Law.com Subscribers SAVE 30%

Call 855-808-4530 or email [email protected] to receive your discount on a new subscription.

The Intellectual Property StrategistKickerSectionsNewsLJN Newsletters

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

By Judith L. Grubner
November 29, 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, __ 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.

This premium content is locked for Entertainment Law & Finance subscribers only

  • Stay current on the latest information, rulings, regulations, and trends
  • Includes practical, must-have information on copyrights, royalties, AI, and more
  • Tap into expert guidance from top entertainment lawyers and experts

For enterprise-wide or corporate acess, please contact Customer Service at [email protected] or 877-256-2473

Read These Next
New York's Latest Cybersecurity Commitment Image

On Aug. 9, 2023, Gov. Kathy Hochul introduced New York's inaugural comprehensive cybersecurity strategy. In sum, the plan aims to update government networks, bolster county-level digital defenses, and regulate critical infrastructure.

Law Firms are Reducing Redundant Real Estate by Bringing Support Services Back to the Office Image

A trend analysis of the benefits and challenges of bringing back administrative, word processing and billing services to law offices.

Bit Parts Image

Summary Judgment Denied Defendant in Declaratory Action by Producer of To Kill a Mockingbird Broadway Play Seeking Amateur Theatrical Rights

Risks of “Baseball Arbitration” in Resolving Real Estate Disputes Image

“Baseball arbitration” refers to the process used in Major League Baseball in which if an eligible player's representative and the club ownership cannot reach a compensation agreement through negotiation, each party enters a final submission and during a formal hearing each side — player and management — presents its case and then the designated panel of arbitrators chooses one of the salary bids with no other result being allowed. This method has become increasingly popular even beyond the sport of baseball.

Bankruptcy Sales: Finding a Diamond In the Rough Image

There is no efficient market for the sale of bankruptcy assets. Inefficient markets yield a transactional drag, potentially dampening the ability of debtors and trustees to maximize value for creditors. This article identifies ways in which investors may more easily discover bankruptcy asset sales.