California attorney wins anti-cybersquatting action
US District Court for the Northern District of Illinois Judge Joan Lefkow has invoked the little-used Section 1129 of the Anti-cybersquatting Consumer Protection Act (ACPA) to determine that California attorney Paul Wright had a valid cause of action against Domain Source Inc (DSI) for its registration of 'PaulWright.com'. The case illustrates that the ACPA may be used to obtain the cancellation of domain names that are identical to personal names, and that individuals do not have to be owners of well-known trademarks in order to prevail.
In 1999 Wright registered the domain name 'PaulWright.com' and used it as a website to offer his legal services. DSI then registered the name when Wright's registration lapsed in 2001. DSI rejected Wright's offer to buy the name for the price of registration, contending that it had legitimately registered the expired name. Instead, DSI demanded the payment of a large fee for the transfer.
Under Section 1129, individuals may bring an ACPA action against:
"[a]ny person who registers a domain name that consists of the name of another living person, or a name substantially and confusingly similar thereto, without that person's consent, and with the specific intent to profit from such name by selling the domain name for financial gain to that person or any third party."
Lefkow held that DSI had knowingly registered the domain name consisting of Wright's name without Wright's consent and with the intent to profit from its sale. Evidence showed that DSI owns multiple domain names, including many personal names and recognizable commercial names, and engages in the business of domain name speculation.
Unlike ACPA actions brought by trademark owners, the only remedy available to individuals is injunctive relief, including cancellation of the disputed domain name. Unfortunately for Wright, DSI had already transferred the domain name to another individual named Paul Wright. DSI was, however, ordered to pay Wright's costs and attorney fees.
James L Bikoff and Patrick L Jones, Silverberg, Goldman & Bikoff, LLP, Washington DC
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