Anti-cybersquatting Act applies to re-registrations, rules court

In Schmidheiny v Weber, the Court of Appeals for the Third Circuit has ruled that the re-registration of a domain name initially registered prior to the effective date of the Anti-cybersquatting Consumer Protection Act (ACPA) - November 29 1999 - falls within the scope of the act. In so doing, the court reversed a district court decision refusing to apply the ACPA to the defendant's re-registration of 'schmidheiny.com'.

Prior to the effective date of the ACPA, Steve Weber, an individual trading under the name Weber Net, registered the domain name 'schmidheiny.com'. The domain name was later transferred to another company affiliated to Weber, Famology.com Inc, which filed a new registration agreement with a different registrar after the ACPA came into effect. In November 2000 Weber offered to sell the domain name to Stephan Schmidheiny - one of the world's wealthiest individuals. Following the offer to sell, Schmidheiny brought an action against Weber alleging a violation of the ACPA.

The district court dismissed the claim. It analyzed Section 1129 of the ACPA, which provides that:

"[a]ny person who registers a domain name that consists of the name of another living person [...] without that person's consent, with the specific intent to profit from such name by selling the domain name for financial gain to that person or any third party, shall be liable in a civil action by such person [...] This subsection shall apply to domain names registered on or after the date of the enactment of this act."

The court held that the act refers only to initial or creation registrations and does not specifically refer to re-registrations. It reasoned that, since the creation registration in this instance fell before the effective date of the ACPA and the act cannot be applied retrospectively, the registration and subsequent re-registration were not covered by the ACPA. Schmidheiny appealed.

The Third Circuit held that the re-registration of 'schmidheiny.com' did fall within the scope of the ACPA. It noted that the words 'initial' and 'creation' do not appear in the ACPA and concluded that the act is not limited only to creation registrations after the ACPA's effective date, but also applies to re-registrations. To interpret the ACPA otherwise, said the court, would:

"permit the domain names of living persons to be sold and purchased without the living persons' consent, ad infinitum, so long as the name was first registered before the effective date of the act."

Although this case involved re-registration by a different registrant, through a different registrar, and the court did not make explicit reference to a re-registration by an original registrant through the original registrar, it is likely that the courts will take the same approach for both scenarios.

Russell Falconer, Baker Botts LLP, New York

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