[Congressional Record (Bound Edition), Volume 145 (1999), Part 19]
[House]
[Pages 26862-26871]
[From the U.S. Government Publishing Office, www.gpo.gov]



                  TRADEMARK CYBERPIRACY PREVENTION ACT

  Mr. COBLE. Mr. Speaker, I move to suspend the rules and pass the bill 
(H.R. 3028) to amend certain trademark laws to prevent the 
misappropriation of marks, as amended.
  The Clerk read as follows:

                               H.R. 3028

       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 ``Trademark 
     Cyberpiracy Prevention Act''.
       (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. 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) A person shall be liable in a civil action by 
     the owner of a mark, including a famous personal name which 
     is protected under this section, if, without regard to the 
     goods or services of the parties, that person--
       ``(i) has a bad faith intent to profit from that mark, 
     including a famous personal name which is protected under 
     this section; and
       ``(ii) registers, traffics in, or uses a domain name that--
       ``(I) in the case of a mark that is distinctive at the time 
     of registration of the domain name, is identical or 
     confusingly similar to that mark;
       ``(II) in the case of a famous mark that is famous at the 
     time of registration of the domain name, is dilutive of that 
     mark; or
       ``(III) is a trademark, word, or name protected by reason 
     of section 706 of title 18, United States Code, or section 
     220506 of title 36, United States Code.
       ``(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 lawful use, if any, of the 
     domain name in connection with the bona fide offering of any 
     goods or services;
       ``(iv) the person's lawful 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 financial gain 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 provision of material and misleading 
     false contact information when applying for the registration 
     of the domain name or the person's intentional failure to 
     maintain accurate contact information;
       ``(viii) the person's registration or acquisition of 
     multiple domain names which the person knows are identical or 
     confusingly similar to marks of others that are distinctive 
     at the time of registration of such domain names, or dilutive 
     of famous marks of others that are famous at the time of 
     registration of such domain names, without regard to the 
     goods or services of such persons;
       ``(ix) the person's history of offering to transfer, sell, 
     or otherwise assign domain names incorporating marks of 
     others to the mark owners or any third party for 
     consideration without having used, or having an intent to 
     use, the domain names in the bona fide offering of any goods 
     and services;
       ``(x) the person's history of providing material and 
     misleading false contact information when applying for the 
     registration of other domain names which incorporate marks, 
     or the person's history of using aliases in the registration 
     of domain names which incorporate marks of others; and

[[Page 26863]]

       ``(xi) the extent to which the mark incorporated in the 
     person's domain name registration is distinctive and famous 
     within the meaning of subsection (c)(1) of section 43 of the 
     Trademark Act of 1946 (15 U.S.C. 1125).
       ``(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.
       ``(D) A person shall be liable for using a domain name 
     under subparagraph (A)(ii) only if that person is the domain 
     name registrant or that registrant's authorized licensee.
       ``(E) As used in this paragraph, the term `traffics in' 
     refers to transactions that include, but are not limited to, 
     sales, purchases, loans, pledges, licenses, exchanges of 
     currency, and any other transfer for consideration or receipt 
     in exchange for consideration.
       ``(2)(A) In addition to any other jurisdiction that 
     otherwise exists, whether in rem or in personam, the owner of 
     a mark may file an in rem civil action against a domain name 
     in the judicial district in which the domain name registrar, 
     domain name registry, or other domain name authority that 
     registered or assigned the domain name is located, if--
       ``(i) the domain name violates any right of the owner of 
     the mark; and
       ``(ii) the owner--
       ``(I) has sent a copy of the summons and complaint to the 
     registrant of the domain name at the postal and e-mail 
     address provided by the registrant to the registrar; and
       ``(II) has published notice of the action as the court may 
     direct promptly after filing the action.

     The actions under clause (ii) shall constitute service of 
     process.
       ``(B) In an in rem action under this paragraph, a domain 
     name shall be deemed to have its situs in the judicial 
     district in which--
       ``(i) the domain name registrar, registry, or other domain 
     name authority that registered or assigned the domain name is 
     located; or
       ``(ii) documents sufficient to establish control and 
     authority regarding the disposition of the registration and 
     use of the domain name are deposited with the court.
       ``(C) 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. Upon receipt of written 
     notification of a filed, stamped copy of a complaint filed by 
     the owner of a mark in a United States district court under 
     this paragraph, the domain name registrar, domain name 
     registry, or other domain name authority shall--
       ``(i) expeditiously deposit with the court documents 
     sufficient to establish the court's control and authority 
     regarding the disposition of the registration and use of the 
     domain name to the court; and
       ``(ii) not transfer or otherwise modify the domain name 
     during the pendency of the action, except upon order of the 
     court.

     The domain name registrar or registry or other domain name 
     authority shall not be liable for injunctive or monetary 
     relief under this paragraph except in the case of bad faith 
     or reckless disregard, which includes a willful failure to 
     comply with any such court order.
       ``(3) The civil action established under paragraph (1) and 
     the in rem action established under paragraph (2), and any 
     remedy available under either such action, shall be in 
     addition to any other civil action or remedy otherwise 
     applicable.''.

     SEC. 3. 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 ``(a) or (c)'' and inserting ``(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 may remit 
     statutory damages in any case in which the court finds that 
     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. 4. 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 or injunctive 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.
       ``(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 other 
     person that a domain name is identical to, confusingly 
     similar to, or dilutive of a mark, the person making the 
     knowing and material misrepresentation 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. 5. 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 `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.
       ``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)).''.

     SEC. 6. 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. 7. EFFECTIVE DATE.

       Sections 2 through 6 of this Act shall apply to all domain 
     names registered before, on, or after the date of enactment 
     of this Act, except that damages under subsection (a) or (d) 
     of section 35 of the Trademark Act of 1946 (15 U.S.C. 1117), 
     as amended by section 3 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.

     SEC. 8. ADJUSTMENT OF CERTAIN TRADEMARK AND PATENT FEES.

       (a) Trademark Fees.--Notwithstanding the second sentence of 
     section 31(a) of the Trademark Act of 1946 (15 U.S.C. 
     1113(a)), the Commissioner of Patents and Trademarks is 
     authorized in fiscal year 2000 to adjust trademark fees 
     without regard to fluctuations in the Consumer Price Index 
     during the preceding 12 months.
       (b) Patent Fees.--
       (1) Original filing fee.--Section 41(a)(1)(A) of title 35, 
     United States Code, relating to the fee for filing an 
     original patent application, is amended by striking ``$760'' 
     and inserting ``$690''.
       (2) Reissue fee.--Section 41(a)(4)(A) of title 35, United 
     States Code, relating to the fee for filing for a reissue of 
     a patent, is amended by striking ``$760'' and inserting 
     ``$690''.
       (3) National fee for certain international applications.--
     Section 41(a)(10) of title 35, United States Code, relating 
     to the national fee for certain international applications, 
     is amended by striking ``$760'' and inserting ``$690''.
       (4) Maintenance fees.--Section 41(b)(1) of title 35, United 
     States Code, relating to certain maintenance fees, is amended 
     by striking ``$940'' and inserting ``$830''.
       (c) Effective Date.--Subsection (a) shall take effect on 
     the date of the enactment of this Act. The amendments made by 
     subsection (b) shall take effect 30 days after the date of 
     the enactment of this Act.

     SEC. 9. DOMAIN NAME FOR PRESIDENT, MEMBERS OF CONGRESS, SNF 
                   POLITICAL OFFICE HOLDERS AND CANDIDATES.

       (a) In General.--The Secretary of Commerce shall require 
     the registry administrator for the .us top level domain to 
     establish a 2nd level domain name for the purpose of 
     registering only domain names of the President, Members of 
     Congress, United States Senators, and other current holders 
     of, and official candidates and potential official candidates 
     for, Federal, State, or local political office in the United 
     States.
       (b) Guidelines.--The Secretary of Commerce, in consultation 
     with the Federal

[[Page 26864]]

     Election Commission, shall establish guidelines and 
     procedures under which individuals may register a domain name 
     in the 2nd level domain name established pursuant to 
     subsection (a).
       (c) Eligible Registrants.--The Federal Election Commission 
     shall establish and maintain a list of individuals eligible, 
     under the guidelines established pursuant to subsection (b), 
     to register a domain name in the 2nd level domain name 
     established pursuant to subsection (a).
       (d) Fees.--The registry administrator and registrars for 
     the .us top level domain may charge individuals reasonable 
     fees for registering domain names pursuant to subsection (a).
       (e) Definition.--As used in this section, the term ``Member 
     of Congress'' means a Representative in, or a delegate or 
     Resident Commissioner to, the Congress.
       (f) Effective Date.--Registration of domain names in 
     accordance with this section shall begin no later than 
     December 31, 2000.

     SEC. 10. HISTORIC PRESERVATION.

       Section 101(a)(1)(A) of the National Historic Preservation 
     Act (16 U.S.C. 470a(a)(1)(A)) is amended by adding at the end 
     the following: ``Notwithstanding section 43(c) of the Act 
     commonly known as the `Trademark Act of 1946' (15 U.S.C. 
     1125(c)), buildings and structures meeting the criteria for 
     the National Register of Historic Places under paragraph (2) 
     may retain the name by which they are listed on the Register, 
     if that name is the historical name associated with the 
     building or structure.''.

  The SPEAKER pro tempore. Pursuant to the rule, the gentleman from 
North Carolina (Mr. Coble) and the gentleman from California (Mr. 
Berman) each will control 20 minutes.
  The Chair recognizes the gentleman from North Carolina (Mr. Coble).


                             General Leave

  Mr. COBLE. Mr. Speaker, I ask unanimous consent that all Members may 
have 5 legislative days within which to revise and extend their remarks 
on H.R. 3028, as amended.
  The SPEAKER pro tempore. Is there objection to the request of the 
gentleman from North Carolina?
  There was no objection.
  Mr. COBLE. Mr. Speaker, I yield myself such time as I may consume.
  Mr. Speaker, H.R. 3028, the Trademark Cyberpiracy Prevention Act, is 
a very important and significant piece of legislation, and I rise in 
support of it as a cosponsor.
  Over the past 2 years, the Subcommittee on Courts and Intellectual 
Property, through a series of oversight hearings, has become very aware 
of the problems faced by owners of famous marks when dealing with the 
issue of domain names.
  Time and time again we heard stories of cyberpirates who registered 
numerous domain names containing the markings or trade names of 
American companies, only to hold them ransom in exchange for money. 
Sometimes these pirates will even put pornographic materials on these 
sites in an effort to increase the incentive for the trademark owner to 
protect the integrity of its mark.
  The time has come, Mr. Speaker, for this practice to stop. Imagine, 
if you will, that you own a small company and have spent years 
investing and delivering the good will of your business, only to find 
out when you go to register for a domain name that someone else has 
misappropriated your trademark name.
  To make matters worse, you are informed that your legal options are 
limited, even if the offending party has placed pornographic or hateful 
materials on the site with your name on it.
  This is an unacceptable situation, and should not be allowed to 
continue. This is a measured and balanced response to a growing 
problem, and I would like to commend the gentleman from California (Mr. 
Rogan) and the gentleman from Virginia (Mr. Boucher) for their 
leadership in this area, as well as the gentleman from California (Mr. 
Berman), the ranking member of the Subcommittee on Courts and 
Intellectual Property.
  The legal recourse provided for in this legislation, combined with 
the alternative dispute resolution procedures being adopted by the 
domain name registrars, will give trademark owners important tools to 
protect their intellectual property.
  I am unaware of any opposition to the manager's amendment, and I urge 
a favorable vote on H.R. 3028.
  Mr. Speaker, H.R. 3028, the ``Trademark Cyberpiracy Prevention Act,'' 
is a very important piece of legislation. Over the past two years, the 
Subcommittee on Courts and Intellectual Property, through a series of 
oversight hearings, has investigated the problems faced by owners of 
famous marks when dealing with the issue of domain names. There have 
been many evidenced accounts of cyberpirates who register numerous 
domain names containing the marks of tradenames of American owners only 
to hold those names ransom in exchange for money. In some accounts, 
these pirates have placed pornographic materials on these sites in an 
effort to increase the incentive for the trademark owner to protect the 
integrity of its mark. This legislation is intended to stop this 
practice.
  H.R. 3028 is a measured and balanced response to a growing problem, 
and I would like to commend Mr. Rogan and Mr. Boucher for their 
leadership in drafting this bill. The legal recourse provided for in 
this legislation, combined with the alternative dispute resolution 
procedures being adopted by the domain name registers, in conjunction 
with recommendations by the World Intellectual Property Organization, 
will give trademark owners important tools to protect their 
intellectual property.
  The following is a section-by-section analysis of H.R. 3028 which 
will serve as legislative history for the amendments adopted today.

                      SECTION-BY-SECTION ANALYSIS

     SECTION 1. SHORT TITLE; REFERENCES.

       This section provides that the act may be cited as the 
     ``Trademark Cyberpiracy Prevention Act'' and that any 
     references within the bill to the Trademark Act of 1946 shall 
     be a reference to the act entitled ``An Act to provide for 
     the registration and protection of trademarks 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.), also commonly referred 
     to as the Lanham Act.

     SECTION 2. CYBERPIRACY PREVENTION

       Subsection (a). In General. This subsection amends the 
     Trademark Act to provide an explicit trademark remedy for 
     cyberpiracy under a new section 43(d). Under paragraph (1)(A) 
     of the new section 43(d), actionable conduct would include 
     the registration, trafficking in, or use of a domain name 
     that is identical to, confusingly similar to, or dilutive of 
     the trademark or service mark of another, provided that the 
     mark was distinctive (i.e., enjoyed trademark status) at the 
     time the domain name was registered. The bill is carefully 
     and narrowly tailored, however, to extend only to cases where 
     the plaintiff can demonstrate that the defendant registered, 
     trafficked in, or used the offending domain name with bad-
     faith intent to profit from the goodwill of a mark belonging 
     to someone else. Thus, the bill does not extend to innocent 
     domain name registrations by those who are unaware of 
     another's use of the name, or even to someone who is aware of 
     the trademark status of the name but registers a domain name 
     containing the mark for any reason other than with bad faith 
     intent to profit from the goodwill associated with that mark.
       The phrase ``including a famous personal name which is 
     protected under this section'' addresses situations in which 
     a famous personal is protected under Section 43 and is used 
     as a domain name. The Lanham Act prohibits the use of false 
     designations of origin and false or misleading 
     representations. Protection under section 43 of the Lanham 
     Act has been applied by the courts to famous personal names 
     which function as marks, such as service marks, when such 
     marks are infringed. Infringement may occur when the 
     endorsement of products or services in interstate commerce is 
     falsely implied through the use of a famous personal name, or 
     otherwise. This protection also applies to domain names on 
     the Internet, where falsely implied endorsements and other 
     types of infringement can cause greater harm to the owner and 
     confusion to a consumer in a shorter amount of time than is 
     the case with traditional media. The protection offered by 
     section 43 of a famous personal name which functions as a 
     mark, as applied to domain names, is subject to the same fair 
     use and first amendment protections as have been applied 
     traditionally under trademark law, and is not intended to 
     expand or limit any rights to publicity recognized by States 
     under State law.
       Paragraph (1)(B) of the new section 43(d) sets forth a 
     number of nonexclusive, nonexhaustive factors to assist a 
     court in determining whether the required bad-faith element 
     exists in any given case. These factors are designed to 
     balance the property interests of trademark owners with the 
     legitimate interests of Internet users and others who seek to 
     make lawful uses of others' marks, including for purposes 
     such as comparative advertising, comment, criticism, parody, 
     news reporting, fair use, etc. The bill suggests a total of 
     eleven factors a court may wish to consider. The first four 
     suggest circumstances that may tend to indicate an absence of 
     bad-faith intent to profit from the goodwill of a mark, and 
     the others suggest circumstances that may tend to indicate 
     that such bad-faith intent exists.

[[Page 26865]]

       First, under paragraph (1)(B)(i), a court may consider 
     whether the domain name registrant has trademark or any other 
     intellectual property rights in the name. This factor 
     recognizes, as does trademark law in general, that there may 
     be concurring uses of the same name that are noninfringing, 
     such as the use of the ``Delta'' mark for both air travel and 
     sink faucets. Similarly, the registration of the domain name 
     ``deltaforce.com'' by a movie studio would not tend to 
     indicate a bad faith intent on the part of the registrant to 
     trade on Delta Airlines or Delta Faucets' trademarks.
       Second, under paragraph (1)(B)(ii), a court may consider 
     the extent to which the domain name is the same as the 
     registrant's own legal name or a nickname by which that 
     person is commonly identified. This factor recognizes, again 
     as does the concept of fair use in trademark law, that a 
     person should be able to be identified by their own name, 
     whether in their business or on a web site. Similarly, a 
     person may bear a legitimate nickname that is identical or 
     similar to a well-known trademark and registration of a 
     domain name using that nickname would not tend to indicate 
     bad faith. This factor is not intended to suggest that domain 
     name registrants may evade the application of this act by 
     merely adopting Exxon, Ford, Bugs Bunny or other well-known 
     marks as their nicknames. It merely provides a court with the 
     appropriate discretion to determine whether or not the fact 
     that a person bears a nickname similar to a mark at issue is 
     an indication of an absence of bad-faith on the part of the 
     registrant.
       Third, under paragraph (1)(B)(iii), a court may consider 
     the domain name registrant's prior lawful use, if any, of the 
     domain name in correction with the bona fide offering of 
     goods or services. Again, this factor recognizes that the 
     legitimate use of the domain name in online commerce may be a 
     good indicator of the intent of the person registering that 
     name. Where the person has used the domain name in commerce 
     without creating a likelihood of confusion as to the source 
     or origin of the goods or services and has not otherwise 
     attempted to use the name in order to profit from the 
     goodwill of the trademark owner's name, a court may look to 
     this as an indication of the absence of bad faith on the part 
     of the registrant. A defendant should have the burden of 
     introducing evidence of lawful use to assist the court in 
     evaluating this factor.
       Fourth, under paragraph (1)(B)(iv), a court may consider 
     the person's legitimate noncommercial or fair use of the mark 
     in a web site that is accessible under the domain name at 
     issue. This factor is intended to balance the interests of 
     trademark owners with the interests of those who would make 
     lawful noncommercial or fair use of others' marks online, 
     such as in comparative advertising, comment, criticism, 
     parody, news reporting, etc. Under the bill, the use of a 
     domain name for purposes of comparative advertising, comment, 
     criticism, parody, news reporting, etc., even where done for 
     profit, would not alone satisfy the bad-faith intent 
     requirement. The fact that a person may use a mark in a site 
     in such a lawful manner may be an appropriate indication that 
     the person's registration or use of the domain name lacked 
     the required element of bad-faith. This factor is not 
     intended to create a loophole that otherwise might swallow 
     the bill, however, by allowing a domain name registrant to 
     evade application of the Act by merely putting up a 
     noninfringing site under an infringing domain name. For 
     example in the well known case of Panavision Int'l v. 
     Toeppen, 141 F.3d 1316 (9th Cir. 1998), a well-known 
     cyberpirate had registered a host of domain names mirroring 
     famous trademarks, including names for Panavision, Delta 
     Airlines, Neiman Marcus, Eddie Bauer, Lufthansa, and more 
     than 100 other marks, and had attempted to sell them to the 
     mark owners for amounts in the range of $10,000 to $15,000 
     each. His use of the ``panavision.com'' and ``panaflex.com'' 
     domain names was seemingly more innocuous, however, as they 
     served as addresses for sites that merely displayed pictures 
     of Pana Illinois and the word ``Hello'' respectively. This 
     act would not allow a person to evade the holding of that 
     case--which found that Mr. Toeppen had made a commercial use 
     of the Panavision marks and that such uses were, in fact, 
     diluting under the Federal Trademark Dilution Act--merely by 
     posting noninfringing uses of the trademark on a site 
     accessible under the offending domain name, a Mr. Toeppen 
     did. Similarly, the bill does not affect existing trademark 
     law to the extent it has addressed the interplay between 
     first amendment protections and the rights of trademark 
     owners. Rather, the act gives courts the flexibility to weigh 
     appropriate factors in determining whether the name was 
     registered or used in bad faith, and it recognizes that one 
     such factor may be the use the domain name registrant makes 
     of the mark.
       Fifth, under paragraph (1)(B)(v), a court may consider 
     whether, in registering or using the domain name, the 
     registrant intended to divert consumers away from the 
     trademark owner's website to a website that could harm the 
     goodwill of the mark, either for purposes of 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. The 
     factor recognizes that one of the main reasons cyberpirates 
     use other people's trademarks is to divert Internet users to 
     their own sites by creating confusion as to the source, 
     sponsorship, affiliation, or endorsement of the site. This 
     factor recognizes that one of the main reasons cyberpirates 
     use other people's trademarks is to divert Internet users to 
     their own sites by creating confusion as to the source, 
     sponsorship, affiliation, or enforcement of the site. This is 
     done for a number of reasons, including to pass off inferior 
     goods under the name of a well-known mark holder, to defraud 
     consumers into providing personally identifiable information, 
     such as credit card numbers, to attract eyeballs to sites 
     that price online advertising according to the number of 
     ``hits'' the site receives, or even just to harm the value of 
     the mark. Under this provision, a court may give appropriate 
     weight to evidence that a domain name registrant intended to 
     confuse or deceive the public in this manner when making a 
     determination of bad-faith intent.
       Sixth, under paragraph (1)(B)(vi), a court may consider a 
     domain name registrant's offer to transfer sell, or otherwise 
     assign the domain name to the mark owner or any third party 
     for financial gain, where the registrant has not used, and 
     did not have any intent to use, the domain name in the bona 
     fide offering of any goods or services. This factor is 
     consistent with the court cases, like the Panavision case 
     mentioned above, where courts have found a defendant's offer 
     to sell the domain name to the legitimate mark owner as being 
     indicative of the defendant's intent to trade on the value of 
     a trademark owner's marks by engaging in the business of 
     registering those marks and selling them to the rightful 
     trademark owners. It does not suggest that a court should 
     consider the mere offer to sell a domain name to a mark owner 
     or the failure to use a name in the bona fide offering of 
     goods or services is sufficient to indicate bad faith. 
     Indeed, there are cases in which a person registers a name in 
     anticipation of a business venture that simply never pans 
     out. And someone who has a legitimate registration of a 
     domain name that mirrors someone else's domain name, such as 
     a trademark owner that is a lawful concurrent user of that 
     name with another trademark owner, may, in fact, wish to sell 
     that name to the other trademark owner. This bill does not 
     imply that these facts are an indication of bad-faith. It 
     merely provides a court with the necessary discretion to 
     recognize the evidence of bad-faith when it is present. In 
     practice, the offer to sell domain names for exorbitant 
     amounts to the rightful mark owner has been one of the most 
     common threads in abusive domain name registrations. Finally, 
     by using the financial gain standard, this allows a court to 
     examine the motives of the seller.
       Seventh, under paragraph (1)(B)(vii), a court may consider 
     the registrant's provision of material and misleading false 
     contact information in an application for the domain name 
     registration. Falsification of contact information with the 
     intent to evade identification and service of process by 
     trademark owners is also a common thread in cases of 
     cyberpiracy. This factor recognizes that fact, while still 
     recognizing that there may be circumstances in which the 
     provision of false information may be due to other factors, 
     such as mistake or, as some have suggested in the case of 
     political dissidents, for purposes of anonymity. This bill 
     balances those factors by limiting consideration to the 
     person's contact information, and even then requiring that 
     the provision of false information be material and 
     misleading. As with the other factors, this factor is 
     nonexclusive and a court is called upon to make a 
     determination based on the facts presented whether or not the 
     provision of false information does, in fact, indicate bad-
     faith.
       Eighth, under paragraph (1)(B)(viii), a court may consider 
     the domain name registrant's acquisition of multiple domain 
     names that are identical to, confusingly similar to, or 
     dilutive of others' marks. This factor recognizes the 
     increasingly common cyberpiracy practice known as 
     ``warehousing,'' in which a cyberpirate registers multiple 
     domain names--sometimes hundreds, even thousands--that mirror 
     the trademarks of others. By sitting on these marks and not 
     making the first move to offer to sell them to the mark 
     owner, these cyberpirates have been largely successful in 
     evading the case law developed under the Federal Trademark 
     Dilution Act. This act does not suggest that the mere 
     registration of multiple domain names is an indication of bad 
     faith, but allows a court to weigh the fact that a person has 
     registered multiple domain names that infringe or dilute the 
     trademarks of others as part of its consideration of whether 
     the requisite bad-faith intent exists.
       Ninth, under paragraph (1)(B)(ix), a court may consider the 
     person's history of offering to transfer, sell, or otherwise 
     assign domain name incorporating marks of others to the mark 
     owners or other third party for consideration without having 
     used, or having intent to use, the domain name. This factor 
     should assist a court in distinguishing those circumstance 
     more akin to warehousing

[[Page 26866]]

     versus those circumstances where the registrant has made a 
     change is a business plan or course of action.
       Tenth, under paragraph (1)(B)(x), a court may consider the 
     person's history of providing material and misleading false 
     contact information when applying for the registration of 
     other domain names, or the person's history of using aliases 
     in the registration of domain names which incorporate the 
     marks of others. This factor recognizes that more often an 
     applicant uses false or misleading contact information, the 
     more likely it is that the applicant is engaging in 
     speculative activity.
       Lastly, under paragraph (1)(B)(xi), a court may consider 
     the extent to which the mark incorporated in the person's 
     domain name registration is distinctive and famous within the 
     meaning of subsection (c)(1) of section 43 of the Trademark 
     Act of 1946. The more distinctive or famous a mark has 
     become, the more likely the owner of that mark is deserving 
     of the relief available under this Act.
       Paragraph (1)(C) makes clear that in any civil action 
     brought under the new section 43(d), a court may order the 
     forfeiture, cancellation, or transfer of a domain name to the 
     owner of the mark. Paragraph (1)(D) further clarifies that a 
     use of a domain name shall be limited to a use of the domain 
     name by the registrant or his or her authorized licensee. 
     This provision limits the right to use the domain name as a 
     means to infringe on another's other bona fide trademark 
     rights. Paragraph (1)(E) adopts a definition of ``traffics 
     in'' which refers to a nonexhaustive list of activities, 
     including sales, purchases, loans, pledges, licenses, 
     exchanges of currency, and other transfer for consideration 
     or receipt in exchange for consideration.
       Paragraph (2)(A) provides for in rem jurisdiction, which 
     allows a mark owner to seek the forfeiture, cancellation, or 
     transfer of an infringing domain name by filing an in rem 
     action against the name itself, if the domain name violates 
     any right of the mark owner and where the mark owner has sent 
     a copy of the summons and complaint to the registrant at the 
     postal and e-mail address provided by the registrant to the 
     registrar and has published notice of the action as the court 
     may direct. As indicated above, a significant problem faced 
     by trademark owners in the fight against cybersquatting is 
     the fact that many cybersquatters register domain names under 
     aliases or otherwise provide false information in their 
     registration applications in order to avoid identification 
     and service of process by the mark owner. The act alleviates 
     this difficulty, while protecting the notions of fair play 
     and substantial justice, by enabling a mark owner to seek an 
     injunction against the infringing property in those cases 
     where a mark owner is unable to proceed against the domain 
     name registrant because the registrant has provided false 
     contact information or is otherwise not to be found, provided 
     that mark owner can show that the domain name itself violates 
     substantive Federal trademark law (i.e., that the domain name 
     violates the rights of the registrant of a mark registered in 
     the Patent and Trademark Office, or section 43 (a) or (c) of 
     the Trademark Act). Second, such in rem jurisdiction is also 
     appropriate in instances where personal jurisdiction cannot 
     be established over the domain name registrant. This 
     situation occurs when a non-U.S. resident cybersquats on a 
     domain name that infringes upon a U.S. trademark. This type 
     of in rem jurisdiction still requires a nexus based upon a 
     U.S. registry or registrar would not offend international 
     comity. This jurisdiction would not extend to any domain name 
     registries existing outside the United States. Nor would this 
     jurisdiction preclude the movement of any registries to 
     outside the United States. Instead, providing in rem 
     jurisdiction based upon the lack of personal jurisdiction 
     over the cybersquatter would provide protection both for the 
     trademark owners and perhaps, more importantly, consumers. 
     Finally, this jurisdiction does not offend due process, since 
     the property and only the property is the subject of the 
     jurisdiction, not other substantive personal rights of any 
     individual defendant.
       Paragraph (2)(B) states that in an in rem action, the 
     domain name shall be deemed to have its situs in the judicial 
     district in which the domain name registrar, or registry, or 
     other domain name authority is located, or where documents 
     sufficient to establish control and authority regarding the 
     disposition of the registration and use of the domain name 
     are deposited with the court.
       Paragraph (2)(C) limits the relief available in such an in 
     rem action to an injunction ordering the forfeiture, 
     cancellation, or transfer of the domain name. When a court of 
     appropriate jurisdiction receives a complaint filed pursuant 
     to this section, the court will notify the registrar, 
     registry, or other authority who shall expeditiously deposit 
     with the court documents to establish control and authority 
     regarding the disposition of the registration and use of the 
     domain name. the registrar, registry, or other authority also 
     may not transfer or otherwise modify the domain name in 
     dispute during the pendency of the action except upon order 
     of the court. The registrar, registry, or other authority 
     shall not be liable for injunctive or monetary relief except 
     in the case of bad faith or reckless disregard, which 
     includes a willful failure to comply with a court order.
       Paragraph (3) makes clear that the creation of a new 
     section 43(d) in the Trademark Act does not in any way limit 
     the application of current provisions of trademark, unfair 
     competition and false advertising, or dilution law, or other 
     remedies under counterfeiting or other statutes, to 
     cyberpiracy cases.

     SECTION 3. DAMAGES AND REMEDIES

       Section 3 applies traditional trademark remedies, including 
     injunctive relief, recovery of defendant's profits, actual 
     damages, and costs, to cyberpiracy cases under the new 
     section 43(d) of the Trademark Act. The bill also amends 
     section 35 of the Trademark Act to provide for statutory 
     damages in cyberpiracy cases, in an amount of not less than 
     $1,000 and not more than $100,000 per domain name, as the 
     court considers just. The act permits the court to remit 
     statutory damages in any case where the infringer believed 
     and had reasonable grounds to believe that the use of the 
     domain name was a fair or otherwise lawful use.

     SECTION 4. LIMITATION ON LIABILITY

       This section amends section 32(2) of the Trademark Act to 
     extend the Trademark Act's existing limitations on liability 
     to the cyberpiracy context. This section also creates a new 
     subparagraph (D) in section 32(2) to encourage domain name 
     registrars and registries to work with trademark owners to 
     prevent cyberpiracy through a limited exemption from 
     liability for domain name registrars and registries that 
     suspend, cancel, or transfer domain names pursuant to a court 
     order or in the implementation of a reasonable policy 
     prohibiting cyberpiracy. The act anticipates a reasonable 
     policy against cyberpiracy will apply only to marks 
     registered on the Principal Register of the Patent and 
     Trademark Office in order to promote objective criteria and 
     predictability in the dispute resolution process.
       This section also protects the rights of domain name 
     registrants against overreaching trademark owners. Under a 
     new section subparagraph (D)(iv) in section 32(2), a 
     trademark owner who knowingly and materially misrepresents to 
     the domain name registrar or registry that a domain name is 
     infringing shall be liable to the domain name registrant for 
     damages resulting from the suspension, cancellation, or 
     transfer of the domain name. In addition, the court may grant 
     injunctive relief to the domain name registrant by ordering 
     the reactivation of the domain name or the transfer of the 
     domain name back to the domain name registrant. Finally, in 
     creating a new subparagraph (D)(iii) of section 32(2), this 
     section codifies current case law limiting the secondary 
     liability of domain name registrars and registries for the 
     act of registration of a domain name, absent bad-faith on the 
     part of the registrar and registry.

     SECTION 5. DEFINITIONS

       This section amends the Trademark Act's definitions section 
     (section 45) to add definitions for key terms used in this 
     act. First, the term ``Internet'' is defined consistent with 
     the meaning given that term in the Communications Act (47 
     U.S.C. 230(f)(l)). Second, this section creates a narrow 
     definition of ``domain name'' to target the specific bad-
     faith conduct sought to be addressed while excluding such 
     things as screen names, file names, and other identifiers not 
     assigned by a domain name registrar or registry.

     SECTION 6. SAVINGS CLAUSE

       This section provides an explicit savings clause making 
     clear that the bill does not affect traditional trademark 
     defenses, such as fair use, or a person's first amendment 
     rights.

     SECTION 7. EFFECTIVE DATE

       This section provides that Sections 2 through 6 of this Act 
     shall apply to all domain names, whether registered before, 
     on, or after the date of enactment. However, damages as 
     amended by section 3 of this act shall not be available to 
     the registration, trafficking, or use of a domain name that 
     occurs before the date of enactment.

     SECTION 8. ADJUSTMENT OF CERTAIN TRADEMARK AND PATENT FEES

       The provisions of this section recalibrate the fee ratio 
     between patents and trademarks to assure the independence for 
     each respective operation within the United States Patent and 
     Trademark Office (PTO). Historically, patent applicants pay a 
     disproportionate ratio in application fees than trademark 
     applicants, and this disparity leads to an inequity in the 
     administration of the separate patent and trademark divisions 
     of the PTO. These provisions will alter the fees paid by both 
     applicants leading to an equaling of the administrative 
     control within the PTO. The increased trademark fees will 
     allow for greater autonomy of the Trademark Office which will 
     promote better service to trademark applicants. The reduction 
     in patent fees will directly correspond to the increase in 
     trademark application fee, nullifying any detrimental affect 
     on the overall budget of the PTO. The amendments made by this 
     section take effect 30 days after the enactment of this 
     legislation.

     SECTION 9. DOMAIN NAME FOR PRESIDENT, MEMBERS OF CONGRESS, 
                   AND POLITICAL OFFICE HOLDERS AND

     CANDIDATES

       Section 9 directs the Secretary of Commerce to establish a 
     second level domain

[[Page 26867]]

     under the ``.us'' top level domain for the purposes of 
     registering only the domain names of the President, Members 
     of Congress, United States Senators, and other current 
     holders and official candidates and potential official 
     candidates for federal, state and local political office in 
     the United States. This section responds to a number of 
     concerns raised by the Members of the Committee who have 
     heard from citizens complaining of entering a web site 
     thought to be that of a representative office holder or 
     candidate, only to find the site has no connection to the 
     office holder or candidate. Members are particularly 
     concerned with the great potential for misinformation to the 
     public who may believe the web site to be managed by an 
     official source. As one of the underlying goals of this 
     legislation is to combat public confusion and misinformation, 
     it is entirely appropriate to establish a second level domain 
     which allows every citizen to receive and direct information 
     to an office holder or candidate, regardless of position or 
     party affiliation, and be assured of the authenticity of the 
     site. This provision will not inhibit free speech nor prevent 
     someone from using an office holder or candidate's name on 
     any top-level domain. It merely establishes a second-level 
     domain where citizens can be assured of the integrity of 
     election information. The registration of domain names shall 
     begin no later than December 31, 2000.

     SECTION 10. HISTORIC PRESERVATION

       Secton 10 amends section 101(a)(1)(A) of the National 
     Historic Preservation Act to state that the Federal Trademark 
     Dilution Statute does not affect the ability of a building or 
     structure meeting the criteria for the National Register of 
     Historic Places to retain the name by which they are listed 
     on the Register, if such name is the historical name 
     associated with the building or structure.

  Mr. Speaker, I reserve the balance of my time.
  Mr. BERMAN. Mr. Speaker, I yield myself such time as I may consume.
  Mr. Speaker, I rise in support of H.R. 3028, the Trademark 
Cyberpiracy Prevention Act.
  First, let me just congratulate the gentleman from California (Mr. 
Rogan) and the gentleman from Virginia (Mr. Boucher) for introducing 
what I think is a very important and necessary piece of legislation, 
and also compliment my chairman, the gentleman from North Carolina (Mr. 
Coble) for organizing the hearing, the markup, moving the bill through 
subcommittee and full committee, and now to the point where we, with 
some amendments that are being made, I think have made it an even 
better product.
  Trade-, service-, and other marks that have come to represent the 
good will and identity of a business have an intrinsic value to a 
business. It is appropriate to protect that value from what amounts to 
embezzlement. This bill provides that protection in regard to the 
registration of domain names.
  Domain names have become a key asset in the Internet environment. 
Most people looking around the Internet for a company will first type 
in the address, www.company.name.com. If we are looking for AT&T, all 
we have to do is enter the address, www.ATT.com, and we will get the 
official AT&T web site. Thus, use of a domain name, these plain English 
addresses, is very important to mark holders, similar to a shop owner 
being able to put a sign in front of their store letting people know 
where to find the store.
  The problem is that under the current domain name registration 
process, anyone can register any name that has not yet been taken, so a 
single individual can register hundreds or thousands or domain names 
with no intent of using them on the Internet. Their only intent is to 
turn around and try to sell the domain name for thousands or tens of 
thousands of dollars to the rightful mark owner. Very simply put, under 
current law, someone can gather up thousands of domain names that 
represent marks and extort vast sums of money from the rightful owner.
  This is even true as to famous personalities whose personal names 
qualify as a service mark. On the one hand ICANN, the private sector 
organization tasked by the Department of Commerce to manage domain 
names, is establishing a uniform dispute resolution mechanism for 
domain name registrars. That work is very important, and I hope the 
outcome of that process yields a mechanism that will be truly effective 
in protecting marks.
  However, even with a private party dispute resolution process, there 
needs to be appropriate legal remedies where individuals seek to 
exploit through what amounts to extortion the registration of domain 
names. I think that this legislation sets out the appropriate legal 
framework and will certainly enhance the effectiveness of the 
protection of marks in this global electronic environment.
  I have heard concerns expressed by celebrities about the misuse of 
their name in the same manner I have described. If we are going to do a 
bill on cyberpiracy, it makes perfect sense to me that we would want to 
address this finite problem.
  So when the specific problem of cyberpirates exploiting personal 
names was brought to me, I asked, as did others here, the gentleman 
from California (Mr. Rogan), the gentleman from North Carolina (Mr. 
Coble), that the interested parties on this issue come together and 
work through a solution. This bill reflects the very specific language 
that addresses this problem.
  A personal name that constitutes a mark under the Lanham Act is 
treated the same way as any other mark protected by the Lanham Act 
under this bill. This bill does not create or insinuate a Federal right 
of publicity.
  Finally, this bill establishes a very important avenue for candidates 
for public office to communicate their message through the Internet. 
Candidates for State or local office will now have a specific domain 
under the control of the U.S. Government where they can post their 
official web site. This will give voters the assurance that when they 
go to a site in this domain, they will be getting the official web site 
of the candidate, and not a site authored by an opponent, critic, or 
even faithful supporter. This is a major step towards enhancing the 
value of the Internet to our democracy.
  Mr. Speaker, I reserve the balance of my time.
  Mr. COBLE. Mr. Speaker, I yield 4 minutes to the distinguished 
gentleman from California (Mr. Rogan), the author of the bill.
  Mr. ROGAN. Mr. Speaker, I thank the distinguished chairman of the 
Subcommittee on Courts and Intellectual Property for yielding time to 
me, and also for his incredible leadership on this particular measure.
  Mr. Speaker, I am pleased to join with my distinguished colleague, 
the gentleman from Virginia (Mr. Boucher) and coauthor of the bill in 
bringing forward the Cyberpiracy Prevention Act.
  America's trademark owners are facing a new form of piracy on the 
Internet today caused by acts of cybersquatting. Cybersquatting is the 
deceptive practice of registering a domain name or establishing a web 
site containing a trademark name or title registered and owned by 
another entity with the intent to gain commercial advantage.
  Cybersquatting takes place for a number of reasons: first, to extract 
payment from the rightful owners of the trademark. These are among the 
most prevalent cases, since it only costs $70 to register a domain 
name, and the potential for financial gain is far greater.
  For example, after a cybersquatter preregistered four domain names 
for $280, he tried to sell to Warner Brothers the domain names 
Warner_Records.com, Warner_Bro_records.com, and Warnerpictures.Com for 
$350,000.
  Second, cybersquatters will publicly offer a domain name for sale or 
lease to third parties. Right now we can log on and find 
marypoppins.com and the godfather.com for sale from an individual that 
does not have the trademark rights to those two popular names.
  Third, cybersquatters use famous names and well known trademarks for 
pornographic sites that attempt to capitalize on customer confusion. 
Children doing homework assignments on the presidency have logged onto 
whitehouse.com, to find that this is a pornographic site.
  Fourth, it is done to engage in consumer fraud, including 
counterfeiting activities. AT&T reports that a cybersquatter registered 
the domain names AT&T phonecard.com and at&tcalling card.com, and then 
established a web site soliciting credit card information from 
consumers.

[[Page 26868]]

  AT&T is concerned that its brand name was being used to lure 
consumers to a web site that might be used to fraudulently to obtain 
financial information.
  Despite the many problems that cybersquatting presents, there are no 
laws in any jurisdiction, national or otherwise, that explicitly 
prohibit this practice. H.R. 3208 provides a legal remedy for American 
businesses and individuals where traditional trademark law has failed. 
It protects trademarks and service mark owners while promoting the 
growth of electronic commerce by punishing individuals who register 
domain names in an attempt to profit at the expense of businesses and 
individuals.
  This legislation specifically prohibits registration, trafficking in, 
or use of a domain name that is identical to, confusingly similar to, 
or that dilutes a mark that is distinctive at the time the domain name 
is registered.
  This bill presents a real opportunity to strengthen the Internet's 
ability to serve as a viable marketplace in the 21st century. It does 
so by shoring up consumer confidence in legitimate brand names, 
discouraging fraudulent electronic commerce, and protecting the rights 
of legitimate trademark and service mark holders. It is time for 
Congress to pass this necessary legislation.
  Once again, Mr. Speaker, I want to thank my dear friend and 
colleague, the gentleman from Virginia (Mr. Boucher) for all his work 
and effort on this. I am especially grateful to my cosponsor, the 
chairman of the Subcommittee on Courts and Intellectual Property, for 
moving this bill so rapidly through the process, and to my 
distinguished friend, the gentleman from California (Mr. Berman), for 
all his help on this.
  Mr. BERMAN. Mr. Speaker, I am pleased to yield 2 minutes to the 
gentleman from Virginia (Mr. Boucher), the cosponsor of the 
legislation.
  Mr. BOUCHER. Mr. Speaker, I thank the gentleman from California for 
yielding this time to me.
  Mr. Speaker, it is a pleasure for me to join with my friend and 
colleague, the gentleman from California (Mr. Rogan) in offering this 
legislation. I want to join with him in expressing our mutual 
appreciation to the gentleman from North Carolina (Mr. Coble), the 
subcommittee chairman, and the gentleman from California (Mr. Berman), 
the ranking member of the subcommittee, for their excellent assistance 
in processing the bill and bringing it to the floor today.
  Under current law, it is hard for a trademark owner to obtain relief 
from someone who has obtained a domain registry of his trademarked 
name. The legal remedies are expensive and, at the end of the day, 
uncertain. Many trademark owners conclude that it is easier simply to 
pay the cybersquatter his ransom and in effect buy back his own 
trademark name than it is to enforce his legal rights in a court of 
law.
  The gentleman from California (Mr. Rogan) and I want to put 
cybersquatters out of business by providing a more certain and less 
expensive and more timely legal remedy to those who have trademarks and 
seek to enforce those trademarks. Our legislation sets forth a list of 
factors that can be applied in determining if a domain name 
registration is made in bad faith with the intent to profit from the 
good will that is associated with the trademark. These factors can be 
applied by a court. They can also be applied by the domain name 
registrar, who then would be given exemption from liability if, upon 
application of that list of factors, the determination was made that 
the registration was in bad faith, that the registration in fact was 
made by a cybersquatter, and that the registration should therefore be 
suspended or canceled.
  Cancellation or suspension in that instance would be accompanied by 
the award of an exemption from liability, should the cybersquatter 
pursue the domain name registrar.

                              {time}  1600

  That, in my opinion, is the best change this legislation makes. It 
provides a remedy that is accessible, one that is timely, one that is 
far less expensive and uncertain than the remedies provided today.
  I am pleased, Mr. Speaker, to encourage the passage of this measure, 
and I again want to commend the gentleman from California (Mr. Rogan), 
the chief sponsor of the bill, for his excellent work.
  Mr. COBLE. Mr. Speaker, may I inquire of the remaining amount of 
time.
  The SPEAKER pro tempore (Mr. Gibbons). The gentleman from North 
Carolina (Mr. Coble) and the gentleman from California (Mr. Berman) 
each have 13 minutes remaining.
  Mr. COBLE. Mr. Speaker, I yield 2 minutes to the gentlewoman from 
Florida (Ms. Ros-Lehtinen).
  Ms. ROS-LEHTINEN. Mr. Speaker, I thank the gentleman from North 
Carolina (Mr. Coble) for yielding me the time.
  The gentleman from North Carolina (Mr. Coble) has worked with the 
gentleman from Florida (Mr. Shaw) and I on this very important 
provision for a district that the gentleman from Florida (Mr. Shaw) and 
I share.
  As the chairman of the House Subcommittee on Courts and Intellectual 
Property, the gentleman from North Carolina (Mr. Coble) understands why 
we need this language in H.R. 3028, the Trademark Cyberpiracy 
Prevention Act. The gentleman from Florida (Mr. Shaw) and I have worked 
to include a change which will protect historic landmarks in our area 
in South Miami Beach and around the country from unnecessary litigation 
due to a provision in the Federal Anti-Dilution Act.
  It will preserve the historic names of hotels in our district known 
as the Tiffany, the Fairmont, the Essex House, and the Carlyle. These 
landmarks will now be able to continue with their traditional names 
which they have been known for for over two generations.
  By supporting this bill, our colleagues will be ensuring that 
historic places around our Nation will be able to keep their names 
without fear of unnecessary legal action. Remember that to lose one's 
name is to lose one's identity and, even more importantly, to lose 
one's history.
  I would also like to thank Miami Beach City Commissioner Nancy 
Liebman who brought this issue to our attention. With the help of our 
colleagues here today, Mr. Speaker, in support of this legislation, we 
will be able to preserve the rich history of our Nation's historic 
preservation districts.
  It was a pleasure for me to have worked with the gentleman from 
Florida (Mr. Shaw) and the gentleman from North Carolina (Mr. Coble) on 
this needed part of this bill.
  Mr. COBLE. Mr. Speaker, I yield 2 minutes to the distinguished 
gentleman from Florida (Mr. Shaw).
  Mr. SHAW. Mr. Speaker, I thank the gentleman from North Carolina 
(Chairman Coble) for yielding me this time.
  I want to compliment the gentleman from North Carolina (Chairman 
Coble) and the gentleman from California (Mr. Berman), the ranking 
Democrat member, for the swift action that they have taken in bringing 
this matter and attaching it to this bill and bringing it to the floor.
  For those of my colleagues who have not been to Miami Beach lately, 
there is a tremendous renaissance going on. The history of that area 
dates back to the early days of the 1920s when art deco was just 
getting started. The architecture that has evolved over the years in 
the 1920s, 1930s, and even into the 1940s is something really to behold 
and is unique in this country.
  Part of that architecture is the wonderful names and the magical 
names that are attached to so many of the hotels in that area. Now we 
are seeing that the great renaissance is going on, that Miami Beach is 
turning back to its past and bringing out the best of the past and 
bringing it forward, which has become a tremendous tourist attraction.
  The gentlewoman from Florida (Ms. Ros-Lehtinen) represents the 
beautiful part of South Beach, which has become so famous. I wish my 
district went down quite that far, but I stop right at Lincoln Road.
  I was born and raised right there on Miami Beach. I can remember as a

[[Page 26869]]

child the wonderful buildings that were down there, the lights that one 
would go see. When someone would come to town, one would drive them 
down into that area and show off Miami Beach.
  All of this is back. The magic of that great city is back. Nancy 
Liebman, who the gentlewoman from Florida (Ms. Ros-Lehtinen) mentioned 
in her statement, has been very active in bringing this matter back to 
our attention. She personally showed me and my wife Emily around Miami 
Beach. We were looking for the old theaters where we used to go on 
dates when we were both in high school together. It has really been 
quite good to see a city come back and bring back such a wonderful part 
of its past.
  Due to an unexpected circumstance, unintended circumstance in the 
1996 law, many of these hotels were robbed of their identity and were 
forced and were being made to change their name. This reverses an error 
that was made, and I want to compliment all of the members of the 
Committee on the Judiciary, and particularly the chairman and the 
ranking member, for bringing this back to our attention so we can 
correct this situation.
  Mr. COBLE. Mr. Speaker, I yield 3 minutes to the distinguished 
gentleman from Utah (Mr. Cannon), a member of the Committee on the 
Judiciary.
  Mr. CANNON. Mr. Speaker, I rise today in support of H.R. 3028, the 
Trademark Cyberpiracy Prevention Act. I commend the gentleman from 
North Carolina (Chairman Coble) and the gentleman from California (Mr. 
Rogan) for their work on this legislation, and also the gentleman from 
California (Mr. Berman).
  The explosive trends of E-commerce, which some experts predict will 
reach $1.3 trillion in total sales by the year 2003, combined with the 
exponential growth of the Internet, has led to a problem: The 
increasing epidemic known as cybersquatting.
  Recently, within my State of Utah, a local paper reported that the 
Salt Lake City Olympic Organizing Committee has had to file a 
cybersquatting lawsuit against a shadowy group of defendants which 
infringed on its trademark rights by registering Internet domain names 
that mimicked names owned by the SLOC.
  A small group located in Delaware registered the names

saltlakecitygames.com,
saltlakecity2002.com, and
saltlake2002.com.

These names infringe on the trademark rights of the Salt Lake Olympic 
Organizing Committee's authorized website: www.slc2002.org and 12 other 
protected phrases.
  This bill is part of an overall effort to preserve legally protected 
names and trademarks. These are valuable corporate assets. This is how 
people learn to identify and contact these organizations.
  The SLOC and other companies and organizations like this spend money, 
time, and effort in advertising these phrases. Unscrupulous 
cybersquatters are trying to cash in on their hard work.
  In the Salt Lake example, the Olympic Committee received a phone call 
from a person, known only as ``John L.'' who offered to sell three 
sites for $25,000.
  Investigators went to the address listed on the company's 
registration and found an empty office with no signs on the door. The 
registered telephone number did not work. The company was suspended for 
failure to pay taxes.
  Another company within my district, Novell, shared with me a current 
problem. Apparently someone from Brazil has registered the names of 
each of Novell's product lines and names; but because the person is 
located outside the United States, there is currently no way for the 
company to gain judicial relief. This bill resolves that problem by 
allowing in rem jurisdiction.
  The Rogan bill will prohibit registration, trafficking in, or the use 
of a domain name that is identical to, confusingly similar, or dilutive 
of a trademark that is distinctive at the time the domain name is 
registered.
  Mr. Speaker, this bill will allow the trademark owners to seek the 
forfeiture, cancellation, or transfer of an infringing domain name if 
the trademark owner can prove it has attempted to locate the owner but 
has been unable to do so. This will discourage cybersquatters who 
frequently use aliases or otherwise provide false registration on their 
registration.
  Industry and academics agree that legislative action is necessary. 
The uninhibited access to the Internet and E-commerce markets is vital, 
and First Amendment rights must also be preserved, but we must also 
respect the integrity of existing trademark and patent law.
  I urge my colleagues to support this legislation.
  Mr. BERMAN. Mr. Speaker, I yield myself such time as I may consume.
  Mr. Speaker, I just rise in conclusion to again tell the gentleman 
from North Carolina (Chairman Coble) how much I appreciate the speedy 
movement of this bill, the process which I think made it better. I want 
to particularly thank the staff that worked on this bill, Mitch Glazier 
and Vince Garlock, and Bari Schwartz and Stacy Baird from my staff. I 
think we are all indebted to their work and their thoughts about this.
  Mr. Speaker, I yield back the balance of my time.
  Mr. COBLE. Mr. Speaker, I yield myself such time as I may consume.
  Mr. Speaker, as usual, the gentleman from California (Mr. Berman) is 
a jump ahead of me. I was going to also acknowledge the good work done 
by the respective staffs. It has been a good effort by all concerned.
  Mrs. BONO. Mr. Speaker, I rise in support of the worthy bill of my 
good friend and colleague, the gentleman from California (Mr. Rogan), 
H.R. 3028--Trademark Cyberpiracy Prevention Act. This long overdue 
legislation is needed to address a novel practice which is essentially 
one of the most base forms of extortion, the cyberpiracy of famous 
marks for both wares and services. As the world of commerce evolves as 
with the growth of the Internet, we in Congress have the obligation to 
revisit the laws to preserve fairness for the regular order of 
business. The Lanham Act is an appropriate vehicle to address the 
concerns raised by consumers and small businesses alike regarding the 
cyberpiracy of famous marks in interstate, and often global, commerce. 
However, I am disappointed that this legislation could not go even 
further and my support is qualified on the ground that I intend to 
pursue the remaining relating issues in the future.
  Unfortunately, in our effort to expedite this bill to the floor, we 
have failed to address another distressing form of cheap extortion, 
namely the registration of personal names as domain names. My support 
for today's bill rests on the fact that while we address this worthy 
commercial problem through trademark law, we are not foreclosing the 
future opportunity to address this other domain name problem concerning 
personal privacy and autonomy in one's personae in cyberspace. This 
protection in my opinion must not be limited to the famous or just 
celebrities, it must be universal.
  Certainly, many of my colleagues are aware of this issue. The main 
sponsor of H.R. 3028 has explained that his good name was spoofed by a 
political website recently. Several prominent national candidates have 
fallen prey to this extortion. It is a welcome improvement that the 
manager's amendment partially addresses the political candidate website 
issue. Likewise, in all candor, I too was a target of cyberpiracay last 
year. This is an increasing and serious problem for the parties and the 
public. In fact, today, I received an e-mail from one of Mr. Rogan's 
consititutents about this need for Congress to address this visceral 
problem of innocent people being victimized. Our efforts today may in 
fact exacerbate this problem. Since these people, whether you call them 
cyber-prospectors, cyber-pirates or just Joe. Q. Hacker, no longer can 
register the domain names that correspond to marks used in commerce, 
they may find profit and create mischief by registering the names of 
ordinary people. We need to act to remedy this outrageous problem.
  Unfortunately, the necessary final solution cannot be offered today. 
The mechanism to remedy the concerns raised by Mr. Rogan's constituent 
and so many others is difficult to identify and design in a narrowly-
tailored way. Members of certain industries have voiced strong 
opposition to any possible establishment of a federal right of 
publicity with this bill. The creation of that form of intellectual 
protection is something that Congress must carefully and fully explore 
before enactment.

[[Page 26870]]

  Frist, I call upon the companies that provide the registration of 
domain names to act. They must institute responsible and effective 
polices to prevent the registrations of personal names in bad faith, as 
well as provide accessible procedures for dispute resolution.
  However, I wish to inform my colleagues that it is my intent to 
revisit this subject in the new year by introducing my own legislation 
on this topic. This legislation will not create a national right of 
publicity, but specifically address the problem at hand. It is my hope 
that my colleagues will join me in the important task of resolving the 
second and final part of the cyberpiracy problem. I am confident that 
we can enact such legislation that balances the interests of all 
concerned, including those of civil libertarians who raise legitimate 
First Amendment issues, the copyright bar, the e-commerce community, as 
well as the average citizens whose names are now literally on the line.
  Mr. COBLE. Mr. Speaker, I yield back the balance of my time.
  The SPEAKER pro tempore. The question is on the motion offered by the 
gentleman from North Carolina (Mr. Coble) that the House suspend the 
rules and pass the bill, H.R. 3028, as amended.
  The question was taken; and (two-thirds having voted in favor 
thereof) the rules were suspended and the bill, as amended, was passed.
  A motion to reconsider was laid on the table.
  Mr. COBLE. Mr. Speaker, I ask unanimous consent that the Committee on 
the Judiciary be discharged from the further consideration of the 
Senate bill (S. 1255) to protect consumers and promote electronic 
commerce by amending certain trademark infringement, dilution, and 
counterfeiting laws, and for other purposes, and ask for its immediate 
consideration in the House.
  The Clerk read the title of the Senate bill.
  The SPEAKER pro tempore. Is there objection to the request of the 
gentleman from North Carolina?
  There was no objection.
  The Clerk read the Senate bill, as follows:

                                S. 1255

       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 
     ``Anticybersquatting Consumer Protection Act.''.
       (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 or confusingly similar to a trademark 
     or service mark of another that is distinctive at the time of 
     the registration of the domain name, or dilutive of a famous 
     trademark or service mark of another that is famous at the 
     time of the 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) A person shall be liable in a civil action by 
     the owner of a trademark or service mark if, without regard 
     to the goods or services of the parties, that person--
       ``(i) has a bad faith intent to profit from that trademark 
     or service mark; and
       ``(ii) registers, traffics in, or uses a domain name that--
       ``(I) in the case of a trademark or service mark that is 
     distinctive at the time of registration of the domain name, 
     is identical or confusingly similar to such mark; or
       ``(II) in the case of a famous trademark or service mark 
     that is famous at the time of registration of the domain 
     name, is dilutive of such mark.
       ``(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 or confusingly 
     similar to trademarks or service marks of others that are 
     distinctive at the time of registration of such domain names, 
     or dilutive of famous trademarks or service marks of others 
     that are famous 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.
       ``(D) A use of a domain name described under subparagraph 
     (A) shall be limited to a use of the domain name by the 
     domain name registrant or the domain name registrant's 
     authorized licensee.
       ``(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

[[Page 26871]]

     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.
       ``(v) 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 Act. 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.''.

     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.


                      Motion Offered By Mr. Coble

  Mr. COBLE. Mr. Speaker, I offer a motion.
  The Clerk read as follows:

       Mr. Coble moves to strike all after the enacting clause of 
     the Senate bill, S. 1255, and to insert in lieu thereof the 
     text of H.R. 3028 as it passed the House.

  The motion was agreed to.
  The Senate bill was ordered to be read a third time, was read the 
third time, and passed, and a motion to reconsider was laid on the 
table.
  A similar House bill (H. 3028) was laid on the table.

                          ____________________