Fourth Circuit Finds "Re-registration" Of A Domain Can Be Cybersquatting'A Prudential Clarification To The ACPA

• Jurisdiction: United States,Federal
• Law Firm: Wiley Rein
• Subject Matter: Intellectual Property, Technology, Trademark, Security
• Author: Mr Attison L. Barnes, III, Ari Meltzer, David E. Weslow and Adrienne J. Kosak
• Published date: 27 January 2023

The Fourth Circuit's decision yesterday in The Prudential Insurance Company of America v. Shenzhen Stone Network Information Ltd., No. 21-1823, F.4th (4th Cir. Jan. 24, 2023), provides important clarification on the application of the Anti-Cybersquatting Consumer Protection Act, 15 U.S.C. ' 1125(d) (ACPA)'with the Fourth Circuit joining the majority of federal circuits in ruling that "re-registrations" of domain names are subject to the ACPA.

The decision provides guidance on many elements of a cybersquatting claim, but two elements stand out as particularly consequential: (1) whether the relevant "registration" of a domain, for the purpose of establishing registration in bad faith, is only the initial domain registration or can also include subsequent re-registrations; and (2) the timing of assessing the propriety of in rem jurisdiction against a domain (as opposed to in personam jurisdiction against the domain's registrant). With the Fourth Circuit's recent decision, those questions are answered as follows:

• A domain "registration" actionable under the ACPA includes not only the initial registration of the domain, but also subsequent re-registrations; and
• The existence of in rem jurisdiction over a domain name is assessed at the time the cybersquatting claim is filed.

On the whole, the Prudential decision is a clear win for trademark holders. The Fourth Circuit has joined the Third Circuit, the Eleventh Circuit, and many district courts from other circuits in finding broad application of the ACPA to all manner of domain "registrations," and has made it easier to proceed under the plaintiff's election of in rem versus in personam jurisdiction. Beyond this general conclusion, the details of the Prudential decision'including its discussion of the ACPA safe harbor provisions'are valuable to assessment of cybersquatting claims, and are discussed in greater detail below.

Relevant Statutory Provisions

The Anti-Cybersquatting Consumer Protection Act, 15 U.S.C. ' 1125(d), provides recourse against the ever-rising tide of cybersquatting. In its most common application, the ACPA provides protection against bad-faith registration of a domain, made with an intent to profit off of a distinctive mark:

A person shall be liable in a civil action by the owner of a mark, . . . if, without regard to the goods or services of the parties, that person . . . has a bad faith intent to profit from that mark . . . ; and . . . registers, traffics in, or uses a domain name that . . . in the case of a mark that is distinctive at the time of registration of the domain name, is identical or confusingly similar to that mark . . . .

15 U.S.C. ' 1125(d)(1)(A).

The ACPA provides not only a cause of action against the...