2023 Laws of Puerto Rico › TITLE TEN - Commerce (§§ 1 — 4196) › Subtitle 1 - Regulation of Business Generally (§§ 1 — 998q) › Chapter 11 - Trademarks; Identification of Products (§§ 171-171h — 224b) › § 223z - Violation of trademark right with domain names

(a) A person shall be held liable by the owner or the principal registrant of a mark, including a personal name which is protected as a mark, when, without regard to the goods or services of the parties, that person:
(1) Had the intent in bad faith to profit from that mark or personal name which is protected as a mark, and
(2) has registered and markets or uses a domain name that:
(A) In the case of a mark that is distinctive at the time of registration of the domain name, causes confusion with such mark, or
(B) in the case of a mark that is famous at the time of registration of the domain name, causes confusion or dilutes the distinctive nature of such mark.
When the domain name registered is equal or substantially similar to a mark that belongs to another person, there is a presumption of confusion.
(b) In determining whether a person acted in bad faith when registering a domain name, the court may consider the following factors among others:
(1) Whether the person has trademark or any other intellectual property rights on the domain name registered;
(2) whether the domain name is the legal name of the person or a name that is otherwise commonly used to identify that person;
(3) the previous use of the domain name in connection with the sale in good faith of any goods or services;
(4) the bona fide noncommercial or fair use of the domain name on a website accessible under the domain name in question;
(5) the intent to divert consumers from the mark owner’s website to the website accessible under the domain name in question, which could harm the goodwill of the mark, either for financial gain or with the intent to tarnish the mark, by creating a likelihood of confusion as to the origin, affiliation, or endorsement of the website;
(6) the offer to transfer, sell, or assign the domain name to the mark owner or any third party for financial gain, without having used or intending to use the domain name in the bona fide offering of any goods or services, or the person’s previous conduct which reveals a pattern as to such conduct;
(7) the provision of false or misleading contact information when applying for the registration of the domain name, the intentional failure to maintain accurate contact information, or the person’s previous conduct which reveals a pattern as to such conduct;
(8) the registration or acquisition of several domain names which the person knows are identical or substantially similar to marks of others that were distinctive at the time of registration of such domain names, or which dilute the distinctive nature of famous marks of others that were famous at the time of registration of such domain names, without regard to the goods or services of the parties, and
(9) whether the mark incorporated in the domain name is or is not famous under the criteria of § 223y of this title.
(c) An intent in bad faith as described in the above sections shall not be ruled in any case in which the court finds that the person believed and had reasonable grounds to believe that the use of the domain name was fair and otherwise lawful.
(d) In any civil action involving the registration, marketing, sale, purchase, license, loan, assignment or use of a domain name under this section, the court may order the forfeiture or cancellation of the domain name or the transfer of the domain name to the owner of the mark. The owner of the mark shall also be entitled to the remedies set forth in § 223w of this title.
History —Dec. 16, 2009, No. 169, § 29; July 12, 2011, No. 124, § 12.