FORDWORLD.COM Registrant, Held in Violation of ACPA

Peter Catalanotte, defendant-appellant, registered the domain name on January 21, 1997. Never having operated any website using this domain name, Catalanotte sent an e-mail on October 27, 2000 to officers of Ford, inquiring about their interest in buying the domain name. Ford filed its Complaint on November 30, 2000 in the District Court, alleging cyberpiracy, trademark dilution, trademark infringement, and false designation of origin. The Court found Catalanotte liable for damages under the ACPA for trafficking in the domain name.The Anticybersquatting Consumer Protection Act was passed by Congress in 1999, as an amendment to the Lanham Act of 1946. The ACPA prohibits the act of registering, trafficking in, or using a domain name that is identical or confusingly similar to a distinctive mark, or that is identical or confusingly similar to or dilutive of a famous mark, with a bad faith intent to profit from it. The ACPA applies to all domain names registered before, on or after the date of the enactment, and provides for injunctive relief as well as recovery of actual damages or statutory damages.

Catalanotte’s first argument on appeal was that he could not be required to pay statutory damages because he registered the domain name before enactment of the ACPA. The Court rejected the argument, ruling that although statutory damages may not be awarded for pre-enactment registration, trafficking, or use of a domain name under this Act, the fact that a domain name was registered before the ACPA's passage does not absolve the registrant from liability for post-enactment trafficking or use. Registration, trafficking, and use of a domain name are separate acts upon which liability under the ACPA may be based.

The Court further found that Catalanotte used and trafficked in the domain name after enactment of the ACPA when he offered to sell the domain name to Ford in October 2000. The ACPA defines the term “traffics in” as referring to transactions that include, but are not limited to, sales, purchases, loans, pledges, licenses, exchanges of currency, and any other transfer for consideration or receipt in exchange for consideration”. The registrant’s offer for sale was found to be within the ACPA’s definition of “trafficking”.

The appellant also argued that Ford’s claim should be dismissed based on the statute of limitations, as the domain name was registered more than three years prior to the filing of the action. The Court rejected this argument as well, noting that Ford filed action approximately one month after Catalanotte offered to sell the domain name, thus Ford acted diligently to protect its rights under the ACPA and Catalanotte was not prejudiced by any inaction by Ford. For similar reasons, the Court rejected Catalanotte’s argument that the action was barred by the equitable doctrine of laches. Accordingly, the 7th Circuit Court affirmed the District Court’s decision.

Ford Motor Co. v. Catalanotte. 2003 WL 22020036, C.A.6 (Mich.), 2003. Decided and Filed Aug. 28, 2003.