GoPets Ltd v. Hise

Re-registration by a new registrant of an internet domain name is not a “registration” under § 1125(d)(1) of the Anticybersquatting Consumer Protection Act (“ACPA”).

The Hise brothers (collectively “the Hises”) owned a corporation engaged in internet services, and had registered more than 1300 domain names, mostly for “future internet sites.” GoPets Ltd. created an online game called GoPets in 2004, and sought the name gopets.com from the Hises. After protracted negotiations, the Hises offered to sell gopets.com for $5 million. They also re-registered gopets.com in the name of their corporation and registered many additional similar names such as mygopets.com. GoPets Ltd. sued in district court alleging cybersquatting under the Anticybersquatting Consumer Protection Act (“ACPA”) amongst other claims. The district court granted summary judgment for GoPets Ltd. on the ACPA claim and the Hises appealed. The Ninth Circuit reversed the district court’s ruling that the re-registration violated § 1125(d)(1) of ACPA in its prohibition against “(1) registration of a domain name, (2) ‘identical or confusingly similar to’ a mark that was distinctive at the time of registration, and (3) ‘bad faith intent’ at the time of registration.” The Court determined that “registration” was not meant to include re-registration upon considering the restriction on the alienability of property that would be imposed if a new registrant could not re-register the name, and by the fact that the initial registration did not run afoul of § 1125(d)(1). However, the registration of the additional domain names was found to be bad faith under the statute. REVERSED in part, AFFIRMED in part, and REMANDED.