JFXD TRX ACQ LLC, a Florida Limited Liability Company v. trx.com, et al.

The Anticybersquatting Consumer Protection Act (ACPA) creates a cause of action against a person who in bad faith “registers, traffics in, or uses” an internet domain name that is identical or confusingly similar to a protected trademark that was famous or distinctive “at the time of registration of the domain name.” 15 U.S.C. § 1125(d)(1)(A)(ii)(I)-(II). The concept of registration of a domain name is thus central to ACPA liability. Three circuits hold that the re-registration of a domain name counts as registration for ACPA purposes. The Ninth Circuit, however, alone holds that only the initial registration of a domain name is a “registration.” One implication of this rule is that if a domain name was first registered before the mark its name bears became famous or distinctive, the domain name can be transferred, sold, and used in bad faith in perpetuity, and this activity is forever beyond the reach of the ACPA. The question presented is: Whether registration of a domain name for purposes of the ACPA includes re-registrations, or if it is instead limited to the initial registration.