cybersquatting statute of limitations

[dna]

Is there a statute of limitations on cybersquatting (the 96 us law is the one i am refering to)

 

[jberryhill]

The effective date of the Anti-Cybersquatting Consumer Protection Act was November 29, 1999. There is some question about whether monetary damages are available for domain names registered prior to that date, but injunctive relief (if you still have the domain name) certainly is available.

It's not clear what you mean by the question, so I'll run through a couple of scenarios.

If you have a domain name which you registered with a bad faith intent to profit from someone else's trademark you *are* cybersquatting. "Cybersquatting" is not solely the act of registering the domain name, but the statute refers to acts of "registers, traffics in, or uses". (See, http://www4.law.cornell.edu/uscode/15/1125.html at (d)(1)(A)(ii))

So, if you still have the name, then (with the possible exception noted below) you are still cybersquatting as fresh as a daisy today.

But, let's say that you *had* the name, and no longer have it? Are you off the hook? There is no reason to believe that you are. If the TM owner can plausibly argue for damages (or opt for the judge's wheel o' fortune for discretionary statutory damages) accrued during the time that you had it, then the generally applicable time limits of the Lanham Act apply. I could see a situation where A registers the domain name and sells it to B, and then the TM owner sues both A and B. B - to recover the domain name, and A - to disgorge the "unjust enrichment" obtained by unauthorized exploitation of the mark.

But, let's say that you still have the domain name, and that the TM owner has threatened you, but done nothing. In that situation, the general rule of thumb is if you make it to around 6 years, then you have the equitable defense of laches - basically that the TM owner's inaction has given you a reasonable basis to believe that they do not have or would not assert their rights against you.

 

[HOWARD]

One caveat - the Third Circuit U.S. Court of Appeals has held in Shields v. Zuccarini that even if you registered the domain prior to November, 1999, the ACPA still applies if you used it after that date and after receiving notice by C & D letter that it is someone else's trademark.

 

[GeorgeK]

I think perhaps DNA is asking whether domains that have been held for a certain period of time, say 1 or 2 years, are exempt from being challenged. i.e. the TM owner would need to make a claim before that time, otherwise they are out of luck in using the act against the domain holder.

There should be an amendment to UDRP to have a similar limitation period -- if I own a domain for 3 years, say, and a TM holder said nothing during those 3 years, but then comes along to challenge the registration, they should be precluded from using UDRP.

 

[jberryhill]

"There should be an amendment to UDRP to have a similar limitation period -- if I own a domain for 3 years, say, and a TM holder said nothing during those 3 years, but then comes along to challenge the registration, they should be precluded from using UDRP."

I don't see why. For example, there are some panelists who strictly apply the "registered and used in bad faith" clause of the UDRP. Now, if you registered some variation of a TM, and didn't use the domain name for anything for four years, the TM owner may not care. But if, in year four, a porn site shows up, or the traffic is re-directed to a competitor, then there is a problem.

 

[namedropper]

Originally posted by GeorgeK
I think perhaps DNA is asking whether domains that have been held for a certain period of time, say 1 or 2 years, are exempt from being challenged.

Yes, it's obvious that that's what he was asking, and, no, it doesn't work that way. Further not only should it not work that way (see John's example) it never would get passed in this corporation-friendly congress even if it made sense.