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Re-registration of Current Domain Name By New Owner Not ACPA 'Registration'

By Judith L. Grubner
December 27, 2011

The Anticybersquatting Consumer Protection Act (ACPA), 15 U.S.C. '1125(d)(1), prohibits registration of a domain name protected as a mark under the Lanham Act if the person: 1) has a bad faith intent to profit from that mark; and 2) registers a domain name that is identical or confusingly similar to a mark that is distinctive at the time of registration of the domain name (emphasis added). However, the ACPA does not define the term “registration.” The Ninth Circuit has now concluded that the ACPA does not apply to a domain name that is first registered prior to the time the trademark at issue becomes distinctive, even if the domain name is later re-registered by a new owner. However, the Ninth Circuit also held that the ACPA can apply to new domain names registered by the new owner after the mark acquires distinctiveness. GoPets Ltd. v. Hise, No. 08-56110 (9th Cir. 2011).

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