[Congressional Bills 106th Congress]
[From the U.S. Government Publishing Office]
[S. 1461 Introduced in Senate (IS)]







106th CONGRESS
  1st Session
                                S. 1461

To amend the Trademark Act of 1946 (15 U.S.C. 1051 et seq.) to protect 
consumers and promote electronic commerce by prohibiting the bad-faith 
  registration, trafficking or use of Internet domain names that are 
   identical to, confusingly similar to, or dilutive of distinctive 
                      trademarks or service marks.


_______________________________________________________________________


                   IN THE SENATE OF THE UNITED STATES

                             July 29, 1999

  Mr. Hatch (for himself, Mr. Leahy, Mr. Abraham, Mr. Torricelli, Mr. 
DeWine, Mr. Kohl, and Mr. Schumer) introduced the following bill; which 
     was read twice and referred to the Committee on the Judiciary

_______________________________________________________________________

                                 A BILL


 
To amend the Trademark Act of 1946 (15 U.S.C. 1051 et seq.) to protect 
consumers and promote electronic commerce by prohibiting the bad-faith 
  registration, trafficking or use of Internet domain names that are 
   identical to, confusingly similar to, or dilutive of distinctive 
                      trademarks or service marks.

    Be it enacted by the Senate and House of Representatives of the 
United States of America in Congress assembled,

SECTION 1. SHORT TITLE; REFERENCES.

    (a) Short Title.--This Act may be cited as the ``Domain Name Piracy 
Prevention Act of 1999''.
    (b) References to the Trademark Act of 1946.--Any reference in this 
Act to the Trademark Act of 1946 shall be a reference to the Act 
entitled ``An Act to provide for the registration and protection of 
trade-marks used in commerce, to carry out the provisions of certain 
international conventions, and for other purposes'', approved July 5, 
1946 (15 U.S.C. 1051 et seq.).

SEC. 2. FINDINGS.

    Congress finds the following:
            (1) The registration, trafficking in, or use of a domain 
        name that is identical to, confusingly similar to, or dilutive 
        of a trademark or service mark of another that is distinctive 
        at the time of registration of the domain name, without regard 
        to the goods or services of the parties, with the bad-faith 
        intent to profit from the goodwill of another's mark (commonly 
        referred to as ``cyberpiracy'' and ``cybersquatting'')--
                    (A) results in consumer fraud and public confusion 
                as to the true source or sponsorship of goods and 
                services;
                    (B) impairs electronic commerce, which is important 
                to interstate commerce and the United States economy;
                    (C) deprives legitimate trademark owners of 
                substantial revenues and consumer goodwill; and
                    (D) places unreasonable, intolerable, and 
                overwhelming burdens on trademark owners in protecting 
                their valuable trademarks.
            (2) Amendments to the Trademark Act of 1946 would clarify 
        the rights of a trademark owner to provide for adequate 
        remedies and to deter cyberpiracy and cybersquatting.

SEC. 3. 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) Any person who, with bad-faith intent to profit from 
the goodwill of a trademark or service mark of another, registers, 
traffics in, or uses a domain name that is identical to, confusingly 
similar to, or dilutive of such trademark or service mark, without 
regard to the goods or services of the parties, shall be liable in a 
civil action by the owner of the mark, if the mark is distinctive at 
the time of the registration of the domain name.
    ``(B) In determining whether there is 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 legitimate 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 
        substantial consideration without having used, or having an 
        intent to use, the domain name in the bona fide offering of any 
        goods or services;
            ``(vii) the person's intentional provision of material and 
        misleading false contact information when applying for the 
registration of the domain name; and
            ``(viii) the person's registration or acquisition of 
        multiple domain names which are identical to, confusingly 
        similar to, or dilutive of trademarks or service marks of 
        others that are distinctive at the time of registration of such 
        domain names, without regard to the goods or services of such 
        persons.
    ``(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.
    ``(2)(A) The owner of a mark may file an in rem civil action 
against a domain name if--
            ``(i) the domain name violates any right of the registrant 
        of a mark registered in the Patent and Trademark Office, or 
        section 43 (a) or (c); and
            ``(ii) the court finds that the owner has demonstrated due 
        diligence and was not able to find a person who would have been 
        a defendant in a civil action under paragraph (1).
    ``(B) The remedies of 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.''.
    (b) Additional Civil Action and Remedy.--The civil action 
established under section 43(d)(1) of the Trademark Act of 1946 (as 
added by this section) and any remedy available under such action shall 
be in addition to any other civil action or remedy otherwise 
applicable.

SEC. 4. 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 ``section 43(a)'' and inserting ``section 43 (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. 
The court shall remit statutory damages in any case in which an 
infringer believed and had reasonable grounds to believe that use of 
the domain name by the infringer was a fair or otherwise lawful use.''.

SEC. 5. 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 subparagraph (E) 
        and inserting after subparagraph (C) the following:
                    ``(D)(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 to any person for such action, 
                regardless of whether the domain name is finally 
                determined to infringe or dilute the mark.
                    ``(ii) An action referred to under clause (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 
                        registered on the Principal Register of the 
                        United States Patent and Trademark Office.
                    ``(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.
                    ``(iv) If a registrar, registry, or other 
                registration authority takes an action described under 
                clause (ii) based on a knowing and material 
                misrepresentation by any person that a domain name is 
                identical to, confusingly similar to, or dilutive of a 
                mark registered on the Principal Register of the United 
                States Patent and Trademark Office, such person 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.''.

SEC. 6. 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 `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)).
            ``The term `domain name' means any alphanumeric 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.''.

SEC. 7. SAVINGS CLAUSE.

    Nothing in this Act 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. 8. SEVERABILITY.

    If any provision of this Act, an amendment made by this Act, or the 
application of such provision or amendment to any person or 
circumstances is held to be unconstitutional, the remainder of this 
Act, the amendments made by this Act, and the application of the 
provisions of such to any person or circumstance shall not be affected 
thereby.

SEC. 9. EFFECTIVE DATE.

    This Act shall apply to all domain names registered before, on, or 
after the date of enactment of this Act, except that statutory damages 
under section 35(d) of the Trademark Act of 1946 (15 U.S.C. 1117), as 
added by section 4 of this Act, shall not be available with respect to 
the registration, trafficking, or use of a domain name that occurs 
before the date of enactment of this Act.
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