[House Report 106-412]
[From the U.S. Government Publishing Office]
106th Congress Report
1st Session HOUSE OF REPRESENTATIVES 106-412
======================================================================
TRADEMARK CYBERPIRACY PREVENTION ACT
_______
October 25, 1999.--Committed to the Committee of the Whole House on the
State of the Union and ordered to be printed
_______
Mr. Coble, from the Committee on the Judiciary, submitted the following
R E P O R T
[To accompany H.R. 3028]
The Committee on the Judiciary, to whom was referred the
bill (H.R. 3028) amending certain trademark laws to prevent the
misappropriation of marks, having considered the same, reports
favorably thereon with an amendment and recommends that the
bill as amended do pass.
TABLE OF CONTENTS
Page
The Amendment.............................................. 1
Purpose and Summary........................................ 5
Background and Need for the Legislation.................... 5
Hearings................................................... 7
Committee Consideration.................................... 7
Committee on Government Reform Findings.................... 7
New Budget Authority and Tax Expenditures.................. 7
Congressional Budget Office Cost Estimate.................. 7
Constitutional Authority Statement......................... 9
Section-by-Section Analysis and Discussion................. 9
Changes in Existing Law Made by the Bill, as Reported...... 16
The amendment is as follows:
Strike out all after the enacting clause and insert in lieu
thereof the following:
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 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;
``(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; 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 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;
``(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
``(xi) the extent to which the trademark or service 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) The owner of a mark may file an in rem civil action
against a domain name in the judicial district in which suit may be
brought against the domain name registrar, domain name registry, or
other domain name authority that registered or assigned the domain name
if--
``(i) the domain name violates any right of the registrant
of a mark registered in the Patent and Trademark Office, or
subsection (a) or (c) of this section, or 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;
and
``(ii) the court finds that--
``(I) the owner has demonstrated due diligence and
was not able to find or was not able to serve a person
who would have been a defendant in a civil action under
paragraph (1); or
``(II) personal jurisdiction cannot be established
over any person who would have been a defendant in a
civil action under paragraph (1).
``(B) The remedies in 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.
``(C) The in rem action established under this paragraph and any
remedy available under such action shall be in addition to any other
civil action or remedy otherwise applicable.
``(3) The civil action established under paragraph (1) and any
remedy available under 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 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, or of 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.
``(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 registered on the Principal Register of the
United States Patent and Trademark Office, or 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, 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.
``(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. 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.
Purpose and Summary
Over the last two years, the Subcommittee on Courts and
Intellectual Property held multiple hearings on domain names to
access their impact on intellectual property rights,
particularly the Lanham Act. Through this committee's
oversight, it has become very aware of the problems faced by
owners of famous marks when dealing with the issue of domain
names. Much testimony has been gathered evidencing the practice
of cybersquatters who register numerous domain names containing
American trademarks or tradenames only to hold them ransom in
exchange for money. Sometimes these pirates put pornographic
materials on theses sites in an effort to increase the
likelihood of collecting ransom by damaging the integrity of a
mark. The time has come for this practice to stop.
The legal recourse provided for in this legislation,
combined with the intellectual property alternative dispute
resolution procedures being adopted by the domain name
registrars, will give trademark owners important tools to
protect their intellectual property. This is a measured and
balanced response to a growing problem, and will clarify that
trademark property rights are respected as the Internet
continues to grow.
Background and Need for the Legislation
A great deal of controversy surrounds trademark rights vis-
a-vis domain names. In the early years of the Internet, when
the primary users were academic institutions and government
agencies, little concern existed over trademarks and domain
names. As the Internet grew, however, the fastest growing
number of requests for domain names were in the .com domain
because of the explosion of businesses offering products and
services on the Internet.
Because people use domain names to locate Web resources,
companies doing business online now want domain names that are
easy to remember and that relate to their products, trade
names, and trademarks. Owners of famous trademarks typically
register their trademarks as domain names (such as
``microsoft.com''). This kind of identification can be highly
important to a business that conducts commerce on the Internet.
In fact, many consumers who do not know the domain name of a
company will first try the principal trademark or trade name of
that company to locate the company's Web site.
Since domain names are available from Network Solutions,
Inc. (NSI), and now other registrars, on a first-come, first-
served basis, some owners have discovered that the domain name
containing their trademark has already been registered. The
situation has been aggravated by some people, known as
``cyberpirates,'' registering domain names in the hope that
they might be able to sell them to companies that place a high
value on these trademarks. These cyberpirates have no intention
of using the domain name in commerce, and instead often attempt
to exact money from a company in exchange for domain names that
relate to that company's trademarks.
Disputes involving domain names and trademarks place
registrars in the awkward position of being pressured to takes
sides in trademark disputes, or to deny, grant, or suspend a
domain name based on an allegation of infringement. NSI has
maintained a domain name dispute policy since 1995, but it has
been criticized by many intellectual property owners. Only
owners of trademarks that are registered with the U.S.
Trademark Office's Principal Register and are identical to the
disputed domain name can invoke the dispute policy. This means
that NSI will not act on complaints from parties that have
Federal registrations on the Supplemental Register, have State
trademark registrations, or have only common law trademark
rights, or rights under Section 43(a) of the Lanham Act.
``Cyberpiracy'' can involve individuals seeking
extortionate profits by reserving Internet domain names that
are similar or identical to trademarked names with no intention
of using the names in commerce themselves. Such actions
undermine consumer confidence, discourage consumer use of the
Internet, and destroy the value of brand-names and trademarks
of American businesses.
Cyberpiracy can hurt businesses in a number of ways. First,
a cyberpirate's expropriation of a mark as part of a domain
name prevents the trademark owner from using the mark as part
of its domain name. As a result, consumers seeking a trademark
owner's Web site are diverted elsewhere, which means lost
business opportunities for the trademark owner. A cyberpirate's
use may also blur the distinctive quality of a mark and, when
linked to certain types of Internet activities such as
pornography, may also tarnish the mark. Finally, businesses are
required to police and enforce their trademark rights by
preventing unauthorized use, or risk losing those rights
entirely.
Currently, the legal remedies available to trademark owners
to prevent cyberpiracy are both expensive and uncertain.
Federal courts have generally found in favor of the owner of a
trademark where a similar or identical domain name is actively
used in connection with a cyberpirate's Web site.\1\ The law is
less settled, however, where a cyberpirate has either
registered the domain name and done nothing more, or where the
cyberpirate uses a significant variation on the trademark.\2\
Regardless of the ultimate outcome of litigation, trademark
owners must expend significant resources and endure the
inevitable delay associated with bringing a civil action in
order to validate their rights. Many companies simply choose to
pay extortionate prices to cyberpirates in order to rid
themselves of a potentially damaging headache with an uncertain
outcome. For example, Gateway recently paid $100,000 to a
cyberpirate who had placed pornographic images to the Web site
``www.gateway20000.''
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\1\ See, e.g., Toeppen v. Panavision International L.P., 141 F.3d
1316 (9th Cir. 1998) (noting that the registration of the trademark
``Panavision'' as a domain name by a cyberpirate resulted in the
dilution of that mark); Cardservice International Inc. v. McGee 950
F.Supp. 737 (E.D.Va. 1997), aff'd without op., 129 F.3d 1258 (4th Cir.
1997) (ruling that the owner of the registered mark ``Cardservice'' is
entitled to a permanent injunction against the use of the domain name
``cardservice.com'' by another party because it is likely to confuse
customers).
\2\ See, e.g., Toys ``R'' Us Inc. v. Feinberg, 26 F.Supp. 2d 639
(S.D.N.Y. 1998) (holding that the use of ``gunsareus.com'' as a domain
name does not infringe or dilute the mark of ``Toys `R' Us'' due to the
dissimilarity of the terms).
---------------------------------------------------------------------------
Hearings
The committee's Subcommittee on Courts and Intellectual
Property held a hearing on Wednesday, July 28, 1999, on
Internet Domain Names and Intellectual Property Rights. The
following witnesses appeared at the hearing: Andrew Pincus,
General Counsel, United States Department of Commerce; Francis
Gurry, Assistant Director General & Legal Counsel, World
Intellectual Property Organization; Michael Roberts, Interim
President and CEO, Internet Corporation for Assigned Names and
Numbers (ICANN); Michael A. Daniels, Chairman of the Board,
Network Solutions, Incorporated; Jonathan Cohen, President,
Intellectual Property Constituency of the Domain Name
Supporting Organization of ICANN; Ken Stubbs, Chairman of the
Executive Committee, Internet Council of Registrars (CORE) ;
Kathlene Karg, Director of Intellectual Property and Public
Policy, Interactive Digital Software Association, for the
Copyright Coalition on Domain Names; Mike Kirk, Executive
Director, American Intellectual Property Law Association
(AIPLA); and Anne Chasser, President, International Trademark
Association (INTA).
Committee Consideration
On September 9,1999, the Subcommittee on Courts and
Intellectual Property met in open session and ordered favorably
reported the bill H.R. 3028, by voice vote, a quorum being
present. On October 13, 1999, the committee met in open session
and ordered favorably reported the bill H.R. 3028 as amended,
by voice vote, a quorum being present.
Committee on Government Reform Findings
No findings or recommendations of the Committee on
Government Reform and Oversight were received as referred to in
clause 3(c)(4) of rule XIII of the Rules of the House of
Representatives.
New Budget Authority and Tax Expenditures
Clause 3(c)(2) of House Rule XIII is inapplicable because
this legislation does not provide new budget authority or
increased tax expenditures.
Congressional Budget Office Cost Estimate
The Congressional Budget Office estimates the bill would
not have a significant effect on the Federal budget nor would
affect direct spending or receipts; therefore pay-as-you-go
procedures would not likely apply.
In compliance with clause 3(c)(3) of rule XIII of the Rules
of the House of Representatives, the committee sets forth, with
respect to the bill, H.R. 3028, the following estimate and
comparison prepared by the Director of the Congressional Budget
Office under section 403 of the Congressional Budget Act of
1974:
U.S. Congress,
Congressional Budget Office,
Washington, DC, October 22, 1999.
Hon. Henry J. Hyde, Chairman,
Committee on the Judiciary,
House of Representatives, Washington, DC.
Dear Mr. Chairman: The Congressional Budget Office has
prepared the enclosed cost estimate for H.R. 3028, the
Trademark Cyberpiracy Prevention Act.
If you wish further details on this estimate, we will be
pleased to provide them. The CBO staff contacts are Mark Hadley
(for Federal costs), who can be reached at 226-2860, Shelley
Finlayson (for the State and local impact), who can be reached
at 225-3220, and John Harris (for the private-sector impact),
who can be reached at 226-6910.
Sincerely,
Dan L. Crippen, Director.
H.R. 3028--Trademark Cyberpiracy Prevention Act.
Cyberpiracy (or cybersquatting) consists of registering,
trafficking in, or using domain names (Internet addresses) that
are identical or confusingly similar to trademarks with the
bad-faith intent to profit from the goodwill of the trademarks.
H.R. 3028 would allow trademark owners to sue anyone who
engages in such conduct, and allow the courts to order the
forfeiture, cancellation, or transfer of domain names in such
instances. CBO estimates that implementing these provisions
would not have a significant effect on the Federal budget.
In addition, the bill would reduce the amounts the Patent
and Trademark Office (PTO) charges inventors to file patents
and would authorize the PTO to adjust the amounts it charges to
file trademarks. In reviewing the cost of each activity the PTO
performs, the agency determined that applicants for trademarks
paid less than the cost to process trade applications, and
applicants for patents paid more than the cost to process
patent applications. Based on that information, CBO expects
that the agency would increase trademark fees by more than
enough to offset the lower patent fees that the bill would
require. Under current law, PTO adjusts charges to patent and
trademark owners to reflect fluctuations in the Consumer Price
Index.
All fees collected by the PTO are credited to its
appropriation as an offset to discretionary spending. Thus, CBO
estimates that implementing H.R. 3028 would reduce net
appropriated spending by the PTO by an average of about $10
million a year over the 2000-2004 period, assuming
appropriation of the necessary amounts. Because H.R. 3028 would
not affect direct spending or receipts, pay-as-you-go
procedures would not apply to the bill.
H.R. 3028 contains no intergovernmental mandates as defined
in the Unfunded Mandates Reform Act (UMRA) and could benefit
state, local, or tribal governments if they sue to recover
damages from infringement or dilution of trademarks based on
the provisions of the bill. Any such benefits are expected to
be minimal. The changes in patent and trademark fees authorized
in the bill also are expected to have only minimal effects on
the budgets of state, local, and tribal governments.
H.R. 3028 would create a new private-sector mandate for
trademark holders by granting the PTO the discretion to
increase trademark fees. Trademark fee increases are private-
sector mandates because the Federal Government controls the
trademark system and no reasonable alternatives to the system
exist. CBO estimates that the PTO would collect roughly $40
million a year, on average, in fee increase over the next five
years. The costs of the mandate thus fall below the threshold
established in UMRA ($100 million in 1996, adjusted annually
for inflation).
The bill would benefit patent holders and applicants by
reducing several patent fees, including filing, reissuance, and
certain maintenance fees. CBO estimates that the fee reductions
would save patent holders and applicants roughly $30 million a
year, on average, over the next five years. Although some firms
and individuals may hold both trademarks and patents, the
patent fee reductions would not offset the trademark fee
increases. Trademarks and patents serve separate and distinct
purposes, and many trademark holders hold no patents.
On August 5, 1999, CBO transmitted an estimate of S. 1255,
the Anticybersquatting Consumer Protection Act, as reported by
the Senate Committee on the Judiciary on July 29, 1999. Because
S.1255 would not affect the fees collected by the PTO, CBO
estimated that it would not have a significant budgetary
impact.
The CBO staff contacts are Mark Hadley (for Federal costs),
who can be reached at 226-2860, Shelley Finlayson (for the
state and local impact), who can be reached at 225-3220, and
John Harris (for the private-sector impact), who can be reached
at 226-6910. This estimate was approved by Peter H. Fontaine,
Deputy Assistant Director for Budget Analysis.
Constitutional Authority Statement
Pursuant to clause 3(d)(1) of the rule XIII of the Rules of
the House of Representatives, the committee finds the authority
for this legislation in Article I, section 8, clause 3 of the
Constitution, the authorizing provision for the underlying
Lanham Act to which this Act is an amendment.
Section-by-Section Analysis and Discussion
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.
Sec. 1051 et seq.), also commonly referred to as the Lanham
Act.
Section 2. Cyberpiracy prevention
Subsection (a). In General. This subsection amends section
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.
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.
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 use, if any, of the domain
name in connection 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 uses 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 know 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, as 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. 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 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 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 (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, where the mark owner has
satisfied the court that it has exercised due diligence in
trying to locate the owner of the domain name but is unable to
do so. Such in rem jurisdiction is proper in two instances.
First, where the mark owner has satisfied the court that it has
exercised due diligence in trying to locate the owner of the
domain name but is unable to do so, or is unable to affect
service. 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, after due diligence, 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 of the United States.
Nor would this jurisdiction preclude the movement of any
registries to outside of the United States. Instead, providing
in rem jurisdiction based upon the lack of personal
jurisdiction over the cybersquatter would provide protection
both for 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) limits the relief available in such an in
rem action to an injunction ordering the forfeiture,
cancellation, or transfer of the domain name.
Paragraph (2)(C) states that the in rem remedies under this
section shall be in addition to other remedies that are
applicable.
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 requires 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.
Sec. 230(f)(1)). 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 new statutory damages provided
for under this bill shall not apply to any registration,
trafficking, or use of a domain name that took place prior to
the enactment of this act.
Changes in Existing Law Made by the Bill, as Reported
In compliance with clause 3(e) of rule XIII of the Rules of
the House of Representatives, changes in existing law made by
the bill, as reported, are shown as follows (existing law
proposed to be omitted is enclosed in black brackets, new
matter is printed in italics, existing law in which no change
is proposed is shown in roman):
TRADEMARK ACT OF 1946
* * * * * * *
TITLE VI--REMEDIES
Sec. 32. (1) * * *
(2) Notwithstanding any other provision of this Act, the
remedies given to the owner of a right infringed under this Act
or to a person bringing an action [under section 43(a)] under
section 43(a) or (d) shall be limited as follows:
(A) * * *
* * * * * * *
(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, or
of 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.
(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 registered on the Principal Register
of the United States Patent and Trademark Office, or 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, 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.
(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.
[(D)] (E) As used in this paragraph--
(i) the term ``violator'' means a person
who violates section 43(a); and
(ii) the term ``violating matter'' means
matter that is the subject of a violation under
section 43(a).
* * * * * * *
Sec. 34. (a) The several courts vested with jurisdiction of
civil actions arising under this Act shall have power to grant
injunctions, according to the principles of equity and upon
such terms as the court may deem reasonable, to prevent the
violation of any right of the registrant of a mark registered
in the Patent and Trademark Office or to prevent a violation
under subsection [(a) or (c)] (a), (c), or (d) of section 43.
Any such injunction may include a provision directing the
defendant to file with the court and serve on the plaintiff
within thirty days after the service on the defendant of such
injunction, or such extended period as the court may direct, a
report in writing under oath setting forth in detail the manner
and form in which the defendant has complied with the
injunction. Any such injunction granted upon hearing, after
notice to the defendant, by any district court of the United
States, may be served on the parties against whom such
injunction is granted anywhere in the United States where they
may be found, and shall be operative and may be enforced by
proceedings to punish for contempt, or otherwise, by the court
by which such injunction was granted, or by any other United
States district court in whose jurisdiction the defendant may
be found.
* * * * * * *
Sec. 35. (a) When a violation of any right of the registrant
of a mark registered in the Patent and Trademark Office, a
violation under section 43(a), (c), or (d), or a willful
violation under section 43(c), shall have been established in
any civil action arising under this Act, the plaintiff shall be
entitled, subject to the provisions of sections 29 and 32, and
subject to the principles of equity, to recover (1) defendant's
profits, (2) any damages sustained by the plaintiff, and (3)
the costs of the action. The court shall assess such profits
and damages or cause the same to be assessed under its
direction. In assessing profits the plaintiff shall be required
to prove defendant's sales only, defendant must prove all
elements of cost or deduction claimed. In assessing damages the
court may enter judgment, according to the circumstances of the
case, for any sum above the amount found as actual damages, not
exceeding three times such amount. If the court shall find that
the amount of the recovery based on profits is either
inadequate or excessive the court may in its discretion enter
judgment for such sum as the court shall find to be just,
according to the circumstances of the case. Such sum in either
of the above circumstances shall constitute compensation and
not a penalty. The court in exceptional cases may award
reasonable attorney fees to the prevailing party.
* * * * * * *
(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.
* * * * * * *
TITLE VIII--FALSE DESIGNATIONS OF ORIGIN, FALSE DESCRIPTIONS, AND
DILUTION FORBIDDEN
Sec. 43. (a) * * *
* * * * * * *
(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;
(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; 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 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;
(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
(xi) the extent to which the trademark or service
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) The owner of a mark may file an in rem civil action
against a domain name in the judicial district in which suit
may be brought against the domain name registrar, domain name
registry, or other domain name authority that registered or
assigned the domain name if--
(i) the domain name violates any right of the
registrant of a mark registered in the Patent and
Trademark Office, or subsection (a) or (c) of this
section, or 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; and
(ii) the court finds that--
(I) the owner has demonstrated due
diligence and was not able to find or was not
able to serve a person who would have been a
defendant in a civil action under paragraph
(1); or
(II) personal jurisdiction cannot be
established over any person who would have been
a defendant in a civil action under paragraph
(1).
(B) The remedies in 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.
(C) The in rem action established under this paragraph and
any remedy available under such action shall be in addition to
any other civil action or remedy otherwise applicable.
(3) The civil action established under paragraph (1) and
any remedy available under such action shall be in addition to
any other civil action or remedy otherwise applicable.
* * * * * * *
TITLE X--CONSTRUCTION AND DEFINITIONS
Sec. 45. In the construction of this Act, unless the
contrary is plainly apparent from the context--
The United States includes and embraces all territory which
is under its jurisdiction and control.
* * * * * * *
A ``counterfeit'' is a spurious mark which is identical
with, or substantially indistinguishable from, a registered
mark.
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)).
* * * * * * *
----------
SECTION 41 OF TITLE 35, UNITED STATES CODE
Sec. 41. Patent fees; patent and trademark search systems
(a) The Commissioner shall charge the following fees:
(1)(A) On filing each application for an original
patent, except in design or plant cases, [$760] $690.
* * * * * * *
(4)(A) On filing each application for the reissue
of a patent, [$760] $690.
* * * * * * *
(10) Basic national fee for an international
application where the Patent and Trademark Office was
the International Searching Authority but not the
International Preliminary Examining Authority, [$760]
$690.
* * * * * * *
(b) The Commissioner shall charge the following fees for
maintaining in force all patents based on applications filed on
or after December 12, 1980:
(1) 3 years and 6 months after grant, [$940] $830.
* * * * * * *