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

By Judith L. Grubner

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, __ F.3d __ (9th Cir. 2011).

In March 1999, Edward Hise registered the domain name gopets.com in his own name and developed a business plan for the name as part of a marketing class. He and his veterinarian cousin planned to develop a website that would be “a pet owner resource covering health, safety, nutrition, animal behavior, training, competition, abuse, pets and children, free advice from veterinarians, and the pet industry.” However, no content appeared on the website until Sept. 26, 2004. Edward and his brother Joseph also owned a corporation, Digital Overture, which provided Internet-related services such as registering and maintaining domain names.

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