Circuit Split Over Cybersquatting Act – 11th Circuit Rejects GoPets in Jysk v. Roy

The 11th Circuit is having none of the GoPets decision

The 11th Circuit is having none of the GoPets decision

The Anticybersquatting Consumer Protection Act (ACPA), 15 U.S.C. § 1125(d), provides: “A person shall be liable . . . by the owner of a mark . . . if . . . that person . . . has a bad faith intent to profit from that mark . . .; and . . . registers, traffics in, or uses a domain name that . . . is identical or confusingly similar to that mark.”

Back in 2011, the 9th Circuit came up with a pretty bizarre decision, GoPets Ltd.v. Hise, 657 F.3d 1024 (9th Cir. 2011). In that case, the 9th Circuit held that a "re-registration" is not a "registration" under the ACPA. Therefore, if you register a domain name but just squat on it, hoping that one day someone will start using a trademark that matches that name, you registered it in "good faith." I have some issues with that, but it is understandable how that does not meet the "bad faith registration" definition, although it can still be "bad faith use." But, the GoPets decision means that once a domain name is registered in good faith, nothing can ever change that registration to "bad faith," no matter what. So, lets say that you registered "" back in 1999. Fair enough, maybe you get to keep it even once Facebook becomes a global brand. But, you can't then sell it to someone, with a price that reflects the value brought to the domain because of Zuckerberg and Co.'s efforts.

I found that decision to be pretty screwed up, but at the same time, it was based on some reasonable theory: The theory being that domain names are "property," and thus you can transfer all "property rights" to another person — including the "property right" you had in your good faith registration.

The 11th Circuit just said "hooey" to that, in a really nice decision. (Its not just that I agree with the holding, but the Opinion is one of those opinions that really lays out the law clearly and applies it to the facts in a way that you never scratch your head and say "what awful clerk wrote this dreck?").

In Jysk v. Roy, the 11th Circuit declined to do what the 9th likes to do — and that is insert words into statutes that congress didn't put in there. For example, in Perfect 10, Inc. v. CC Bill, LLC, 488 F.3d 1102 (9th Cir. 2007) they held that 47 U.S.C. § 230's exemptions for intellectual property claims only meant "federal" intellectual property claims. The First Circuit subsequently noted in dicta that Section 230 contains no such limitation. See Universal Comm’n Sys., Inc. v. Lycos, Inc., 478 F.3d 413, 418 (1st Cir. 2007). See also, Gimme section 230 shelter – online dating pranks and CDA Immunity (link).

Similarly, the 9th Circuit seems to have re-written the ACPA in GoPets to exclude any registration except initial registration. The 11th Circuit was having none of that.

The Act does not define the term register. The Act nowhere contains the qualifications of initial or creation when it refers to the act of registering. It refers simply to a registration, and a re-registration is, by definition, a registration. To “re-register” is “[t]o register again.”

Including re-registrations under the registration hook comports with the purpose of Congress in enacting the ACPA—to prevent cybersquatting. See S. Grouts & Mortars, Inc., 575 F.3d at 1246–47 (“Registering a famous trademark as a domain name and then offering it for sale to the trademark owner is exactly the wrong Congress intended to remedy when it passed the ACPA.” (quotation marks omitted) (quoting Ford Motor Co. v. Catalanotte, 342 F.3d 543, 549 (6th Cir.2003))). It would be nonsensical to exempt the bad-faith re-registration of a domain name simply because the bad-faith behavior occurred during a noninitial registration, thereby allowing the exact behavior that Congress sought to prevent.

We accordingly will not read additional words into the statute such as initial or creation. The plain meaning of register includes a re-registration. The plain meaning of register includes a re-registration. The District Court correctly held that a re-registration falls within the purview of the ACPA. (Op at 16-17)

This could, perhaps, set up a petition for certiorari, given the Circuit disagreement. That would be exciting, to those of us who are lame enough to find cybersquatting cases exciting. I guess that would include me and Crystal Cox, at least.

For what it's worth, the 3d Circuit had a prior decision that also agreed that all registrations are registrations. See Schmidheiny v. Weber, 319 F.3d 581 (3d Cir. 2003). That case said “the language of the statute does not limit the word ‘registration’ to the narrow concept of ‘creation registration’” and that “[t]he words ‘initial’ and ‘creation’ appear nowhere in [the statute].” Id. at 582–83.


Last 5 posts by Marc Randazza


  1. Martin says

    Seems like a pretty rational finding, in light of the statutory test on prior use of the domain name. The "Hey, I paid GoDaddy $15 bucks for this over the past 5 years!" defense was never a very compelling one. "Spot the crazy in 9th circuit decisions" is a pretty popular party game in my neck of the woods.

  2. TM says

    Doesn't this ruling imply then that whoever has the biggest "claim" to a domain name then has the right to that name, regardless of when or under what circumstances the original name was purchased? As an example, back when the iPhone was first released, there was much consternation (and as I recall a bit of money changing) over the fact that Cisco already sold and marketed a product called iPhone. Had Cisco previously registered, wouldn't this ruling mean that all Apple would have to do to take ownership of that domain is wait until their iPhone became a bigger name than the Cisco one (which was practically immediate?).

    Likewise, say you bought today the domain and pointed it at a site drumming up business for your free speech cases. If Apple then released and subsequently want global with a new encrypted email and chat program called iSpeech, at a certain point, would you no longer be able to renew your claim to your domain simply because Apple is more popular than you?

    I have to assume I'm missing something here.

  3. Auguste says

    I have not read the full decision in either case, nor do I know much about either trademark law or this statute (in other words, feel free to ignore this).

    But from what you've described here, the Ninth Circuit's decision is rational if you assume – as I think many, many laypeople will – that "registration" means "creation." If one thinks of each individual top-level domain as an unformed void, potentially containing an entire universe of unselected options from (or whatever) to, then it makes sense to think of the first registration of as the act of creation of that domain and all of its attributes, including its potential or future IP rights. If that's the case, then (despite the 11th's description) 're-registration' is not simply registering again – it's continuing a registration.

    I don't know that it's the right way to think about it. But it's certainly not nonsensical.

  4. AH says


    I don't think so. In that example, the registration was not in bad faith. Cisco was genuinely using it. All they have to do is say "no, it's not for sale" and that's that. It doesn't come under the purview of the cyber-squatting law until they say "you offered 1M? well we want 10M." At that point they are using it just to make a profit on the sale.


  5. En Passant says

    The Anticybersquatting Consumer Protection Act (ACPA), 15 U.S.C. § 1125(d), provides: “A person shall be liable . . . by the owner of a mark . . . if . . . that person . . . has a bad faith intent to profit from that mark . . .; and . . . registers, traffics in, or uses a domain name that . . . is identical or confusingly similar to that mark.”

    Ah, cybersquatting, the gift that bad faith plaintiffs believe keeps on giving, But it doesn't always.

    A friend of mine registered a three letter domain name in the early 90s. No corporation in the USA used those same three letters as a company logo or service mark. He registered many other domains at the time, and gave them all an active intarwebz presence by serving pictures of his cat.

    Fast forward a decade or more. He got a very nasty letter from corporate counsel at Arrogant Bully Corporation, which didn't even exist when he first registered the domain. They had chosen his domain name for their service mark. They wanted his domain right now, this instant, or they would sue his socks off for cybersquatting. His cat was not amused.

    I told him to retain an experienced IP lawyer, pronto. He did. Arrogant Bully Corporation paid him a nice chunk of change for the domain. By nice chunk of change I mean I could have retired on it.

  6. says

    ast forward a decade or more. He got a very nasty letter from corporate counsel at Arrogant Bully Corporation, which didn't even exist when he first registered the domain. They had chosen his domain name for their service mark. They wanted his domain right now, this instant, or they would sue his socks off for cybersquatting. His cat was not amused.

    I told him to retain an experienced IP lawyer, pronto. He did. Arrogant Bully Corporation paid him a nice chunk of change for the domain. By nice chunk of change I mean I could have retired on it.

    Yes, and thus he must have not been using it in bad faith. I handled a similar case where the defendant registered the name, arguably in good faith, but then once it became a trademark for a well known business, he started trading on the name. He then re-registered the name (new registration) and continued to use it in bad faith, so he lost the three letter domain. See BMEZine v. Ricks. And, an attempt to overturn that decision failed, with the District of Nevada citing cases that pre-dated GoPets. See Ricks v. BMEzine.

  7. David C says

    TM, I think what you're missing is the bad faith requirement. If you're actually using the iSpeech domain to talk about speech and aren't just trying to sell it to Apple, you're fine, the way I understand it.

  8. David Lang says

    if it becomes bad faith when you say "you offered $1M for it, I want $10M" is it still bad faith if you say "you offered $0.01 for it, I won't sell it for less than $50K because I would have to change all my business cards, advertising, and I will still loose some customers who have the old address bookmarked"

    there is a real cost to changing your domain, but if someone wants it badly enough to pay you enough, you may be willing to go through that cost. Not all of the costs are easy to measure (including the missed opportunity cost because you spend manpower doing the transition instead of doing other things)

    other than "I know it when I see it", how do you identify the difference between someone who purchased the domain with the intent of shaking down the business vs someone who had legitimate reasons to get it and has been maintaining it (even if their plans haven't come to fruition yet)

  9. John says

    I was lead attorney on this case for Jysk. Go to 11ca website for full published opinion. PebLaw, PC

  10. En Passant says

    Marc Randazza says December 18, 2015 at 4:42 pm:

    Yes, and thus he must have not been using it in bad faith.

    The problem is that "bad faith use" is a matter ultimately decided by a court if suit is brought. Arrogant Bully Corporation has deep pockets and a phalanx of lawyers to overwhelm a smalltime defendant. That's why I recommended getting the best IP lawyer possible.

    Fact is, if AB Corp. had begun with a nicely phrased. non-accusatory and non-demanding offer to purchase the domain, they would likely have gotten a much better deal. But they didn't.

  11. says

    Help me understand a few things with the lawsplaining?

    — Why is "registers" relevant, when "uses" is also there? I mean, the registration thing seems almost irrelevant; they're "using" it, aren't they?

    — Or is this the part where the mark has to be famous "at the time of registration" (Which, I kind of think should be interpreted as "initial registration", since otherwise you've got that bully position where someone becomes famous, then can offer to buy XYZ domain for a pittance and, if the owner's like "Naw, not unless you paid me $XXX", claim they've got bad faith, right?).

    — How would this work for, say for example, my personal site; I use it now, sure, but let's say I give up on it, while letting it auto-renew, and then some amazing famous company comes up, with that name. Am I not allowed to sell it to someone? Does it become bad faith as soon as I intend to make a profit off of it since I'm not really using it any more? What if I'm selling it to a gripe site–a legitimate site that wants to make fun of the company…but I definitely am not really using it, and am definitely turning a profit on it being another company?

  12. Tom says

    From my non lawyer reading, Bad faith is about usage. So if you register early, subsequently the mark becomes valuable but you're continuing your original good faith use, you should be able to negotiate up the price. Can any lawyers confirm or deny?

  13. Robert says

    This is a really bad decision, IMO. If you go to, you'll find that it was registered many, many years ago, and up until fairly recently was used by the Steam Tunnel Operators. Clearly they've been asked repeatedly by Valve (the game company) to sell the domain to them. The maximum registration period of a domain is, I believe, still 10 years, and most only renew annually or biannually, especially domains registered back when they were $35 in 90's money – or more – per year, and the registrant didn't have hundreds of bucks to spend on a domain. This means that if the Society To Eat Any Meat wanted to buy the domain (it's not for sale) and the domain name owners decided to sell it at market value, they could get sued by and lose the domain to Valve. (Strange, really, since they're using a regular dictionary word, but that's outside the scope of this argument.)

    Now IANAL, but it seems renewing and re-doing are two separate things: if you rent a place with a contract that automatically renews at the expiration, you are not "re-renting" the place.

    For me, if I bought back in 1998 and chose not to sell to pony-lord Zuckerberg when he offered, he gets sue me if I choose to sell it now to a photo book printing service and he will likely win in 11th and the 3rd Circuits.

    Sorry, that's just wrong.

    Now, if I registered and tried to do the same thing, even if I did buy it back in 1998, that would be understandably a cybersquatting case because the brand was already famous long before.

  14. says


    Good news for you. The way you think about this is actually what the law is, you're just outraged because you don't see all the moving parts in a cybersquatting case.

    Lets say that someone did buy, that can mean a lot of things. You can own it, just because you have a hard on for gaseous water. Then, if a trademark comes into existence, that happens to be STEAM, renewing it would not necessarily mean that you violated the ACPA. There are numerous factors that come into play.

    But, the simple logic (as I see it) is that you can't make money on someone else's trademark. So, if you registered "" in 1998, you don't hit the lottery just because becomes a global sensation.

    There is room to disagree with that. Many reasonably-minded people believe that you should be able to squat on a domain and hope it becomes valuable in the future, even through the success of a third party. This decision stands for the proposition that you can not do that.

  15. Robert says


    Thank you for your rapid and detailed reply and explanation.

    Still, if a domain is like real property, then it seems reasonable that purchasing a plot of land with the hopes that it will become valuable in the future is analogous to buying a domain with the hopes that it becomes valuable.

    Also, let's say in the case of the owners, they do choose to sell it for market value, perhaps to Valve or perhaps to Sony. There doesn't seem to be any bad faith there; I expect that asking for a high profit does not equate automatically to being "bad faith".

    And I guess, for me, that's where the concern and confusion lie: what is "bad faith" with regards to the ACPA?


    P.S.: Welcome to Popehat!

  16. says

    Still, if a domain is like real property, then it seems reasonable that purchasing a plot of land with the hopes that it will become valuable in the future is analogous to buying a domain with the hopes that it becomes valuable.

    True. But then, this is a difference between a domain and real property. If you just buy a piece of land because you know that a company has plans to expand in your area, so you sit on it waiting for that company to come knocking, you've done nothing illegal. In fact, it is a common species of land speculation to do just that.

    But, when there are intellectual property rights at stake, its a bit different. There really is no analogy to real property. It's more like the fractions of pennies in Superman II or Office Space. Someone else is doing the work to make your asset worth something, but your asset is only worth something because someone else did the work and earned the value.

    Add to it that part of the purpose of the ACPA is to expand productive commerce on the internet. Therefore, allowing this kind of bad faith speculation on digital real estate stifles that, adding a cost to doing business that provides no actual value to the marketplace.

    Domains are more of a hybrid of contract law and property. Analogies just don't work all that well.

  17. I Was Anonymous says


    Don't forget the Nissan case, where Nissan computers got to keep, forcing Nissan (the car company) to use

  18. says

    I believe that Mr. Nissan has every right to own that domain, and that Nissan Motors' suit against him was wrong. However, here's where I think it would cross the line to "bad faith" — if he seeks to sell it to Nissan Motors for an amount in excess of its value, absent the Nissan trademark.

    Now that is where you find the real difficult question, and reasonable philosophical disagreement. A pure capitalist would say that he can sell to whomever he wants for whatever they'll pay for it. But, we don't do it that way.

    The funny part for him is that there are only two people in the world who can likely use that domain — him and Nissan Motors. Yes, he could sell it to another guy named Bill Nissan, right? But, Bill Nissan is likely to pay $1000 for it. But, lets say Uzi Nissan wants to sell it to a domain speculator, then its another story.

  19. says

    Although I think the Eleventh Circuit has reasoned well and articulately, I must disagree.

    First, to look at the language, "reregistering" could be thought of as "renewing a registration" just as easily as "to register again", in fact that seems the more natural meaning to me, especially if there is no gap. If I register "" and then let it lapse and register it again three years after the lapse, there is no question that I am truly registering it again, but if I am renewing my registration with no lapse that is a different thing than renewing it for the first time or renewing it after a notable lapse. I think a true definitional difference can be found there with "reregister" being a linguistic shorthand for "renewing an existing registration" rather than literally meaning "to register again."

    From a policy standpoint, things are also a bit murky, but I am more inclined to side with the 9th circuit and say that to enforce this the initial registration needs to be in bad faith. I think as a matter of policy, it is wise to prevent the worst of cybersquatting, but if the initial registration was in good faith it does not fit what comes to my mind under the term cybersquatting even if the use later shifts.

    An example might help. Say I change my career goals and decide to start my own law firm. I might call it "Wiseman Group" and register "". But Wiseman is a common last name. There are not only other people with the last name Wiseman practicing law, but at least two other people named "Timothy Wiseman" practicing law according to Google. (As a side note, I started making common use of my middle initial when I kept getting mail for Lieutenant Colonel Timothy Wiseman, at another base, when I was Lieutenant Timothy Wiseman in Fort Bragg) For that matter, the addition of "Group" does not limit it to denoting law so someone else with that last name might be interested in that name for an architectural firm or any number of things.

    Let us assume these people that shares my name starts another Wiseman Group in another part of the country that starts getting much bigger than my little hypothetical practice. Trademarks/Service marks are generally limited to the field of service, so perhaps I have Federally registered my Wiseman Group mark in law and they register it only in architecture. We both have valid marks. There is no question that my initial registration and use was in good faith, so let's say shortly before I need to renew my registration, they make me an offer for that domain name. I ask for a vastly larger sum as a counteroffer and then reregister while waiting. Was that in bad faith? Am I now liable?

    I suspect the answer would actually be "no" since I would still be using the domain in commerce, but under the Eleventh Circuit's ruling that is not completely clear. It could be argued that at that point my intent was to profit, not to actually continue using it. But I think it should be completely clear that I should be safe in renewing my registration.

    Let's take it a step further. Why shouldn't I be able to sell my domain to investor's that want it mostly on the hope that they will be able to sell it for even more to the architectural "Wiseman Group" after they renew the registration? It is true that both I and the investors are hoping to profit it off of the heightened value to that domain that comes from the architect's growth, but why is that a problem?

    We allow investor's in real estate to do exactly that when their value goes up because of high value development by others that happens to be close by. For most traders, that is exactly the point of stocks. Even if we want to forbid the worst kind of cybersquatting (as I do) of people registering broad swaths of domains hoping some will become valuable (or worse, knowingly registering someone else's mark to hold it hostage), that seems a very different case from a mark truly used in good faith that later appreciates.

    As both a matter of interpretation and of policy, I respectfully think that in this case the Eleventh Circuit has erred.

  20. says

    Here is why a "renewal" is actually a "re-registration." When you register, you agree to the registrar's domain name registration policy, which by rule, must also incorporate the ICANN agreement, which prohibits abusive registrations.

    When you re-register, you re-agree. So, if you agree to the registration agreement, you're also agreeing that your registration is not infringing on anyone's rights. Well, if you can't say that when you re-register, you can't re-register in good faith.

    This is not land. This is not stocks. Domain names are their own thing.

  21. says

    @Marc Randazza

    That is a good way of putting it, and I think you, and the Eleventh Circuit, have a strong case. But with that said, I still respectfully disagree. Re-affirming an agreement during a renewal is different from forming a brand new agreement both in effect and in meaning. Further, I think it is, at worst, unclear that it is abusive if you retain control of a domain you had legitimate control over until the moment it came up for renewal.

    I think the plain language is at best ambiguous and the policy supports allowing renewal even with the intent to sell so long as the initial acquisition was in good faith. Of course, I know there are also reasonable people who want to go much further and eliminate or considerably narrow the ACPA to allow fairly broad domain name squatting, especially in light of the relatively recent expansion of the number of top level domains.

    Also, I agree domain names are their own thing. But when faced with something truly new, we are often left to reason by analogy, and every analogy I have seen supports allowing benefit from the inflation in value of the item, so long as it was initially acquired in good faith. You cannot legally benefit from the inflation in value of land that you acquired through fraud, but the ability to do so for legally acquired land is the main point of many land deals. The fact that this is not a perfect analogy is why I think Congress was wise to limit the worst practices of domain name squatting, but I think analogy and policy says we should go no further and I do not think the plain text requires us to.


    It looks like the 11th is leaning toward the acceptance of initial interest confusion or am I reading this wrong."Another form of cybersquatting occurs when the cybersquatter "intend[s] to profit by diverting customers from the website of the trademark owner to the defendant's own website, where those consumers would purchase the defendant's products or services instead of the trademark owner's." Id. (quotation marks omitted) (quoting Utah Lighthouse Ministry v. Found. for Apologetic Info. and Research, 527 F.3d 1045, 1058 (10th Cir. 2008)). In a sense, the cybersquatter muddies the clear pool of the trademark owner's goodwill and then profits off the resulting murkiness."JYSK BED'N LINEN v. DUTTA-ROY, No. 13-15309 (11th Cir. Dec. 16, 2015).

  23. Anonymous Domain Owner says

    The problem I have with this interpretation is that it tilts an already biased playing field even further in favor of the big guys.

    I have for many years owned a three-letter domain. At one time, I used it for a consulting business, but that's been mainly inactive for quite some time. I do, however, use it as for my standard email address, and changing it would be a major pain.

    For the last couple of years, I've been receiving mail asking to buy the domain. Initially, messages were infrequent and offered relatively small amounts of money. I generally responded to all of them, politely declining the offer.

    More recently, the messages have become much more frequent, and the amounts offered have increased. Most seem to be from Chinese speculators; some are entirely in Chinese, with just a few words in English that give a hint to a non-Chinese-reader of what the message is about. I stopped trying to respond – there are just too many offers.

    So … just what would constitute "bad faith" here? Could my failure to respond to legitimate offers be construed as bad faith? Could it be said that I'm simply waiting for the price to rise even more? If I actually decide to sell if an offer becomes large enough, not even knowing that someone somewhere is using the three letters in a trademark (back when I was more actively in business, I did a quick trademark search and found nothing conflicting, but that's many years ago – am I obligated to check this periodically?) do I end up with neither the money nor the domain? I have the domain set for automatic re-registration. Is allowing that to happen while an offer in some email that I've ignored is "on the table" bad faith?

    Cybersquatters mainly hurt the big guys. There are, or should be, plenty of ways to get at those who use deliberately confusing names for fraudulent purposes. Instead, we seem to have a law whose entire effect is to further raise the values of trademarks owned by the big guys, at the expense of little guys who have the misfortune of being in their way.

  24. andrews says

    Many reasonably-minded people believe that you should be able to squat on a domain and hope it becomes valuable in the future, even through the success of a third party

    Sure, and many reasonably-minded people believe that you should be able to buy and squat on a piece of land, hoping it becomes valuable in the future, even through the success of a third party. For instance, that old lady bought a house in Atlantic City, NJ, and just lived there bringing no value to any casino operator for years.

    Mr. Trump came along and wanted a place to build his limo parking, and the old lady just sat there and refused what Mr. Trump considered a very reasonable offer. Surely it would be wrong to permit someone to buy and squat while someone else adds value to land.

    Next thing you know, someone might buy and gain value when someone builds a new road in front of his property.