As we have learned in class, the origins of the Anticybersquatting Consumer Protection Act (ACPA) 15 U.S.C.A. § 1125(d), was to protect trademark owners from having others use their famous and distinctive trademark in a domain name that is confusingly similar. This law was welcomed especially in the early days of the internet, when domain name registrations were drivinf the development of internet law or “cyberlaw.” However, although there is less cyber-squatting or cyber-piracy today, the ACPA continues to be used in courts.
For example, in CrossFit, Inc. v. Jenkins, No. 13-CV-01219-MSK-CBS, 2014 WL 4706066 (D. Colo. Sept. 22, 2014) the district court in Colorado found that the owner of the Internet website http://www.crossfitnutrition.com, which offered the sale of vitamins, supplements, and nutrition products, had engaged in cyberpiracy, in violation of the ACPA, by using a domain name confusingly similar to the famous and distinctive “CrossFit” trademark and service mark associated with fitness training and consulting.
CrossFit, Inc. is engaged in the worldwide business of fitness training and consulting. It is a well=protected IP rand and owns many registered trademarks using the term “CrossFit.”
Mr. Jenkins owned and controlled the website in question (www.crossfitnutrition.com) which offers vitamins, supplements, and nutrition products for sale.
CrossFit alleged that Jenkins utilized the CrossFit mark to trade on the good name associated with CrossFit. CrossFit alleged violation of the ACPA – CrossFit not only sought damages ($122K) but also an order requiring the domain name registrar to transfer the http://www.crossfitnutrition.com domain to CrossFit.
According to the record, Jenkins failed to answer the complaint entirely – which was a serious mistake for any defendant in an ACPA (or any other) action.
The ACPA was written to address this exact form of piracy on the Internet called cybersquatting – the deliberate, bad-faith, and abusive registration of Internet domain names in violation of the rights of trademark owners. The ACPA provides for liability if a person registers, traffics in, or uses a domain name that is identical or confusingly similar to a distinctive mark, with a bad faith intent to profit from that mark.
As we have learned in class, in order to state a claim under ACPA, a trademark owner must show the defendant:
- registered, trafficked in, or used a domain name,
- that is confusingly similar to the plaintiff’s trademark, and
- had a bad faith intent to profit from that domain name.
Here, the court concluded that the allegations supported CrossFit’s claim for violation of the ACPA by Jenkins.
The court found that Jenkins engaged in cyberpiracy, in violation of the ACPA, by using a domain name confusingly similar to the famous and distinctive “CrossFit” trademark. Jenkins had no authorization to use the mark, and acted with a bad faith intent to profit from the name. He created the false impression that he was a licensed “CrossFit” affiliate and that his products were endorsed or sponsored by the plaintiff,.
CrossFit also showed that the crossfitnutrition.com domain name registered by Jenkins was identical or confusingly similar to their distinctive or famous marks. The CrossFit name is widely recognized around the world, and their company does an excellent job of controlling its well-built reputation through trademark and other IP protection.
The likelihood of confusion was clear from Jenkins’s use of the word “crossfit” in connection with the nutritional information and products offered on his crossfitnutrition.com website. His use of the CrossFit name created the false impression that he was a licensed CrossFit affiliate and/or that his products were endorsed or sponsored by, associated with, or originate from CrossFit, thereby creating consumer confusion.
CrossFit had specifically informed Jenkins that his domain name was likely to create consumer confusion and constituted unauthorized use of the CrossFit Marks, yet he continued to use the domain name with the intent of diverting consumers. This was evidence of bad faith the court was looking for.
The court awarded CrossFit damages, attorney’s fees, and ordered the transfer of the crossfitnutrition.com domain name to CrossFit.
ACPA can be a powerful weapon for helping control cybersquatting – the deliberate, bad-faith, and abusive registration of Internet domain names in violation of the rights of trademark owners.