The Daily Domainer reports on a little spat between candidates for a minor office in Pennsylvania.
Apparently Candidate Jason Gherghel registered a domain name corresponding to that of his opponent, Melinda Kanter (MelindaKantner.com). She retaliated by filing a complaint with the local election board. (Complaint here)
Gherghel claims that this is a “common practice.” (source) Nevertheless, he did hide his identity by using Domains By Proxy once Kanter caught him in the act. (source)
The Daily Domainer offers this as the lesson to be learned:
The lesson? Everyone, and certainly everyone in the public eye, should preemtively[sic] register their own domain name. Melinda Kantner … had to learn this lesson the hard way.
I have a more direct lesson to be learned. I think that it is time for Gherghel to get a little ACPA spanking.
Gherghel’s registration and use of the domain name MelindaKantner.com appears to be a clear a violation the ACPA. The domain name is an exact reproduction of Kanter’s legal name, and he clearly registered it for profit. It currently generates pay-per-click advertising, and he also (clearly) registered it to deprive her campaign of the domain name. If he tries to say that this had nothing to do with trying to win the office of Controller of Schuylkill County, PA, he’s as big a liar as his party’s supreme leader.
Congress enacted the ACPA to combat this very type of behavior.
One of the purposes of the ACPA is to stop bad-faith registration and use of domain names, including those that constitute personal names of individuals. See Schmidheiny v. Weber, 319 F.3d 581, 582 (3d Cir. 2003); Shields v. Zuccarini, 254 F.3d 476, 481 (3d Cir. 2001) (The ACPA made it “illegal for a person to register or to use with the ‘bad faith’ intent to profit from an Internet domain name that is “identical or confusingly similar” to the … name of another person or company.”)
Early on, there was significant debate as to whether the ACPA should protect the personal names of individuals. In the end, Congress considered personal names to be so worthy of protection that it codified this protection under two separate sections of the ACPA – 15 U.S.C. § 1125(d)(1)(A)(i) and 15 U.S.C. § 1129.
The initial version of the ACPA provided protection for personal names only to recognized celebrities, stating: “A person shall be liable in a civil action by the owner of a mark, including a famous personal name…” 145 Cong. Rec. H 10823, H10823 (106th Cong. Oct. 26, 1999). Nevertheless, Representative Bono prevailed upon her colleagues to expand this protection to all individuals. “This protection in my opinion must not be limited to the famous or just celebrities, it must be universal.” 145 Cong. Rec. H10823, H10830 (106th Cong., Oct. 26, 1999).
As the ACPA wound its way through the legislative process, the Congressional intent to protect personal names became fully apparent. “This bill prevents cybersquatting when a trademark, service mark, famous name or any personal name is involved.” 145 Cong. Rec. H11811, H11815 (106th Cong., Nov. 9, 1999). Senator Hatch agreed, and upon presentation for the President’s signature, it is clear that the ACPA contained a clear intent to protect both trademarks and personal names.
As with trademark cybersquatting, cybersquatting of personal names poses similar threats to consumers and e-commerce in that it causes confusion as to the source or sponsorship of goods or services, including confusion as to the sponsorship or affiliation of websites bearing individuals’ names. In addition, more and more people are being harmed by people who register other peoples names and hold them out for sale for huge sums or money or use them for various nefarious purposes. 145 Cong. Rec. S14986, S15019 (106th Cong., Nov. 19, 1999).
This strong Congressional intent manifested itself in the enactment of not one, but two separate additions to the Lanham Act providing protection for personal names, both of which would entitle Kanter to relief. 15 U.S.C. § 1129 and 15 U.S.C. § 1125(d)(1)(A)(i).
The Congressional intent seems to be to provide two avenues for an individual to reclaim his or her name from a cybersquatter. Section 1129 has a lower standard of proof – requiring only that the Plaintiff demonstrate that the Defendant had a “specific intent to profit.” However, that “profit” must be sought through sale of the domain name itself, not just through its use. On the other hand, 15 U.S.C. § 1125(d)(1)(A)(i), requires that the Plaintiff show that the Defendant had a “bad faith intent to profit,” but requires no specific intent to profit through the sale of the domain name. Section 1125(d) provides for severe financial penalties of between $1,000 and $100,000 in statutory damages in addition to the forfeiture of the domain name. Section 1129 comes along with lesser remedies of forfeiture and discretionary awards of attorneys’ fees and costs to the prevailing party.
Under either standard, Kanter seems able to seek immediate injunctive relief, and maybe even up to $100,000 in the process.
UPDATE: My theory that 15 U.S.C. Sect. 1125(d) covers all personal names was implicitly accepted by the Western District of Virginia in Dawson v. Brandsberg, 2006 U.S. Dist. LEXIS 73512, 13-7 (W.D. Va. 2006). However, more recently, this theory was explicitly rejected by the Middle District of Florida in Salle v. Meadows, 2007 U.S. Dist. LEXIS 92343 (M.D. Fla. 2007).
