Cybertelecom :: ACPA Reference

Cybertelecom
Federal Internet Law & Policy
An Educational Project

AntiCybersquatting Consumer Protection Act :: Reference

ACPA
- Purpose
- Elements
- - Trademark
- - Distinctive
- - Used
- - Bad Faith
- Fan Sites
- Gripe Site
- Remedy
- In Rem
- Immunity
- Name
- - - Holder
- - - Historic
- Names
- Reference

Internet Addresses
- DNS
- History
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- - -.kids.us
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- ENUM
- IP Numbers
- - IPv6
- BGP
- NATs
- Ports
- Security
- Trademark
- AntiCybersquatter Consumer Protection Act
- Gripe Sites
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Telephone Addresses

Law

The Anticybersquatting Consumer Protection Act (Nov. 29, 1999) codified at 15 U.S.C. § 1125. 1999. Pub.L. No. 106-133, § 3002(a), 113 Stat. 1536, 1501A-545-546
"Title III of S 1948, 106th Congress, the Intellectual Property and Communications Omnibus Reform Act of 1999, which was incorporated into HR 3194, 106th Congress, the Consolidated Appropriations Act of FY2000. S 1948 was enacted as the final appendix to Public Law 106-113 (1999)" [CRS 2000]
The AntiCybersquatting Consumer Protection Act, Report 106-140, 106th Cong., 1st Sess. (Aug. 5, 1999) (Legislative History) [Senate Report] [ACPA Legislative History Report]
House Report 106-412, 106 Cong. 1 Sess (1999), at 5-6.
"On June 21, 1999, Senator Abraham introduced S. 1255 as the ''Anticybersquatting Consumer Protection Act.'' The bill was cosponsored by Senators Torricelli, Hatch, McCain, and Breaux. A hearing was held by the Judiciary Committee on July 22, 1999. The Committee heard testimony from Anne H. Chasser, president of International Trademark Association; Gregory D. Phillips, a trademark practitioner with Howard, Phillips & Anderson in Salt Lake City, UT; and Christopher D. Young, president and chief operating officer of Cyveillance, Inc.
"On July 29, 1999 the Judiciary Committee met in executive session to consider the bill. The Chairman, Senator Hatch, and Ranking Member, Senator Leahy, offered an amendment in the nature of a substitute, which was cosponsored by Senators Abraham, Torricelli, DeWine, Kohl, and Schumer, and which reflected the text of S. 1462, which was introduced the same day by the Chairman and the Ranking Member, with the same Senators listed as cosponsors. The substitute amendment was considered and agreed to by unanimous consent. The bill, as amended, was then ordered favorably reported to the Senate by unanimous consent." Sen. Report. Sec. II
Cyberpiracy can hurt businesses in a number of ways. First, a cyberpirate’s expropriation of a mark as part of a domain name prevents the trademark owner from using the mark as part of its domain name. As a result, consumers seeking a trademark owner’s Web site are diverted elsewhere, which means lost business opportunities for the trademark owner. A cyberpirate’s use may also blur the distinctive quality of a mark and, when linked to certain types of Internet activities such as pornography, may also tarnish the mark. Finally, businesses are required to police and enforce their trademark rights by preventing unauthorized use, or risk losing those rights entirely. - H.R. REP. NO. 106-412 (1999)
Hearings
Cybersquatting and Consumer Protection: Ensuring Domain Name Integrity, 1999: Hearings Before the Senate Comm. on the Judiciary, 106th Cong., 1st Sess. (July 22, 1999) [Senate Hearing 1999]

Caselaw

Circuit Court Cases

2011
GoPets Ltd. v. Hise, 657 F.3d 1024, 1030 (9th Cir. 2011)
CRYSTAL ENTERTAINMENT & FILMWORKS, INC. v. Jurado, Court of Appeals, 11th Circuit 2011 (Court finds Defs are true common law trademark owners, therefore pltf ACPA claim is without merit)
Webadviso v. Bank of Am. Corp., 448 F. App'x 95, 98 (2d Cir. 2011), affirming, Webadviso v. Bank of Am. Corp., 2009 WL 5177997, at *2 (S.D.N.Y. Dec. 31, 2009)
Newport News Holding Corporation v. Virtual City Vision, Inc., 4th Cir. April 18, 2011 ~
2010
DSPT Int'l, Inc. v. Nahum, 624 F3d 1213 (9th Cir. 2010) ~
uBID, Inc. v. GoDaddy Group, Inc., 623 F.3d 421, 435 (7th Cir. 2010)
uBID, Inc. v. GoDaddy Group, Inc., 673 F.Supp.2d 621 (N.D.Ill.2009) (dismissed for lack of personal jurisdiction)
GENERAL CONFERENCE CORP. v. McGill, 617 F. 3d 402 (6th Cir. Aug. 10, 2010) (affirming default judgement) ~
Office Depot, Inc. v. Zuccarini, 596 F. 3d 696 - Court of Appeals, 9th Circuit 2010 (in rem)
EMPLOYERS COUNCIL ON FLEXIBLE COMPENSATION v. Feltman, Court of Appeals, 4th Circuit 2010 (attorneys fees)
EMPLOYERS COUNCIL ON FLEXIBLE COMPENSATION v. Feltman, Dist. Court, ED Virginia Jan. 13, 2010
LAHOTI v. VERICHECK, INC., Court of Appeals, (9th Cir. Feb. 16, 2011) ~
Lahoti v. VeriCheck, Inc., 586 F.3d 1190 (9th Cir. 2009)
Lahoti v. Vericheck, Inc., 708 F. Supp. 2d 1150 - Dist. Court, WD Washington April 9, 2010
2009
Southern Grouts & Mortars, Inc., v. 3M Co., 575 F.3d 1235 (11th Cir. 2009) ~
Kiva Kitchen & Bath Inc. v. Capital Distributing Inc., 319 F.App'x 316, 320-21 (5th Cir. 2009) (award of damages)
THE SOUTHERN COMPANY v. DAUBEN INC., Court of Appeals, 5th Circuit 2009 (reversing lower courts granting of preliminary injunction because lower court conducted an incomplete bad faith analysis)
CINTAS CORPORATION v. UNITE HERE, Court of Appeals, 2nd Circuit 2009 (affirming without analysis lower courts dismissal of ACPA claim)
Cintas Corp. v. Unite Here, 601 F. Supp. 2d 571 - Dist. Court, SD New York 2009 (in one paragraph, rejecting argument that linking to another site which sells t-shirts constitute use in commerce for profit)
Eagle Hosp. Physicians, LLC v. SRG Consulting, Inc., 561 F. 3d 1298 11th Cir. 2009 (default judgement)
2008
Utah Lighthouse Ministry v. Found. for Apologetic Info. and Research, 527 F.3d 1045 (10th Cir. 2008) (affirming lower court's granting of Def's Motion for SJ, gripe site) ~
Utah Lighthouse Ministry v. DISCOVERY COMPUTING, 506 F. Supp. 2d 889 - Dist. Court, D. Utah 2007 APPEALED
The Foundation for Apologet Information & Research

2007

Green v. Fornario, 486 F.3d 100 (3d Cir. 2007) (attorneys fees)

2006

Audi AG and Volkswagen of America Inc. v. Bob D'Amato, 469 F.3d 534, No. 05-2359 (6th Cir., Nov. 27, 2006) (affirming lower court's grant of Plft's motion for summary judgment) ~

Audi AG v. D'AMATO, 381 F. Supp. 2d 644 - Dist. Court, ED Michigan 2005

Bavaro Palace, S.A. v. Vacation Tours, Inc., 203 F. App'x. 252, 256 (11th Cir. 2006) ~

2005

MARCH MADNESS ATHLETIC ASSOCIATION LLC v. NETFIRE INC., Court of Appeals, 5th Circuit 2005 (lower court affirmed that March Madness is protectable trademark) ~

1-800 CONTACTS, INC. v. WhenU. com, Inc., 414 F. 3d 400 - Court of Appeals, 2nd Circuit 2005 (reverse and remanded) ~

Bosley Medical Institute, Inc. v. Kremer, 403 F.3d 672, 674 (9th Cir. 2005) ("Because discovery regarding that claim had not been completed, and the issue itself was not within the scope of the summary judgment motions, the district court erred in granting summary judgment to Kremer as to cybersquatting.") ~

Bosley Medical v. Kremer, 2004 WL 964163 (S.D. th Cal 2004)

Lamparello v. Falwell, 420 F.3d 309 No. 04-2011 (4th Cir. August 24, 2005) ~

Lamparello v. Falwell 360 F. Supp. 2d 768 (EDVA Aug. 5, 2004)

Supreme Court declines Falwell Web appeal, MSNBC 4/18/2006

Jerry Falwell Critic Can Keep Domain Name, Appeals Court Says, CircleID 8/30/2005

Fallwell.com back in the hands of gripe site owner, Internet Cases 8/30/2005

2004

Nissan Motor Co. v. Nissan Computer Corp., 378 F.3d 1002 (9th Cir., 2004), cert. denied (2005)

Nissan Motor Co. v. Nissan Computer Corp ., 231 F. Supp. 2d 977 (C.D. Cal. 2002) (defendant's name was Uzi Nissan)

Nissan.com We've Been Sued

89 F. Supp. 2d 1154 (C.D.Cal. 2000) aff'd. without opinion, 246 F.3rd 675 (9th Cir. 2000)

Lawrence F. Rozsnyai, TrademarkDilution.com: Nissan Motor Co. v. Nissan Computer Corp., and the Evolving Law of Trademark Dilution on the Internet, 2 Shidler J. L. Com. & Tech. 2 (Aug. 12, 2005)

Coca-Cola v. Purdy

, 382 F3d 774 (8th Cir. 2004)

at 778 the ACPA "was intended to balance the interests of trademark owners against the interests of those who would make fair uses of a mark online, such as for comment, criticism, parody, and news reporting."

Lucas Nursery & Landscaping v. Grosse, 359 F. 3d 806 (6th Cir. 2004) (alt copy at Google Scholar) ~ No. 02-1668

“The first four factors are those that militate against a finding of bad faith by providing some reasonable basis for why a defendant might have registered the domain name of another mark holder. These factors focus on: whether the defendant has trademark or other rights in the domain name; the extent to which the domain name consists of the defendant’s legal name or other common name; any prior use of the domain name for the offering of goods and services; and the bona fide noncommercial use of the site.”)

"The paradigmatic harm that the ACPA was enacted to eradicate – the practice of cybersquatter's registering several hundred domain names in an effort to sell them to the legitimate owners of the mark – is simply not present in any of Grosse’s actions. In its report on the ACPA, the Senate Judiciary Committee distilled the crucial elements of bad faith to mean an “intent to trade on the goodwill of another’s mark.” S. R EP. N O. 106-140, at 9. See also Ford Motor Co. v. Catalan, 342 F.3d 543, 549 (6th Cir. 2003) (“Registering a famous trademark as a domain name and then offering it for sale to the trademark owner is exactly the wrong Congress intended to remedy when it passed the ACPA.”)”).

“Although the defendant in Doughney did not make commercial use of his web site, the court concluded that he had, nonetheless, acted with a bad faith intent to profit. Doughney had “made statements on his website and in the press recommending that PETA attempt to ‘settle’ with him and ‘make him an offer’” and that he had “registered other domain names that [were] identical or similar to the marks or names of other famous people and organizations.” Id. at 369.”

DaimlerChrysler v. The Net Inc., 388 F.3d 201 (6th Cir. 2004)

TMI, Inc. v. Maxwell, 368 F.3d 433 (5th Cir.2004)

Retail Services, Inc. v. Freebies Publishing, 364 F. 3d 535 - Court of Appeals, 4th Circuit 2004 (affirming lower court's decision of no protectable trademark)

2003

Storey v. Cello Holdings, LLC., 347 F3d 370 (2d Cir. 2003)

Storey v. Cello Holdings, LLC, 182 F. Supp. 2d 355 - Dist. Court, SD New York 2002

Ford Motor Co. v. Catalanotte, 342 F. 3d 543 (6th Cir 2003) (affirming lower courts award of statutory damages) ~

Hawes v. Network Solutions, Inc., 337 F. 3d 377 - Court of Appeals, 4th Circuit 2003 (challenge to a registrar for an improper domain name transfer)

Barcelona. Com v. Excelentisimo Ayuntamiento, 330 F. 3d 617 (4th Cir 2003) Lower Court

Int'l Bancorp v. Société des Bains de Mer, 329 F. 3d 359 - Court of Appeals, 4th Circuit 2003 ~

Dluhos v. Strasberg, 321 F. 3d 365 (3rd Cir. 2003) (no FAA recognition of ICANN UDRP proceedings)

Taubman Co. v. Webfeats, 319 F.3d 770 (6th Cir. 2003) (personal name case)

2002

Mattel, Inc. v. Barbie-Club. com, 310 F. 3d 293 (2nd Cir 2002) (in rem) (court lacked in rem jurisdiction)

Ty Inc. v. Perryman, 306 F. 3d 509 (7th Cir 2002)

Interstellar Starship Servs., Ltd. v. Epix, Inc., 304 F.3d 936 (9th Cir. 2002) .

Interstellar Starship Services v. Epix, Inc., 125 F. Supp. 2d 1269 (D. Oregon 2001)

Harrods Limited v. Sixty Internet Domain Names, 302 F.3d 214 (4th Cir. 2002) (in rem) []

Harrods Ltd. v. Sixty Internet Domain Names, 157 F. Supp. 2d 658 (E.D.VA. 2001) (findings of fact conclusions of law) (in rem)

110 F.Supp. 2d 420 (E.D.Va. 2000)

Porsche Cars N. Am., Inc. v. Porsche.net, 302 F.3d 248 (4th Cir. 2002)

Mattel, Inc. v. MCA Records, Inc., 296 F.3d 894 (9th Cir. 2002).

Bird v. Parsons, 289 F.3d 865 (6th Cir. 2002) (because there was no allegation that certain defendants "registered a domain name, ... and liability for using a domain name can only exist for the registrant or that person's authorized licensee," the complaint was properly dismissed against those defendants because it "contains no allegation that ... [those defendants] are ... licensee[s]") (citing 15 U.S.C. § 1125(d)(1)(D)).

E. and J. Gallo Winery v. Spider Webs Ltd., et al. Civ. Act. No. H-00-450, 129 F. Supp.2d 1033 (S.D. Tex., January 24, 2001) aff'd., 286 F.3d 270 (5th Cir., 2002)

Lower Court Decision

2001

Sallen v. Corinthians Licenciamentos LTDA, 273 F. 3d 14 - Court of Appeals, 1st Circuit 2001 (relationship of ACPA to UDRP)

[] Domain Names Clearing Co v. F.C.F. Inc., 16 F. App'x 108, 111 (4th Cir. 2001)

PETA v. Doughney, 263 F.3d 359 (4th Cir. 2001) (affirming lower court decision No. CIV.A. 99-1336-A. (E.D.Va. Jun. 12, 2000))

PETA Peeved By Web Parody Canoe 6/28

PEOPLE FOR ETHICAL TREAT. OF ANIMALS v. Doughney, 113 F. Supp. 2d 915 - Dist. Court, ED 2000

Achived version of People Eating Tasting Animals

Shields v. Zuccarini, 254 F.3d 476 (3d Cir. 2001)

Shields v. Zuccarini, No. CIV. A. 00-494, 89 F.Supp.2d 634, 638-39 (EDPa Mar. 27, 2000) (Joe Cartoon) Appealed

TCPIP Holding Co. v. Haar Communications Inc., 244 F.3d 88, 102 n.11 (2d Cir. 2001)

TCPIP Holding Co. v. HAAR COMMUNICATIONS INC., Dist. Court, SD New York 2004 (2004)

Virtual Works, Inc. v. Volkswagen of America, Inc., 238 F.3d 264 (4th Cir. 2001) plaintiff violated ACPA by registering "vw.net" and offering for sale to defendant)

N. Light Tech., Inc. v. N. Lights Club, 236 F.3d 57 (1st Cir. 2001) cert. denied, ___ U.S. ___, 121 S.Ct. 2263, 150 L.Ed.2d 247 (2001) ~

Lower Court

2000

Sporty's Farm LLC v. Sportsman's Market, Inc., 202 F.3d 489 (2nd Cir. 2000), cert. denied, 530 US 1262.

Panavision v. Toeppen, 945 F.Supp. 1296 aff'd 141 F.3d 1316 (9th Cir. 1999)

Scott D. Sanford, Nowhere to Run ... Nowhere to Hide: Trademark Holders Reign Supreme in Panavision lnt'l, L.P. v. Toeppen., 29 Golden Gate U. L. Rev. (1999)

Planned Parenthood Fed'n of Am., v. Bucci, No. 97 Civ. 0629, (S.D.N.Y. Mar. 19, 1997), aff'd, No. 97-7492 (2d Cir. Feb. 9, 1998)

District Court Cases

2014
STARSURGICAL INC. v. APERTA, LLC, Dist. Court, ED Wisconsin 2014
2013
KUBOTA CORPORATION v. SHREDDERHOTLINE. COM COMPANY, INC., Dist. Court, ND Illinois 2013 (Pltf motion for summary judgment denied)
PRO-CONCEPTS, LLC v. Resh, Dist. Court, ED Virginia 2013 (Motion for preliminary injunction denied)
MIGLIORE & ASSOCIATES, LLC v. KENTUCKIANA REPORTERS, LLC, Dist. Court, WD Kentuck 2013 (motion to dismiss denied)
SunEARTH, INC. v. SUN EARTH SOLAR POWER CO., LTD., Dist. Court, ND California 2013
TAIKWOK YUNG v. Trump, Dist. Court, ED New York 2013
JALIN REALTY CAPITAL ADVISORS, LLC v. A BETTER WIRELESS, NISP, LLC, Dist. Court, Minnesota 2013
SQUARE, INC. v. SUAREUP. COM, Dist. Court, ED Virginia 2013 (in rem)
Chanel, Inc. v. HERCHANEL. COM, Dist. Court, SD Florida 2013 (in rem)
Gorham v. Stephens, Dist. Court, D. Nevada 2013 (in rem)
SKY-MED, INC. v. SKYDIVING SCHOOL, INC., Dist. Court, D. Hawaii 2013 (Deft motion for TRO denied)
Louis Vuitton Malletier, S.A. v. 100wholesale.com, No. 12-21778-CIV, 2013 WL 1296283, at * 5 (S.D. Fla. Mar. 28, 2013)
OVERHEAD DOOR CORPORATION v. Burger, Dist. Court, MD Georgia 2013 (motion for default judgment denied, "Burger's prior lawful use of his domain name as an Overhead Door franchisee is strong evidence that undercuts a finding a cybersquatting. Furthermore, given that Overhead has not identified any other indicia of bad faith, beyond Burger's continued use of the website, the Court finds there are insufficient facts to establish a cybersquatting violation.")
MONTANA JEWELRY, INC. v. RISIS, Dist. Court, ED New York 2013 (Deft Motion to Dismiss for failure to state a claim denied; "Plaintiff has alleged that Mark and Daniel registered the signjewelry.com domain name in the name of Mark without Plaintiff's knowledge, shut down and closed the signjewelry.com website, demanded money from Plaintiff in exchange for the transfer of the domain name, and failed to provide all of the information and passwords that were necessary to effectuate the transfer of the domain name. (Am. Compl. ¶¶ 12-24, 34-44, 60-63, 70-73.) Although the nature of Plaintiff's cybersquatting allegations may differ from the typical cybersquatting scenario, these allegations are sufficient to infer bad faith.")
KERODIN v. ServiceMAGIC, INC., Dist. Court, D. Maryland 2013 (Deft Motion to Dismiss granted; Plaintiff failed to demonstrate use of mark in commerce; mere registering of domain name insufficient).
2012
AIRFX. COM v. AirFX LLC, Dist. Court, D. Arizona 2012 (No ACPA cause of action where domain name registration preceded trademark registration)
AIRFX. COM v. AIRFX, LLC, Dist. Court, D. Arizona 2013 (awarding attorneys fees of $103,972.50)
RANDAZZA v. Cox, Dist. Court, D. Nevada 2012 (Ex parte motion for TRO granted)
[] Bogoni v. Gomez, 847 F. Supp. 2d 519, 523-25 (S.D.N.Y. 2012) (summarizing existing case law on the private cyberpiracy statute, 15 U.S.C. § 8131)
LAS VEGAS SANDS CORP. v. TRAFFIC LABEL LIMITED, Dist. Court, D. Nevada 2012 (default judgment)
BROTHERS OF THE WHEEL MC EXECUTIVE COUNCIL, INC. v. Mollohan, Dist. Court, SD West Virginia Nov. 14, 2012 (Deft. Motion to Dismiss granted; Deft "has not registered or used a domain name that is confusingly similar to the BOTW mark" BOTW.com).
CK FRANCHISING, INC. v. COMFORT KEEPERS, INC., Dist. Court, ND Indiana 2012 (Motion default judgment granted)
Chanel, Inc. v. CHANELBAGSFORSALE-US. COM, Dist. Court, SD Florida 2012 (default judgment granted)
2011
[] Dynamis, Inc. v. Dynamis.com, 780 F.Supp.2d 465, 471 (E.D.Va. 2011)
Koch Industries, Inc. v. DOES, Dist. Court, D. Utah 2011
Facton LTD. v. GSTARONSALE. COM, Dist. Court, ED Virginia 2011 (in rem) (denying motion to waive service by publication)
In re Gharbi, Bankruptcy Court, WD Texas, Austin Div. March 3, 2011 ~(On hearing, Def violated ACPA, having bad faith using Plaintiff's trademark in domain name after expiration of franchise agreement)
IN RE GHARBI, Bankruptcy Court, WD Texas, Austin Div. April 19 2010 (Pltf Mot for SJ denied)
FAGNELLI PLUMBING COMPANY, INC. v. GILLECE PLUMBING AND HEATING, INC., Dist. Court, WD Pennsylvania February 15, 2011 ~
Fagnelli Plumbing Co., Inc. v. Gillece Plumbing and Heating, Inc ., Civil Action No. 2:10-CV-00679-AJS (WDPA July 27, 2010) (denying motion to dismiss for failure to state a cause of action)
Airoom LLC v Demi & Cooper, Inc., No. 09 C 4205 ND Illinois Eastern Division Jan. 5, 2011 ~
2010 ~
GOFORIT ENTERTAINMENT, LLC v. DigiMedia. com LP, 750 F. Supp. 2d 712 - Dist. Court, ND Texas 2010 (third level domain names are not covered by the ACPA)
The Majestic Star Casino, LLC, v. Hambledon NV, Case No. 2:10-cv-01974-GMN-RJJ. United States District Court, D. Nevada. December 22, 2010 (finding service sufficient where service was effected using email address listed in domain name registration and using last known mail address of defendants, and where defendants were placed on constructive notice of action where registrar disabled defendant's domain name)
AMERICAN UNIVERSITY OF ANTIGUA COLLEGE OF MEDICINE v. Woodward, Dist. Court, ED Michigan Dec. 16, 2010 ~
AMERICAN UNIVERSITY OF ANTIGUA COLLEGE OF MEDICINE v. Woodward, Dist. Court, ED Michigan Oct. 6 2010 (Def Motion for subpoenas, to set aside default judgment, pltf's motion to strike answer)
Nov. 1, 2010 Order Denying as Moot Plaintiff's Demand for an Amended Answer and Granting Plaintff's Motion to Adjourn Scheduling Order Dates
Carnivale v. Staub Design, LCC, et. al, Civ. No. 08-764-SLR. DDel. Dec. 13, 2010
COSMETIC ALCHEMY, LLC v. R&G, LLC, Dist. Court, D. Arizona Nov. 17, 2010 (motion to dismiss denied)
Shear Contractors Inc v Shear Enterprises & Gen Contracting, et al, NDNY Nov. 16, 2010 (Mot to Dismiss granted) ~
RIB CITY GROUP, INC. v. RCC RESTAURANT CORP., Dist. Court, MD Florida Nov. 16, 2010 (default judgement) ~
WIND TURBINE INDUSTRIES CORP. v. JACOBS WIND ELECTRIC COMPANY, INC., Dist. Court, Minnesota Nov. 15, 2010 (Plaintiff's motion for SJ on ACPA claim denied) ~
WIND TURBINE INDUSTRIES CORP. v. JACOBS WIND ELECTRIC COMPANY, INC., Dist. Court, Minnesota April 6, 2010 (Def. Motion for Recon Denied) ~
WebQUEST. COM, INC. v. HAYWARD INDUSTRIES, INC., Dist. Court, ED California Nov. 8, 2010 (preliminary motions) ~
KSR X-Ray Supplies, Inc. v. Southeastern X-Ray, Inc., Case No. 09-81454-CIV-MARRA/JOHNSON SDFL Oct. 25, 2010 (default judgement) ~
New York New York Hotel & Casino, LCC, v Ronnie Katzin, (D NV 27-Oct 2010) (granting plaintiffs motion SJ; defendent pro se) ~
Oriental Bank and Trust, et al. v. Cooperative de Ahorro Y Credito Oriental, Civil No. 10-1444 (JAF) (DPR Oct. 20. 2010) (opinion and order) ~
Oriental Financial Group v. COOPERATIVA DE AHORRO, 698 F. 3d 9 - Court of Appeals, 1st Cir Oct. 18, 2012 ("We hold that Oriental's claims are not barred by laches because of the doctrine of progressive encroachment, and remand to the district court to determine whether there is a likelihood of confusion as to the COOP ORIENTAL mark and other marks and whether the injunction should be broader, as Oriental contends.") ("Oriental also asserted causes of action for cybersquatting under the Anticybersquatting Consumer Protection Act, 15 U.S.C. § 1125(d); unfair competition and service mark dilution under the Lanham Act, 15 U.S.C. § 1125(a),(c); and unfair competition under Puerto Rico law, P.R. Laws Ann. tit. 10, § 259. However, these claims are not involved in these appeals.")
PENSACOLA MOTOR SALES v. EASTERN SHORE TOYOTA, LLC, Dist. Court, ND Florida Sept 23, 2010 (Cross Mot SJ Denied) ~
INNOVATION VENTURES, LLC v. NVE, INC., Dist. Court, ED Michigan Sept. 15, 2010 (Def ACPA counter-claim dismissed as conceded) ~
CSC Holdings LLC v Optimum Networks, Inc., Civ. No. 10-1057 (WHW) (DNJ Aug. 17, 2010) (Defendant's Motion to Dismiss denied). ~
Starcom Mediavest Group, Inc. v. Mediavestw.com and John Does, NDCa, San Jose Division, Sept. 13, 2010 (in rem) (noting numerous attempts of plaintiff to contact domain name owner, and the false contact information provided in the domain name registration)
Ricks v. BMEZINE. COM, LLC, Dist. Court, D. Nevada August 31, 2010 (Def Mot for Leave to File 2nd Mot for SJ denied) ~
Ricks v. BMEZINE. COM, LLC, Dist. Court, D. Nevada July 26, 2010 (cross motions denied)
Sound Surgical Technologies, LLC v Rubinstein, Case No. 8:10-CV-970-T-27MAP MDFL August 12, 2010 (motion Preliminary Injunction granted) ~
Skydive Arizona, Inc. v Cary Quattrocchi, et al, No. CV 05-2656-PHX-MHM (DAR July 28, 2010) (granting motion to require defendant to renew expired domain name in order to effectuate ordered transfer)
SKYDIVE ARIZONA, INC. v. Quattrocchi, Dist. Court, D. Arizona June 17, 2010 (D Motion to Stay Judgment denied)
Doctor's Associates, Inc. v Subway.SY LLC, et al, No. 09-CV-3148(JMR/AJB) (D Minn July 30, 2010) (awarding injunctive relief and statutory damages)
HEAVENLY VALLEY, LP v. LAKE TAHOE DEVELOPMENT COMPANY, LLC, Dist. Court, ED California July 23, 2010 (default judgement)
Rearden LCC v. Rearden Commerce, Inc, No. C 06-7367 MHP (NDCa July 1, 2010) (Pltf's Motion for SJ Denied; Def Motion for SJ Granted) ~
REARDEN LLC v. Rearden Commerce, Inc., 597 F. Supp. 2d 1006 - Dist. Court, ND Jan. 27, 2009
FIFTH AVENUE OF LONG ISLAND REALTY ASSOCIATES v. CARUSO MANAGEMENT COMPANY, LTD., Dist. Court, ED New York June 15, 2010 ~
VULCAN GOLF, LLC v. GOOGLE INC., Dist. Court, ND Illinois June 9, 2010 (Def Motion to Dismissed denied) ~
LEVINSON AXELROD, P.A., Plaintiff, v. Edward HEYBURN and THE LAW OFFICES OF EDWARD HARRINGTON HEYBURN, P.C., Defendants. Civ. No. 09-5627. United States District Court, D. New Jersey. May 3, 2010 (Def 2nd Motion to Dismiss Denied) ~
SUPER-KRETE INTERN., INC. v. SADLEIR, 712 F. Supp. 2d 1023 - Dist. Court, CD California 2010 (preliminary injunction granted) ~
VOLVO TRADEMARK HOLDING AB v. VOLVOSPARES. COM, 703 F. Supp. 2d 563 - Dist. Court, ED Virginia April 1, 2010 (default judgement)
AAJ v. THE AMERICAN TRIAL LAWYERS ASS'N, 698 F. Supp. 2d 1129 - Dist. Court, Minnesota March 18, 2010 (Def. Mot SJ Denied)
AcademyONE, INC. v. CollegeSOURCE, INC., Dist. Court, ED Pennsylvania Mar. 17, 2010 (attorneys fees)
NEW YORK CITY TRIATHLON v. NYC TRIATHLON CLUB, 704 F. Supp. 2d 305 - Dist. Court, SD New York 2010 ~
Nationwide Payment Solutions, LLC v. Plunkett, 697 F. Supp. 2d 165 - Dist. Court, D. Maine 2010
Career Agents Network, Inc. v. careeragentsnetwork.biz, Case No. 09-CV-12269-DT (EDMI Feb. 26, 2010)
CAREER AGENTS NETWORK, INC. v. White, Dist. Court, ED Michigan 2010 (attorney's fees)
CAREER AGENTS NETWORK, INC. v. White, Dist. Court, ED Michigan Feb. 26, 2010 (Mot SJ)
VOICE OF THE ARAB WORLD INC. v. MDTV MEDICAL NEWS NOW INC., Dist. Court, D. Massachusetts Feb. 25, 2010 (motion preliminary injunction)
TRANSLUCENT COMMUNICATIONS, LLC v. AMERICAS PREMIERE CORP., Dist. Court, D. Maryland Feb. 24, 2010 (P Motion Sum Judgement Granted)
NAU HOLDINGS, LLC v. DLORAH, INC., Civil Action No. 08-cv-02743-CMA-BNB, Opinion and Order Granting Plaintif's Motion for Judgment on the Pleadings as to Count 4 of Dlorah, Inc.'s Counterclaims (D.Co. Feb. 3, 2010) (Def Motion for Judgment on the pleadings granted - similarity of domain name with TM alone does not establish bad faith) ~
MONEX DEPOSIT CO. v. Gilliam, 680 F. Supp. 2d 1148 - Dist. Court, CD California Jan. 25, 2010 (Granting Plaintiff's Motion SJ, Def Pro Se, conceded bad faith) ~
MONEX DEPOSIT CO. v. Gilliam, Dist. Court, CD California June 1, 2010 (finding facts and law, permanent injunction) ~

2009~

Webadviso v. Bank of Am. Corp., 2009 WL 5177997, at *2 (S.D.N.Y. Dec. 31, 2009)

[] Vogster Entm't, L.L.C. v. Mostovoy, 2009 WL 691215, at *3 (E.D.N.Y. Mar. 16, 2009)

AcademyONE, INC. v. CollegeSOURCE, INC., Dist. Court, ED Pennsylvania Dec. 21 2009 (granting Def Motion for SJ; pltf has failed to establish protectable trademark) ~

Cleary Building Corp, V. David A. Dame, Inc., 674 F.Supp.2d 1257 (DCo 2009) (Def Motion to Dismiss granted) ~ Civil Action No. 09-cv-01578-CMA-MEH,

Mastercard Int'l Inc.v. Yanda, No. 4:08-cv-565, 2009 U.S. Dist. LEXIS 116785, at *15 (N.D. Fla. Nov. 5, 2009) ("finding the common misspellings of MasterCard's marks, such as , is conduct prohibited under the ACPA")

MASTERCARD INTERN. INC. v. Trehan, 629 F. Supp. 2d 824 - Dist. Court, ND Illinois May 4, 2009 (consent judgment)~

Grooms v. LEGGE, SDCA April 8, 2009 (granting preliminary injunction)

Philbrick v. eNom, Inc., 593 F. Supp. 2d 352 - Dist. Court, D. New Hampshire 2009 (plaintiff's marks are not famous or distinctive at the time the domain names were registered)

2008~

Verizon California, Inc. v. Navigation Catalyst Systems, Inc., 568 F. Supp. 2d 1088 (C.D. Cal. 2008) (granting Pltf's Motion for Preliminary Injunction, with analysis) ~

Vulcan Golf, LLC v. Google Inc., 254 F.R.D. 521, 528 (N.D. Ill. 2008). (motions to dismiss denied)

Ormsby v. Barrett, Dist. Court, WD Washington 2008 (granting Def Motion for Summary Judgment, case involves dispute of "wailers.com" as in Bob Marley and the Wailers) ~

VOLKSWAGEN, AG v. Volkswagentalk. Com, 584 F. Supp. 2d 879 - Dist. Court, ED Virginia 2008 (in rem)

SILVER RING SPLINT CO. v. DIGISPLINT, INC., 567 F. Supp. 2d 847 Dist. Court, WD Virginia 2008 (damages)

Smith v. Wal-Mart Stores, Inc., 537 F. Supp. 2d 1302 - Dist. Court, ND Georgia 2008 (granting Defendant's Motion for Summary Judgement; concluding that there is no likelihood of conflusion between plaintiff's gripe site / parody, and Walmarts trademark) ~

Walocaust website | Walquaeda cafepress Store

This domain name owner was defended by Public Citizen

Smith v. Wal-Mart Stores, Inc., 475 F. Supp. 2d 1318 - Dist. Court, ND Georgia 2007 (discovery disputes)

HEALIX INFUSION THERAPY, INC. v. Murphy, Dist. Court, SD Texas 2008 (granding Defendant's Motion for Summary Judgment; no bad faith where Deft was unaware of Plft trademark at time of registration)

GEORGE & COMPANY, LLC v. IMAGINATION ENTERAINMENT LIMITED, Dist. Court, ED Virginia 2008 (grandint Defendant's motion for Summary Judgment where Plaintiff's trademark was not recognized)

Atlas Copco AB v. Atlascopcoiran. com, 533 F. Supp. 2d 610 - Dist. Court, ED Virginia 2008 (in rem) (default)

MIKHLYN v. Bove, Dist. Court, ED New York 2008 ~

2007 ~

Anlin Industries, Inc. v. Burgess, 1:05cv1317 DLB (EDCA March 5, 2007)

EAGLE HOSP. PHYSICIANS v. SRG CONSULTING, 509 F. Supp. 2d 1337 - Dist. Court, ND Georgia 2007 (sour relationship, defendant was contractor to plaintiff, Pltf motion for SJ denied) * good case to review

Utah Lighthouse Ministry v. DISCOVERY COMPUTING, 506 F. Supp. 2d 889 - Dist. Court, D. Utah 2007 APPEALED

Vista India v. RAAGA, LLC, 501 F. Supp. 2d 605 - Dist. Court, D. New Jersey 2007 (Pltf Motion Preliminary Injunction denied, but pretty dispositive) ~

Flentye v. Kathrein, 485 F. Supp. 2d 903 - Dist. Court, ND Illinois 2007 (D Motion to Dismiss Denied)

Pet Silk, Inc. v. Jackson, 481 F. Supp. 2d 824 - Dist. Court, SD Texas 2007 (motion for preliminary injunction granted) ~

HI-RISE TECHNOLOGY, INC. v. AMATUERINDEX. COM, Dist. Court, WD Washington 2007 (in rem) (ex parte TRO motion denied)

HER, Inc. v. RE/MAX First Choice, LLC, 468 F. Supp. 2d 964 LLC, 2:06-CV-492 (SDOH Jan 5 2007) (where gripe site was in direct commercial competition with plaintiff, and gripe domain direct visitors to defendant's commercial site, gripe-fair-use exception did not apply. Pltf Motion for Preliminary Injunction granted)

2006 ~

Silpada Designs, Inc. v O'Malley CA No 04-2303-CM (DKan 2006) (affirming statutory damages where domain name was registered after cease and desist letter was received)

CNF Inc v THECNF.COM, No. C-05-04083 SC (NDCa Nov. 22, 2006) (in rem action denied where complaint was served on registrar and not owner)

INTERNATIONAL PROFIT ASSOCIATES INC. v. Paisola, 461 F. Supp. 2d 672 - Dist. Court, ND (granting preliminary TRO)

Lands' End, Inc. v. Remy, 447 F. Supp. 2d 941 (WDWIS September 1, 2006) (Defts Motion for SJ denied; sour relationship)

Hour Fitness USA v. 24/7 TRIBECA FITNESS, 447 F. Supp. 2d 266 - Dist. Court, SD New York 2006 (no likelihood of confusion between two marks)

Ford Motor Co. v. Cross, 441 F. Supp. 2d 837 - Dist. Court, ED Michigan 2006 (default judgment)

Yahoo! v. Yahooahtos.com and 1865 Other Domain Names, 1:05cv1441(JCC) (EDVA Aug 8, 2006) (constructive notice pursuant to 15 USC s 1125(d)(2)(A)(ii)(II)(bb) waived where defendant had actual notice)

CASINOS v. FUJISAKI, Dist. Court, D. Nevada 2006 (ex parte motion TRO denied)

CHRISTENSEN FIRM v. CHAMELEON DATA CORPORATION, Dist. Court, WD Washington 2006 (sour relationship, use of domain name in order to gain advantage in negotiations, Def Motion for SJ denied)

GLOBAL VISION PRODUCTS, INC. v. PFIZER INC., Dist. Court, SD New York 2006 (no infringement absent actual use)

POP WARNER LITTLE SCHOLARS, INC. v. NEW HAMPSHIRE YOUTH FOOTBALL & SPIRIT CONFERENCE, Dist. Court, D. New Hampshire 2006 (Pltf motion for PI denied; Pltf has made no showing that they own or have an interest in the acronym deft uses in domain name).

A1 MORTGAGE CORP. v. A1 MORTGAGE & FINANCIAL SERVICES, LLC, Dist. Court, WD Pennsylvania 2006 (finding defendent registered domain name in bad faith in violation of ACPA) ~

Agri-Supply Co., Inc. v. Agrisupply.com (EDVA 2006) (in rem remedy 'shall be in addition to any other civil action or rememdy otherwise applicable' and the Lanham Act provides for the recovering of attorney's fees in exceptional cases)

2005 ~

Harrison v. Microfinancial, Inc., 2005 WL 435255 (D.Mass., February 24, 2005) (bad faith found for gripe site where Domain Name Owner offered to sell it to Trademark Owner)

SLAT RACK LLC v. Mulcahy, Dist. Court, ND Illinois 2005 (default judgment)

Menashe v. V Secret Catalogue, Inc., 409 F. Supp. 2d 412 - Dist. Court, SD New York 2006 (pltf claim of no-cybersquatting dismissed as there is no case in controversy)

Mashantucket Pequot Tribe v. Redican, 403 F. Supp. 2d 184 - Dist. Court, D. Connecticut 2005 ~

Continental Airlines, Inc. v. continentalairlines.com, 390 FSupp2d 501, 505 (EDVA 2005) (in rem) ("It is well settled that ... waiver of the publication requirement is appropriate where the domain name registrant has actual notice of the action against his property.")

American Girl, LLC v. Nameview, Inc., 381 F. Supp. 2d 876 - Dist. Court, ED Wisconsin 2005 (ex parte motion for TRO denied; no liability for domain name registrar)

Venetian Casino Resort, LLC v. Venetiangold. Com, 380 F. Supp. 2d 737 - Dist. Court, ED Virginia 2005 ~

NBC Universal, Inc. v. nBCunIVeRsAL. Com, 378 F. Supp.2d 715 (E.D. Va., July 14, 2005) (in rem) (jurisdictional)

2004 ~

Lamparello v. Falwell, 360 F. Supp. 2d 768 - Dist. Court, ED Virginia 2004 Appealed

PetMed Express, Inc. v. Medpets.com, Inc., 336 F. Supp. 2d 1213 (S.D. Fla. 2004) (default judgment)

Pennsylvania Business Bank v. Biz Bank Corp., 330 F. Supp. 2d 511 - Dist. Court, ED 2004 (pro se, finding in favor of plaintiff) ~

Garden of Life, Inc. v. Letzer, 318 F. Supp. 2d 946 - Dist. Court, CD California 2004 ~

Nike, Inc. v. Circle Group Internet, Inc., 318 F. Supp. 2d 688 - Dist. Court, ND Illinois 2004 (registration of "justdoit.net" by Def found in bad faith)

Mayflower Transit v. Prince, 314 F.Supp.2d 362 (D.N.J. 2004) (granting Dft motion for summary judgment, finding that dft website is a gripe site) ~

TCPIP Holding Co. v. HAAR COMMUNICATIONS INC., Dist. Court, SD New York 2004 (2004) Remanded from Appellate Court, Granting Motion for Summary Judgment, pro se defendant ~

Ficker v. Touhy, 305 F.Supp.2d 569 (D.Md. 2004) (Pltf motion for TRO denied; court unpersuaded that political candidate can use ACPA to reclaim domain name of his untrademarked personal name) ~

Argos v. ORTHOTEC LLC, 304 F. Supp. 2d 591 - Dist. Court, D. Delaware 2004 (denying Deft preliminary motions) ~

LEWITTES v. Cohen, Dist. Court, SD New York 2004 (granting Dft Motion to Dismiss where Dft registered domain name reflecting her married name, promising to providing information on divorce proceeding) ~

Bosley Medical v. Kremer, 2004 WL 964163 (S.D. th Cal 2004) Appealed

Northwest Airlines, Inc. v. NWA FEDERAL CREDIT UNION, Dist. Court, Minnesota 2004 (granding Dft motion for summary judgment; court finding that Dft does not fit the profile of a cybersquatter) ~

2003 ~

Schmidheiny v. Weber, 319 F. 3d 581 (3rd Cir. 2003) (renewing registration of domain name after time of enactment of ACPA places domain name registration under ACPA) ~

Schmidheiny v. Weber, 285 F. Supp. 2d 613 - Dist. Court, ED Pennsylvania 2003

March Madness Athletic Ass'n, LLC v. Netfire, Inc., 310 F. Supp. 2d 786 - Dist. Court, ND Texas 2003 (bad faith found for registration of march madness.com domain name) APPEALED

1-800 CONTACTS, INC. v. WhenU. Com, 309 F. Supp. 2d 467 - Dist. Court, SD New York 2003 Appealed Reversed and remanded

Echo Drain v. Newsted, 307 F. Supp. 2d 1116 - Dist. Court, CD California 2003 (Pltf's ACPA claim denied as pltf could not offer evidence that defendant had bad faith. Pltf had no protectable trademark; there was no likelihood of confusion) ~

Davies v. Afilias Ltd., 293 F. Supp. 2d 1265 - Dist. Court, MD Florida 2003 (no ACPA cause of action against defendant registry of .info)

Flow Control Industries Inc. v. AMHI INC., 278 F. Supp. 2d 1193 - Dist. Court, WD Washington 2003 (defendant's registration of plaintiff's mark as domain name in order to force plaintiff to remove defendant's marks from plaintiff's metatags establishes bad faith) ~

24 Hour Fitness USA, Inc. v. 24/7 TRIBECA FITNESS, 277 F. Supp. 2d 356 - Dist. Court, SD 2003 (Pltf motion for preliminary injunction denied; finding that plaintiff's mark is descriptive)

Graduate Management Admission Council v. Raju, 267 F. Supp. 2d 505 - Dist. Court, ED Virginia (default judgment)

America Online, Inc. v. Aol. Org, 259 F. Supp. 2d 449 - Dist. Court, ED Virginia 2003 (in rem, registrar refused to transfer domain name)

Pinehurst, Inc. v. Wick, 256 F. Supp. 2d 424 - Dist. Court, MD North Carolina 2003 (bad faith found in case where defendant was found to have warehoused 10k domain names) []

GlobalSantafe Corporation v. GlobalSantafe.com 250 F.Supp.2d 610 (E.D. Va., Feb. 5, 2003) ( Thus, the question presented here is whether the ".com" registry in the United States may be ordered to cancel a domain name that has already been found to be registered in violation of the ACPA, where, as here, the foreign registrant has obtained an in unction from a foreign court barring the foreign registrar from transferring the domain name. )

PGC PROPERTY, LLC v. Wainscott/Sagaponack Prop. Owners, Inc., 250 F. Supp. 2d 136 - Dist. 2003 (cross motions for judgment denied) ~

Retail Services, Inc. v. Freebies Pub., 247 F. Supp. 2d 822 - Dist. Court, ED Virginia 2003 (Granting plaintiff's motion to cancel defendant's mark "freebies") Appealed

2002 ~

Nissan Motor Co. v. Nissan Computer Corp ., 231 F. Supp. 2d 977 (C.D. Cal. 2002) (defendant's name was Uzi Nissan) Appealed

OMEGA SA v. Omega Engineering, Inc., 228 F. Supp. 2d 112 - Dist. Court, D. Connecticut 2002 (motions SJ denied; material issues of fact remained)

EUROTECH v. COSMOS EUR. TRAVELS AKTIENGESELLSCHAFT, 213 F. Supp. 2d 612 - Dist. 2002 ~

Malletier v. Veit, 211 F. Supp. 2d 567 - Dist. Court, ED Pennsylvania 2002 (default judgement)

Victoria's Secret Stores v. Artco Equipment Co., 194 F. Supp. 2d 704 - Dist. Court, SD Ohio 2002 (default judgment)

Standing Stone Media v. Indiancountrytoday. com, 193 F. Supp. 2d 528 - Dist. Court, ND New (in rem)

Intenat'l Bancorp, L.L. C. v. Societe Des Baines De Mer Et Du Cercle Des Etrangers A Monaco, 192 F. Supp. 2d 467 (E.D. Va. 2002) Appealed

Barcelona. com v. Excelentisimo Ayuntamiento, 189 F. Supp. 2d 367 - Dist. Court, ED Virginia (ACPA v UDRP) Appealed

Toronto-Dominion Bank v. Karpachev, 188 F. Supp. 2d 110 (D. Mass. 2002) ~

"There, the district court granted Toronto-Dominion’s motion for summary judgment against the defendant, concluding that there was sufficient evidence to show that the defendant had acted in bad faith under the ACPA. The defendant, a disgruntled customer, registered sixteen domain names composed of various misspellings of the name tdwaterhouse.com. Id. at 111. On the web sites associated with these names, the defendant attacked Toronto-Dominion for “webfacism” and involvement with white collar crime, among other things. Id. at 112. The court concluded that the defendant had acted in bad faith, citing four factors: (1) his intention to divert customers from the “tdwaterhouse” web site by creating confusion as to its source or sponsorship; (2) the fact that he had registered sixteen domain names; (3) the fact that he offered no goods or services on the site; and (4) the fact that he had no intellectual property rights in the site."

registration of 16 gripe sites by defendant was noted by court as a significant element of defendant’s bad faith.

2001 ~

Yellowbrix, Inc. v. Yellowbrick Solutions, Inc., 181 F. Supp. 2d 575 - Dist. Court, North Carolina 2001 (motion for PI denied; no bad faith found) ~

Fare Deals Ltd. v. World Choice Travel. com, Inc., 180 F. Supp. 2d 678 - Dist. Court, D. Maryland 2001 (D motion to dismiss granted where Plaintiff failed to allege any facts supporting claim that Defendant "trafficked in, used and/or licensed the domain name") ~

Mattel Inc. v. Adventure Apparel, 2001 WL 1035140, (S.D.N.Y. Sept. 7, 2001) (link not found) ~

Mattel v. Adventure Apparel, (SDNY Sept. 19, 2001) (Ordering defendant to transfer "barbiesbeachwear.com" and "barbiesclothing.com" to plaintiff)

Ford Motor Co. v. Greatdomains.Com, Inc., 177 F.Supp.2d 635, 645 (E.D.Mich.2001) (granting motion to dismiss against auctioneer because "[a]s an auctioneer, Great Domains does not transfer or receive for consideration the domain names that are sold over its website. Although it does provide a forum at which such transfers and receipts may take place, the property interests associated with each domain name remain with the person `transferring' and pass directly to the person `receiving,' thus bypassing Great Domains entirely.").

Ford Motor Co. v. Greatdomains. com, Inc., 177 F. Supp. 2d 656 - Dist. Court, ED Michigan 2001 (Denying EFF's motion to Dismiss in rem case, but further ruling that in rem would be inappropriate in this case and refusing to exercise in rem jurisdiction) ~

Cable News Network LP, LLLP v. CNNews. com, 177 F. Supp. 2d 506 (EDVA 2001) (in rem)

Cable News Network LP, LLLP v. Cnnews. Com, 162 F. Supp. 2d 484 (ED Virginia 2001) (in rem) (proof of receipt of these communications by the registrants is not required by ACPA)

March Madness Athletic Ass'n, LLC v. Netfire, 162 F. Supp. 2d 560 - Dist. Court, ND Texas Motions for SJ denied; issues of fact exist

Victoria's Cyber Secret v. V Secret Catalogue, Inc., 161 F. Supp. 2d 1339, 1351 (S.D. Fla. 2001) ~

Prime Publishers v. AMERICAN-REPUBLICAN, 160 F. Supp. 2d 266 - Dist. Court, D. Connecticut ~

Mars Musical Adventures, Inc. v. Mars, Inc., 159 F. Supp. 2d 1146 (D.Minn 2001) Motions SJ denied; issues material fact in dispute

Harrods Ltd. v. Sixty Internet Domain Names, 157 F. Supp. 2d 658 (ED VA 2001) (in rem) (findings of fact conclusions of law) Appealed

Chatam International v. Bodum, Inc., 157 F.Supp. 549 (EDPa August 7, 2001): Plaintiff held a federal trademark for "Chambord" in relation to the sale of liqueur and food; defendant held a federal trademark for "Chambord" in relation to the sale of coffee makers. Defendant registered domain name chambord.com. Court held that under the ACPA defendant had not acted in bad faith.) ~

Newport Electronics, Inc. v. Newport Corp., 157 F. Supp. 2d 202 - Dist. Court, D. Connecticut 2001 ~ Cross Motions SJ denied ~

Cline v. 1-888-Plumbing Group, Inc., 146 F. Supp. 2d 351 - Dist. Court, SD New York 2001 (cross motions for summary judgement denied as issues of material fact remain) ~

Schmidheiny v. Weber, 146 F. Supp. 2d 701 - Dist. Court, ED Pennsylvania 2001 (personal name)

Jack in the Box v JACKINTHEBOX.org, 143 F.Supp.2d 590 (2001) (in rem)

Golf Warehouse, LLC v. GOLFERS'WAREHOUSE, INC., 142 F. Supp. 2d 1307 - Dist. Court, D. Kansas 2001 (trademark owners mark "golfer's warehouse" is generic, is not distinctive or famous, and therefor is not protected under ACPA) ~

Lockheed Martin Corp. v. Network Solutions, Inc., 141 F. Supp. 2d 648 (NDTX 2001) (no ACPA liability for NSI acting as DNS registrar) ~

Shri Ram Chandra Mission v. Sahajmarg. org, 139 F. Supp. 2d 721 - Dist. Court, ED Virginia 2001 (in rem publication requirement discretion is over the form of the notice, not whether the notice may be waived)

Parisi v. Netlearning, Inc., 139 F. Supp. 2d 745 - Dist. Court, ED Virginia 2001 UDRP does not constitute binding arbitration under the Federal Arbitrarion Act.

Fleetboston Financial Corp. v. Fleetbostonfinancial.com, 138 F.Supp.2d 121 (2001) (in rem)

Hartog & Co. AS v. Swix. com, 136 F. Supp. 2d 531 - Dist. Court, ED Virginia 2001 (finding no ACPA bad faith violation where defendant operated a legitimate business at the website and had some Swiss trademark rights to the name, " In short, Bürgin is not a "cybersquatter" or "cyberpirate" within either the letter or the spirit of the ACPA. He is a legitimate businessman and SID is a legitimate business. His good faith use of the and domain names in that business is equally legitimate, and does not violate the ACPA ")

E. and J. Gallo Winery v. Spider Webs Ltd., 129 F.Supp.2d 1033 (SD Tex. 2001), aff'd, 286 F.3d 270 (5th Cir. 2002): Court ordered defendant to transfer "ernestandjuliogallo.com" to plaintiffs, noting that defendant had registered approximately 2000 other domain names including many famous companies and places. Attempts to ad non commercial fair use criticism is a mere ruse.)

Alitalia-Linee Aeree Italiane v. Casinoalitalia. Com, 128 F. Supp. 2d 340 (EDVA 2001) (in rem) a mark owner may not maintain in personam claims against a domain name registrant concurrently with an in rem claim against the domain name.

2000 ~

Mirage Resorts, Inc. v. Stirpe, 152 F. Supp. 2d 1208 - Dist. Court, D. Nevada 2000 (plaintiff motion for SJ denied facts in dispute)

Zipee Corp. v. US Postal Service, 140 F. Supp. 2d 1084 - Dist. Court, D. Oregon 2000

Ford Motor Co. v. Lapertosa, 126 F. Supp. 2d 463 - Dist. Court, ED Michigan 2000

Interstellar Starship Services v. Epix, Inc., 125 F. Supp. 2d 1269 (D. Oregon 2001) Appealed

Advance Magazine Publishers Inc. v. Vogue Intern., 123 F. Supp. 2d 790 - Dist. Court, D. New 2000

Spear, Leeds, & Kellogg v. Rosado, 122 F. Supp. 2d 403 - Dist. Court, SD New York 2000

Electronics Boutique Holdings Corp. v. Zuccarini, 2000 WL 1622760, *8 (E.D.Pa. Oct. 30, 2000)

Bihari v. Gross , No. OO Civ. 1664 (SAS) 119 F.Supp.2d 309 (SDNY Sept. 25, 2000) (plaintiff's argument that ACPA applies to metatags rejected)

Greenpoint Financial Corp. v. The Sperry & Hutchinson Company, 116 F.Supp.2d 405 (SDNY 2000) : Plaintiff's use of "Greenpoints" is merely geographically descriptive and had not taken on a secondary meaning.

Northland Ins. Cos. v. Blaylock, 115 F.Supp.2d 1108, 1124 (D.Minn.2000) (Plaintiff's Motion for Preliminary Injunction denied as Plaintiff's ACPA claim has not merit)

Ins. Cos. v. Blaylock, 115 F. Supp.2d 1108 (D. Minn. 2000) (Defendant motion to dismiss denied; Plaintiff motion for Preliminary Injunction denied)

Banco Inverlat, SA v. WWW. Inverlat. Com, 112 F. Supp. 2d 521 (EDVa 2000) (in rem) (publication requirement is within a court's discretion) (in rem, service by publication)

PETA v. Doughney,No. CIV.A. 99-1336-A. (E.D.Va. Jun. 12, 2000) Appealed

Caesars World, Inc. v. Caesars-Palace.Com, et al. 112 F. Supp. 2d 502, Civil Action No.99-550-A (E.D.Va., March 3, 2000) (motions to dismissed denied)

Harrods Limited v. Sixty Internet Domain Names, 110 F.Supp. 2d 420 (EDVa 2000) (in rem) (notice by publication ws unnecessary to effect service of proess, because the record reflected that HBAL had received actual notice)

AOL v Huang, 106 FSupp2d 848 (ED Va 2000) : Case dismissed, including ACPA cause of action, for failure of court to have jurisdiction over defendants; mere registration of domain name with NSI a Virginia corporation was insufficient to haul defendant into Virginia court.

Heathmount AE Corp. v. Technodome.com, 106 F.Supp.2d 860 (2000) (in rem)

Broadbridge Media LLC v. Hypercd.com, 106 FSupp2d 505 (SDNY 2000)

Bigstar Entertainment, Inc ., v. Next Big Star, Inc., No. 00 Civ. 0911 VM, 105 F.Supp.2d 185, 191 (SDNY April 17, 2000) (Plt Motion PI denied)

Northern Light Technology v. Northern Lights Club, 97 F Supp 2d 96 (D Mass 2000) Appealed: Regular changing of explanation of use of domain name on defendant's website was evidence of bad faith intent.

Lucent Technologies v. Lucentsucks.com, 95 F. Supp.2d 528 (E.D. Va 2000) (in rem case dismissed where plaintiff knew location of defendant domain name owner)

Porsche Cars North America, Inc., v. Spencer, No. Civ. S-00-471GEB PAN., 2000 WL 641209, 2 (E.D.Cal. May 18, 2000) (no link found)

Electronics Boutique Holding Corp. v. Zuccarini (E.D. Pa., October 30, 2000) (no link found)

Morrison & Foerster LLP, v. Brian Wick and American Distribution Systems, Inc., No. CIV.A.00-B-465., 94 F.Supp.2d 1125, 1133 (D.Co. April 19, 2000).

Cello Holdings v. Lawrence-Dahl Companies, 89 F. Supp.2d 464 (S.D.N.Y. 2000) (Motions for SJ denied)

Prior to the ACPA

1999
Porsche Cars North America, Inc. and Dr. Ing. H.C.F. Porsche A.G. v. Porsch.com. et. al., 1999 WL 378360 (E.D. Va.) (the court said that the Trademark Dilution Act cannot be read to permit in rem actions)
Paine Webber, Inc. v. wwwpainewebber.com, No. 99-456-A, 1999 U.S. Dist. Lexis 6552 (D. Va. Apr. 9, 1999) (ordering a preliminary injunction after defendant put up a pornographic website)
Brookfield Communications, Inc. v. West Coast Entertainment Corp., 174 F.3d 1036 (9 th Cir. 1999) (TM: Moviebuff. DN: moviebuff.com. Held for Plaintiff)
Hasbro, Inc., v. Clue Computing, Inc., No. CIV. A. 97-10065-DPW, 66 F.Supp.2d 117, 130-32 (DMA Sept. 2, 1999).
Clue's account of the conflict, Hasbro, Inc. sues Clue® Computing, Inc. <www.clue.com/legal/>.

1998

Bally Total Fitness Holding Corp. v. Faber, 29 F. Supp. 2d 1161 (C.D. Cal. 1998) (use of "Bally" in the metatags of a "Bally Sucks" consumer commentary website).

1997

Juno Online Services v. Juno Lighting, Inc., 979 F. Supp. 684 (N.D. Ill. 1997) (mere registration of a domain name is not trademark infringement or misuse even if the use of another's trademark is deliberate)

Cardservice International, Inc. v. McGee, 950 F. Supp. 373 (E.D. Va. 1997) (TM: Cardservice. DN: Cardservice.com registered by Def for his competing credit card and debit card processing service. Holding: In favor of Plaintiff)

1996

Intermatic v. Toeppen, 947 F.Supp. 1227 (N.D. Ill. 1996)

Panavision Int'l, L.P. v. Toeppen, 945 F. Supp. 1296 (C.D. Cal. 1996) (Defendant's attempt to arbitrage the panavision.com domain name constitutes commercial use under the Lanham Act)

State Courts

Papers

LAMPKE MB. Why the Fair Use Defense of Free Speech or Parody Under the Anticybersquatting Consumer Protection Act Needs Judicial Review by the United States Supreme Court . MINN. J.L. SCI. & TECH. 2010;11(1):267-315
Zohar Efroni, A Guidebook to Cypersquatting Litigation: The Practical Approach in a Post-Barcelona.com World, SSRN 3/25/2005
Zohar Efroni, The Anticybersquatting Consumer Protection Act and the Uniform Dispute Resolution Policy: New Opportunities for International Forum Shopping?, SSRN 2/25/2005
Sue Ann Mota, The Anticybersquatting Consumer Protection Act: An Analysis of the Decisions from the Courts of Appeals, 21 J. MARSHALL J. COMPUTER & INFO. L. 355, 358 (2003).
Catherine T. Struve & R. Polk Wagner, Realspace Sovereigns in Cyberspace: Problems with the Anticybersquatting Consumer Protection Act, 17 Berkeley Tech. L.J. 989 (Summer, 2002)
Bruce D. Fisher " The Anticybersquatting Consumer Protection Act: two cases addressing cybersquatting before and after the act ". Florida Bar Journal. 2001.
Jonathan M. Ward, The Rise and Fall of Fences: The Overbroad Protection of the Anticybersquatting Consumer Protection Act , 5 Intellectual Property L. Rev. 211 (2001)
Nguyen, Xuan-Thao, Blame It On the Cybersquatters: How Congress Partially Ends the Circus Among the Circuits with the Anticybersquatting Consumer Protection Act (2001). Loyola University Chicago Law Journal, Vol. 32, pp. 777-813, 2001. Available at SSRN: http://ssrn.com/abstract=1493487
Aaron L. Melville, New Cybersquatting Law Brings Mixed Reactions From Trademark Owners , 6 B.U.J. Sci. & Tech. L. 13 (June 1, 2000).
Jeremy D. Mishkin, Master of Your Domain - An Overview of the Anticybersquatting Consumer Protection Act , 18-SPG Comm. Law. 3 (Spring 2000)
Elizabeth Robinson Martin, Note, "Too Famous to Live Long!" The Anticybersquatting Consumer Protection Act Sets its Sights to Eliminate Cybersquatter Opportunistic Claims on Domain Names , 31 St. Mary's L.J. 797 (2000).
Sarah B. Deutsch, Squatting The Cybersquatters - The Anticybersquatting Consumer Protection Act Helps Fight Cyberpiracy of Brand Names , 4 No. 6 Elec. Banking L. & Com. Rep. 1 (Nov. 1999).
Scott D. Sanford, Nowhere to Run ... Nowhere to Hide: Trademark Holders Reign Supreme in Panavision lnt'l, L.P. v. Toeppen., 29 Golden Gate U. L. Rev. (1999)
AntiCybersquatting Consumer Protection Act: A Powerful Remedy In Domain Name Disputes? Or a Threat to Electronic Commerce ? By Serena C. Hunn Of Ford Marrin Esposito Witmeyer & Gleser, L.L.P.
Ira S Nathenson, Showdown at the Domain Name Corral: Property Rights and Personal Jurisdiction Over Squatters, Poachers and Other Parasites, 58 U. Pitt. L. Rev. 911, 917-18 (1997)

Government Activity

Henry Cohen, CRS Report to Congress, Legislation to Prevent Cybersquatting / Cyberpiracy May 1, 2000
PTO Guidance, Marks Composed, in Whole or In Part, of Domain Names: Surnames (1999).
Reports : Congress directed the Department of Commerce, in cooperation with ICANN, to conduct a study on how to protect the use of personal names in domain names. ACPA Sec. 3006. In response, the Patent and Trademark Office produced its Report to Congress: The Anticybersquatting Consumer Protection Act of 1999, section 3006 concerning the abusive registration of domain names <www.uspto.gov/web/offices/dcom/olia/tmcybiracy/repcongress.pdf>
FTC Staff Advisory Letter from David Medine FTC to David Graves, Netsol (Aug. 21, 1997) (finding that internic.com which sold without authority from NSF held itself out as a domain name registry likely was a misleading and deceptive website within Sec. 5 of the FTC Act)

AntiCybersquatting Consumer Protection Act

Request for Public Comments on Dispute Resolution Issues Relating to Section 3002(b) of the Anticybersquatting Consumer Protection Act

"Pursuant to public request, the Department of Commerce re- opens for an additional 15 days the response period for our request for public comments and suggestions concerning the ``Anticybersquatting Consumer Protection Act'' (or ``the Act'') (Public Law 106-113) and the resolution of Internet domain name disputes involving the personal names of individuals. The original notice and request for comments was published on February 29, 2000, with written comments to be provided by March 30, 2000 (65 FR 10763). Detailed background information, as well as the scope of this request, may be found in the above-cited Federal Register notice."

Federal Register Notice 4/6/200

Point of Contact: Sabrina McLaughlin by telephone at 482-4265, by mail to her attention addressed to: Department of Commerce, Room 5876; 14th & Constitution Avenues, NW; Washington, DC 20230, or by electronic mail at DomainName@doc.gov.

Federal Register Notice 2/29/2000