The Software IP Report

Registering Large Number of Domain Names Not by Itself Evidence of Bad Faith Cybersquatting

By Charles Bieneman

Categories: The Software IP Report

A trademark infringement defendant’s counterclaim under the Anticybersquatting Consumer Protection Act (ACPA), 15 U.S.C. § 1125(d), was dismissed where the sole basis for the counterclaim was the sheer number of domain names that the plaintiff had registered.  Voice of the Arab World, Inc. v. MDTV Medical News Now, Inc., No. 09-11505 (D. Mass. March 29, 2012).  The court noted that the ACPA required a domain name to have been registered in bad faith to sustain a claim for cybersquatting.  Here, the plaintiff had registered seventy-seven domain names, but “the fact of multiple registrations alone does not rise to the level of proving bad faith.”  Further, the plaintiff had not attempted to sell the domain names to the defendant; rather, the defendant had approached the plaintiff seeking to purchase the domain names.  There was no evidence that the plaintiff even knew of the defendant “or its use of the mark when it registered the domain names.”  Therefore, the plaintiff’s motion for summary judgment on the defendant’s counterclaim was granted.