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.