Home > 106th Congressional Bills > S. 1255 (rs) To protect consumers and promote electronic commerce by amending certain trademark infringement, dilution, and counterfeiting laws, and for other purposes. [Reported in Senate] ...S. 1255 (rs) To protect consumers and promote electronic commerce by amending certain trademark infringement, dilution, and counterfeiting laws, and for other purposes. [Reported in Senate] ...
106th CONGRESS
1st Session
S. 1255
_______________________________________________________________________
IN THE HOUSE OF REPRESENTATIVES
October 5, 1999
Referred to the Committee on the Judiciary
_______________________________________________________________________
AN ACT
To protect consumers and promote electronic commerce by amending
certain trademark infringement, dilution, and counterfeiting laws, and
for other purposes.
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 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.
Passed the Senate August August 5, 1999.
Attest:
GARY SISCO,
Secretary.
Pages: 1 Other Popular 106th Congressional Bills Documents:
|
| GovRecords.org presents information on various agencies of the United States Government. Even though all information is believed to be credible and accurate, no guarantees are made on the complete accuracy of our government records archive. Care should be taken to verify the information presented by responsible parties. Please see our reference page for congressional, presidential, and judicial branch contact information. GovRecords.org values visitor privacy. Please see the privacy page for more information. |
 |