GoPets Ltd. v. Hise
657 F.3d 1024
| 9th Cir. | 2011Background
- ACPA prohibits registering domain names identical or confusingly similar to registered marks; case concerns GoPets Ltd. vs Edward and Joseph Hise and Digital Overture; gopets.com registered in 1999 by Hise in his name; GoPets Ltd. later registered GoPets mark in 2006; WIPO arbitration in 2006 ruled GoPets not initially registered in bad faith; Hises registered numerous Additional Domains after GoPets' mark; district court granted summary judgment against Hises on ACPA claims and awarded attorney's fees; appellate issues include whether re-registration violated ACPA and whether Additional Domains were registered in bad faith; court granted relief in part and remanded certain issues.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Does ACPA 1125(d)(1) cover domain name re-registrations? | GoPets argues re-registration is a registration. | Hises argue re-registration counts as registration. | No; re-registration not a registration under §1125(d)(1). |
| Were the Additional Domains registered in bad faith under §1125(d)(1)? | GoPets asserts bad faith due to strategic registration for commercial gain. | Hises contend lack of bad faith defenses. | Yes; bad faith inferred from intent to divert and multiple domain registrations. |
| Are statutory damages under §1117(d) jury-triable when minimum is awarded? | Seventh Amendment requires jury for damages. | Minimum statutory damages may be decided by judge. | No right to jury for minimum damages; damages for Additional Domains sustained at $1,000 per domain. |
| Does Lanham Act liability attach to gopets.com and to Additional Domains? | GoPets claims infringement by use of GoPets mark on gopets.com and related domains. | Registering domains alone not infringement. | Lanham Act violated for gopets.com; no violation for Additional Domains; remand for possible further relief. |
Key Cases Cited
- Office Depot, Inc. v. Zuccarini, 596 F.3d 696 (9th Cir. 2010) (domain names, registrant rights, and registration concepts in ACPA)
- Schmidheiny v. Weber, 319 F.3d 581 (3d Cir. 2003) (re-registration may count as registration under related statutes)
- Sporty’s Farm L.L.C. v. Sportsman’s Market, Inc., 202 F.3d 489 (2d Cir. 2000) (APCA applicability to pre-enactment registrations)
- Feltner v. Columbia Pictures Television, Inc., 523 U.S. 340 (1998) (Seventh Amendment jury trial for statutory damages analysis)
- BMG Music v. Gonzalez, 430 F.3d 888 (7th Cir. 2005) (no jury trial for minimum statutory damages in copyright analog)
- Lockheed Martin Corp. v. Network Solutions, Inc., 985 F. Supp. 949 (C.D. Cal. 1997) (Lanham Act analysis of domain-name registrations)
- Sec. Life Ins. Co. of Am. v. Meyling, 146 F.3d 1184 (9th Cir. 1998) (appropriate to affirm on alternative grounds)