70-3a-309 - Cybersquatting.
70-3a-309. Cybersquatting.
(1) (a) A person is liable in a civil action by the owner of a mark, including a personalname, which is a mark for purposes of this section, if, without regard to the goods or services ofthe person or the mark's owner, the person:
(i) has a bad faith intent to profit from the mark, including a personal name; and
(ii) for any length of time registers, acquires, traffics in, or uses a domain name in, orbelonging to any person in, this state that:
(A) in the case of a mark that is distinctive at the time of registration of the domainname, is identical or confusingly similar to the mark;
(B) in the case of a famous mark that is famous at the time of registration of the domainname, is identical or confusingly similar to or dilutive of the mark; or
(C) is a trademark, word, or name protected by reason of 18 U.S.C. Sec. 706 or 36U.S.C. Sec. 220506.
(b) (i) In determining whether a person has a bad faith intent described in Subsection(1)(a), a court may consider all relevant factors, including:
(A) the trademark or other intellectual property rights of the person, if any, in the domainname;
(B) the extent to which the domain name consists of the legal name of the person or aname that is otherwise commonly used to identify that person;
(C) the person's prior use, if any, of the domain name in connection with the bona fideoffering of any goods or services;
(D) the person's bona fide noncommercial or fair use of the mark in a site accessibleunder the domain name;
(E) the person's intent to divert consumers from the mark owner's online location to a siteaccessible under the domain name that could harm the goodwill represented by the mark, eitherfor commercial gain or with the intent to tarnish or disparage the mark, by creating a likelihoodof confusion as to the source, sponsorship, affiliation, or endorsement of the site;
(F) the person's offer to transfer, sell, or otherwise assign, or solicitation of the purchase,transfer, or assignment of the domain name to the mark owner or any third party for financialgain without having used, or having an intent to use, the domain name in the bona fide offeringof any goods or services, or the person's prior conduct indicating a pattern of such conduct;
(G) the person's provision of material and misleading false contact information whenapplying for the registration of the domain name, the person's intentional failure to maintainaccurate contact information, or the person's prior conduct indicating a pattern of such conduct;
(H) the person's registration or acquisition of multiple domain names that the personknows are identical or confusingly similar to another's mark that is distinctive at the time ofregistration of the domain names, or is dilutive of another's famous mark that is famous at thetime of registration of the domain names, without regard to the goods or services of the person orthe mark owner; and
(I) the extent to which the mark incorporated in the person's domain name registration isor is not distinctive and famous.
(ii) Bad faith intent described in Subsection (1)(a) may not be found in any case in whichthe court determines that the person believed and had reasonable grounds to believe that the useof the domain name was a fair use or otherwise lawful.
(c) In a civil action involving the registration, trafficking, or use of a domain name under
this section, a court may order the forfeiture or cancellation of the domain name or the transfer ofthe domain name to the owner of the mark.
(d) (i) A person is liable for using a domain name under Subsection (1)(a) only if thatperson is the domain name registrant or that registrant's authorized licensee, affiliate, domainname registrar, domain name registry, or other domain name registration authority thatknowingly assists a violation of this chapter by the registrant.
(ii) A person may not be held liable under this section absent a showing of bad faithintent to profit from the registration or maintenance of the domain name.
(iii) For purposes of this section, a "showing of bad faith intent to profit" shall beinterpreted in the same manner as under 15 U.S.C. Sec. 1114(2)(D)(iii).
(e) As used in this section, the term "traffics in" refers to transactions that include sales,purchases, loans, pledges, licenses, exchanges of currency, and any other transfer forconsideration or receipt in exchange for consideration.
(2) (a) The owner of a mark registered with the U.S. Patent and Trademark Office orunder this chapter may file an in rem civil action against a domain name in the district court if theowner is located in the state and if:
(i) the domain name violates any right of the owner of a mark registered in the Patent andTrademark Office or registered under this chapter; and
(ii) the court finds that the owner:
(A) is not able to obtain personal jurisdiction over a person who would be a defendant ina civil action under Subsection (1); or
(B) through due diligence was not able to find a person who would be a defendant in acivil action under Subsection (1) by:
(I) sending a notice of the alleged violation and intent to proceed under this Subsection(2)(a) to the registrant of the domain name at the postal and e-mail address provided by theregistrant to the registrar; and
(II) publishing notice of the action as the court may direct promptly after filing theaction.
(b) Completion of the actions required by Subsection (2)(a)(ii) constitutes service ofprocess.
(c) In an in rem action under this Subsection (2), a domain name is considered to belocated in the judicial district in which:
(i) the domain name registrar, registry, or other domain name authority that registered orassigned the domain name is located; or
(ii) documents sufficient to establish control and authority regarding the disposition ofthe registration and use of the domain name are deposited with the court.
(d) (i) The remedies in an in rem action under this Subsection (2) are limited to a courtorder for the forfeiture or cancellation of the domain name or the transfer of the domain name tothe owner of the mark.
(ii) Upon receipt of written notification of a filed, stamped copy of a complaint filed bythe owner of a mark in the district court under this Subsection (2), the domain name registrar,domain name registry, or other domain name authority shall:
(A) expeditiously deposit with the court documents sufficient to establish the court'scontrol and authority regarding the disposition of the registration and use of the domain name tothe court; and
(B) not transfer, suspend, or otherwise modify the domain name during the pendency ofthe action, except upon order of the court.
(iii) The domain name registrar or registry or other domain name authority is not liablefor injunctive or monetary relief under this section, except in the case of bad faith or recklessdisregard, which includes a willful failure to comply with a court order.
(3) The civil actions and remedies established by Subsection (1) and the in rem actionestablished in Subsection (2) do not preclude any other applicable civil action or remedy.
(4) The in rem jurisdiction established under Subsection (2) does not preclude any otherjurisdiction, whether in rem or personal.
Enacted by Chapter 200, 2010 General Session