Thank You For Submiting Feedback!
"Cybersquatting" occurs when a person other than the trademark holder registers the domain name of a well known trademark and then attempts to profit from this by either ransoming the domain name back to the trademark holder or by using the domain name to divert business from the trademark holder to the domain name holder. A trademark owner asserting a claim under the Anti-Cybersquatting Consumer Protection Act must establish the following: (1) that it has a valid trademark entitled to protection; (2) that its mark is distinctive or famous; (3) that the defendant's domain name is identical or confusingly similar to, or in the case of famous marks, dilutive of, the owner's mark; and (4) that the defendant used, registered, or trafficked in the domain name (5) with a bad faith intent to profit.
DaimlerChrysler, who owned the trademark "Dodge," registered the domain name "4ADODGE.com" and established a website using that domain name. Later, defendants registered "foradodge.com" purportedly to be used for "dodging" services such as asset protection. DaimlerChrysler filed an Anti-Cybersquatting Consumer Protection Act (ACPA) claim against the defendants. DaimlerChrysler moved for summary judgment on its ACPA claim, arguing that there was no genuine issue of material fact with respect to whether the defendants violated the ACPA by their registration of the domain name "foradodge.com." The district court agreed and granted summary judgment to DaimlerChrysler. The district court also permanently enjoined the defendants from any further use of the "foradodge" name, ordered that the "foradodge.com" domain name be transferred to DaimlerChrysler, and struck the defendants' third party claims against the United States in which they alleged that the ACPA provided for an unlawful taking in violation of the Fifth Amendment to the United States Constitution. The defendants appealed.
Did the district court err in granting summary judgment to DaimlerChrysler on its ACPA claim?
The court affirmed the district court’s judgment and held that "foradodge.com" domain name was confusingly similar to the distinctive and famous Dodge mark; it simply incorporated the protected mark into a prepositional phrase. All but one of the 15 U.S.C.S. § 1125(d)(1)(B)(i) factors supported a finding of bad faith. Defendants had no intellectual property rights in the "foradodge" name, which did not contain any variation of their names. They never actually used the site in connection with the bona fide offer of goods or services. They provided misleading contact information as to the site's registrant, and Dodge was a highly distinctive and famous mark. Irreparable harm was presumed from the infringement. An injunction somewhat broader than the scope of the ACPA claim was proper due to continuing efforts to use "foradodge." The ACPA did not provide an unlawful taking and deprivation of property.