Safe Harbor for Service Providers Under Anticybersquatting Act
Gerald M. Levine analyzes two lawsuits that sought to hold GoDaddy.com, the largest registrar in the United States with more than 60 million domain names under management, liable for contributory or secondary infringement rather than "direct" cybersquatting under the under the Anticybersquatting Consumer Protection Act.
September 29, 2015 at 05:24 PM
13 minute read
GoDaddy.com, which is the largest registrar in the United States with more than 60 million domain names under management, has been the prevailing defendant in two major lawsuits under the Anticybersquatting Consumer Protection Act (ACPA),1 Petroliam Nasional Berhad2 decided in 2013 and Academy of Motion Picture Arts & Sciences3 (AMPAS) decided on Sept. 10 of this year after a bench trial a month earlier. In both cases plaintiffs sought to hold defendant liable for contributory or secondary infringement rather than “direct” cybersquatting under the ACPA. Although the factual circumstances underlying the claims are different the principal reason for plaintiffs' lack of success lies in a fundamental misunderstanding of the ACPA.
The ACPA was Congress' statutory response to the scourge of registering, trafficking in, or using domain names with the bad faith intent of profiting from marks.4 While the ACPA is part of the Trademark Act of 1946 (the Lanham Act,)5 cybersquatting or cyber piracy as the statute is denominated is not a traditional trademark infringement but a statutory violation of another kind. The intent necessary to prove trademark infringement and cybersquatting is measured by entirely different standards.
The cases against GoDaddy involve infringing domain names that are either registered with but hosted by other providers or for which GoDaddy is providing parking services to hosted customers. While secondary liability has been recognized under the Lanham Act for trademark infringement,6 the U.S. Court of Appeals for the Ninth Circuit in Petroliam Nasional limits the ACPA to acts of cyberpiracy, and the district court explains why this must be, given the specific evidence offered in AMPAS.
Registrants Versus Providers
Under the ACPA and the Uniform Domain Name Dispute Resolution Policy (UDRP), in order for plaintiffs to prevail against registrants for unlawfully registering domain names identical or confusingly similar to their marks, they must prove registrants acted intentionally. Although the ACPA dictates how registrants' intentions are to be discovered none of the tests are clearly applicable to service providers. Specifically, the understanding of “intent to profit” must be different when applied to cybersquatters than to service providers for the simple reason that providers offer their services with the specific intent of making a profit from the services, not from infringing trademark rights.
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