Safe Harbor Under the ACPA: Reasonable Grounds for Believing Use Not Unlawful

Both the Anticybersquatting Consumer Protection Act (ACPA) and the Uniform Domain Name Resolution Policy, paragraph 4(c)(i-iii) (UDRP) prescribe safe harbor defenses, but the ACPA provides a defense not expressly found in the UDRP: bad faith “shall not be found in any case in which the court determines that the person believed and had reasonable grounds to believe that the use of the domain name was a fair use or otherwise lawful.”15 U.S.C. §1125(d)(1)(B)(ii). The question is, How is the statute to be construed, narrowly or forgivingly? A good review of the answer, narrowly, can be found in Web-Adviso v. Trump, 11-cv-1413 (EDNY, February 28, 2013).

The ACPA imposes civil liability on a person who, “without regard to the goods or services” on a person

ACPA UDRP

(i) has a bad faith intent to profit from that mark, including a personal name which is protected as a mark under this section; and

(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) registers, traffics in, or uses a domain name that – (ii) you have no rights or legitimate interests in respect of the domain name; and

(I) in the case of a mark that is distinctive at the time of registration of the domain name, is identical or confusingly similar to that mark.

(iii) your domain name has been registered and is being used in bad faith.

(II) in the case of a famous mark that is famous at the time of registration of the domain name, is identical or confusingly similar to or dilutive of that mark.

The burden of proving fair use and legality is measured against the bad faith factors set forth in §1125(d)(1)(A)(i). Domain name holder cannot satisfy the burden by simply alleging its belief. The test is an objective one. Statutory factors five through nine focus on the circumstances for assessing bad faith. The court found that the uncontested proof under Factors V and VIII were conclusive on the issue of bad faith.

V. the person’s intent to divert consumers from the mark owner’s online location to a site accessible under the domain name that could harm the goodwill represented by the mark, either for commercial gain or with the intent to tarnish or disparage the mark, by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the site;

VIII. the person’s registration or acquisition of multiple domain names which the person knows are identical or confusingly similar to marks of others that are distinctive at the time of registration of such domain names, or dilutive of famous marks of others that are famous at the time of registration of such domain names, without regard to the goods or services of the parties;

Implicit in Factor VIII is registration of a generic or descriptive term without knowledge of third-party rights. One of domain name holder’s defenses in Web-Adviso is that “trump” is a dictionary word, which if used semantically could support its claim, but not otherwise. In holding that the domain name holder’s “argument is meritless” the court points out that real estate developer and operator Trump is using the word in a trademark sense and Web-Adviso is not.  In any event, the trademark is “distinctive … within the meaning of” the Lanham Act:

The TRUMP mark is arbitrary in [the context in which it is used] because it is derived from Defendant’s last name, not from any colloquial use relating to card games or getting the better of somebody…. Thus, its generic meaning in unrelated settings does not undermine its strength or validity here.

The disputed domain names include “trump” plus a geographical designation: “abudhabi”, “beijing,” “india,” and “mumbai.” Trump holds various domain names that he uses to promote his “brand.” His “main website” for The Trump Organization is located at trump.com, but he also holds domain names with the word “trump” followed by a geographic location, which promote “TRUMP-branded” real estate projects in the location indicated by the domain name. The “only

reason that can be gleaned from the record why the Domain Names have any value is because they use the TRUMP mark and easily could be confused with Defendant’s legitimate websites.”

Although the Second Circuit has not construed the limits of the “reasonable belief” defense other circuits have. The Ninth Circuit cautioned that “courts should ‘make use of this “reasonable belief” defense very sparingly and only in the most unusual cases’.” Lahoti v. VeriCheck, Inc., 586 F.3d 1190, 1203 (9th Cir. 2009) quoting Audi AG v. D’Amato, 469 F.3d 534, 549 (6th Cir. 2006)). To allow the defense on any but the most rigorous proof “would ‘undermine the rest of the statute’ because ‘[a]ll but the most blatant cybersquatters will be able to put forth at least some lawful motives for their behavior’.” Id. (quoting Virtual Works, Inc. v. Volkswagen of Am., Inc., (4th Cir. 2001) (alterations in original)).

There is no logical equation between thinking a belief is reasonable and it being reasonable to believe that the use of the domain name is fair and legal.

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