In a case of first impression under 15 U.S.C. 8131 , the personal name cybersquatting provision of the Anticybersquatting Consumer Protection Act (ACPA), the law firm of Lewis & Lin obtained a court order awarding attorneys’ fees as the prevailing party under the ACPA.
Section 8131 of the ACPA imposes civil liability on “[a]ny 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. Under the ACPA, the court may issue and injunction and, “in its discretion, award costs and attorneys fees to the prevailing party.”
Noting that “[t]here is little caselaw providing guidance on an award of fees under section 8131 of the ACPA,” the U.S. District Court for the Southern District of New York analyzed Lewis & Lin’s request under 15 U.S.C. 1117(a) — the standard for an award of fees under the Lanham (U.S. Trademark) Act.
Citing a California case, the court ruled that in determining whether to award attorneys’ fees, courts should consider “a number of factors, including the egregiousness or willfulness of the defendant’s cybersquatting . . . and other behavior by the defendant evidencing an attitude of contempt towards the court of the proceedings.”
The court found that in the current case, the defendant’s conduct merited an award of attorneys’ fees.
First, “the defendant’s use of plaintiff’s name in the domains was sufficiently willful.”
Second, the “defendant has evidenced contempt towards the Court throughout these proceedings.”
Accordingly, the Court ordered that “attorneys’ fees are warranted in this ACPA action.”
The law firm asked for fees of $70,699 calculated at 195 hours at the rate of $385 per hour. The court asked for a more detailed statement of the fees to be submitted to the court by November 19th and will then make an award.
The court order is dated November 13th, 2012.
Lewis & Lin Partner David D. Lin was the lead attorney on this matter.
The case involved an ex-wife registering domain names of her ex-husband’s name.
The Court found that “defendant, by registering the Domain Names without plaintiffs consent, specifically intended to profit by the sale of the Web sites, in violation of’ the ACPA–and that defendant did not qualify for the “good faith” exception to liability under the statute.
The case is No. 11 Civ. 8093 (KBF) in the U.S. District Court for the Southern District of New York.
