What the ACPA Requires
The ACPA, codified at 15 U.S.C. § 1125(d), makes a person liable to the owner of a mark, without regard to the goods or services of the parties, if that person has a bad faith intent to profit from the mark and registers, traffics in, or uses a domain name that:
- in the case of a mark that is distinctive at the time of registration of the domain name, is identical or confusingly similar to that mark;
- in the case of a mark that is famous at the time of registration of the domain name, is identical or confusingly similar to, or dilutive of, that mark; or
- is a word or name specially protected by federal statute, such as the Red Cross and Olympic designations.
The statute speaks of “the owner of a mark,” including a personal name protected as a mark. It does not require that the mark be federally registered, although registration helps in several ways discussed below.
Distinctive vs. Famous: Two Different Thresholds
Distinctiveness and fame are related but not interchangeable. A mark can be distinctive without being famous, and the fame standard is far harder to meet.
Distinctiveness: Does the Mark Identify a Source?
Distinctiveness asks whether consumers see a term as identifying the source of goods or services. Trademark law places marks on a spectrum from strongest to weakest:
- Fanciful marks are invented words, like KODAK, and are inherently distinctive.
- Arbitrary marks are real words used in an unrelated context, like APPLE for computers, and are inherently distinctive.
- Suggestive marks hint at a quality of the goods but require imagination to connect, and are inherently distinctive.
- Descriptive marks directly describe a feature or characteristic and are distinctive only after they acquire secondary meaning.
- Generic terms name the product category itself and can never be distinctive.
If a mark is merely descriptive, the owner must prove it had acquired distinctiveness before the domain name was registered. That is the same kind of proof the USPTO requires to overcome a merely descriptive refusal under Section 2(e)(1). A generic term can never support an ACPA claim, which is why the generic-versus-descriptive question matters so much in domain disputes.
In Sporty’s Farm L.L.C. v. Sportsman’s Market, Inc., 202 F.3d 489 (2d Cir. 2000), one of the first appellate decisions applying the ACPA, the Second Circuit agreed that the aviation catalog company’s “sporty’s” mark was distinctive, found bad faith, and upheld an order requiring transfer of sportys.com to the mark owner.
Fame: Widely Recognized by the General Consuming Public
The ACPA’s fame prong draws on federal dilution law. Under 15 U.S.C. § 1125(c)(2)(A), a mark is famous if it is widely recognized by the general consuming public of the United States as a designation of source of the owner’s goods or services. Courts may consider all relevant factors, including:
- the duration, extent, and geographic reach of advertising and publicity of the mark, whether by the owner or third parties;
- the amount, volume, and geographic extent of sales of goods or services offered under the mark;
- the extent of actual recognition of the mark; and
- whether the mark is registered on the Principal Register (or under the 1881 or 1905 Acts).
This is a demanding test. Because it looks to recognition by the general consuming public, fame limited to a single industry or niche generally is not enough. The Federal Circuit has described the fame needed for dilution as more rigorous and demanding than the fame that matters in an ordinary likelihood-of-confusion analysis. Coach Services, Inc. v. Triumph Learning LLC, 668 F.3d 1356 (Fed. Cir. 2012). Our guide to what makes a trademark famous covers the evidence in more detail.
The practical advantage of proving fame in an ACPA case is that a domain name that is dilutive of a famous mark can be actionable even if it is not confusingly similar.
Timing: “At the Time of Registration of the Domain Name”
The ACPA measures distinctiveness and fame on the date the domain name was registered, not the date the lawsuit is filed. Someone who registered a domain before a company’s descriptive name acquired secondary meaning may have a complete defense to an ACPA claim, even if the brand is well known today.
Courts disagree about what counts as a “registration.” In Schmidheiny v. Weber, 319 F.3d 581 (3d Cir. 2003), and Jysk Bed’N Linen v. Dutta-Roy, 810 F.3d 767 (11th Cir. 2015), the Third and Eleventh Circuits held that a later re-registration of a domain name can be a registration under the ACPA. The Ninth Circuit disagreed in GoPets Ltd. v. Hise, 657 F.3d 1024 (9th Cir. 2011), holding that re-registration of a domain name first registered before the mark existed did not count. Where the case is filed can therefore determine which date matters.
Bad Faith Is a Separate Element
Proving a distinctive or famous mark only gets a plaintiff through the door. The plaintiff must also prove a bad faith intent to profit. Section 1125(d)(1)(B)(i) lists nine non-exclusive factors, one of which is the extent to which the mark is distinctive and famous; we explain each in our article on the ACPA’s bad faith factors. Bad faith intent does not exist where the registrant believed, and had reasonable grounds to believe, that its use of the domain name was a fair use or otherwise lawful.
How the ACPA Compares with the UDRP
Many domain disputes proceed under ICANN’s Uniform Domain-Name Dispute-Resolution Policy (UDRP) instead of in court. The UDRP’s first element asks whether the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; it does not contain the ACPA’s express requirement that the mark be distinctive or famous when the domain was registered. UDRP remedies are limited to cancellation or transfer. The ACPA, by contrast, allows courts to order forfeiture, cancellation, or transfer, and statutory damages of $1,000 to $100,000 per domain name are available under 15 U.S.C. § 1117(d). When the registrant cannot be found or is beyond the court’s personal jurisdiction, the ACPA also permits in rem actions against the domain name itself.
Building the Evidence
Whether you are asserting or defending an ACPA claim, the evidence centers on what the mark meant to consumers on the domain’s registration date. Useful proof includes:
- dated evidence of first use and continuous use of the mark in commerce;
- advertising and publicity spending, reach, and duration before the registration date;
- sales volume and geographic extent;
- unsolicited media coverage and evidence of consumer recognition, including surveys;
- a registration on the Principal Register, which is one of the statutory fame factors; and
- historical Whois and website archive records showing when the domain was registered and how it was used.
Protect Your Mark Before a Dispute Starts
Because timing controls, early action is the best protection: choose an inherently distinctive brand, register it, and secure key domain names before launch. If a descriptive name is important to your business, document its growing recognition so you can prove distinctiveness later.
If someone has registered a domain name that incorporates your trademark, or you have received a demand or complaint about a domain you own, the cybersquatting attorneys at Revision Legal can assess whether the ACPA’s distinctiveness, fame, and bad faith requirements are met. Contact us through the form on this page or call (855) 473-8474.
