IB
Union Calendar No. 238
106TH CONGRESS
1ST SESSION
H. R. 3028
[Report No. 106–412]
To amend certain trademark laws to prevent the misappropriation of marks.
IN THE HOUSE OF REPRESENTATIVES
OCTOBER 6, 1999
Mr. ROGAN (for himself, Mr. BOUCHER, Mr. COBLE, and Mr. GOODLATTE)
introduced the following bill; which was referred to the Committee on the
Judiciary
OCTOBER 25, 1999
Additional sponsor: Mr. SALMON
OCTOBER 25, 1999
Reported with an amendment, committed to the Committee of the Whole
House on the State of the Union, and ordered to be printed
[Strike out all after the enacting clause and insert the part printed in italic]
[For text of introduced bill, see copy of bill as introduced on October 6, 1999]
A BILL
To amend certain trademark laws to prevent the
misappropriation of marks.
Be it enacted by the Senate and House of Representa-
tives of the United States of America in Congress assembled,
SECTION 1. SHORT TITLE; REFERENCES.
(a) SHORT TITLE.—This Act may be cited as the
‘‘Trademark Cyberpiracy Prevention Act’’.
(b) REFERENCES TO THE TRADEMARK ACT OF 1946.—
Any reference in this Act to the Trademark Act of 1946
shall be a reference to the Act entitled ‘‘An Act to provide
for the registration and protection of trade-marks used in
commerce, to carry out the provisions of certain inter-
national conventions, and for other purposes’’, approved
July 5, 1946 (15 U.S.C. 1051 et seq.).
SEC. 2. CYBERPIRACY PREVENTION.
(a) IN GENERAL.—Section 43 of the Trademark Act
of 1946 (15 U.S.C. 1125) is amended by inserting at the
end the following:
‘‘(d)(1)(A) A person shall be liable in a civil action
by the owner of a trademark or service mark if, without
regard to the goods or services of the parties, that person—
‘‘(i) has a bad faith intent to profit from that
trademark or service mark; and
‘‘(ii) registers, traffics in, or uses a domain
name that—
‘‘(I) in the case of a trademark or service
mark that is distinctive at the time of registra-
tion of the domain name, is identical or confus-
ingly similar to such mark;
‘‘(II) in the case of a famous trademark or
service mark that is famous at the time of reg-
istration of the domain name, is dilutive of such
mark; or
‘‘(III) is a trademark, word, or name pro-
tected by reason of section 706 of title 18, United
States Code, or section 220506 of title 36, United
States Code.
‘‘(B) In determining whether there is a bad-faith in-
tent described under subparagraph (A), a court may con-
sider factors such as, but not limited to—
‘‘(i) the trademark or other intellectual property
rights of the person, if any, in the domain name;
‘‘(ii) the extent to which the domain name con-
sists of the legal name of the person or a name that
is otherwise commonly used to identify that person;
‘‘(iii) the person’s prior lawful use, if any, of the
domain name in connection with the bona fide offer-
ing of any goods or services;
‘‘(iv) the person’s lawful noncommercial or fair
use of the mark in a site accessible under the domain
name;
‘‘(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;
‘‘(vi) the person’s offer to transfer, sell, or other-
wise assign the domain name to the mark owner or
any third party for financial gain without having
used, or having an intent to use, the domain name
in the bona fide offering of any goods or services;
‘‘(vii) the person’s provision of material and
misleading false contact information when applying
for the registration of the domain name or the per-
son’s intentional failure to maintain accurate contact
information;
‘‘(viii) the person’s registration or acquisition of
multiple domain names which the person knows are
identical or confusingly similar to trademarks or
service marks of others that are distinctive at the time
of registration of such domain names, or dilutive of
famous trademarks or service marks of others that are
famous at the time of registration of such domain
names, without regard to the goods or services of such
persons;
‘‘(ix) the person’s history of offering to transfer,
sell, or otherwise assign domain names incorporating
marks of others to the mark owners or any third
party for consideration without having used, or hav-
ing an intent to use, the domain names in the bona
fide offering of any goods and services;
‘‘(x) the person’s history of providing material
and misleading false contact information when apply-
ing for the registration of other domain names which
incorporate marks, or the person’s history of using
aliases in the registration of domain names which in-
corporate marks of others; and
‘‘(xi) the extent to which the trademark or service
mark incorporated in the person’s domain name reg-
istration is distinctive and famous within the mean-
ing of subsection (c)(1) of section 43 of the Trademark
Act of 1946 (15 U.S.C. 1125).
‘‘(C) In any civil action involving the registration,
trafficking, or use of a domain name under this paragraph,
a court may order the forfeiture or cancellation of the do-
main name or the transfer of the domain name to the owner
of the mark.
‘‘(D) A person shall be liable for using a domain name
under subparagraph (A)(ii) only if that person is the do-
main name registrant or that registrant’s authorized li-
censee.
‘‘(E) As used in this paragraph, the term ‘traffics in’
refers to transactions that include, but are not limited to,
sales, purchases, loans, pledges, licenses, exchanges of cur-
rency, and any other transfer for consideration or receipt
in exchange for consideration.
‘‘(2)(A) The owner of a mark may file an in rem civil
action against a domain name in the judicial district in
which suit may be brought against the domain name reg-
istrar, domain name registry, or other domain name au-
thority that registered or assigned the domain name if—
‘‘(i) the domain name violates any right of the
registrant of a mark registered in the Patent and
Trademark Office, or subsection (a) or (c) of this sec-
tion, or is a trademark, word, or name protected by
reason of section 706 of title 18, United States Code,
or section 220506 of title 36, United States Code; and
‘‘(ii) the court finds that—
‘‘(I) the owner has demonstrated due dili-
gence and was not able to find or was not able
to serve a person who would have been a defend-
ant in a civil action under paragraph (1); or
‘‘(II) personal jurisdiction cannot be estab-
lished over any person who would have been a
defendant in a civil action under paragraph (1).