Up until this year, victims of domain name theft had limited avenues for recovery. But things changed when a federal court began ordering the return of stolen domain names via the federal Anticybersquatting Consumer Protection Act (ACPA). And these domain names don’t correspond to registered trademarks, but to marks that allegedly have been used in commerce.
The ACPA permits actions to recover domain names that are identical or confusingly similar to trademarks and used with bad faith intent to profit. It protects registered marks as well as unregistered marks that are distinctive or famous.
On Dec. 22, the U.S. District Court for the Eastern District of Virginia held that the registrant of 256.com was entitled to recovery based on allegations of “use in commerce” since 1997. On Dec. 8, the court ordered the return of 12 domain names—also based on common law rights through use in commerce—that included associatesdegree.com and onlinecourses.net. These registrants made few to no other factual allegations regarding the domains’ fame or distinctiveness.
Domain theft victims are beginning to try this strategy in other courts as well. An ACPA claim was filed Nov. 6 in a federal district court in Texas to recover the stolen 0004.com domain.
The Virginia court ordered for the first time in May— in a case called Acme Billing Co. v. Doe—the return of an e-commerce company's stolen domain names based on alleged common law rights in the domains due to their use in connection with the sale of products and services. These domain names included aij.com, sjs.com and 7204.com, among others.
The reasoning of the Acme Billing ruling started to kick in in September, when the court ordered the transfer of x3.com based on the domain’s use in commerce for over 20 years. Another ruling in October granted relief to the original registrant of hi.net. This domain name had allegedly been used in commerce for nine years.
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