I
106TH CONGRESS
1ST SESSION
H. R. 3028
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
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 international 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
offering of any goods or services;
‘‘(iv) the person’s lawful noncommercial or fair
use of the mark in a site accessible under the do-
main name;
‘‘(v) the person’s intent to divert consumers
from the mark owner’s online location to a site ac-
cessible under the domain name that could harm the
goodwill represented by the mark, either for com-
mercial gain or with the intent to tarnish or dispar-
age the mark, by creating a likelihood of confusion
as to the source, sponsorship, affiliation, or endorse-
ment of the site;
‘‘(x) the person’s history of providing material
and misleading false contact information when ap-
plying 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 incorporate marks of others; and
‘‘(xi) the extent to which the trademark or serv-
ice mark incorporated in the person’s domain name
registration is distinctive and famous within the
meaning 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 para-
graph, a court may order the forfeiture or cancellation of
the domain name or the transfer of the domain name to
the owner of the mark.
‘‘(D) A use of a domain name described under sub-
paragraph (A) shall be limited to a use of the domain
name by the domain name registrant or the domain name
registrant’s authorized licensee.
‘‘(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
section, 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 de-
fendant 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).
‘‘(B) The remedies in an in rem action under this
paragraph shall be limited to a court order for the for-
feiture or cancellation of the domain name or the transfer
of the domain name to the owner of the mark.
‘‘(C) The in rem action established under this para-
graph and any remedy available under such action shall
be in addition to any other civil action or remedy otherwise
applicable.
‘‘(3) The civil action established under paragraph (1)
and any remedy available under such action shall be in
addition to any other civil action or remedy otherwise ap-
plicable.’’.
SEC. 3. DAMAGES AND REMEDIES.
(a) REMEDIES
IN CASES
OF DOMAIN NAME PI-
RACY.—
(1) INJUNCTIONS.—Section 34(a) of the Trade-
mark Act of 1946 (15 U.S.C. 1116(a)) is amended
in the first sentence by striking ‘‘section 43(a)’’ and
inserting ‘‘section 43 (a), (c), or (d)’’.
(2) DAMAGES.—Section 35(a) of the Trade-
mark Act of 1946 (15 U.S.C. 1117(a)) is amended
in the first sentence by inserting ‘‘, (c), or (d)’’ after
‘‘section 43 (a)’’.
(b) STATUTORY DAMAGES.—Section 35 of the Trade-
mark Act of 1946 (15 U.S.C. 1117) is amended by adding
at the end the following:
‘‘(d) In a case involving a violation of section
43(d)(1), the plaintiff may elect, at any time before final
judgment is rendered by the trial court, to recover, instead
of actual damages and profits, an award of statutory dam-
ages in the amount of not less than $1,000 and not more
than $100,000 per domain name, as the court considers
just. The court may remit statutory damages in any case
in which the court finds that an infringer believed and had
reasonable grounds to believe that use of the domain name
by the infringer was a fair or otherwise lawful use.’’.
SEC. 4. LIMITATION ON LIABILITY.
Section 32(2) of the Trademark Act of 1946 (15
U.S.C. 1114) is amended—
(1) in the matter preceding subparagraph (A)
by striking ‘‘under section 43(a)’’ and inserting
‘‘under section 43 (a) or (d)’’; and
(2) by redesignating subparagraph (D) as sub-
paragraph (E) and inserting after subparagraph (C)
the following:
‘‘(D)(i) A domain name registrar, a domain
name registry, or other domain name registration
authority that takes any action described under
clause (ii) affecting a domain name shall not be lia-
ble for monetary relief to any person for such action,
regardless of whether the domain name is finally de-
termined to infringe or dilute the mark.
‘‘(ii) An action referred to under clause (i) is
any action of refusing to register, removing from
registration, transferring, temporarily disabling, or
permanently canceling a domain name—
‘‘(I) in compliance with a court order
under section 43(d); or
‘‘(II) in the implementation of a reasonable
policy by such registrar, registry, or authority
prohibiting the registration of a domain name
that is identical to, confusingly similar to, or di-
lutive of another’s mark registered on the Prin-
cipal Register of the United States Patent and
Trademark Office, or of 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.
‘‘(iii) A domain name registrar, a domain name
registry, or other domain name registration author-
ity shall not be liable for damages under this section
for the registration or maintenance of a domain
name for another absent a showing of bad faith in-
tent to profit from such registration or maintenance
of the domain name.
‘‘(iv) If a registrar, registry, or other registra-
tion authority takes an action described under clause
(ii) based on a knowing and material misrepresenta-
tion by any person that a domain name is identical
to, confusingly similar to, or dilutive of a mark reg-
istered on the Principal Register of the United
States Patent and Trademark Office, or a trade-
mark, word, or name protected by reason of section
706 of title 18, United States Code, or section
220506 of title 36, United States Code, such person
shall be liable for any damages, including costs and
attorney’s fees, incurred by the domain name reg-
istrant as a result of such action. The court may
also grant injunctive relief to the domain name reg-
istrant, including the reactivation of the domain
name or the transfer of the domain name to the do-
main name registrant.
‘‘(v) A domain name registrant whose domain
name has been suspended, disabled, or transferred
under a policy described under clause (ii)(II) may,
upon notice to the mark owner, file a civil action to
establish that the registration or use of the domain
name by such registrant is not unlawful under this
Act. The court may grant injunctive relief to the do-
main name registrant, including the reactivation of
the domain name or transfer of the domain name to
the domain name registrant.’’.
SEC. 5. DEFINITIONS.
Section 45 of the Trademark Act of 1946 (15 U.S.C.
1127) is amended by inserting after the undesignated
paragraph defining the term ‘‘counterfeit’’ the following:
‘‘The term ‘domain name’ means any alpha-
numeric designation which is registered with or as-
signed by any domain name registrar, domain name
registry, or other domain name registration author-
ity as part of an electronic address on the Internet.
‘‘The term ‘Internet’ has the meaning given
that term in section 230(f)(1) of the Communica-
tions Act of 1934 (47 U.S.C. 230(f)(1)).’’.
SEC. 6. SAVINGS CLAUSE.
Nothing in this Act shall affect any defense available
to a defendant under the Trademark Act of 1946 (includ-
ing any defense under section 43(c)(4) of such Act or re-
lating to fair use) or a person’s right of free speech or
expression under the first amendment of the United States
Constitution.
SEC. 7. EFFECTIVE DATE.
This Act shall apply to all domain names registered
before, on, or after the date of enactment of this Act, ex-
cept that damages under subsection (a) or (d) of section
35 of the Trademark Act of 1946 (15 U.S.C. 1117), as
amended by section 3 of this Act, shall not be available
with respect to the registration, trafficking, or use of a
domain name that occurs before the date of enactment of
this Act.
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