ACPA (the Anticybersquatting Consumer Protection Act) has been in the news lately, on the heels of an amicus brief[1] filed by INTA last month, aiming to have the US Supreme Court resolve the question as to whether the renewal of a domain name can constitute a “re-registration.” This article won’t get into that matter, which was summarized in an excellent article in Domain Name Wire.[2] Instead, we wanted to take a step back and tackle a more basic question:
What purpose does ACPA hold, given the immense utility of UDRP in addressing cases of cybersquatting?
For those not familiar, ACPA[3] is a 1999 US law that provides the standard for courts to order “the forfeiture or cancellation of the domain name or the transfer of the domain name to the owner of the mark.”
Sound familiar? The UDRP, also introduced in 1999, provides for the “cancellation of (the) domain name or the transfer of (the) domain name registration to the complainant.”
The UDRP has several key advantages over ACPA filings: UDRP adoption is mandatory for all registrars of generic top-level domain names and has been voluntarily adopted by several ccTLD registries around the world, whereas ACPA requires the registrar or registry to be based in the United States. Also, UDRPs are less expensive for the complainant and tend to be resolved more quickly.
Still, brands continue to be involved in ACPA cases, for example:
- Instructure, Inc. v. Canvas Technologies (2021)
Domain Name: canvas.com
- Prudential v. Zhang (2020)
Domain Name: pru.com
- Blair v. Automobili Lamborghini SpA (2024)
Domain Name: lambo.com
These are three examples from a relatively small sample of recent ACPA cases. To be clear, for the reasons cited above of expediency and cost, UDRP indeed remains the preferred remedy for brands facing cybersquatting. The plaintiffs in the above cases were not ignorant of the existence of UDRP and instead opted for the US courts for other reasons. Inferring these reasons can be a valuable exercise in identifying the uncommon circumstances in which filing under ACPA is warranted.
When the Goal is to Force another Company to Rebrand: The plaintiff in Instructure v. Canvas Technologies used the Canvas brand long before the defendant but was not willing to pay the high price to acquire canvas.com. When the defendant acquired the domain, consumers mistakenly thought that canvas.com was the official website of the more well-known plaintiff. This was troublesome for the plaintiff, as there was some overlap with the defendant in the types of services offered.
The plaintiff was able to center its arguments around the harm inflicted on its business in the ACPA lawsuit, which is less material in UDRP cases. The filing was successful, and an injunction was granted forcing the defendant to not only stop using canvas.com, but to rebrand entirely (social media accounts, physical signage etc.). The plaintiff currently uses canvas.com as its main URL and the defendant does business as Untapped (untapped.io).
When UDRP may not be Successful: In Prudential v. Zhang, the plaintiff Prudential filed and later withdrew a UDRP (D2020-0714). The lawyer representing the defendant speculated that the plaintiff pivoted to the ACPA action thinking the odds of success were higher[4]. If this is the case, Plaintiff’s counsel was proven correct: The US court ruled in Prudential’s favor and pru.com is now under their control. D2020-0714 was withdrawn and we cannot know how it would have been resolved, but we can say that Prudential had already lost an earlier UDRP for the same domain pru.com (Prudential v. PRU International[5] ).
When Seeking Declaratory Judgement: Blair v. Lamborghini is a case filed immediately after a UDRP decision rendered in favor of the defendant Lamborghini, with one dissenting panelist. Perhaps emboldened by the dissent, the losing party (Blair) filed an action requesting that the US court declare that the registration was not in violation of ACPA and that the US-based registrar Namesilo not be bound to transfer the domain to Lamborghini, as would have occurred as a product of the UDRP decision. The District Court ruled in favour of Lamborghini, granting summary judgment on the ACPA claim and dismissing the registrant’s complaint with prejudice.
This case differs from the previous two in that the large brand was the defendant, but the roles could very feasibly be reversed. Imagine a brand with a presence in the United States loses a UDRP decision it believed to have merit. If the brand were the Respondent in the at UDRP, they could do as Blair did in this case and ask the Court to declare it had not violated ACPA. If the brand was the Complainant, they could file an ACPA lawsuit as a sort of “appeal” to the panelist’s decision.
CONCLUSION
The UDRP is the tried-and-true means for a brand owner to compel the transfer of domain names used for cybersquatting. The amicus brief filed by INTA is newsworthy and the definition of “registration date” in US law could influence the outcome of future ACPA cases, but there is no expectation that these filings will become commonplace.
In addition to putting recent news coverage on ACPA in context, this article presents an overview of real-life situations faced by brands like those represented by our readers, in which ACPA became relevant. IP Twins maintains a presence in the United States and through our network of advisors, would be available to advise on any potential application of ACPA should a similar situation arise for a client.
Notes
[1] INTA Urges Supreme Court to Resolve Circuit Split on the Meaning of “Registration” Under the ACPA – International Trademark Association
[2] INTA asks Supreme Court to weigh in on cybersquatting law – Domain Name Wire | Domain Name News
[3] PLAW-106publ113.pdf (SECURED) – See Page 347
[4] The Cybersquatting law divide – DNW Podcast #423 – Domain Name Wire | Domain Name News
[5] UDRPsearch – NAF 101800 – The Prudential Insurance Company of America | PRU International