• ACPA and Standing

    by  • January 4, 2016 • domain name • 1 Comment

    It is a simple result, but not one that is forgone. An entity, HELP.org, LLC, owned a domain name, directorschoice.com. A company called Director’s Choice, LLP,* brought a Uniform Domain Name Resolution Policy proceeding against HELP.org for cybersquatting and won. Russ Smith, who owns Help.org, transferred the domain name to his own name and filed a complaint in federal court under the Anticybersquatting Consumer Protection Act challenging the UDRP result. Did Smith have standing, or is HELP.org the only entity who can file the ACPA?

    Assuming a domain name registration is a type of property like a patent, trademark or copyright, it wouldn’t necessarily be true that Smith could step into the shoes of HELP.org. If one assigns a patent, trademark or copyright, the assignor must also assign any claims for past infringement before the assignee will have standing for the past claim, so it was a reasonable theory by Director’s Choice.

    The court characterized it as a question of statutory standing, aka prudential standing, and according to the statute:

    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 chapter. 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. [15 U.S.C. § 1114(2)(D)]

    … Plaintiff clearly falls within the meaning of this phrase: he is the current “domain name registrant” of , and his domain name was ordered transferred by the NAF panel that decided the UDRP case brought by Director’s Choice….

    To the extent Defendant argues that the provision must be read to mean that the person who files the civil suit must have been listed as the “domain name registrant” at the time of the UDRP decision, the Court does not agree. The statute states only that “[a] domain name registrant whose domain name has been suspended, disabled, or transferred” may file a civil action. Thus, if A was the domain name registrant at the time of the UDRP decision, A may, of course, sue under a plain reading of 15 U.S.C. §§ 1114(2)(D)(v). But contrary to Defendant’s contention, the statute does not permit only A to sue. The UDRP decision binds A and anyone else with whom A is in privity, such as B. If registration of the domain name was later transferred to B, B would fall within the meaning of “domain name registrant whose domain name has been suspended, disabled, or transferred.”

    Hmmm. Well, the patent, trademark and copyright statutes just name the “patentee,” “registrant,” and “legal or beneficial owner” as the one with standing for a claim. None use language that excludes other potential claimants or mention timing. The interpretation, though, is that the right is owned exclusively and a past infringement claim is a separate right, so it isn’t necessarily transferred with the underlying right. I don’t know if this is the wrong outcome, but the analysis is wanting.

    Smith v. Director’s Choice, LLC, No. 15-00081 (JBS/AMD) (D.N.J. Nov. 30, 2015).

    *The opinion refers to the defendant throughout as Director’s Choice LLC, but all the PACER references, the UDRP decision, and the trademark registration are all for Director’s Choice LLP.

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    One Response to ACPA and Standing

    1. Russ Smith
      January 22, 2016 at 1:20 am

      The UDRP does not mention cybersquatting, that is in the Lanham Act. The UDRP decision found bad faith registration and use.

      There is no way to challenge a UDRP decision in the Lanham Act. The available actions are (1) to show the domain use is lawful under the Lanham Act (not the UDRP policy) and (2) that Complainant made materially false statements causing the order to have the domain transferred to them.

      The opinion says the current registrant has the right to sue but they need to show prior owners (who are in privity with the current owner) were not acting in bad faith. A domain registration is a service contract between the registrant and a registrar.

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