ACPA, cybersquatting and expiring domains...

[dablue]

The ACPA is a Federal law, so I think my location is important?

I've been threatened with an ACPA action. I don't know if I'm liable or not, but I don't feel like the claimant has a strong enough case to just fold and hand over the domain.

What would happen if I allowed the domain to expire? To offer the relevant background, I did solicit a domain to a third party which unknowing to me they hold a trademark on. I'm amazed they hold a trademark on the words - it's a person's name, no one famous.

I received a cease and desist with a demand to transfer the domain over. I'm now just tempted to let the domain expire, but I'd like to know if this would still make me liable or increase my exposure to legal action.

Thanks in advance for any guidance,

Fred

 

[quincy]

The ACPA is a Federal law, so I think my location is important?

I've been threatened with an ACPA action. I don't know if I'm liable or not, but I don't feel like the claimant has a strong enough case to just fold and hand over the domain.

What would happen if I allowed the domain to expire? To offer the relevant background, I did solicit a domain to a third party which unknowing to me they hold a trademark on. I'm amazed they hold a trademark on the words - it's a person's name, no one famous.

I received a cease and desist with a demand to transfer the domain over. I'm now just tempted to let the domain expire, but I'd like to know if this would still make me liable or increase my exposure to legal action.

Thanks in advance for any guidance,

Fred

Please provide the name of your state anyway, Fred. Thanks.

 

[quincy]

The ACPA is a Federal law, so I think my location is important?

I've been threatened with an ACPA action. I don't know if I'm liable or not, but I don't feel like the claimant has a strong enough case to just fold and hand over the domain.

What would happen if I allowed the domain to expire? To offer the relevant background, I did solicit a domain to a third party which unknowing to me they hold a trademark on. I'm amazed they hold a trademark on the words - it's a person's name, no one famous.

I received a cease and desist with a demand to transfer the domain over. I'm now just tempted to let the domain expire, but I'd like to know if this would still make me liable or increase my exposure to legal action.

Thanks in advance for any guidance,

Fred

For those who may not know, ACPA stands for Anticybersquatting Consumer Protection Act - 15 US Code Section 1125(d).

If someone registers a well-known trademark as a domain name, this law provides an avenue for the trademark owner to take to not only seize the domain but also be awarded damages.

A defense to a claim of cybersquatting is a belief by the registrant that the use of the domain was a fair and legal one and can in addition demonstrate good reason for having registered it.

A trademark holder can also use the dispute resolution procedure (UDRP) through ICANN.

 

[dablue]

Please provide the name of your state anyway, Fred. Thanks.

GA, thanks

 

[quincy]

GA, thanks

Thank you for providing your state name, dablue.

To add to what I said previously, in order to support any legal action against you for cybersquatting, the trademark holder will need to show that his mark was distinctive at the time of your registration and you registered your domain name in bad faith. The domain name will need to be the same or similar to the trademark.

Whether the trademark holder can show this or not is a question mark, as is whether the mark holder will pursue you legally any further than the cease and desist. If you are not wedded to the name, it can be cheapest and easiest to cease use as demanded and hope that is all it takes to satisfy the mark owner.

Good luck.

 

[dablue]

Thank you for providing your state name, dablue.

Whether the trademark holder can show this or not is a question mark, as is whether the mark holder will pursue you legally any further than the cease and desist. If you are not wedded to the name, it can be cheapest and easiest to cease use as demanded and hope that is all it takes to satisfy the mark owner.

Good luck.

Thank you for your reply quincy.

I do feel as though the claimant has a strong case, simply because I approached the TM owner with an offer to sell the domain name which is the same as their TM. I didn't know they had a TM at the time of the solicitation, and I accept that's my fault. However, it was a good faith registration, certainly not to exploit the claimant and I've held this domain a LOT longer than I've known of the claimant's online presence. In my opinion it was a genuine good-faith offer to the claimant but owing to my naivety the law says otherwise. As I received such an aggressive and offensive cease and desist / demand it's left a sour taste. Had they taken a more reasonable approach I would have already transferred it.

I expect the claimant will take action but if they don't and I let the domain expire, would any legal case for the bad-faith registration extend beyond the expiration and a new registration by someone else? I'm concerned the claimant could argue that I've facilitated a new registration and as such they could hold me liable for any expense incurred in securing the domain from the new registrant.

Any advice would be greatly appreciated.

Thanks,

Fred

 

[quincy]

Thank you for your reply quincy.

I do feel as though the claimant has a strong case, simply because I approached the TM owner with an offer to sell the domain name which is the same as their TM. I didn't know they had a TM at the time of the solicitation, and I accept that's my fault. However, it was a good faith registration, certainly not to exploit the claimant and I've held this domain a LOT longer than I've known of the claimant's online presence. In my opinion it was a genuine good-faith offer to the claimant but owing to my naivety the law says otherwise. As I received such an aggressive and offensive cease and desist / demand it's left a sour taste. Had they taken a more reasonable approach I would have already transferred it.

I expect the claimant will take action but if they don't and I let the domain expire, would any legal case for the bad-faith registration extend beyond the expiration and a new registration by someone else? I'm concerned the claimant could argue that I've facilitated a new registration and as such they could hold me liable for any expense incurred in securing the domain from the new registrant.

Any advice would be greatly appreciated.

Thanks,

Fred

If you believe the trademark holder has good basis for a legal action, it is probably best for you to just turn the domain name over to the trademark owner and hope he can't show damages that he wishes to collect in court.

You can show the cease and desist letter to an attorney in your area and get the opinion of the attorney after s/he has had the opportunity to personally review all facts - but my feeling is that you are going to lose the domain name in the end regardless. You have a chance of avoiding paying damages if you meet the trademark holder's demands now.

It is, of course, up to you to decide how much risk you wish to take. I do not know you or the trademark holder or the trademark that has brought you two together. I wish you good luck with whatever it is you choose to do, though.

 

[dablue]

You have a chance of avoiding paying damages if you meet the trademark holder's demands now.

Thanks again... I really don't know how they could assess damages. They've survived without the domain for X years and they've had every opportunity to come to me if they wanted it... It's not a typo of their domain. Maybe they could claim legal damages.

I'll likely seek a professional opinion on it.

Thanks again,

Fred

 

[quincy]

Thanks again... I really don't know how they could assess damages. They've survived without the domain for X years and they've had every opportunity to come to me if they wanted it... It's not a typo of their domain. Maybe they could claim legal damages.

I'll likely seek a professional opinion on it.

Thanks again,

Fred

Having a personal review by a trademark professional in your area is the best way to determine where you stand legally. Without knowing the actual trademark, it is hard for me to say with even a degree of certainty if the trademark holder has a legitimate claim for damages.

Good luck.

 

[dablue]

Without knowing the actual trademark, it is hard for me to say with even a degree of certainty if the trademark holder has a legitimate claim for damages.

I think they probably do have a good enough claim. They have the exact match (2 words) trademarked. It's just not the name of their website! I suppose you could say I was clever enough in identifying that they might find the domain desirable I just never thought to check the TM search. That was probably the more expensive lesson of my life, ha!

 

[quincy]

I think they probably do have a good enough claim. They have the exact match (2 words) trademarked. It's just not the name of their website! I suppose you could say I was clever enough in identifying that they might find the domain desirable I just never thought to check the TM search. That was probably the more expensive lesson of my life, ha!

Ha. Yes. Failing to check to see if a trademark is in use prior to using it yourself can be costly. I hope for you it will result in just a turning over of the domain and nothing more.

Good luck, dablue.

 

[dablue]

Ha. Yes. Failing to check to see if a trademark is in use prior to using it yourself can be costly. I hope for you it will result in just a turning over of the domain and nothing more.

Good luck, dablue.

Thanks! Will keep you posted.

 

[quincy]

Thanks! Will keep you posted.

Posting back with what happens would be nice, dablue.

Good luck.

 

[dablue]

quincy,

Do you know where I can read the actual APCA statute online? I've tried searching for it but all I can find, in addition to a Wikipedia summary, are peoples' commentary on the main points. I would like to read the actual statute.

Thanking you in advance!

Dablue

 

[quincy]

quincy,

Do you know where I can read the actual APCA statute online? I've tried searching for it but all I can find, in addition to a Wikipedia summary, are peoples' commentary on the main points. I would like to read the actual statute.

Thanking you in advance!

Dablue

Sure. The Anticybersquatting Consumer Protection Act, 15 US Code Section 1125, is part of the Lanham Act (see section 43d). Here is a link: http://www.bitlaw.com/source/15usc/1125.html