1.) The infringing domains were registered with a registry located within the jurisdiction
2.) The infringing party maintained bad faith with intent to profit from the mark
3.) The infringing domains are identical or confusingly similar to the owner’s mark
In this case, Atlas Copco filed an infringement complaint against the defendants who were operating phishing schemes using domains such as Atlascopcoiran.com, Atlascaspian.org, and Atlascapianir.com. The defendants, who did not respond to the complaint, were believed to be located in Iran, Afghanistan, or India. Arguably, the domains in question differ from the plaintiff’s trademark, yet the ruling court found them to be infringing because the content on the sites resembled that of the plaintiff’s products and services.
Given the phishing schemes and similarity between Atlas Copco and the defendants’ domains, the Court inferred that the domains were purchased in bad faith and with the intent to profit from the mark . The Court also noted that adding words like ‘iran’ and ‘caspian' to the main word ‘Atlas' could be interpreted by users as a simple addition of the geographical location of Atlas. Therefore, the Court held that the defendants were intentionally deceiving users searching for the Atlas Copco brand.
The interesting aspect of this case is the Court’s use of the ACPA to find jurisdiction over foreign cyber squatters. Since the defendants registered the infringing domains with a registry in Virginia, the court was able to exercise jurisdiction over the defendants, and ultimately rule in favor for Atlas Copco. The Court’s use of ACPA in this manner could become a legal device to fight cybersquatting and bring justice to trademark owners.
Source: Sedo.com -- Reprinted with permission -- May 14, 2008