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The Anticybersquatting Consumer Protection Act (ACPA), Pub. L. No. 106-113 (1999), provides that a court may order the forfeiture or cancellation of the domain name or the transfer of the domain name to the owner of the mark, 15 U.S.C.S. § 1125(d)(1)(C), if the domain name was registered before, on, or after the date of the enactment of this Act, Pub. L. No. 106-113, § 3010. It also provides that damages can be awarded for violations of the ACPA, but that they are not available with respect to the registration, trafficking, or use of a domain name that occurs before the date of the enactment of the ACPA.
This case originally involved the application of the Federal Trademark Dilution Act ("FTDA") to the Internet. While the case was pending on appeal, however, the Anticybersquatting Consumer Protection Act ("ACPA"), Pub. L. No. 106-113 (1999), was passed and signed into law.
Sporty's Farm L.L.C. ("Sporty's Farm") appeals from a judgment, following a bench trial, of the United States District Court for the District of Connecticut dated March 13, 1998. Sportsman's Market, Inc. ("Sportsman's") cross-appeals from the same judgment. The district court held: (1) that the Sportsman's trademark ("sporty's") was a famous mark entitled to protection under the FTDA; (2) that Sporty's Farm and its parent company, Third-Party-Defendant-Appellee Omega Engineering, Inc. ("Omega"), diluted the sporty's mark by using the Internet domain name "sportys.com" to sell Christmas trees and by preventing Sportsman's from using its trademark as a domain name; (3) that applying the FTDA to Sporty's Farm through an injunction requiring it to relinquish sportys.com was both equitable and not a retroactive application of the statute; (4) that Sportsman's was limited to injunctive relief since the conduct of Sporty's Farm and Omega did not constitute a willful intent to dilute under the FTDA; and (5) that Sporty's Farm and Omega did not violate the Connecticut Unfair Trade Practices Act ("CUTPA").
Was the "sporty's" mark protected under the ACPA?
The court of appeals applied the ACPA and affirmed the judgment of the district court in all respects, but, given the new law, on different grounds. The court found that the "sporty's" mark was protected under the ACPA, and that there was more than enough evidence of "bad faith intent to profit" on the part of Sporty's Farm so that no reasonable factfinder could return a verdict against Sportsman's. Accordingly, the judgment of the district court was affirmed.