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"Statutes of limitations are potentially applicablein cybersquatting claims under the ACPA, but the times, places, andcircumstances under which they would bar a claim appear quiterare."
Despite being codified more than 20 years ago, there are manyopen questions regarding application of the Anti-Cybersquatting Consumer Protection Act,15 U.S.C. § 1125(d) ("ACPA"). Certainly, domain nameconflicts continue to evolve given the continued importance of thedomain name system to the Internet and the constant changes in bothtechnology and strategies of offenders. But there are alsoopen questions in the application of the cybersquatting law itself,including the applicability and application of statutes oflimitations. Does a statute of limitations apply to ACPA claims? Ifso, how long is it? And from when does it run? This articlediscusses the relatively small body of law that analyzes statutesof limitations for cybersquatting claims under the ACPA.
The precise answers to the basic questions are murky, but theupshot is clear: a statute of limitations is unlikely to bar anACPA claim in all but the narrowest of circumstances. If the courtfinds a statute of limitations applicable (a big "if"),the use of a domain name to engage in cybersquatting is consideredto be a continuing harm, such that the statute of limitations wouldrun from the last date the domain was used. Even if a defendantcould show bare registration without active use of the domain name,the re-registration of the domain could beconsidered a use creating harm, at least in the majority of federalcourts that find re-registration to be covered by the ACPA. Giventhat re-registration typically occurs on an annual basis, it wouldbe highly unlikely that a defendant could succeed in obtainingdismissal of a cybersquatting claim based on a statute oflimitations.
1. Does a Statute of Limitations Apply to ACPA Claims?
The most basic question is, does a statute of limitations applyto ACPA claims? That depends on where a case is filed.
Courts including the Eastern District of Virginia in the FourthCircuit, the District of New Jersey in the Third Circuit, and theEastern District of Louisiana and the Northern District of Texas inthe Fifth Circuit, have found statutes of limitations applicable toACPA claims. Mercury Luggage Mfg. Co. v. Domain Prot.,LLC, No. 3:19-CV-01939-M, 2020 WL 376609, at *2 (N.D. Tex.Jan. 22, 2020); Guidry v. Louisiana Lightning, LLC, No. CV15-6714, 2016 WL 3127256, at *4 (E.D. La. June 3, 2016);D'Agostino v. Appliances Buy Phone, Inc., No.13-cv-7122(PGS) [Dkt. No. 16] (D.N.J. Nov. 3, 2014); Int'lBancorp, L.L.C. v. Societe Des Baines De Mer Et Du Cercle DesEtrangers A Monaco, 192 F. Supp. 2d 467, 488 (E.D. Va. 2002),aff'd on other grounds sub nom. Int'l Bancorp, LLC v.Societe des Bains de Mer et du Cercle des Estrangers a Monaco,329 F.3d 359 (4th Cir. 2003).
However, the Sixth Circuit and courts within the Third andSeventh Circuits disagree. The Sixth Circuit found a statute oflimitations defense inapplicable, ruling that the ACPA was an"equitable right created by Congress," and thus laches,rather than statute of limitations, governs claims thereunder.Ford Motor Co. v. Catalanotte, 342 F.3d 543, 550 (6th Cir.2003). Similarly, the Northern District of Illinois declined toapply a statute of limitations because the Lanham Act does notarticulate a limitations period, but found that a defendant couldassert laches. Flentye v. Kathrein, 485 F. Supp. 2d 903,916 (N.D. Ill. 2007). The Eastern District of Pennsylvania alsofound that a statute of limitations did not apply, and insteadapplied laches. Am. Diabetes Ass'n v. Friskney Fam. Tr.,LLC, 177 F. Supp. 3d 855, 878 (E.D. Pa. 2016).
Based on case law to date, it appears that more courts refuse toapply a statute of limitations to ACPA claims than allow suchdefenses. However, many courts have yet to consider this question.It also bears noting that, in the context of the ACPA, not all districts are created equal. The ACPAprovides that in rem cybersquatting actions must bebrought "in which the domain name registrar, domain nameregistry, or other domain name authority that registered orassigned the domain is located." 15 U.S.C. §1125(d)(2)(A). This places a disproportionate emphasis onjurisdictions such as the Eastern District of Virginia, where the.com, .net, and .org domain registries sit, and which appears opento the potential application of a statute of limitations.
2. What Is the Statute of Limitations for CybersquattingActions?
Should one find oneself in a jurisdiction that accepts an ACPAstatute of limitations (or more likely, a jurisdiction that has notyet resolved the issue), how long is the applicable statute oflimitations? The leading treatise McCarthy on Trademarks andUnfair Competition posits that the statute of limitationsprovided under 28 U.S.C. § 1658 should apply, which wouldprovide a four-year statute of limitations. 6 McCarthy onTrademarks and Unfair Competition § 31:23 (5th ed.). Theseauthors agree—28 U.S.C. § 1658(a) applies to federalstatutes enacted after 1990, and the ACPA was enacted in 1999.
However, the few courts that have recognized a statute oflimitations curiously have not applied Section 1658's four-yearstatute of limitations. The Northern District of Texas specificallydeclined to do so, based on a lack of precedent. See MercuryLuggage Mfg. Co. v. Domain Prot., LLC, No. 3:19-CV-01939-M,2020 WL 7122859, at *2 (N.D. Tex. Dec. 4, 2020). Instead, the courtapplied what it viewed as the most analogous state-law statute oflimitations—the same limitations that Texas applies to allLanham Act claims, and, coincidentally, also four years.Id. Likewise, the Eastern District of Louisiana appliedthe most analogous state statute of limitations, the LouisianaUnfair Trade Practices Act, with a one-year limitation period.Guidry, 2016 WL 3127256, at *4. The Eastern District ofVirginia has applied a five-year statute of limitations based onanalogous injury to property limitations. See Lamparello v.Falwell, 360 F. Supp. 2d 768, 775 (E.D. Va. 2004),rev'd on other grounds, 420 F.3d 309 (4th Cir.2005).
3. From When Does the Statute Run?
Finally, from when does any applicable statute of limitationsrun? Courts appear to be in agreement that cybersquatting creates acontinuing harm, and therefore a statute of limitations would runfrom the last use of the domain, not simply whenthe domain was registered. See, e.g., Omega S.A. v.Omega Eng'g, Inc., 228 F. Supp. 2d 112, 139 (D. Conn.2002) ("[T]he plain language of the [ACPA] can imposeliability not only for a one-time event (such as registration) butalso for iterative or on-going actions (such as trafficking andusing). . . . The statutory language thereby conceptualizes theillegitimate use of a domain name as an ongoing harm").
Perhaps a defendant who is not actively using a domain mightfind luck in asserting a statute of limitations defense. However,even the simple act of re-registration, which often occurs annually,could constitute bad faith use of a domain in violation of theACPA. In Southern Grouts & Mortars v. 3M, whichconsidered a statute of limitations as a guidepost for laches, thecourt suggested that even the act of re-registration of a domaincould constitute use. No. 07-61388-CIV, 2008 WL 4346798 (S.D. Fla.Sept. 17, 2008), aff'd, 575 F.3d 1235 (11th Cir.2009). There, the website to which the subject domain resolved hadbeen deactivated since 2002, and the plaintiff did not bring anACPA claim until 2007. Id. The court acknowledged that thedomain had been re-registered in the interim, and only found lachesapplicable because of record evidence that the ministerial act ofre-registrations did not abate the risk of prejudice from theplaintiff's five-year delay in bringing the claims.Id. at *9. In the context of statutes of limitations,which would not hinge on the question of prejudice, a court mayfind differently.
In short, statutes of limitations are potentially applicable incybersquatting claims under the ACPA, but the times, places, andcircumstances under which they would bar a claim appear quite rare.This is not to say that a plaintiff can indefinitely delay bringingan ACPA claim—the doctrine of laches is very much in play, asthe Southern Grouts & Mortars case demonstrates.However, a defendant would typically face an uphill battle in convincing a court that an ACPA claim isstatutorily barred.
Originally published by IPWatchdog.
The content of this article is intended to provide a generalguide to the subject matter. Specialist advice should be soughtabout your specific circumstances.
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