The Anti-Cybersquatting Consumer Protection Act (“ACPA”) was passed by Congress in 1999 with the intent of preventing and punishing the nefarious behavior of cybersquatting. Cybersquatting refers to several types of behavior involving registration of domain names that are similar to domain names associated with famous trademarks and brands. In general, the criminal scam is either to blackmail the trademark owner into buying a similar-looking domain name or to actually divert customers and sales to a fake website. The fakery often involves the use of alternative domain name extensions, such as using a country code extension rather than more common top-level extensions like .com, .org, or .net. Other fakery involves the use of common typos for the name-brand domain name or the intentional use of similar-looking domain names.

To prove a claim under the ACPA, it must first be shown that the plaintiff owned a domain name that involved a registered trademark. Then it must be shown that the defendant had a domain name that was identical or confusingly similar to the plaintiff’s domain name. This is often an “easy” element to prove since, generally, “confusingly similar” almost always exists if the offending domain name is the same except for an alternative extension.

The second element involves proof that the defendant registered, trafficked in, or used the offending domain name. In other words, it is not enough to own or have a domain name similar to an existing domain name. There must be some USE of the domain name, such as registering or attempting to register it, using it, or offering it for sale. In the ACPA, “trafficked” has a similar meaning to trafficking in drugs or other illicit things. That is, “trafficking” a domain name means offering the domain name for sale in bad faith.

Finally, it must be shown that the defendant acted in bad faith. This element is the gist of cybersquatting and, in some cases, is the most difficult to prove. Of course, in other cases, bad faith is “easy” to prove because of incriminating evidence.

The ACPA uses the concept of “profiting” from cybersquatting. Thus, bad faith can be shown in several ways. As noted above, bad faith can be shown by efforts to extort money from the owner of the legitimate domain name in exchange for releasing ownership of the offending domain name. Facts that might help prove this form of “blackmail” might include:

• Defendant having no trademark or intellectual property similar to the domain name
• Defendant not having a name like or being known as an entity similar to the domain name
• Defendant not making legitimate use of the offending domain name/website
• Defendant having no explanation for obtaining a domain name/website that is/was identical or confusingly similar to the plaintiff’s trademarked name
• Any efforts to conceal contact information when registering or attempting to register the offending domain name
• And pattern or other examples of the defendant engaging in similar nefarious behavior
• And more

Bad faith can also be shown where actual efforts were made by the defendant to divert customers and sales from the plaintiff’s trademarked domain name/website.

A plaintiff who is successful under the ACPA can recover damages, statutory damages of $1,000 to $100,000 per domain name, disgorgement of profits, attorneys’ fees, and injunctive relief.

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