ACPA can protect your name even if you aren’t a celebrity.
I come across a number of lawsuits and UDRPs about celebrities and cybersquatting.
But a decision handed down in district court in New York today is notable because it involves a non-celebrity who believed he was being extorted to pay big money for his personal name as a domain name.
The case involves New Yorker Paul Bogoni. He’s not a celebrity, although he considers himself a “prominent real estate investor and philanthropist” in New York.
The court granted a preliminary injunction to compel the owner of paulbogoni.org and paulbogoni.com, Vicdania Gomez, to stop using the domain names.
Bogoni claimed that Gomez’ use of the domain name violated the Anticybersquatting Consumer Protection Act (ACPA) and its provisions for individuals. The ACPA states:
Any person who registers a domain name that consists of the name of another living person, or a name substantially and confusingly similar thereto, without that person’s consent, with the specific intent to profit from such name by selling the domain name for financial gain to that person or any third party, shall be liable in a civil action by such person.
Gomez, who apparently has had domestic disputes with Bogoni, claimed that there was no way to prove she intended to profit from selling the domain names. But there was plenty of proof at PaulBogoni.org, according to the court.
The site includes a letter supposedly written by Gomez’ three year old daughter. It’s rather clever and frequently discusses freedom of speech, yet the last bolded line reads:
I will am also selling this domain name www.PAULBOGONI.ORG and www.PAULBOGONI.COM for $1Million (ONE MILLION DOLLARS) each.
I’d say that’s pretty good proof.
However, there’s an exception to the ACPA that states:
A person who in good faith registers a domain name consisting of the name of another living person, or a name substantially and confusingly similar thereto, shall not be liable under this paragraph if such name is used in, affiliated with, or related to a work of authorship protected under Title 17, including a work made for hire as defined in section 101 of Title 17, and if the person registering the domain name is the copyright owner or licensee of the work, the person intends to sell the domain name in conjunction with the lawful exploitation of the work, and such registration is not prohibited by a contract between the registrant and the named person.
Gomez made a creative argument that she was selling the domains in conjunction with art that had “Bogoni” on it to try to qualify under this exception.
The court said it was clear what her intent was.
Here, the defendant purchased both Domain Namesâ€”multiple versions of the plaintiff’s real nameâ€”for less than twenty dollars in total, and, within several days, posted an offer to sell the Domain Names for $1,000,000 each. She did not conduct business at the sites before offering them for sale; indeed, the record reflects that she contemporaneously indicated her intention to sell the artwork and “alsoâ€â€”not, for example, “withâ€â€”the Domain Names…
This case (pdf) obviously has exceptional circumstances. I wouldn’t read it to mean people can’t register common names and try to sell them. But it also gives some ammunition if someone registers your personal name as a domain in bad faith.
Bogoni was represented by David Lin of Lewis & Lin LLC.