matter, this usually means the plaintiff will seek to shut down active websites using infringing domain names and will also seek the transfer of the domain name from defendant to the plaintiff.
The ACPA allows the plaintiff to make an election between actual damages and statutory damages.61 In seeking actual damages, the plaintiff may attempt to recover the defendant's profits from the infringement, plaintiff's actual damages, and court costs.62 More interestingly (and frequently much more useful), the ACPA gives the plaintiff the option to elect statutory damages.63 The plaintiff may plead for both of the damage remedies and make the actual election at any time before final judgment is rendered.64 The statutory damage amounts are established at "not less than $1,000 and not more than $100,000 per domain name, as the court considers just."65 The statutory damages provision gives the plaintiff a meaningful remedy against a cybersquatter who simply is attempting to extort a payment from the defendant for the domain name.66 In terms of establishing the appropriate amount, one could make a credible argument to the court that the defendant has set the minimum amount for any statutory penalty based on the amount it has demanded for the domain name.
Jurisdiction (In Rem and In Personam)
The ACPA permits the plaintiff trademark holder to proceed either with an in personam action or, in the appropriate circumstances, an in rem action.67 The plaintiff must choose one, or the other, because the two proceedings are mutually exclusive.68 The in personam provisions permit a plaintiff trademark holder to bring an action in any judicial district which satisfies Due Process and the "minimum contacts" standards set forth by the U.S. Supreme Court.69
The ACPA also recognized two particular difficulties faced by domestic plaintiffs trying to pursue claims against cybersquatters. First, some cybersquatters live outside the
United States and, accordingly, are beyond the reach of U.S. courts.70 Second, other cybersquatters provide false information to the domain name registering authority, making it impossible to locate the cybersquatter in the event of a dispute. To address these very real problems, the ACPA allows a plaintiff bring an in rem action against the domain name.71 This action is brought directly against the domain name itself, rather than the person who registered the domain name.
The in rem procedures are somewhat cumbersome and are only appropriate once the plaintiff has determined that in personam jurisdiction is unavailable.72 The plaintiff may use the in rem jurisdiction provisions when two criterion are satisfied: (1) the trademark being registered as a domain name is a registered trademark or otherwise protected under section 43 (a) or (c) of the Lanham Act73 and (2) the plaintiff cannot obtain personal jurisdiction over the defendant74 or the plaintiff is unable, after "due diligence,"75 to locate the defendant.76 Courts have imposed some additional procedural requirements under this section. First, if the plaintiff is able to identify and locate the defendant, the plaintiff must also show "due diligence" in trying exert personal jurisdiction over the defendant.77 In essence, the plaintiff must show that it has attempted to serve or otherwise obtain personal jurisdiction over the defendant.78 It is unclear exactly what would satisfy such a "due diligence" requirement. Presumably, if the plaintiff establishes that the putative defendant is not a resident of the United States and had insufficient "minimum contacts" with the forum state, the requirement would be met.79 Second, the plaintiff must show that the defendant is not subject to personal jurisdiction in any U.S. court.80 If this standard is met, the plaintiff will be permitted to proceed in rem against the domain name.
From a procedural standpoint, the in rem action must be commenced "in the judicial district in which the domain name registrar, domain name registry, or other domain name authority
that registered or assigned the domain name is located."81 This means that there are only a few judicial districts in which in rem actions may be brought. For example, the Eastern District of Virginia has seen a large number of cases due to the fact that Network Solutions, Inc., which was, until 1998, the exclusive registrar of the non-geographically-oriented Top Level Domain names, is located in Herndon, Virginia. Courts have also specifically rejected attempts by plaintiffs to expand the in rem jurisdiction provisions beyond the limited number of districts contemplated by the ACPA.82
Once the in rem action is filed and written notification provided to the domain name registrar, the domain name registrar deposits the domain name registrar certificate in the registry of
the court.83 This provides the court with jurisdiction over the res and the case proceeds forward. The registrant/defendant may thereafter file an answer, motions and appear in court to contest the in rem proceeding without subjecting itself to personal jurisdiction.84 The
sole remedy under the in rem provisions allows the court to cancel the domain name registration and transfer the name to the plaintiff.85 Monetary damages are not available because the proceeding is against the res not the registrant/defendant.
Conclusion
So, what about ABC Drug Company? It appears that ABC Drug has a good case under the ACPA, depending on how a few additional key pieces of evidence fit into the puzzle. This provides a
thumbnail sketch of some of the evidence that would help your client regain its trademarks on the Web. First, ABC Drug should have little problem proving the "famous" or
"distinctive" nature of its name "ABC Drug Company." You should obtain copies of your client's trademark registrations, evidence of their use, marketing and other
indicia of the nature of the trademark "ABC Drug." Second, although the domain names registered by the cybersquatter are facially similar derivatives of "ABC Drug,"
you should also check with your client to see if they have received complaints from consumers looking for their "abcdrug.com" site who have been confused or misdirected.
Evidence of actual confusion will weigh heavily in ABC Drug's favor. Third, you should also attempt to gather evidence of the cybersquatter's "bad faith intent to profit" by
seeking to sell the domain names. A letter, or e-mail, containing the offer to sell the domain names to ABC Drug, or transfer them to another party if the amount is not paid, is potent
evidence of bad faith. Also, you should simply track the ACPA factors of bad faith to support this element. Finally, you should give some thought to jurisdiction and the remedy you seek.
In this case, the cybersquatter lives in the U.K. and likely has never had the "minimum contacts" necessary to establish personal jurisdiction over him. Therefore, the most
appropriate action may be simply an in rem suit in the judicial district in which the registrar is located.
Footnotes
1. 15 U.S.C. ¤¤ 1051-1127 (1998).
2. Id. ¤ 1114(I).
3.
D. Troy Blair, My Trademark Is Not Your Domain: Development and Recent Interpretations of the Anticybersquatting Consumer Protection Act, 39 Duq. L. Rev. 415, 419 n.77 (Winter 2001).
4. Federal Trademark Dilution Act of 1995, Pub. L. No. 104-98, 109 Stat. 987 (1995) (codified as amended at 15 U.S.C. ¤ 1125(c) (1998)).
5.
Xuan-Thao Nguyen, Blame it on the Cybersquatters: How Congress Partially Ends the Circus Among the Circuits with the Anticybersquatting Consumer Protection Act, 32 Loy. Univ. L. Rev. 777, 777-78 (2001).
6. See Blair, supra note 3, at 419.
7. See Nguyen, supra note 5, at 781-792.
8. See 11 U.S.C. ¤ 1125(c).
9. See Nguyen, supra note 5, at 778.
10.
Anticybersquatting Consumer Protection Act, Pub. L. No. 106-113, 113 Stat, 1501 (1999) (codified at 15 U.S.C. ¤ 1125(d) (1998)).
11. See S. Rep. No. 106-140, at 5 (1999).
12. Id. In additional history, it was noted that the ACPA was passed because "cybersquatters have become increasingly sophisticated as the case law developed and now take the
necessary precautions to insulate themselves from liability." S. Rep. No. 106-140, at 7 (1999).
13. Virtual Works, Inc. v. Volkswagen of America, Inc., 238 F.3d 264 (4th Cir. 2001).
14. Sporty's Farm L.L.C. v. Sportsman's Market, Inc., 202 F.3d 489, 496 (2d Cir. 2000).
15. 11 U.S.C. ¤ 1125(d).
16. Id.
17. Virtual Works, Inc., 238 F.3d at 268.
18. People for the Ethical Treatment of Animals v. Doughney, 113 F. Supp.
2d 915 (E.D. Va. 2000), aff'd, 2001 WL 957410 (4th Cir. Aug 23, 2001).
19. See Nguyen, supra note 5, at 798.
20. Id. This commentator noted that, to apply the
"likelihood of confusion" analysis to the ACPA would "largely undermine congressional intent to curb cybersquatting activities." Id. at 799.
21. 254 F.3d 476 (3rd Cir. 2001).
22. Id. at 478.
23. Id.
24. Id. Other courts have also focussed on the actual confusion to Web consumers looking for the
plaintiff's product or services. See, e.g., Virtual Works, Inc. v. Volkswagen of America, Inc., 238 F.3d 264, 268 (4th Cir. 2001) (finding that "vw.net" was confusingly similar
to Volkswagen's "vw.com" and noting actual consumer confusion).
25. Hartog & Co. AS v. SWIX.com, 136 F. Supp. 2d 531, 533 (E.D.Va. 2001).
26. Shade's
Landing, Inc. v. Williams, 76 F. Supp. 2d 983, 990 (D.Minn.1999) ("Because all domain names include one of these extensions, the distinction between a domain name ending with Ô.com'
and the same name ending with Ô.net' is not highly significant.").
27. 11 U.S.C. ¤ 1125(d)(1)(A).
28. E. & J. Gallo Winery v. Spider Webs Ltd., 129 F. .Supp. 2d 1033, 1035 (S.D. Tex. 2001).
29. Sporty's Farm, L.L.C. v. Sportsman's Mkt., Ltd., 202 F.3d 489, 497 (2d
Cir. 2000); see also Shields v. Zuccarini, No. 00-494, 2000 U.S. Dist. LEXIS 3350, at *11 (E.D. Pa. Mar. 22, 2000) (following Sporty's Farm).
30. Prime Publishers, Inc. v. American-Republican, Inc., 2001 WL 897194, at *9 (D.Conn., Aug, 7, 2001).
31. See 11 U.S.C. ¤ 1125(c)(1)(A)-(H) (1998). In determining whether
a mark is distinctive and famous, a court may consider factors such as, but not limited to -
(A) the degree of inherent or acquired distinctiveness of the mark;
(B) the duration and extent of use of the mark in connection with the goods or services with which the mark is used;
(C) the duration and extent of advertising and publicity of the mark;
(D) the geographical extent of the trading area in which the mark is used;
(E) the channels of trade for the goods or services with which the mark is used;
(F) the degree of recognition of the mark in the trading areas and channels of trade used by the
marks' owner and the person against whom the injunction is sought;
(G) the nature and extent of use of the same or similar marks by third parties; and
(H) whether the mark was
registered under the Act of March 3, 1881, or the Act of February 20, 1905, or on the principle register.
Id.
32. Sporty's Farm, 202 F.3d at 497.
33. Nabisco, Inc. v. PF Brands, Inc., 191 F.3d 208, 215 (2d Cir. 1999).
34. Sporty's Farm, 202 F.3d at 497.
35. Id. A court may also presume that a mark is
"distinctive" if a registered trademark has become uncontestable through continuous use for five years. Id.
36. 123 F. Supp. 2d 790 (D.N.J. 2000).
37. Id. at 793.
38. Spear, Leeds & Kellogg v. Rosado, 122 F. Supp. 2d 403, 406 (S.D.N.Y. 2000)
39. 15 U.S.C. ¤ 1125(d)(1)(B)(I).
40. Virtual Works, Inc., 238 F.3d at 269.
41. Virtual Works, Inc., 238 F.3d at 268 (quoting Sporty's Farm, 202 F.3d at 499).
42. Cline v. 1-888-Plumbing Group, Inc., 146 F. Supp. 2d 351, 359 (S.D.N.Y. 2001).
43. Virtual Works, Inc. v. Volkswagen of America, Inc., 238 F.3d 264 (4th Cir. 2001).
44. Id. at 269.
45. Id.
46. Id.
47. Id.; see also E. &
J. Gallo Winery v. Spider Webs Ltd., 129 F. Supp.2d 1033, 1046 (S.D.Tex. 2001) (finding that plaintiff had no legitimate business interest related to the marks and simply registered the
domain name in hopes of selling it).
48. 94 F. Supp. 2d 1125 (D. Colo. 2000).
49. Id. at 1131-32; see also People for the Ethical Treatment of Animals v. Doughney, 113
F. Supp. 2d 915, 922 (E.D. Va. 2000) (finding that defendant "clearly intended to confuse, mislead and divert internet users into accessing his web site which contained information
antithetical to and therefore harmful to the goodwill represented by the PETA mark"), aff'd, 2001 WL 957410 (4th Cir. Aug 23, 2001).
50. Cline, 146 F. Supp. 2d at 359.
51. Hartog & Co. AS, 136 F. Supp. 2d at 533.
52. 15 U.S.C. 1125(d)(1)(B)(ii).
53. 2001 WL 897156, at *11 (D.Conn. Aug 01, 2001).
54. Id.
55. Virtual Works, Inc., 238 F.3d at 270.
56. Id.
57. Id. (emphasis added).
58. See, e.g., Domain Name Clearing Co., LLC v. F.C.F., Inc., 2001 WL 788975,
at *2 (4th Cir. Jul. 12, 2001) (finding that bad faith elements precluded application of safe harbor provision).
59. See 15 U.S.C. ¤ 1116(a).
60. Id.
61. 15 U.S.C. ¤ 1117(a) and (d).
62. Id. ¤ 1117(a).
63. Id. ¤ 1117(d).
64. Id.
65. Id.
66. Actual damages in such a case would be difficult to prove and unlikely to merit much pursuit.
67. 15 U.S.C. ¤ 1125(d)(1) and (2) (1999).
68. See, e.g.,
Alitalia-Linee Aeree Italiane S.p.A. v. Technologica JPR, Inc., 128 F. Supp. 2d 340, 345 (E.D. Va. 2001) ("Further confirmation for the conclusion that in personam and in rem
jurisdictions under the ACPA are mutually exclusive is found in the different remedies available under each jurisdictional grant.").
69. Id. ¤ 15 U.S.C. ¤ 1125(d)(1).
70. Courts had specifically concluded that the Lanham Act did not contain authority to bring an action based on in rem jurisdiction. Porsche Cars North America, Inc. v.
Porsche.Com., 51 F. Supp. 2d 707, 712 (E.D. Va. 1999).
71. 15 U.S.C. ¤ 1125(d)(2) (1999).
72. "This result is consistent with the settled principle that in rem
jurisdiction is an alternative basis for jurisdiction where in personam jurisdiction is not available." Alitalia-Linee, 128 F. Supp. 2d at 345 n.10 (citation omitted).
73. Id. ¤ 1125(d)(2)(A)(i).
74. Id. ¤ 1125(d)(2)(A)(ii).
75. "Due diligence" requires the plaintiff to (1) provide "a notice of the alleged
violation and intent to proceed [in rem] to the registrant of the domain name at the postal and e-mail address provided by the registrant to the registrar" and (2) "publish
notice of the [in rem] action as the court may direct promptly after filing." Id. ¤ 1125(d)(2)(A)(ii)(II).
76. Id.
77. Heathmount A.E. Corp. v. Technodome.Com, 106 F. Supp. 860, 867 (E.D. Va. 2000).
78. Id.
79. Id. at 863.
80. Id. at 867.
81. 15 U.S.C. ¤ 1125(d)(2)(A).
82. See Fleetboston Financial Corp. v. Fleetbostonfinancial.com, 138 F. Supp. 2d 121, 124-35 (D. Mass. 2001).
83. 15 U.S.C. ¤ 1125(d)(2)(D).
84. See, e.g., Caesars World, Inc. v. Caesars-Palace.Com, 112 F. Supp. 2d 505, 509 (E.D. Va. 2000) (finding that "in personam
jurisdiction cannot be based merely on an appearance in an in rem action"); Harrids Ltd. v. Sixty Internet Domain Names, 110 F. Supp. 2d 420, 421-23 (E.D. Va. 2000) (same).
85. Id. at ¤ 1125(d)(2)(D).
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