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Issue 58 | March 10, 2003
Cybersquatting : 3rd Circuit's ruling opens the door to pursue claims prior to Nov. 1999
 The Anticybersquatting Consumer Protection Act was enacted to prevent Cybersquatting, and to allow trademark owners a cause of action in District Court against alleged Cybersquatters that improperly register or use a domain name, as defined within the Act. One of the Act's main benefits to trademark owners alleging Cybersquatting was the Act's provisions for statutory damages if Cybersquatting was proven.

The effective date of the Act was November 1999, and the Act has been determined not to apply retro-actively to domain names registered before the Act's effective date. Until recently, trademark owners alleging that a domain name registered prior to the Act was improperly registered or used were limited to administrative proceedings under the ICANN Uniform Dispute Resolution Proceedings (no damages recoverable other than transfer of the domain name), or to a normal trademark infringement/dilution cause of action requiring proof of damages suffered as a result of the alleged Cybersquatting.

A recent ruling by the 3rd Circuit in Schmidheiny v. Weber, gives new hope to owners that allege Cybersquatting for domain names registered before the effective date of the Act.

In Schmidheiny v. Weber, the 3rd Circuit addressed the Act's applicability to re-registration of a domain name that was originally registered before the Act's effective date. The 3rd Circuit determined that re-registering a domain name after the effective date of the Act is a "registration" that falls under the Act, at least for a registration to a new owner. In reaching this conclusion, the 3rd Circuit specifically rejected the argument that "registration" as used within the Act only applied to the original registration of the domain name.

In other words, after the Schmidheiny v. Weber decision, even if the domain name was originally registered before the Act, when the domain name owner re-registers the domain name, the re-registration is subject to the Act. Accordingly, the domain name owner can be liable under the Act for bad faith re-registration or bad faith use of the domain name. While it remains to be seen whether the alleged bad faith use must be use that occurs after the re-registration, the 3rd Circuit's ruling opens the door for trademark owners to now pursue Cybersquatting claims under the Act for domain names registered prior to the effective date of the Act.

To discuss this topic further, please contact the author, Robert Dulaney at Thomas, Kayden, Horstemeyer & Risley. The information contained in this email is provided for informational purposes only and does not represent legal advice. Neither the APLF nor the author intends to create an attorney client relationship by providing this information to you through this message.

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