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7831 Trademarks & Unfair Competition
106th
CONGRESS
1st Session
S. 1948
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TITLE
III--TRADEMARK CYBERPIRACY PREVENTION
SEC. 3001.
SHORT TITLE; REFERENCES.
(a) SHORT TITLE-
This title may be cited as the `Anticybersquatting
Consumer Protection Act'.
(b)
REFERENCES TO THE TRADEMARK ACT OF 1946- Any reference
in this title to the Trademark Act of 1946 shall be a
reference to the Act entitled `An Act to provide for
the registration and protection of trademarks used in
commerce, to carry out the provisions of certain
international conventions, and for other purposes',
approved July 5, 1946 (15 U.S.C. 1051 et seq.).
SEC. 3002.
CYBERPIRACY PREVENTION.
(a) IN GENERAL-
Section 43 of the Trademark Act of 1946 (15 U.S.C.
1125) is amended by inserting at the end the
following:
`(d)(1)(A) A
person shall be liable in a civil action by the owner
of a mark, including a personal name which is
protected as a mark under this section, if, without
regard to the goods or services of the parties, that
person--
`(i) has a
bad faith intent to profit from that mark, including
a personal name which is protected as a mark under
this section; and
`(ii)
registers, traffics in, or uses a domain name that--
`(II) in the
case of a famous mark that is famous at the time
of registration of the domain name, is identical
or confusingly similar to or dilutive of that
mark; or
`(III) is
a trademark, word, or name protected by reason of
section 706 of title 18, United States Code, or
section 220506 of title 36, United States Code.
`(B)(i) In
determining whether a person has a bad faith intent
described under subparagraph (A), a court may consider
factors such as, but not limited to--
`(I) the
trademark or other intellectual property rights of
the person, if any, in the domain name;
`(II) the
extent to which the domain name consists of the
legal name of the person or a name that is otherwise
commonly used to identify that person;
`(III) the person's prior use, if any, of the domain
name in connection with the bona fide offering of
any goods or services;
`(IV) the person's bona fide noncommercial or fair
use of the mark in a site accessible under the
domain name;
`(V) the person's intent to divert consumers from
the mark owner's online location to a site
accessible under the domain name that could harm the
goodwill represented by the mark, either for
commercial gain or with the intent to tarnish or
disparage the mark, by creating a likelihood of
confusion as to the source, sponsorship,
affiliation, or endorsement of the site;
`(VI) the person's offer to transfer, sell, or
otherwise assign the domain name to the mark owner
or any third party for financial gain without having
used, or having an intent to use, the domain name in
the bona fide offering of any goods or services, or
the person's prior conduct indicating a pattern of
such conduct;
`(VII) the person's provision of material and
misleading false contact information when applying
for the registration of the domain name, the
person's intentional failure to maintain accurate
contact information, or the person's prior conduct
indicating a pattern of such conduct;
`(VIII) the person's registration or acquisition of
multiple domain names which the person knows are
identical or confusingly similar to marks of others
that are distinctive at the time of registration of
such domain names, or dilutive of famous marks of
others that are famous at the time of registration
of such domain names, without regard to the goods or
services of the parties; and
`(IX) the extent to which the mark incorporated in
the person's domain name registration is or is not
distinctive and famous within the meaning of
subsection (c)(1) of section 43.
`(ii) Bad faith intent described under subparagraph
(A) shall not be found in any case in which the court
determines that the person believed and had reasonable
grounds to believe that the use of the domain name was
a fair use or otherwise lawful.
`(C) In any
civil action involving the registration, trafficking,
or use of a domain name under this paragraph, a court
may order the forfeiture or cancellation of the domain
name or the transfer of the domain name to the owner
of the mark.
`(D) A person
shall be liable for using a domain name under
subparagraph (A) only if that person is the domain
name registrant or that registrant's authorized
licensee.
`(E) As used
in this paragraph, the term `traffics in' refers to
transactions that include, but are not limited to,
sales, purchases, loans, pledges, licenses, exchanges
of currency, and any other transfer for consideration
or receipt in exchange for consideration.
`(2)(A) The
owner of a mark may file an in rem civil action
against a domain name in the judicial district in
which the domain name registrar, domain name registry,
or other domain name authority that registered or
assigned the domain name is located if--
`(i) the domain name violates any right of the owner
of a mark registered in the Patent and Trademark
Office, or protected under subsection (a) or (c);
and
`(ii) the court finds that the owner--
`(I) is not able to obtain in personam
jurisdiction over a person who would have been a
defendant in a civil action under paragraph (1);
or
`(II) through due diligence was not able to find a
person who would have been a defendant in a civil
action under paragraph (1) by--
`(aa) sending a notice of the alleged violation
and intent to proceed under this paragraph to
the registrant of the domain name at the postal
and e-mail address provided by the registrant to
the registrar; and
`(bb) publishing notice of the action as the
court may direct promptly after filing the
action.
`(B) The actions
under subparagraph (A)(ii) shall constitute service of
process.
`(C) In an in
rem action under this paragraph, a domain name shall
be deemed to have its situs in the judicial district
in which--
`(i) the domain name registrar, registry, or other
domain name authority that registered or assigned
the domain name is located; or
`(ii) documents sufficient to establish control and
authority regarding the disposition of the
registration and use of the domain name are
deposited with the court.
`(D)(i) The remedies in an in rem action under this
paragraph shall be limited to a court order for the
forfeiture or cancellation of the domain name or the
transfer of the domain name to the owner of the mark.
Upon receipt of written notification of a filed,
stamped copy of a complaint filed by the owner of a
mark in a United States district court under this
paragraph, the domain name registrar, domain name
registry, or other domain name authority shall--
`(I) expeditiously deposit with the court documents
sufficient to establish the court's control and
authority regarding the disposition of the
registration and use of the domain name to the
court; and
`(II) not transfer, suspend, or otherwise modify the
domain name during the pendency of the action,
except upon order of the court.
`(ii) The domain name registrar or registry or other
domain name authority shall not be liable for
injunctive or monetary relief under this paragraph
except in the case of bad faith or reckless disregard,
which includes a willful failure to comply with any
such court order.
`(3) The
civil action established under paragraph (1) and the
in rem action established under paragraph (2), and any
remedy available under either such action, shall be in
addition to any other civil action or remedy otherwise
applicable.
`(4) The in
rem jurisdiction established under paragraph (2) shall
be in addition to any other jurisdiction that
otherwise exists, whether in rem or in personam.'.
(b)
CYBERPIRACY PROTECTIONS FOR INDIVIDUALS-
(A) CIVIL LIABILITY- Any person who registers a
domain name that consists of the name of another
living person, or a name substantially and
confusingly similar thereto, without that person's
consent, with the specific intent to profit from
such name by selling the domain name for financial
gain to that person or any third party, shall be
liable in a civil action by such person.
(B) EXCEPTION- A person who in good faith
registers a domain name consisting of the name of
another living person, or a name substantially and
confusingly similar thereto, shall not be liable
under this paragraph if such name is used in,
affiliated with, or related to a work of
authorship protected under title 17, United States
Code, including a work made for hire as defined in
section 101 of title 17, United States Code, and
if the person registering the domain name is the
copyright owner or licensee of the work, the
person intends to sell the domain name in
conjunction with the lawful exploitation of the
work, and such registration is not prohibited by a
contract between the registrant and the named
person. The exception under this subparagraph
shall apply only to a civil action brought under
paragraph (1) and shall in no manner limit the
protections afforded under the Trademark Act of
1946 (15 U.S.C. 1051 et seq.) or other provision
of Federal or State law.
(2) REMEDIES- In any civil action brought under
paragraph (1), a court may award injunctive relief,
including the forfeiture or cancellation of the
domain name or the transfer of the domain name to
the plaintiff. The court may also, in its
discretion, award costs and attorneys fees to the
prevailing party.
(3) DEFINITION- In this subsection, the term `domain
name' has the meaning given that term in section 45
of the Trademark Act of 1946 (15 U.S.C. 1127).
(4) EFFECTIVE DATE- This subsection shall apply to
domain names registered on or after the date of the
enactment of this Act.
SEC. 3003.
DAMAGES AND REMEDIES.
(a) REMEDIES IN
CASES OF DOMAIN NAME PIRACY-
(1) INJUNCTIONS- Section 34(a) of the Trademark Act
of 1946 (15 U.S.C. 1116(a)) is amended in the first
sentence by striking `(a) or (c)' and inserting
`(a), (c), or (d)'.
(2) DAMAGES- Section 35(a) of the Trademark Act of
1946 (15 U.S.C. 1117(a)) is amended in the first
sentence by inserting `, (c), or (d)' after `section
43(a)'.
(b) STATUTORY DAMAGES- Section 35 of the Trademark Act
of 1946 (15 U.S.C. 1117) is amended by adding at the
end the following:
`(d) In a
case involving a violation of section 43(d)(1), the
plaintiff may elect, at any time before final judgment
is rendered by the trial court, to recover, instead of
actual damages and profits, an award of statutory
damages in the amount of not less than $1,000 and not
more than $100,000 per domain name, as the court
considers just.
SEC. 3004.
LIMITATION ON LIABILITY.
Section 32(2) of
the Trademark Act of 1946 (15 U.S.C. 1114) is
amended--
(1) in the matter preceding subparagraph (A) by
striking `under section 43(a)' and inserting `under
section 43(a) or (d)'; and
(2) by redesignating subparagraph (D) as
subparagraph (E) and inserting after subparagraph
(C) the following:
`(D)(i)(I) A domain name registrar, a domain name
registry, or other domain name registration
authority that takes any action described under
clause (ii) affecting a domain name shall not be
liable for monetary relief or, except as provided in
subclause (II), for injunctive relief, to any person
for such action, regardless of whether the domain
name is finally determined to infringe or dilute the
mark.
`(II) A domain name registrar, domain name registry,
or other domain name registration authority
described in subclause (I) may be subject to
injunctive relief only if such registrar, registry,
or other registration authority has--
`(aa) not expeditiously deposited with a court, in
which an action has been filed regarding the
disposition of the domain name, documents
sufficient for the court to establish the court's
control and authority regarding the disposition of
the registration and use of the domain name;
`(bb) transferred, suspended, or otherwise
modified the domain name during the pendency of
the action, except upon order of the court; or
`(cc) willfully failed to comply with any such
court order.
`(ii) An action referred to under clause (i)(I) is
any action of refusing to register, removing from
registration, transferring, temporarily disabling,
or permanently canceling a domain name--
`(I) in compliance with a court order under
section 43(d); or
`(II) in the implementation of a reasonable policy
by such registrar, registry, or authority
prohibiting the registration of a domain name that
is identical to, confusingly similar to, or
dilutive of another's mark.
`(iii) A domain name registrar, a domain name
registry, or other domain name registration
authority shall not be liable for damages under this
section for the registration or maintenance of a
domain name for another absent a showing of bad
faith intent to profit from such registration or
maintenance of the domain name.
`(iv) If a registrar, registry, or other
registration authority takes an action described
under clause (ii) based on a knowing and material
misrepresentation by any other person that a domain
name is identical to, confusingly similar to, or
dilutive of a mark, the person making the knowing
and material misrepresentation shall be liable for
any damages, including costs and attorney's fees,
incurred by the domain name registrant as a result
of such action. The court may also grant injunctive
relief to the domain name registrant, including the
reactivation of the domain name or the transfer of
the domain name to the domain name registrant.
`(v) A domain name registrant whose domain name has
been suspended, disabled, or transferred under a
policy described under clause (ii)(II) may, upon
notice to the mark owner, file a civil action to
establish that the registration or use of the domain
name by such registrant is not unlawful under this
Act. The court may grant injunctive relief to the
domain name registrant, including the reactivation
of the domain name or transfer of the domain name to
the domain name registrant.'.
SEC. 3005.
DEFINITIONS.
Section 45 of
the Trademark Act of 1946 (15 U.S.C. 1127) is amended
by inserting after the undesignated paragraph defining
the term `counterfeit' the following:
`The term
`domain name' means any alphanumeric designation which
is registered with or assigned by any domain name
registrar, domain name registry, or other domain name
registration authority as part of an electronic
address on the Internet.
`The term
`Internet' has the meaning given that term in section
230(f)(1) of the Communications Act of 1934 (47 U.S.C.
230(f)(1)).'.
SEC. 3006.
STUDY ON ABUSIVE DOMAIN NAME REGISTRATIONS INVOLVING
PERSONAL NAMES.
(a) IN GENERAL-
Not later than 180 days after the date of the
enactment of this Act, the Secretary of Commerce, in
consultation with the Patent and Trademark Office and
the Federal Election Commission, shall conduct a study
and report to Congress with recommendations on
guidelines and procedures for resolving disputes
involving the registration or use by a person of a
domain name that includes the personal name of another
person, in whole or in part, or a name confusingly
similar thereto, including consideration of and
recommendations for--
(1) protecting personal names from registration by
another person as a second level domain name for
purposes of selling or otherwise transferring such
domain name to such other person or any third party
for financial gain;
(2) protecting individuals from bad faith uses of
their personal names as second level domain names by
others with malicious intent to harm the reputation
of the individual or the goodwill associated with
that individual's name;
(3) protecting consumers from the registration and
use of domain names that include personal names in
the second level domain in manners which are
intended or are likely to confuse or deceive the
public as to the affiliation, connection, or
association of the domain name registrant, or a site
accessible under the domain name, with such other
person, or as to the origin, sponsorship, or
approval of the goods, services, or commercial
activities of the domain name registrant;
(4)
protecting the public from registration of domain
names that include the personal names of government
officials, official candidates, and potential
official candidates for Federal, State, or local
political office in the United States, and the use
of such domain names in a manner that disrupts the
electoral process or the public's ability to access
accurate and reliable information regarding such
individuals;
(5)
existing remedies, whether under State law or
otherwise, and the extent to which such remedies are
sufficient to address the considerations described
in paragraphs (1) through (4); and
(6) the
guidelines, procedures, and policies of the Internet
Corporation for Assigned Names and Numbers and the
extent to which they address the considerations
described in paragraphs (1) through (4).
(b) GUIDELINES AND PROCEDURES- The Secretary of
Commerce shall, under its Memorandum of Understanding
with the Internet Corporation for Assigned Names and
Numbers, collaborate to develop guidelines and
procedures for resolving disputes involving the
registration or use by a person of a domain name that
includes the personal name of another person, in whole
or in part, or a name confusingly similar thereto.
SEC. 3007.
HISTORIC PRESERVATION.
Section
101(a)(1)(A) of the National Historic Preservation Act
(16 U.S.C. 470a(a)(1)(A)) is amended by adding at the
end the following: `Notwithstanding section 43(c) of
the Act entitled `An Act to provide for the
registration and protection of trademarks used in
commerce, to carry out the provisions of certain
international conventions, and for other purposes',
approved July 5, 1946 (commonly known as the
`Trademark Act of 1946' (15 U.S.C. 1125(c))),
buildings and structures on or eligible for inclusion
on the National Register of Historic Places (either
individually or as part of a historic district), or
designated as an individual landmark or as a
contributing building in a historic district by a unit
of State or local government, may retain the name
historically associated with the building or
structure.'.
SEC. 3008.
SAVINGS CLAUSE.
Nothing in this
title shall affect any defense available to a
defendant under the Trademark Act of 1946 (including
any defense under section 43(c)(4) of such Act or
relating to fair use) or a person's right of free
speech or expression under the first amendment of the
United States Constitution.
SEC. 3009.
TECHNICAL AND CONFORMING AMENDMENTS.
Chapter 85 of
title 28, United States Code, is amended as follows:
(1) Section 1338 of title 28, United States Codes,
is amended--
(A) in the section heading by striking `trade-marks'
and inserting `trademarks';
(B) in subsection (a) by striking `trade-marks'
and inserting `trademarks'; and
(C) in subsection (b) by striking `trade-mark' and
inserting `trademark'.
(2) The item relating to section 1338 in the table
of sections for chapter 85 of title 28, United
States Code, is amended by striking `trade-marks'
and inserting `trademarks'.
SEC. 3010.
EFFECTIVE DATE.
Sections
3002(a), 3003, 3004, 3005, and 3008 of this title
shall apply to all domain names registered before, on,
or after the date of the enactment of this Act, except
that damages under subsection (a) or (d) of section 35
of the Trademark Act of 1946 (15 U.S.C. 1117), as
amended by section 3003 of this title, shall not be
available with respect to the registration,
trafficking, or use of a domain name that occurs
before the date of the enactment of this Act.
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