Where a trademark owner has identified the cybersquatter, and that cybersquatter is located in the United States—or has significant contacts with the United States—the trademark owner can bring an in personam claim under the federal Anticybersquatting Consumer Protection Act (“ACPA”). As contrasted with an in rem claim under the ACPA, an in personam claim enables a cybersquatting victim to recover damages, costs, and fees, in addition to recovering the domain name at issue. For a trademark owner to bring an in personam claim under the ACPA, the trademark owner must show:

• Ownership of the trademark;
  • Ownership of a trademark may be demonstrated through a federal, state, or foreign registration trademark registration. Where no registration exists, common-law trademark rights can be demonstrated through the continuous use of the trademark in commerce.

• The trademark is distinctive or famous;
  • A trademark is distinctive if it identifies the trademark owner’s goods or services. Courts consider several factors when determining whether a trademark is distinctive or famous, including but not limited to: the length of time the mark has been in use; the amount of investment made in promoting the mark; the geographic region where the mark is used; and whether there are similar trademarks in use.

• The domain name and trademark are either identical or confusingly similar (or dilutive for famous trademarks); and

• The domain name registrant acted in bath faith to profit from the trademark.

Courts consider several factors when determining whether a domain name registrant acted in bad faith, including but not limited to: the registrant’s trademark or other intellectual property rights (if any) in the domain name; the registrant’s prior use (if any) of the domain name in connection with the bona fide offering of goods or services; the registrant’s intent to divert consumers from the trademark owner’s website to a website accessible under the domain name, creating a likelihood of confusion as to the source of the website; and the registrant’s offer to sell the domain name for financial gain without having used the domain name in for the bona fide offering of any goods or services.