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Keywords

contractlawsuitplaintiffdefendantliabilityappealsummary judgmenttrademarkconsumer protectionbad faith
consumer protectionbad faith

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GoPets Ltd. v. Hise, 657 F.3d 1024, 100 U.S.P.Q.2d 1292, 11 Cal. Daily Op. Serv. 12,099, 2011 Daily Journal D.A.R. 14,418

Facts

The owner of the service mark 'GoPets' filed a lawsuit against individuals who registered the domain name 'gopets.com,' claiming violations of the Anticybersquatting Consumer Protection Act (ACPA), service mark infringement, and unfair competition. The district court granted summary judgment in favor of the plaintiff, GoPets Ltd., leading to an appeal by the defendants. The case involved issues of bad faith registration and the legality of domain name transfers in relation to registered service marks.

Registrant of numerous internet domain names which were confusingly similar to registered service mark 'GoPets' and its website 'gopetslive.com' had no reasonable grounds to believe that use of confusing domain names was fair use or otherwise lawful, as required to assert Anticybersquatting Consumer Protection Act's (ACPA) safe harbor defense to cybersquatting suit.

Issue

Whether the re-registration of the domain name 'gopets.com' constituted a violation of the ACPA and whether the registration of additional confusingly similar domain names was done in bad faith.

Whether the re-registration of the domain name 'gopets.com' constituted a violation of the ACPA and whether the registration of additional confusingly similar domain names was done in bad faith.

Rule

The ACPA prohibits the registration of domain names that are identical or confusingly similar to registered service marks and trademarks. A registration is defined as the initial contract with a registrar, and re-registration does not constitute a new registration under the ACPA. Bad faith intent to profit from a mark is required for liability under the ACPA, and the safe harbor provision is only available to registrants who can demonstrate a reasonable belief that their use of the domain name was lawful.

Analysis

The court analyzed whether the re-registration of 'gopets.com' was a violation of the ACPA, concluding that it was not since the original registration occurred before the service mark was registered. However, the registration of additional domain names was found to be in bad faith, as the defendants intended to profit from the confusion caused by these names. The court emphasized that the defendants' actions demonstrated a clear intent to divert consumers and increase the selling price of 'gopets.com.'

The district court found that the Hises' registration of the Additional Domains was in bad faith. The district court based its finding in part on the fact that the Hises had used the Additional Domains as leverage to increase the price they could obtain for gopets.com, a domain name whose re-registration, in the view of the district court, violated ACPA.

Conclusion

The court reversed the district court's finding regarding the re-registration of 'gopets.com' but affirmed the finding of bad faith concerning the additional domain names, leading to a remand for further proceedings.

We therefore affirm the district court's holding that the Hises violated ACPA in registering the Additional Domains.

Who won?

GoPets Ltd. prevailed in the case as the court affirmed the finding of bad faith regarding the registration of additional domain names. The court's reasoning highlighted that the defendants acted with the intent to profit from the confusion caused by their domain registrations, which violated the ACPA. The court's decision underscored the importance of protecting service marks from exploitation by cybersquatters.

GoPets Ltd. prevailed in the case as the court affirmed the finding of bad faith regarding the registration of additional domain names.

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