II

106TH CONGRESS

1ST SESSION S. 1461

To amend the Trademark Act of 1946 (15 U.S.C. 1051 et seq.) to protect

consumers and promote electronic commerce by prohibiting the badfaith registration, trafficking or use of Internet domain names that

are identical to, confusingly similar to, or dilutive of distinctive trademarks or service marks.

IN THE SENATE OF THE UNITED STATES

JULY 29, 1999

Mr. HATCH (for himself, Mr. LEAHY, Mr. ABRAHAM, Mr. TORRICELLI, Mr.

DEWINE, Mr. KOHL, and Mr. SCHUMER) introduced the following bill;

which was read twice and referred to the Committee on the Judiciary

A BILL

To amend the Trademark Act of 1946 (15 U.S.C. 1051

et seq.) to protect consumers and promote electronic

commerce by prohibiting the bad-faith registration, trafficking or use of Internet domain names that are identical to, confusingly similar to, or dilutive of distinctive

trademarks or service marks.

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 ‘‘Domain Name Piracy Prevention Act of 1999’’.
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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 to, confusingly similar

12 to, or dilutive of a trademark or service mark of an13 other that is distinctive at the time of registration

14 of the domain name, without regard to the goods or

15 services of the parties, with the bad-faith intent to

16 profit from the goodwill of another’s mark (com17 monly referred to as ‘‘cyberpiracy’’ and

18 ‘‘cybersquatting’’)—

19 (A) results in consumer fraud and public

20 confusion as to the true source or sponsorship

21 of goods and services;

22 (B) impairs electronic commerce, which is

23 important to interstate commerce and the

24 United States economy;
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1 (C) deprives legitimate trademark owners

2 of substantial revenues and consumer goodwill;

3 and

4 (D) places unreasonable, intolerable, and

5 overwhelming burdens on trademark owners in

6 protecting their valuable trademarks.

7 (2) Amendments to the Trademark Act of 1946

8 would clarify the rights of a trademark owner to

9 provide for adequate remedies and to deter

10 cyberpiracy and cybersquatting.

11 SEC. 3. CYBERPIRACY PREVENTION.

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

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

14 end the following:

15 ‘‘(d)(1)(A) Any person who, with bad-faith intent to

16 profit from the goodwill of a trademark or service mark

17 of another, registers, traffics in, or uses a domain name

18 that is identical to, confusingly similar to, or dilutive of

19 such trademark or service mark, without regard to the

20 goods or services of the parties, shall be liable in a civil

21 action by the owner of the mark, if the mark is distinctive

22 at the time of the registration of the domain name.

23 ‘‘(B) In determining whether there is a bad-faith in24 tent described under subparagraph (A), a court may con25 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 use, if any, of the do7 main name in connection with the bona fide offering

8 of any goods or services;

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

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

11 domain name;

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

13 from the mark owner’s online location to a site ac14 cessible under the domain name that could harm the

15 goodwill represented by the mark, either for com16 mercial gain or with the intent to tarnish or dispar17 age the mark, by creating a likelihood of confusion

18 as to the source, sponsorship, affiliation, or endorse19 ment of the site;

20 ‘‘(vi) the person’s offer to transfer, sell, or oth21 erwise assign the domain name to the mark owner

22 or any third party for substantial consideration with23 out having used, or having an intent to use, the do24 main name in the bona fide offering of any goods or

25 services;
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1 ‘‘(vii) the person’s intentional provision of mate2 rial and misleading false contact information when

3 applying for the registration of the domain name;

4 and

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

6 multiple domain names which are identical to, con7 fusingly similar to, or dilutive of trademarks or serv8 ice marks of others that are distinctive at the time

9 of registration of such domain names, without re10 gard to the goods or services of such persons.

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

12 trafficking, or use of a domain name under this para13 graph, a court may order the forfeiture or cancellation of

14 the domain name or the transfer of the domain name to

15 the owner of the mark.

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

17 action against a domain name if—

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

19 registrant of a mark registered in the Patent and

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

21 ‘‘(ii) the court finds that the owner has dem22 onstrated due diligence and was not able to find a

23 person who would have been a defendant in a civil

24 action under paragraph (1).
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1 ‘‘(B) The remedies of an in rem action under this

2 paragraph shall be limited to a court order for the for3 feiture or cancellation of the domain name or the transfer

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

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

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

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

8 any remedy available under such action shall be in addi9 tion to any other civil action or remedy otherwise applica10 ble.

11 SEC. 4. DAMAGES AND REMEDIES.

12 (a) REMEDIES IN CASES OF DOMAIN NAME PI13 RACY.—

14 (1) INJUNCTIONS.—Section 34(a) of the Trade15 mark Act of 1946 (15 U.S.C. 1116(a)) is amended

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

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

18 (2) DAMAGES.—Section 35(a) of the Trade19 mark Act of 1946 (15 U.S.C. 1117(a)) is amended

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

21 ‘‘section 43 (a)’’.

22 (b) STATUTORY DAMAGES.—Section 35 of the Trade23 mark Act of 1946 (15 U.S.C. 1117) is amended by adding

24 at the end the following:
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1 ‘‘(d) In a case involving a violation of section

2 43(d)(1), the plaintiff may elect, at any time before final

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

4 of actual damages and profits, an award of statutory dam5 ages in the amount of not less than $1,000 and not more

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

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

8 in which an infringer believed and had reasonable grounds

9 to believe that use of the domain name by the infringer

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

11 SEC. 5. LIMITATION ON LIABILITY.

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

13 U.S.C. 1114) is amended—

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

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

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

17 (2) by redesignating subparagraph (D) as sub18 paragraph (E) and inserting after subparagraph (C)

19 the following:

20 ‘‘(D)(i) A domain name registrar, a do21 main name registry, or other domain name reg22 istration authority that takes any action de23 scribed under clause (ii) affecting a domain

24 name shall not be liable for monetary relief to

25 any person for such action, regardless of wheth-
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1 er the domain name is finally determined to in2 fringe or dilute the mark.

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

4 is any action of refusing to register, removing

5 from registration, transferring, temporarily dis6 abling, or permanently canceling a domain

7 name—

8 ‘‘(I) in compliance with a court order

9 under section 43(d); or

10 ‘‘(II) in the implementation of a rea11 sonable policy by such registrar, registry,

12 or authority prohibiting the registration of

13 a domain name that is identical to, confus14 ingly similar to, or dilutive of another’s

15 mark registered on the Principal Register

16 of the United States Patent and Trade17 mark Office.

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

19 name registry, or other domain name registra20 tion authority shall not be liable for damages

21 under this section for the registration or main22 tenance of a domain name for another absent

23 a showing of bad faith intent to profit from

24 such registration or maintenance of the domain

25 name.
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1 ‘‘(iv) If a registrar, registry, or other reg2 istration authority takes an action described

3 under clause (ii) based on a knowing and mate4 rial misrepresentation by any person that a do5 main name is identical to, confusingly similar

6 to, or dilutive of a mark registered on the Prin7 cipal Register of the United States Patent and

8 Trademark Office, such person shall be liable

9 for any damages, including costs and attorney’s

10 fees, incurred by the domain name registrant as

11 a result of such action. The court may also

12 grant injunctive relief to the domain name reg13 istrant, including the reactivation of the domain

14 name or the transfer of the domain name to the

15 domain name registrant.’’.

16 SEC. 6. DEFINITIONS.

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

18 1127) is amended by inserting after the undesignated

19 paragraph defining the term ‘‘counterfeit’’ the following:

20 ‘‘The term ‘Internet’ has the meaning given

21 that term in section 230(f)(1) of the Communica22 tions Act of 1934 (47 U.S.C. 230(f)(1)).

23 ‘‘The term ‘domain name’ means any alpha24 numeric designation which is registered with or as25 signed by any domain name registrar, domain name
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1 registry, or other domain name registration author2 ity as part of an electronic address on the Inter3 net.’’.

4 SEC. 7. SAVINGS CLAUSE.

5 Nothing in this Act shall affect any defense available

6 to a defendant under the Trademark Act of 1946 (includ7 ing any defense under section 43(c)(4) of such Act or re8 lating to fair use) or a person’s right of free speech or

9 expression under the first amendment of the United States

10 Constitution.

11 SEC. 8. SEVERABILITY.

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

13 this Act, or the application of such provision or amend14 ment to any person or circumstances is held to be uncon15 stitutional, the remainder of this Act, the amendments

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

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

18 thereby.

19 SEC. 9. EFFECTIVE DATE.

20 This Act shall apply to all domain names registered

21 before, on, or after the date of enactment of this Act, ex22 cept that statutory damages under section 35(d) of the

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

24 section 4 of this Act, shall not be available with respect
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1 to the registration, trafficking, or use of a domain name

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

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