Fraudulent Online Identity Sanctions Act implemented

The US Congress has enacted a provision (dubbed the 'Fraudulent Online Identity Sanctions Act') amending the Lanham Act, which will provide trademark owners with an avenue to recover monetary relief from infringers who knowingly provide materially false contact information to a domain name registrar, registry or registration authority.

The Fraudulent Online Identity Sanctions Act is part of a larger act entitled the Intellectual Property Protection and Courts Amendments Act of 2004, which became Public Law 108-482. It amends Section 35 of the Lanham Act, which covers monetary relief in actions for federal trademark infringement, dilution and unfair competition, to add a new subsection (e) dealing with domain name contact information. The new subsection provides that in cases of a trademark violation covered by Section 35:

"it shall be a rebuttable presumption that the violation is wilful for purposes of determining relief if the violator, or a person acting in concert with the violator, knowingly provided or knowingly caused to be provided materially false contact information to a domain name registrar, domain name registry, or other domain name registration authority in registering, maintaining, or renewing a domain name used in connection with the violation."

The new subsection (e) also provides that nothing contained in it "limits what may be considered a wilful violation under this section".

Wilfulness is a factor that courts may consider in deciding whether to award (i) monetary relief in federal trademark actions, and (ii) enhanced damages. In addition, monetary relief is available for a violation of the Federal Trademark Dilution Act only if the plaintiff establishes that the violation was wilful. Similarly, when the use of a counterfeit mark is found to be wilful, potential damages are increased to as much as $1 million per counterfeit mark per type of goods or services sold, offered for sale or distributed.

David S Fleming, Brinks Hofer Gilson & Lione, Chicago