15 October 1999
Source: http://www.access.gpo.gov/su_docs/aces/aaces002.html

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[DOCID: f:h3028ih.txt]

106th CONGRESS
  1st Session
                                H. R. 3028

  To amend certain trademark laws to prevent the misappropriation of
                                 marks.

_______________________________________________________________________

                    IN THE HOUSE OF REPRESENTATIVES

                            October 6, 1999

  Mr. Rogan (for himself, Mr. Boucher, Mr. Coble, and Mr. Goodlatte)
 introduced the following bill; which was referred to the Committee on
                             the Judiciary

_______________________________________________________________________

                                 A BILL


  To amend certain trademark laws to prevent the misappropriation of
                                 marks.

    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 ``Trademark
Cyberpiracy Prevention 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. 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;
                    ``(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; or
                    ``(III) is a trademark, word, or name protected by
                reason of section 706 of title 18, United States Code,
                or section 220506 of title 36, United States Code.
    ``(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 lawful use, if any, of the
        domain name in connection with the bona fide offering of any
        goods or services;
            ``(iv) the person's lawful 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
        financial gain 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 provision of material and misleading
        false contact information when applying for the registration of
        the domain name or the person's intentional failure to maintain
        accurate contact information;
            ``(viii) the person's registration or acquisition of
        multiple domain names which the person knows 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;
            ``(ix) the person's history of offering to transfer, sell,
        or otherwise assign domain names incorporating marks of others
        to the mark owners or any third party for consideration without
having used, or having an intent to use, the domain names in the bona
fide offering of any goods and services;
            ``(x) the person's history of providing material and
        misleading false contact information when applying for the
        registration of other domain names which incorporate marks, or
        the person's history of using aliases in the registration of
        domain names which incorporate marks of others; and
            ``(xi) the extent to which the trademark or service mark
        incorporated in the person's domain name registration is
        distinctive and famous within the meaning of subsection (c)(1)
        of section 43 of the Trademark Act of 1946 (15 U.S.C. 1125).
    ``(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 in the judicial district in which suit may be
brought against the domain name registrar, domain name registry, or
other domain name authority that registered or assigned the domain name
if--
            ``(i) the domain name violates any right of the registrant
        of a mark registered in the Patent and Trademark Office, or
        subsection (a) or (c) of this section, or is a trademark, word,
        or name protected by reason of section 706 of title 18, United
        States Code, or section 220506 of title 36, United States Code;
        and
            ``(ii) the court finds that--
                    ``(I) the owner has demonstrated due diligence and
                was not able to find or was not able to serve a person
                who would have been a defendant in a civil action under
                paragraph (1); or
                    ``(II) personal jurisdiction cannot be established
                over any person who would have been a defendant in a
                civil action under paragraph (1).
    ``(B) The remedies in 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.
    ``(C) The in rem action established under this paragraph and any
remedy available under such action shall be in addition to any other
civil action or remedy otherwise applicable.
    ``(3) The civil action established under paragraph (1) and any
remedy available under such action shall be in addition to any other
civil action or remedy otherwise applicable.''.

SEC. 3. 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 may remit statutory damages in any case in which the court
finds that 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. 4. 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, or of a trademark,
                word, or name protected by reason of section 706 of
                title 18, United States Code, or section 220506 of
                title 36, United States Code.
            ``(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, or a trademark,
        word, or name protected by reason of section 706 of title 18,
        United States Code, or section 220506 of title 36, United
        States Code, 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. 5. 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 `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.
            ``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)).''.

SEC. 6. 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. 7. EFFECTIVE DATE.

    This Act shall apply to all domain names registered before, on, or
after the date of enactment of this Act, except that damages under
subsection (a) or (d) of section 35 of the Trademark Act of 1946 (15
U.S.C. 1117), as amended by section 3 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.
                                 <all>
