Report Title:

Cybersquatting; Cyber Piracy

 

Description:

Prohibits cybersquatting or cyber piracy, the bad faith registration of domain names on the internet. Establishes penalties. (SD1)

 

HOUSE OF REPRESENTATIVES

H.B. NO.

1221

TWENTY-FIRST LEGISLATURE, 2001

H.D. 2

STATE OF HAWAII

S.D. 1

 

A BILL FOR AN ACT

 

RELATING TO CYBERSQUATTING.

 

BE IT ENACTED BY THE LEGISLATURE OF THE STATE OF HAWAII:

SECTION 1. Chapter 481B, Hawaii Revised Statutes, is amended by adding a new part to be appropriately designated and to read as follows:

"Part   . CYBERSQUATTING; CYBER PIRACY

§481B-A Definitions. As used in this part unless the context requires otherwise:

"Domain name" means any alphanumeric designation that is

registered with or assigned by any domain name registrar, domain name registry, or other domain name registration authority as part of an electronic address on the Internet.

"Traffic in" refers to transactions that include, but are not limited to, sales, purchases, loans, pledges, licenses, exchanges of currency, or any other transfer for consideration or receipt in exchange for consideration.

§481B-B Cybersquatting and cyber piracy prohibited. (a) A person shall be liable in a civil action by the owner of any distinctive state trademark, common law mark, or trade name used in Hawaii, without regard to the goods or services of the parties, if that person in bad faith: registers, traffics in, or uses a domain name that is identical or confusingly similar to that trademark, mark, trade name, or personal name.

(b) A person shall be liable for using a domain name under subsection (a) only if that person is the domain name registrant or that registrant's authorized licensee.

(c) Any person who in bad faith 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, shall be liable in a civil action by such person.

§481B-C Determining bad faith intent. (a) In determining whether there is bad faith intent under section 481B-B, a court may consider factors, including but not limited to, the following:

(1) The trademark or other intellectual property rights of the person, if any, in the domain name;

(2) The extent to which the domain name consists of the legal name of the person or a name that is otherwise commonly used to identify that person;

(3) The person's prior use, if any, of the domain name in connection with the bona fide offering of any goods or services;

(4) The person's bona fide noncommercial or fair use of the mark in a site accessible under the domain name;

(5) The person intended to divert users from the mark owner's online location to a site accessible under the domain name that could harm the goodwill represented by the mark, either for commercial gain or to tarnish or disparage the mark, by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the site;

(6) The person offered to transfer, sell, or otherwise assign the domain name to the mark owner or any third party for financial gain without having used or having an intent to use, the domain name in the bona fide offering of any goods or services, or the person's prior conduct indicating a pattern of such conduct;

(7) The person:

(A) Provided materials and misleading false contact information when applying for the registration of the domain name;

(B) Intentionally failed to maintain accurate contact information; or

(C) Had prior conduct indicating a pattern of conduct under subparagraph (A) or (B), or both;

(8) The person registered or acquired multiple domain names that were identical or confusingly similar to marks of others that were distinctive at the time of registration of such domain names, or dilutive of distinctive marks of others that were distinctive at the time of registration of such domain names, without regard to the goods or services of the parties; and

(9) The person sought or obtained consent from the rightful owner to register, traffic in, or use the domain name.

(b) Bad faith intent under subsection (a) shall not be found in any case in which the court determines that the person alleged to be in violation of this part believed or had reasonable grounds to believe that the use of the domain name was a fair use or otherwise lawful.

§481B-D Damages and remedies. (a) Any person whose rights have been violated under section 481-B may bring a civil action against the person or entity responsible for the violation.

(b) In any civil action brought under this part, if the court finds a violation of a person's rights, the court may award:

(1) Injunctive relief, including the foreclosure or cancellation of the domain name or the transfer of the domain name to the owner of the mark;

(2) Equitable relief;

(3) Compensatory damages;

(4) Punitive damages, as appropriate;

(5) Costs of the action;

(6) Attorney's fees, as appropriate; and

(7) Any other relief the court deems appropriate.

(c) At any time before final judgment is rendered by the court, a person who files suit under this part may elect to recover, in lieu of actual damages and profits, an award of statutory damages in the amount of not less than $1,000, and not more than $100,000, per domain name, as the court considers just."

SECTION 2. Chapter 481B Hawaii Revised Statutes, is amended by designating sections 481B-1 to 481B-14 as part I and inserting a title before section 481B-1 to read as follows:

"PART I. MISCELLANEOUS PROVISIONS"

SECTION 3. In codifying the new sections added by section 1 of this Act, the revisor of statutes shall substitute appropriate section numbers for the letters used in designating the new sections in this Act.

SECTION 4. New statutory material is underscored.

SECTION 5. This Act shall take effect upon its approval.