I

106TH CONGRESS

1ST SESSION S. 1255

IN THE HOUSE OF REPRESENTATIVES

OCTOBER 5, 1999

Referred to the Committee on the Judiciary

AN ACT

To protect consumers and promote electronic commerce by

amending certain trademark infringement, dilution, and

counterfeiting laws, and for other purposes.

1 Be it enacted by the Senate and House of Representa2 tives of the United States of America in Congress assembled,

3 SECTION 1. SHORT TITLE; REFERENCES.

4 (a) SHORT TITLE.—This Act may be cited as the

5 ‘‘Anticybersquatting Consumer Protection Act.’’.
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1 (b) REFERENCES TO THE TRADEMARK ACT OF

2 1946.—Any reference in this Act to the Trademark Act

3 of 1946 shall be a reference to the Act entitled ‘‘An Act

4 to provide for the registration and protection of trade5 marks used in commerce, to carry out the provisions of

6 certain international conventions, and for other purposes’’,

7 approved July 5, 1946 (15 U.S.C. 1051 et seq.).

8 SEC. 2. FINDINGS.

9 Congress finds the following:

10 (1) The registration, trafficking in, or use of a

11 domain name that is identical or confusingly similar

12 to a trademark or service mark of another that is

13 distinctive at the time of the registration of the do14 main name, or dilutive of a famous trademark or

15 service mark of another that is famous at the time

16 of the registration of the domain name, without re17 gard to the goods or services of the parties, with the

18 bad-faith intent to profit from the goodwill of an19 other’s mark (commonly referred to as

20 ‘‘cyberpiracy’’ and ‘‘cybersquatting’’)—

21 (A) results in consumer fraud and public

22 confusion as to the true source or sponsorship

23 of goods and services;
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1 (B) impairs electronic commerce, which is

2 important to interstate commerce and the

3 United States economy;

4 (C) deprives legitimate trademark owners

5 of substantial revenues and consumer goodwill;

6 and

7 (D) places unreasonable, intolerable, and

8 overwhelming burdens on trademark owners in

9 protecting their valuable trademarks.

10 (2) Amendments to the Trademark Act of 1946

11 would clarify the rights of a trademark owner to

12 provide for adequate remedies and to deter

13 cyberpiracy and cybersquatting.

14 SEC. 3. CYBERPIRACY PREVENTION.

15 (a) IN GENERAL.—Section 43 of the Trademark Act

16 of 1946 (15 U.S.C. 1125) is amended by inserting at the

17 end the following:

18 ‘‘(d)(1)(A) A person shall be liable in a civil action

19 by the owner of a trademark or service mark if, without

20 regard to the goods or services of the parties, that

21 person—

22 ‘‘(i) has a bad faith intent to profit from that

23 trademark or service mark; and

24 ‘‘(ii) registers, traffics in, or uses a domain

25 name that—
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1 ‘‘(I) in the case of a trademark or service

2 mark that is distinctive at the time of registra3 tion of the domain name, is identical or confus4 ingly similar to such mark; or

5 ‘‘(II) in the case of a famous trademark or

6 service mark that is famous at the time of reg7 istration of the domain name, is dilutive of such

8 mark.

9 ‘‘(B) In determining whether there is a bad-faith in10 tent described under subparagraph (A), a court may con11 sider factors such as, but not limited to—

12 ‘‘(i) the trademark or other intellectual property

13 rights of the person, if any, in the domain name;

14 ‘‘(ii) the extent to which the domain name con15 sists of the legal name of the person or a name that

16 is otherwise commonly used to identify that person;

17 ‘‘(iii) the person’s prior use, if any, of the do18 main name in connection with the bona fide offering

19 of any goods or services;

20 ‘‘(iv) the person’s legitimate noncommercial or

21 fair use of the mark in a site accessible under the

22 domain name;

23 ‘‘(v) the person’s intent to divert consumers

24 from the mark owner’s online location to a site ac25 cessible under the domain name that could harm the
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1 goodwill represented by the mark, either for com2 mercial gain or with the intent to tarnish or dispar3 age the mark, by creating a likelihood of confusion

4 as to the source, sponsorship, affiliation, or endorse5 ment of the site;

6 ‘‘(vi) the person’s offer to transfer, sell, or oth7 erwise assign the domain name to the mark owner

8 or any third party for substantial consideration with9 out having used, or having an intent to use, the do10 main name in the bona fide offering of any goods or

11 services;

12 ‘‘(vii) the person’s intentional provision of mate13 rial and misleading false contact information when

14 applying for the registration of the domain name;

15 and

16 ‘‘(viii) the person’s registration or acquisition of

17 multiple domain names which are identical or con18 fusingly similar to trademarks or service marks of

19 others that are distinctive at the time of registration

20 of such domain names, or dilutive of famous trade21 marks or service marks of others that are famous at

22 the time of registration of such domain names, with23 out regard to the goods or services of such persons.

24 ‘‘(C) In any civil action involving the registration,

25 trafficking, or use of a domain name under this para-
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1 graph, a court may order the forfeiture or cancellation of

2 the domain name or the transfer of the domain name to

3 the owner of the mark.

4 ‘‘(D) A use of a domain name described under sub5 paragraph (A) shall be limited to a use of the domain

6 name by the domain name registrant or the domain name

7 registrant’s authorized licensee.

8 ‘‘(2)(A) The owner of a mark may file an in rem civil

9 action against a domain name if—

10 ‘‘(i) the domain name violates any right of the

11 registrant of a mark registered in the Patent and

12 Trademark Office, or section 43 (a) or (c); and

13 ‘‘(ii) the court finds that the owner has dem14 onstrated due diligence and was not able to find a

15 person who would have been a defendant in a civil

16 action under paragraph (1).

17 ‘‘(B) The remedies of an in rem action under this

18 paragraph shall be limited to a court order for the for19 feiture or cancellation of the domain name or the transfer

20 of the domain name to the owner of the mark.’’.

21 (b) ADDITIONAL CIVIL ACTION AND REMEDY.—The

22 civil action established under section 43(d)(1) of the

23 Trademark Act of 1946 (as added by this section) and

24 any remedy available under such action shall be in addi-
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1 tion to any other civil action or remedy otherwise applica2 ble.

3 SEC. 4. DAMAGES AND REMEDIES.

4 (a) REMEDIES IN CASES OF DOMAIN NAME PI5 RACY.—

6 (1) INJUNCTIONS.—Section 34(a) of the Trade7 mark Act of 1946 (15 U.S.C. 1116(a)) is amended

8 in the first sentence by striking ‘‘section 43(a)’’ and

9 inserting ‘‘section 43 (a), (c), or (d)’’.

10 (2) DAMAGES.—Section 35(a) of the Trade11 mark Act of 1946 (15 U.S.C. 1117(a)) is amended

12 in the first sentence by inserting ‘‘, (c), or (d)’’ after

13 ‘‘section 43 (a)’’.

14 (b) STATUTORY DAMAGES.—Section 35 of the Trade15 mark Act of 1946 (15 U.S.C. 1117) is amended by adding

16 at the end the following:

17 ‘‘(d) In a case involving a violation of section

18 43(d)(1), the plaintiff may elect, at any time before final

19 judgment is rendered by the trial court, to recover, instead

20 of actual damages and profits, an award of statutory dam21 ages in the amount of not less than $1,000 and not more

22 than $100,000 per domain name, as the court considers

23 just. The court shall remit statutory damages in any case

24 in which an infringer believed and had reasonable grounds
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1 to believe that use of the domain name by the infringer

2 was a fair or otherwise lawful use.’’.

3 SEC. 5. LIMITATION ON LIABILITY.

4 Section 32(2) of the Trademark Act of 1946 (15

5 U.S.C. 1114) is amended—

6 (1) in the matter preceding subparagraph (A)

7 by striking ‘‘under section 43(a)’’ and inserting

8 ‘‘under section 43 (a) or (d)’’; and

9 (2) by redesignating subparagraph (D) as sub10 paragraph (E) and inserting after subparagraph (C)

11 the following:

12 ‘‘(D)(i) A domain name registrar, a do13 main name registry, or other domain name reg14 istration authority that takes any action de15 scribed under clause (ii) affecting a domain

16 name shall not be liable for monetary relief to

17 any person for such action, regardless of wheth18 er the domain name is finally determined to in19 fringe or dilute the mark.

20 ‘‘(ii) An action referred to under clause (i)

21 is any action of refusing to register, removing

22 from registration, transferring, temporarily dis23 abling, or permanently canceling a domain

24 name—
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1 ‘‘(I) in compliance with a court order

2 under section 43(d); or

3 ‘‘(II) in the implementation of a rea4 sonable policy by such registrar, registry,

5 or authority prohibiting the registration of

6 a domain name that is identical to, confus7 ingly similar to, or dilutive of another’s

8 mark registered on the Principal Register

9 of the United States Patent and Trade10 mark Office.

11 ‘‘(iii) A domain name registrar, a domain

12 name registry, or other domain name registra13 tion authority shall not be liable for damages

14 under this section for the registration or main15 tenance of a domain name for another absent

16 a showing of bad faith intent to profit from

17 such registration or maintenance of the domain

18 name.

19 ‘‘(iv) If a registrar, registry, or other reg20 istration authority takes an action described

21 under clause (ii) based on a knowing and mate22 rial misrepresentation by any person that a do23 main name is identical to, confusingly similar

24 to, or dilutive of a mark registered on the Prin25 cipal Register of the United States Patent and
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1 Trademark Office, such person shall be liable

2 for any damages, including costs and attorney’s

3 fees, incurred by the domain name registrant as

4 a result of such action. The court may also

5 grant injunctive relief to the domain name reg6 istrant, including the reactivation of the domain

7 name or the transfer of the domain name to the

8 domain name registrant.

9 ‘‘(v) A domain name registrant whose do10 main name has been suspended, disabled, or

11 transferred under a policy described under

12 clause (ii)(II) may, upon notice to the mark

13 owner, file a civil action to establish that the

14 registration or use of the domain name by such

15 registrant is not unlawful under this Act. The

16 court may grant injunctive relief to the domain

17 name registrant, including the reactivation of

18 the domain name or transfer of the domain

19 name to the domain name registrant.’’.

20 SEC. 6. DEFINITIONS.

21 Section 45 of the Trademark Act of 1946 (15 U.S.C.

22 1127) is amended by inserting after the undesignated

23 paragraph defining the term ‘‘counterfeit’’ the following:
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1 ‘‘The term ‘Internet’ has the meaning given

2 that term in section 230(f)(1) of the Communica3 tions Act of 1934 (47 U.S.C. 230(f)(1)).

4 ‘‘The term ‘domain name’ means any alpha5 numeric designation which is registered with or as6 signed by any domain name registrar, domain name

7 registry, or other domain name registration author8 ity as part of an electronic address on the Inter9 net.’’.

10 SEC. 7. SAVINGS CLAUSE.

11 Nothing in this Act shall affect any defense available

12 to a defendant under the Trademark Act of 1946 (includ13 ing any defense under section 43(c)(4) of such Act or re14 lating to fair use) or a person’s right of free speech or

15 expression under the first amendment of the United States

16 Constitution.

17 SEC. 8. SEVERABILITY.

18 If any provision of this Act, an amendment made by

19 this Act, or the application of such provision or amend20 ment to any person or circumstances is held to be uncon21 stitutional, the remainder of this Act, the amendments

22 made by this Act, and the application of the provisions

23 of such to any person or circumstance shall not be affected

24 thereby.
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1 SEC. 9. EFFECTIVE DATE.

2 This Act shall apply to all domain names registered

3 before, on, or after the date of enactment of this Act, ex4 cept that statutory damages under section 35(d) of the

5 Trademark Act of 1946 (15 U.S.C. 1117), as added by

6 section 4 of this Act, shall not be available with respect

7 to the registration, trafficking, or use of a domain name

8 that occurs before the date of enactment of this Act.

Passed the Senate August August 5, 1999.

Attest: GARY SISCO,

Secretary.