II

106TH CONGRESS

1ST SESSION S. 1255

To protect consumers and promote electronic commerce by amending certain

trademark infringement, dilution, and counterfeiting laws, and for other

purposes.

IN THE SENATE OF THE UNITED STATES

JUNE 21, 1999

Mr. ABRAHAM (for himself, Mr. TORRICELLI, Mr. HATCH, and Mr. MCCAIN)

introduced the following bill; which was read twice and referred to the

Committee on the Judiciary

A BILL

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.

4 This Act may be cited as the ‘‘Anticybersquatting

5 Consumer Protection Act’’.

6 SEC. 2. FINDINGS.

7 Congress finds that the unauthorized registration or

8 use of trademarks as Internet domain names or other
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1 identifiers of online locations (commonly known as

2 ‘‘cybersquatting’’)—

3 (1) results in consumer fraud and public confu4 sion as to the true source or sponsorship of products

5 and services;

6 (2) impairs electronic commerce, which is im7 portant to the economy of the United States; and

8 (3) deprives owners of trademarks of substan9 tial revenues and consumer goodwill.

10 SEC. 3. TRADEMARK REMEDIES.

11 (a) RECOVERY FOR VIOLATION OF RIGHTS.—Section

12 35 of the Act entitled ‘‘An Act to provide for the registra13 tion and protection of trade-marks used in commerce, to

14 carry out the provisions of certain international conven15 tions, and for other purposes’’, approved July 5, 1946,

16 (commonly referred to as the ‘‘Trademark Act of 1946’’)

17 (15 U.S.C. 1117) is amended by adding at the end the

18 following:

19 ‘‘(d)(1) In this subsection, the term ‘Internet’ has the

20 meaning given that term in section 230(f)(1) of the Com21 munications Act of 1934 (47 U.S.C. 230(f)(1)).

22 ‘‘(2)(A) In a case involving the registration or use

23 of an identifier described in subparagraph (B), the plain24 tiff may elect, at any time before final judgment is ren-
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1 dered by the trial court, to recover, instead of actual dam2 ages and profits under subsection (a)—

3 ‘‘(i) an award of statutory damages in the

4 amount of—

5 ‘‘(I) not less than $1,000 or more than

6 $100,000 per trademark per identifier, as the

7 court considers just; or

8 ‘‘(II) if the court finds that the registra9 tion or use of the registered trademark as an

10 identifier was willful, not less than $3,000 or

11 more than $300,000 per trademark per identi12 fier, as the court considers just; and

13 ‘‘(ii) full costs and reasonable attorney’s fees.

14 ‘‘(B) An identifier referred to in subparagraph (A)

15 is an Internet domain name or other identifier of an online

16 location that is—

17 ‘‘(i) the trademark of a person or entity other

18 than the person or entity registering or using the

19 identifier; or

20 ‘‘(ii) sufficiently similar to a trademark of a

21 person or entity other than the person or entity reg22 istering or using the identifier as to be likely to—

23 ‘‘(I) cause confusion or mistake;

24 ‘‘(II) deceive; or
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1 ‘‘(III) cause dilution of the distinctive

2 quality of a famous trademark.’’.

3 (b) REMEDIES FOR DILUTION OF FAMOUS MARKS.—

4 Section 43(c)(2) of the Act entitled ‘‘An Act to provide

5 for the registration and protection of trade-marks used in

6 commerce, to carry out the provisions of certain inter7 national conventions, and for other purposes’’, approved

8 July 5, 1946, (commonly referred to as the ‘‘Trademark

9 Act of 1946’’) (15 U.S.C. 1125(c)(2)) is amended by strik10 ing ‘‘35(a)’’ and inserting ‘‘35 (a) and (d)’’.

11 SEC. 4. CRIMINAL USE OF COUNTERFEIT TRADEMARK.

12 (a) IN GENERAL.—Section 2320(a) of title 18,

13 United States Code, is amended—

14 (1) by inserting ‘‘(1)’’ after ‘‘(a)’’;

15 (2) by striking ‘‘section that occurs’’ and insert16 ing ‘‘paragraph that occurs’’; and

17 (3) by adding at the end the following:

18 ‘‘(2)(A) In this paragraph, the term ‘Internet’ has

19 the meaning given that term in section 230(f)(1) of the

20 Communications Act of 1934 (47 U.S.C. 230(f)(1)).

21 ‘‘(B)(i) Except as provided in clause (ii), whoever

22 knowingly and fraudulently or in bad faith registers or

23 uses an identifier described in subparagraph (C) shall be

24 guilty of a Class B misdemeanor.
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1 ‘‘(ii) In the case of an offense by a person under this

2 paragraph that occurs after that person is convicted of

3 another offense under this section, that person shall be

4 guilty of a Class E felony.

5 ‘‘(C) An identifier referred to in subparagraph (B)

6 is an Internet domain name or other identifier of an online

7 location that is—

8 ‘‘(i) the trademark of a person or entity other

9 than the person or entity registering or using the

10 identifier; or

11 ‘‘(ii) sufficiently similar to a trademark of a

12 person or entity other than the person or entity reg13 istering or using the identifier as to be likely to—

14 ‘‘(I) cause confusion or mistake;

15 ‘‘(II) deceive; or

16 ‘‘(III) cause dilution of the distinctive

17 quality of a famous trademark.

18 ‘‘(D)(i) For the purposes of a prosecution under this

19 paragraph, if all of the conditions described in clause (ii)

20 apply to the registration or use of an identifier described

21 in subparagraph (C) by a defendant, those conditions shall

22 constitute prima facie evidence that the registration or use

23 was fraudulent or in bad faith.

24 ‘‘(ii) The conditions referred to in clause (i) are as

25 follows:
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1 ‘‘(I) The defendant registered or used an identi2 fier described in subparagraph (C)—

3 ‘‘(aa) with intent to cause confusion or

4 mistake, deceive, or cause dilution of the dis5 tinctive quality of a famous trademark; or

6 ‘‘(bb) with the intention of diverting con7 sumers from the domain or other online loca8 tion of the person or entity who is the owner of

9 a trademark described in subparagraph (C) to

10 the domain or other online location of the de11 fendant.

12 ‘‘(II) The defendant—

13 ‘‘(aa) provided false information in the de14 fendant’s application to register the identifier;

15 or

16 ‘‘(bb) offered to transfer the registration of

17 the identifier to the trademark owner or an18 other person or entity in consideration for any

19 thing of value.

20 ‘‘(III) The identifier is not—

21 ‘‘(aa) the defendant’s legal first name or

22 surname; or

23 ‘‘(bb) a trademark of the defendant used

24 in legitimate commerce before the earlier of the

25 first use of the registered trademark referred to
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1 in subparagraph (C) or the effective date of the

2 registration of that trademark.

3 ‘‘(iii) The application of this subparagraph shall not

4 be exclusive. Nothing in this subparagraph may be con5 strued to limit the applicability of subparagraph (B).’’.

6 (b) SENTENCING GUIDELINES.—

7 (1) IN GENERAL.—Pursuant to the authority

8 granted to the United States Sentencing Commis9 sion under section 994(p) of title 28, United States

10 Code, the United States Sentencing Commission

11 shall—

12 (A) review the Federal sentencing guide13 lines for crimes against intellectual property

14 (including offenses under section 2320 of title

15 18, United States Code); and

16 (B) promulgate such amendments to the

17 Federal Sentencing Guidelines as are necessary

18 to ensure that the applicable sentence for a de19 fendant convicted of a crime against intellectual

20 property is sufficiently stringent to deter such

21 a crime.

22 (2) FACTORS FOR CONSIDERATION.—In car23 rying out this subsection, the United States Sen24 tencing Commission shall—
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1 (A) take into account the findings under

2 section 2; and

3 (B) ensure that the amendments promul4 gated under paragraph (1)(B) adequately pro5 vide for sentencing for crimes described in

6 paragraph (2) of section 2320(a) of title 18,

7 United States Code, as added by subsection (a).

8 SEC. 5. LIMITATION OF LIABILITY.

9 Section 39 of the Act entitled ‘‘An Act to provide for

10 the registration and protection of trade-marks used in

11 commerce, to carry out the provisions of certain inter12 national conventions, and for other purposes’’, approved

13 July 5, 1946, (commonly referred to as the ‘‘Trademark

14 Act of 1946’’) (15 U.S.C. 1121) is amended by adding

15 at the end the following:

16 ‘‘(c)(1) In this subsection, the term ‘Internet’ has the

17 meaning given that term in section 230(f)(1) of the Com18 munications Act of 1934 (47 U.S.C. 230(f)(1)).

19 ‘‘(2)(A) An Internet service provider, domain name

20 registrar, or registry described in subparagraph (B) shall

21 not be liable for monetary relief to any person for a re22 moval or transfer described in that subparagraph, without

23 regard to whether the domain name or other identifier is

24 ultimately determined to be infringing or dilutive.
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1 ‘‘(B) An Internet service provider, domain name reg2 istrar, or registry referred to in subparagraph (A) is a pro3 vider, registrar, or registry that, upon receipt of a written

4 notice from the owner of a trademark registered in the

5 Patent and Trademark Office, removes from domain name

6 service (DNS) service or registration, or transfers to the

7 trademark owner, an Internet domain name or other iden8 tifier of an online location alleged to be infringing or dilu9 tive, in compliance with—

10 ‘‘(i) a court order; or

11 ‘‘(ii) the reasonable implementation of a policy

12 prohibiting the unauthorized registration or use of

13 another’s registered trademark as an Internet do14 main name or other identifier of an online loca15 tion.’’.

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