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Fourth Circuit Joins the ACPA Re-Registration Parade

Posted by James Juo | Jan 25, 2023 | 0 Comments

The Anti-cybersquatting Consumer Protection Act (“ACPA”) was intended to fill the gap between cybersquatting and the traditional likelihood of confusion analysis for trademark infringement.

The ACPA applies to whether a domain name was registered in bad faith “at the time of registration of the domain name.” There is a developing circuit split over whether the statutory “time of registration” applies only to the initial registration, or to subsequent re-registrations such as when the registration is renewed or transferred.

Before the Fourth Circuit joined the fray, the circuit split over the ACPA was between the Ninth Circuit on one hand, and the Third and Eleventh Circuits on the other. Compare GoPets Ltd. v. Hise, 657 F.3d 1024 (9th Cir. 2011) with 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).

PRU.COM Domain Name

Now the Fourth Circuit in The Prudential Insurance Co. of America v. Shenzhen Stone Network Information Ltd., No. 21-1823, __ F.4th __ (4th Cir. Jan. 24, 2023), has joined the Third and Eleventh Circuits.

This was a proceeding in rem in the Eastern District of Virginia because Verisign, the domain name registry for the disputed <> domain name, is located there. See 15 U.S.C. § 1125(d)(2)(A) (“The owner of a mark may file an in rem civil action against a domain name in the judicial district in which the . . . domain name registry . . . is located.”).

The Fourth Circuit held that “because of the unique nature of the domain name system, the term ‘registers' and its derivatives must encompass both initial registrations and re-registrations.” The Court also noted that the “bad faith” requirement under the ACPA would protect “innocent” registrants from ACPA liability because “where there is no bad faith, there is no liability for cybersquatting.”

            Accordingly, we join the Third and Eleventh Circuits in holding that the term “registers” and its derivatives extend to each registration of a domain name, including the initial registration and any subsequent re-registrations. Where a successive registration of a disputed domain name postdates the trademark registration of the corresponding mark, the mark owner may show that the successive registration was done in bad faith. This interpretation furthers the ACPA's purpose of eliminating cybersquatting and protecting American businesses, consumers, and online commerce.

Summary judgment of cybersquatting was affirmed because the defendant had acted with the bad faith intent to profit from using the PRU.COM domain name, where, among other things, Prudential's New York Stock Exchange (“NYSE”) ticker symbol has been “PRU” since December 13, 2001.

The attorneys at Thomas P. Howard, LLC litigate ACPA cases in Colorado.

About the Author

James Juo

James Juo is an experienced intellectual property attorney. He has successfully litigated various intellectual property disputes involving patents, trademarks, copyrights, and trade secrets. He also has counseled clients on the scope and validity of patent and trademark rights.


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