Sue The Domain Name And Not The Cybersquatter (In Rem Claims Under ACPA)
The federal Anticybersquatting Consumer Protection Act (“ACPA”) enables cybersquatting victims to recover their domain names even when the cybersquatter is located in another country, or where the cybersquatter cannot be identified at all. Such actions are referred to as in rem actions. While cybersquatting victims cannot recover damages, costs, or fees with an in rem action, they can recover their domain names. To succeed with an in rem action under the ACPA, the trademark owner must show:
- Ownership of the trademark;
- The trademark is distinctive or famous;
- The domain name and trademark are either identical or confusingly similar (or dilutive for famous marks);
- The plaintiff has tried to inform the registrant of the domain name of the violation and the plaintiff’s intent to file an in rem action; and
- The court does not have jurisdiction over the registrant, or the plaintiff was unable to find the registrant, despite a good faith effort to do so.
To date, it is unclear whether the definition of cybersquatting is narrower for in rem claims under ACPA, as compared with in personam actions. Specifically, ambiguity continues to exist as to whether a plaintiff in an in rem action must demonstrate the registrant's “bad faith.”