106TH CONGRESS

1ST SESSION S. 1255

AMENDMENTS
In the House of Representatives, U. S.,

October 26, 1999.

Resolved, That the bill from the Senate (S. 1255) entitled ‘‘An Act to protect consumers and promote electronic

commerce by amending certain trademark infringement, dilution, and counterfeiting laws, and for other purposes’’, do

pass with the following

AMENDMENTS:

Strike out all after the enacting clause and insert:

1 SECTION 1. SHORT TITLE; REFERENCES.

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

3 ‘‘Trademark Cyberpiracy Prevention Act’’.

4 (b) REFERENCES TO THE TRADEMARK ACT OF 1946.—

5 Any reference in this Act to the Trademark Act of 1946

6 shall be a reference to the Act entitled ‘‘An Act to provide

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

8 commerce, to carry out the provisions of certain inter9 national conventions, and for other purposes’’, approved

10 July 5, 1946 (15 U.S.C. 1051 et seq.).
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1 SEC. 2. CYBERPIRACY PREVENTION.

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

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

4 end the following:

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

6 by the owner of a mark, including a famous personal name

7 which is protected under this section, if, without regard to

8 the goods or services of the parties, that person—

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

10 mark, including a famous personal name which is

11 protected under this section; and

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

13 name that—

14 ‘‘(I) in the case of a mark that is distinctive

15 at the time of registration of the domain name,

16 is identical or confusingly similar to that mark;

17 ‘‘(II) in the case of a famous mark that is

18 famous at the time of registration of the domain

19 name, is dilutive of that mark; or

20 ‘‘(III) is a trademark, word, or name pro21 tected by reason of section 706 of title 18, United

22 States Code, or section 220506 of title 36, United

23 States Code.

24 ‘‘(B) In determining whether there is a bad-faith in25 tent described under subparagraph (A), a court may con26 sider factors such as, but not limited to—
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1 ‘‘(i) the trademark or other intellectual property

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

3 ‘‘(ii) the extent to which the domain name con4 sists of the legal name of the person or a name that

5 is otherwise commonly used to identify that person;

6 ‘‘(iii) the person’s prior lawful use, if any, of the

7 domain name in connection with the bona fide offer8 ing of any goods or services;

9 ‘‘(iv) the person’s lawful noncommercial or fair

10 use of the mark in a site accessible under the domain

11 name;

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

13 the mark owner’s online location to a site accessible

14 under the domain name that could harm the goodwill

15 represented by the mark, either for commercial gain

16 or with the intent to tarnish or disparage the mark,

17 by creating a likelihood of confusion as to the source,

18 sponsorship, affiliation, or endorsement of the site;

19 ‘‘(vi) the person’s offer to transfer, sell, or other20 wise assign the domain name to the mark owner or

21 any third party for financial gain without having

22 used, or having an intent to use, the domain name

23 in the bona fide offering of any goods or services;

24 ‘‘(vii) the person’s provision of material and

25 misleading false contact information when applying
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1 for the registration of the domain name or the per2 son’s intentional failure to maintain accurate contact

3 information;

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

5 multiple domain names which the person knows are

6 identical or confusingly similar to marks of others

7 that are distinctive at the time of registration of such

8 domain names, or dilutive of famous marks of others

9 that are famous at the time of registration of such do10 main names, without regard to the goods or services

11 of such persons;

12 ‘‘(ix) the person’s history of offering to transfer,

13 sell, or otherwise assign domain names incorporating

14 marks of others to the mark owners or any third

15 party for consideration without having used, or hav16 ing an intent to use, the domain names in the bona

17 fide offering of any goods and services;

18 ‘‘(x) the person’s history of providing material

19 and misleading false contact information when apply20 ing for the registration of other domain names which

21 incorporate marks, or the person’s history of using

22 aliases in the registration of domain names which in23 corporate marks of others; and

24 ‘‘(xi) the extent to which the mark incorporated

25 in the person’s domain name registration is distinc-
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1 tive and famous within the meaning of subsection

2 (c)(1) of section 43 of the Trademark Act of 1946 (15

3 U.S.C. 1125).

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

5 trafficking, or use of a domain name under this paragraph,

6 a court may order the forfeiture or cancellation of the do7 main name or the transfer of the domain name to the owner

8 of the mark.

9 ‘‘(D) A person shall be liable for using a domain name

10 under subparagraph (A)(ii) only if that person is the do11 main name registrant or that registrant’s authorized li12 censee.

13 ‘‘(E) As used in this paragraph, the term ‘traffics in’

14 refers to transactions that include, but are not limited to,

15 sales, purchases, loans, pledges, licenses, exchanges of cur16 rency, and any other transfer for consideration or receipt

17 in exchange for consideration.

18 ‘‘(2)(A) In addition to any other jurisdiction that oth19 erwise exists, whether in rem or in personam, the owner

20 of a mark may file an in rem civil action against a domain

21 name in the judicial district in which the domain name

22 registrar, domain name registry, or other domain name au23 thority that registered or assigned the domain name is lo24 cated, if—
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1 ‘‘(i) the domain name violates any right of the

2 owner of the mark; and

3 ‘‘(ii) the owner—

4 ‘‘(I) has sent a copy of the summons and

5 complaint to the registrant of the domain name

6 at the postal and e-mail address provided by the

7 registrant to the registrar; and

8 ‘‘(II) has published notice of the action as

9 the court may direct promptly after filing the

10 action.

11 The actions under clause (ii) shall constitute service

12 of process.

13 ‘‘(B) In an in rem action under this paragraph, a do14 main name shall be deemed to have its situs in the judicial

15 district in which—

16 ‘‘(i) the domain name registrar, registry, or

17 other domain name authority that registered or as18 signed the domain name is located; or

19 ‘‘(ii) documents sufficient to establish control

20 and authority regarding the disposition of the reg21 istration and use of the domain name are deposited

22 with the court.

23 ‘‘(C) The remedies of an in rem action under this

24 paragraph shall be limited to a court order for the forfeiture

25 or cancellation of the domain name or the transfer of the
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1 domain name to the owner of the mark. Upon receipt of

2 written notification of a filed, stamped copy of a complaint

3 filed by the owner of a mark in a United States district

4 court under this paragraph, the domain name registrar, do5 main name registry, or other domain name authority

6 shall—

7 ‘‘(i) expeditiously deposit with the court docu8 ments sufficient to establish the court’s control and

9 authority regarding the disposition of the registration

10 and use of the domain name to the court; and

11 ‘‘(ii) not transfer or otherwise modify the do12 main name during the pendency of the action, except

13 upon order of the court.

14 The domain name registrar or registry or other domain

15 name authority shall not be liable for injunctive or mone16 tary relief under this paragraph except in the case of bad

17 faith or reckless disregard, which includes a willful failure

18 to comply with any such court order.

19 ‘‘(3) The civil action established under paragraph (1)

20 and the in rem action established under paragraph (2), and

21 any remedy available under either such action, shall be in

22 addition to any other civil action or remedy otherwise ap23 plicable.’’.

24 SEC. 3. DAMAGES AND REMEDIES.

25 (a) REMEDIES IN CASES OF DOMAIN NAME PIRACY.—
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1 (1) INJUNCTIONS.—Section 34(a) of the Trade2 mark Act of 1946 (15 U.S.C. 1116(a)) is amended in

3 the first sentence by striking ‘‘(a) or (c)’’ and insert4 ing ‘‘(a), (c), or (d)’’.

5 (2) DAMAGES.—Section 35(a) of the Trademark

6 Act of 1946 (15 U.S.C. 1117(a)) is amended in the

7 first sentence by inserting ‘‘, (c), or (d)’’ after ‘‘section

8 43(a)’’.

9 (b) STATUTORY DAMAGES.—Section 35 of the Trade10 mark Act of 1946 (15 U.S.C. 1117) is amended by adding

11 at the end the following:

12 ‘‘(d) In a case involving a violation of section 43(d)(1),

13 the plaintiff may elect, at any time before final judgment

14 is rendered by the trial court, to recover, instead of actual

15 damages and profits, an award of statutory damages in the

16 amount of not less than $1,000 and not more than $100,000

17 per domain name, as the court considers just. The court

18 may remit statutory damages in any case in which the

19 court finds that an infringer believed and had reasonable

20 grounds to believe that use of the domain name by the in21 fringer was a fair or otherwise lawful use.’’.

22 SEC. 4. LIMITATION ON LIABILITY.

23 Section 32(2) of the Trademark Act of 1946 (15 U.S.C.

24 1114) is amended—
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1 (1) in the matter preceding subparagraph (A) by

2 striking ‘‘under section 43(a)’’ and inserting ‘‘under

3 section 43(a) or (d)’’; and

4 (2) by redesignating subparagraph (D) as sub5 paragraph (E) and inserting after subparagraph (C)

6 the following:

7 ‘‘(D)(i) A domain name registrar, a domain

8 name registry, or other domain name registration au9 thority that takes any action described under clause

10 (ii) affecting a domain name shall not be liable for

11 monetary or injunctive relief to any person for such

12 action, regardless of whether the domain name is fi13 nally determined to infringe or dilute the mark.

14 ‘‘(ii) An action referred to under clause (i) is

15 any action of refusing to register, removing from reg16 istration, transferring, temporarily disabling, or per17 manently canceling a domain name—

18 ‘‘(I) in compliance with a court order under

19 section 43(d); or

20 ‘‘(II) in the implementation of a reasonable

21 policy by such registrar, registry, or authority

22 prohibiting the registration of a domain name

23 that is identical to, confusingly similar to, or di24 lutive of another’s mark.
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1 ‘‘(iii) A domain name registrar, a domain name

2 registry, or other domain name registration authority

3 shall not be liable for damages under this section for

4 the registration or maintenance of a domain name for

5 another absent a showing of bad faith intent to profit

6 from such registration or maintenance of the domain

7 name.

8 ‘‘(iv) If a registrar, registry, or other registration

9 authority takes an action described under clause (ii)

10 based on a knowing and material misrepresentation

11 by any other person that a domain name is identical

12 to, confusingly similar to, or dilutive of a mark, the

13 person making the knowing and material misrepre14 sentation shall be liable for any damages, including

15 costs and attorney’s fees, incurred by the domain

16 name registrant as a result of such action. The court

17 may also grant injunctive relief to the domain name

18 registrant, including the reactivation of the domain

19 name or the transfer of the domain name to the do20 main name registrant.’’.

21 SEC. 5. DEFINITIONS.

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

23 1127) is amended by inserting after the undesignated para24 graph defining the term ‘‘counterfeit’’ the following:
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1 ‘‘The term ‘domain name’ means any alphanumeric

2 designation which is registered with or assigned by any do3 main name registrar, domain name registry, or other do4 main name registration authority as part of an electronic

5 address on the Internet.

6 ‘‘The term ‘Internet’ has the meaning given that term

7 in section 230(f)(1) of the Communications Act of 1934 (47

8 U.S.C. 230(f)(1)).’’.

9 SEC. 6. SAVINGS CLAUSE.

10 Nothing in this Act shall affect any defense available

11 to a defendant under the Trademark Act of 1946 (including

12 any defense under section 43(c)(4) of such Act or relating

13 to fair use) or a person’s right of free speech or expression

14 under the first amendment of the United States Constitu15 tion.

16 SEC. 7. EFFECTIVE DATE.

17 Sections 2 through 6 of this Act shall apply to all do18 main names registered before, on, or after the date of the

19 enactment of this Act, except that damages under subsection

20 (a) or (d) of section 35 of the Trademark Act of 1946 (15

21 U.S.C. 1117), as amended by section 3 of this Act, shall

22 not be available with respect to the registration, trafficking,

23 or use of a domain name that occurs before the date of the

24 enactment of this Act.
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1 SEC. 8. ADJUSTMENT OF CERTAIN TRADEMARK AND PAT2 ENT FEES.

3 (a) TRADEMARK FEES.—Notwithstanding the second

4 sentence of section 31(a) of the Trademark Act of 1946 (15

5 U.S.C. 1113(a)), the Commissioner of Patents and Trade6 marks is authorized in fiscal year 2000 to adjust trademark

7 fees without regard to fluctuations in the Consumer Price

8 Index during the preceding 12 months.

9 (b) PATENT FEES.—

10 (1) ORIGINAL FILING FEE.—Section 41(a)(1)(A)

11 of title 35, United States Code, relating to the fee for

12 filing an original patent application, is amended by

13 striking ‘‘$760’’ and inserting ‘‘$690’’.

14 (2) REISSUE FEE.—Section 41(a)(4)(A) of title

15 35, United States Code, relating to the fee for filing

16 for a reissue of a patent, is amended by striking

17 ‘‘$760’’ and inserting ‘‘$690’’.

18 (3) NATIONAL FEE FOR CERTAIN INTERNATIONAL

19 APPLICATIONS.—Section 41(a)(10) of title 35, United

20 States Code, relating to the national fee for certain

21 international applications, is amended by striking

22 ‘‘$760’’ and inserting ‘‘$690’’.

23 (4) MAINTENANCE FEES.—Section 41(b)(1) of

24 title 35, United States Code, relating to certain main25 tenance fees, is amended by striking ‘‘$940’’ and in26 serting ‘‘$830’’.
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1 (c) EFFECTIVE DATE.—Subsection (a) shall take effect

2 on the date of the enactment of this Act. The amendments

3 made by subsection (b) shall take effect 30 days after the

4 date of the enactment of this Act.

5 SEC. 9. DOMAIN NAME FOR PRESIDENT, MEMBERS OF CON6 GRESS, SNF POLITICAL OFFICE HOLDERS

7 AND CANDIDATES.

8 (a) IN GENERAL.—The Secretary of Commerce shall

9 require the registry administrator for the .us top level do10 main to establish a 2nd level domain name for the purpose

11 of registering only domain names of the President, Members

12 of Congress, United States Senators, and other current hold13 ers of, and official candidates and potential official can14 didates for, Federal, State, or local political office in the

15 United States.

16 (b) GUIDELINES.—The Secretary of Commerce, in con17 sultation with the Federal Election Commission, shall es18 tablish guidelines and procedures under which individuals

19 may register a domain name in the 2nd level domain name

20 established pursuant to subsection (a).

21 (c) ELIGIBLE REGISTRANTS.—The Federal Election

22 Commission shall establish and maintain a list of individ23 uals eligible, under the guidelines established pursuant to

24 subsection (b), to register a domain name in the 2nd level

25 domain name established pursuant to subsection (a).
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1 (d) FEES.—The registry administrator and registrars

2 for the .us top level domain may charge individuals reason3 able fees for registering domain names pursuant to sub4 section (a).

5 (e) DEFINITION.—As used in this section, the term

6 ‘‘Member of Congress’’ means a Representative in, or a dele7 gate or Resident Commissioner to, the Congress.

8 (f) EFFECTIVE DATE.—Registration of domain names

9 in accordance with this section shall begin no later than

10 December 31, 2000.

11 SEC. 10. HISTORIC PRESERVATION.

12 Section 101(a)(1)(A) of the National Historic Preser13 vation Act (16 U.S.C. 470a(a)(1)(A)) is amended by adding

14 at the end the following: ‘‘Notwithstanding section 43(c) of

15 the Act commonly known as the ‘Trademark Act of 1946’

16 (15 U.S.C. 1125(c)), buildings and structures meeting the

17 criteria for the National Register of Historic Places under

18 paragraph (2) may retain the name by which they are list19 ed on the Register, if that name is the historical name asso20 ciated with the building or structure.’’.
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Amend the title so as to read: ‘‘An Act to amend

certain trademark laws to prevent the misappropriation

of marks.’’.

Attest:

Clerk.