Brand owners seeking to acquire a cybersquatting domain name may file either a lawsuit under the Anti-cybersquatting Consumer Protection Act (“ACPA”) or an arbitration complaint under the Uniform Domain-Name Dispute-Resolution Policy (“UDRP”). A recent case from the Northern District of Georgia illustrates a key difference between the two—and a possible advantage to filing a UDRP complaint.

Plaintiff Dar Thompson, mayoral candidate of Peachtree City, Georgia, had chosen “dar4ptc” (“Dar for Peachtree City”) for his campaign slogan and website. When he attempted to purchase <> and several other similar domains several weeks later, however, he learned they had already been registered. In fact, the <> domain registered only two days after an email revealed the slogan internally to Thompson’s campaign staff. That timing did not appear coincidental. Thompson’s second amended complaint alleged that someone on his campaign had leaked the slogan to a political rival. Further, when Thompson inquired about purchasing the <> domain, he was informed that the owner(s) was willing to sell but wanted $10,000. Not knowing the identity of the domain name owner, Thompson sued five Doe Defendants in district court under the ACPA, asserting common-law rights in the DAR4PTC trademark.

The Doe Defendants moved to dismiss for failure to state a claim. Their argument was that the statutory text of the ACPA requires use of a valid trademark at the time the disputed domain was registered. Thompson, on the other hand, argued that the text does not require use, only that the mark was distinctive at the time of the domain’s registration.

While the court agreed with Thompson that the text of the ACPA contains no explicit use requirement, it ultimately concluded that use is required. As the court observed, the statutory text does require a “mark” capable of being distinctive at the time of the domain’s registration. Because the statute defines a “mark” as including a trademark, and a trademark as “any word . . . used by a person . . . to identify and distinguish his goods,” the court held that, “at least with respect to a common law mark, the ACPA requires the existence of a mark at the time of registration, which can be established only through actual prior use in commerce.”

Here, public use of Thompson’s mark did not begin until several weeks after the domains were registered. Accordingly, the court dismissed the complaint, stating, “While it seems obvious that Defendants acted in bad faith by registering the domain and that they effectively ‘stole’ Thompson’s idea for his campaign, his remedy does not lie in trademark infringement because he lacked trademark rights at the relevant time.”

Interestingly, had Thompson filed a UDRP complaint, he might have succeeded. As was implicit in the court’s decision under the ACPA, the general presumption under the UDRP is that a domain registered before a complainant acquired trademark rights could not have been registered in bad faith. Under the UDRP, however, an exception is made where a complainant can establish the domain was registered in anticipation of its trademark rights—for example, where a former employee had insider knowledge about the complainant’s plans for its brand names. Here, Thompson’s complaint alleged that someone in his campaign had leaked the news of his slogan to a political competitor. If he could have proven that allegation, what failed as a ACPA claim may well have succeeded as a UDRP complaint.

The case is Thompson v. Does 1-5, Case No. 3:17-cv-146-TCB (N.D. Georgia Apr. 18, 2019).