Volume I

Issue : 5: September 4, 2003

• U.S. Court of Appeals (9th Cir.) Asserts Jurisdiction over Online Retailer
• Court Limits Extraterritoriality of the U.S. Copyright Act
• Amazon.com Launches Lawsuits in U.S. and Canada to Stop Spoofing
• Property and Trade Secret Rights Outrank Free Speech Rights in DVD Copying Code Case
• Parties To Litigation Do Not Hold Copyrights Over Examination for Discovery Transcripts
• U.S. Court of Appeals Upholds Statutory Damages for Domain Registered Prior to the Enactment of ACPA
• Major U.S. ISP EarthLink Sues John Doe Spammers in B .C. and Alabama
• Defence of Misuse Extended to Suppression of Criticism in Copyright
• Online Broadcasters Sue Recording Industry (RIAA)
• Sixth Circuit Court Strikes Down Michigan Wine Law as Unconstitutional
• Saskatchewan Court of Appeal Upholds Criminal Conviction For Online Marketing Scheme
• U.S. First - North Dakota Prosecutes a Man for Gambling on the Internet
• U.S. Appeals Court (9th Cir.) Rules Massively Overbroad Subpoena For E-Mails Led to Privacy Violation

Home > Volume I > Issue 5: September 4, 2003 > U.S. Court of Appeals Upholds Statutory Damages for Domain Registered Prior to the Enactment of ACPA

U.S. Court of Appeals Upholds Statutory Damages for Domain Registered Prior to the Enactment of ACPA

The U,S. Court of Appeals (6th Cir.) recently upheld $5,000 in statutory damages for a domain that was registered prior to the enactment of the Anticybersquatting Consumer Protection Act (ACPA). Catalanotte, a Ford Motor Company (Ford) employee, registered the domain name FORDWORLD.com in January 1997. He was aware that Ford published a newspaper for its employees named Ford World. Catalanotte had previously registered and sold the domains AANDE.COM and MRSPAULS.COM to their respective trade-mark owners. On October 2000, Catalanotte sent an e-mail to two officers of Ford and offered to sell the domain.

The ACPA permits a plaintiff to receive between $1,000 and $100,000 in statutory damages per domain name in lieu of actual damages. Catalanotte argued that since he had registered the domain prior to the enactment of ACPA, he should not be required to pay statutory damages. However, the Court of Appeals stated that "registration, trafficking, and use of a domain name are separate acts upon which liability may be based.. The fact that a domain name was registered before the Act's passage does not absolve the registrant from liability for post-enactment trafficking or use." The Court of Appeals then stated that Catalanotte's statutory damages were not for the registration of the domain name but for his trafficking and use of the domain, which took place after ACPA was enacted.

For a copy of the decision, visit:

laws.findlaw.com/6th/03a0310p.html