Did someone register your personal name as a domain name? You may have a cause of action against that person for a violation of the Anticybersquatting Consumer Protection Act (ACPA), sometimes known as domain squatting a personal name.

What is the ACPA?

The ACPA is a federal law enacted in 1999 used to prevent people from squatting on domain names and then extorting money from the rightful owners of those trademark names. Most of the time this comes up in a trademark setting. For instance, if someone chose to register Whirlpool.com but added an extra “o” to Whirlpool, this would be a potential example of cybersquatting. They would be in violation of the ACPA if they used that domain to steal traffic from Whirlpool.  Or, if they purchased the domain “whirlpoool.com” and then attempted to sell the domain to Whirlpool, they may be in violation of the ACPA. Ultimately, the law was designed to thwart “cybersquatters” who register Internet domain names containing trademarks with no intention of creating a legitimate web site, but instead plan to sell the domain name to the trademark owner or a third party.

Under the ACPA, a trademark owner may bring a lawsuit against a domain name registrant who:

• Has a bad faith intent to profit from the mark
• Registers, traffics in, or uses a domain name that is
  • Identical or confusingly similar to a distinctive mark
  • Identical or confusingly similar to a famous mark – sometimes called trademark dilution.
  • Is a trademark involving the Red Cross) or marks related to the “Olympics”

However, the ACPA also contains a provision for personal names. The act expressly prohibits people from squatting on someones personal name if they have no legitimate right to do so or if they are using that personal name in bad faith. The bad faith associated with the use of a domain name many times relates to attempts to sell the domain name to the named individual. However, it can also include other actions and is very fact dependent to each case.

It should be noted that the ACPA does not prevent the fair use of trademarks or any use protected by the First Amendment, which includes gripe sites. A gripe site is a type of website that is dedicated to criticism of or complaint about a certain individual, sometimes constructive and other times for the purpose of lampooning the target. That targeted individual could be a person, place, politician, corporation, institution, or something else. These are often created by less affluent people to target powerful people or groups because space is cheap on the Internet.

What if Someone Registers Your Personal Name as a Domain Name?

There are strong attorney fees and cost provisions contained within the ACPA. This helps individuals find legal counsel that will assist them in protecting their name on the internet. If you or someone you know faces an issue where someone else has registered their name as a domain name, you should contact Revision Legal’s experienced Internet attorneys today for assistance. You can contact us through the form on this page or call 855-473-8474.

Editors note: this was originally published in May, 2015; it has been updated for clarity and comprehensiveness.

The ACPA’s Bad Faith Factors Applied to Personal Names

The Anticybersquatting Consumer Protection Act, 15 U.S.C. Section 1125(d), lists nine non-exclusive factors that courts use to evaluate bad faith intent. In personal name cases, the most relevant factors are: (1) whether the registrant has any intellectual property rights in the name; (2) whether the domain name registration is the registrant’s legal name or a name commonly used to identify the registrant; (3) the registrant’s prior use of the domain for the bona fide offering of goods or services; (4) whether the registrant used the domain to divert consumers from the named person’s legitimate online presence; and (5) whether the registrant offered to sell the domain to the named person for consideration in excess of documented out-of-pocket costs — the clearest evidence of bad faith in most cases.

The UDRP as an Alternative to ACPA Litigation

Personal name disputes can also be pursued through the Uniform Domain Name Dispute Resolution Policy (UDRP) administered by WIPO or the National Arbitration Forum. The UDRP requires the complainant to prove three elements: (1) the domain is identical or confusingly similar to a mark in which the complainant has rights; (2) the respondent has no rights or legitimate interests in the domain; and (3) the respondent registered and is using the domain in bad faith. For personal name complainants, the challenge is establishing “trademark rights” in the name — since not every personal name functions as a trademark.

WIPO and NAF panels have permitted personal name UDRP claims where the complainant has established that the name functions as a mark through commercial use. Celebrities, authors, professional athletes, prominent executives, and public figures who have monetized their personal name as a brand have successfully recovered domains through the UDRP. Less prominent individuals may find the ACPA’s federal court pathway more appropriate, particularly because the ACPA expressly provides a cause of action for personal names independent of trademark rights.

Remedies Available Under the ACPA

A successful ACPA plaintiff may recover: (1) injunctive relief requiring transfer or cancellation of the domain; (2) actual damages or statutory damages ranging from $1,000 to $100,000 per domain name at the court’s discretion under 15 U.S.C. Section 1117(d); and (3) attorney fees in exceptional cases. The statutory damages range makes ACPA claims economically viable even where actual damages are minimal or difficult to quantify — a common situation in personal name cases where the plaintiff has not yet launched a commercial website using the name.

The ACPA also permits in rem actions against the domain name itself when the registrant cannot be located or is outside the court’s personal jurisdiction. This provision is particularly useful when dealing with foreign registrants who registered a U.S. citizen’s name as a domain to demand payment.

Contact Revision Legal’s Domain Dispute Attorneys

Whether your personal name has been registered by a former employer, a disgruntled ex-partner, or an opportunistic speculator, you have legal options to recover the domain and hold the registrant accountable. Revision Legal’s domain dispute attorneys handle ACPA claims and UDRP proceedings from both sides. Contact us today to evaluate your options.