ACPA

If US jurisdiction can be applied then the Trademark Cyberpiracy Prevention provisions, otherwise entitled the "Anticybersquatting Consumer Protection Act" or "ACPA" enacted as part of the Intellectual Property and Communications Omnibus Reform Act of 1999 - S.1948 Sec.3001-3010 (pdf version) and incorporated in the Lanham Act as Section 43(d) of 15 USC Section 1125(d), may offer greater prospects of success. See this commentary (in .pdf format) on the Anticybersquatting Consumer Protection Act for more information. Experience will tell whether trade mark owners with a cause of action in the US will find this Act more effective than ICANN's Uniform Dispute Resolution Policy.

Notable ACPA cases to date include:

Sporty's Farm LLC v. Sportsman's Market, Inc. (sportys.com)
- US Court of Appeal for the 2nd Circuit found ACPA applicable to case originally brought under Federal Trademark Dilution Act and affirmed judgement in favour of plaintiff.

Lucent Technologies, Inc. v. Lucentsucks.com (lucentsucks.com)
- Court refused in-rem jurisdiction and accepted defendant's argument that consumers were unlikely to be confused into thinking that "lucentsucks.com" was sponsored by the plaintiff.

Cello Holdings LLC v. Lawrence Dahl Companies (cello.com)
- Court considered preliminary issues of jurisdiction and obvious generic meaning of the mark and remitted the case for trial declining to dismiss claims under ACPA or to give summary judgement. (The website is no longer operating as at April 2002).

Virtual Works, Inc. v. Volkswagen of America (vw.net)
- Volkswagen prevailed in appeal by Virtual Works against ACPA judgement requiring transfer of vw.net to Volkswagen.

Sallen v. Corinthians Licentiamentos Ltda (corinthians.com)
- Important USCA 1st Circuit appeal decision allowing a loser in a UDRP proceedings (UDRP Decision D2000-0461) to seek declaratory judgment under ACPA that use was lawful, and so to vacate UDRP decision. (The website is no longer operating as at April 2002).

Barcelona.com Inc. v. Excelentisimo Ayuntamiento de Barcelona (barcelona.com) [decision above is in .pdf format]
Losing registrant in UDRP proceedings (UDRP Decision D2000-0505) sought a declaratory judgment to stay the UDRP decision, which had ordered the transfer of the name to defendant, the City Council of Barcelona, Spain. Defendant, which held no rights in the US, counter-claimed under ACPA. The Court upheld the WIPO UDRP decision and, significantly, accepted the Defendant's Spanish trademark for BARCELONA as a basis for seeking relief under ACPA, stating: "It is untenable to suppose that Congress, aware of the fact that the Internet is so international in nature, only intended for US trademarks to be protected under ACPA."

Page Hargrave has considerable experience in the field of Internet copyright and trade mark issues. If you have a domain name dispute or questions about on-line copyright liability, please contact us for specific advice.