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TRADEMARK
CYBERPIRACY PREVENTION
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 inter-national
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
- "(I)
in the case of a mark that is distinctive at the
time of registration of the domain name, is
identical or confusingly similar to that
mark;
- "(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.
"B(ii) Bad
faith intent described under sub-paragraph (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 reg-istrar, 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.
"2(B) The
actions under subparagraph (A)(ii) shall constitute service
of process.
"2(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.
"2(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.
"2D(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.:
(1) IN GENERAL.:
(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 sub-paragraph (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.
"D(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.
"D(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.
"D(iv) If a
registrar, registry, or other registration authority takes
an action described under clause (ii) based on a knowing and
material mis-representation 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.
"D(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 alpha-numeric 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 "trademarks" and
inserting "trademarks";
(B) in subsection (a) by striking "trademarks" and
inserting "trademarks"; and
(C) in subsection (b) by striking "trademark" 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 "trademarks" 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 enact-ment 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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