Report Title:

Cybersquatting

 

Description:

Prohibits the bad faith registration of domain names on the Internet.

 

THE SENATE

S.B. NO.

1276

TWENTY-FIRST LEGISLATURE, 2001

  

STATE OF HAWAII

  

 

A BILL FOR AN ACT

 

relating to cybersquatting.

 

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

SECTION 1. Chapter 482, Hawaii Revised Statutes, is amended by adding a new part to be appropriately designated and to read as follows:

"Part  . cybersquatting

§482-A Definitions. As used in this chapter, unless the context otherwise requires:

"Cybersquatting" means the registration as domain names of well-known trademarks by nontrademark holders who then try to sell the names back to the trademark owners.

"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.

§482-B Cybersquatting prohibited. (a) It shall be unlawful for any person who, on or in connection with any goods or services, and with bad faith intent, registers, traffics in, or uses a domain name that is identical or confusingly similar to:

(1) A mark that is famous at the time of registration of the domain name;

(2) A mark that is distinctive at the time of registration of the domain name; or

(3) A trademark, word, or name protected under this chapter.

(b) It shall be unlawful for any person, with bad faith intent, to register, traffic in, or use a domain name, that is identical or confusingly similar to a personal name, another living person, or deceased personality, without regard to the goods or services of the parties.

(c) This section shall not apply if the name registered as a domain name is connected to a work of authorship, including, but not limited to, fictional or nonfictional entertainment, and dramatic, literary, audiovisual, or musical works.

(d) A domain name registrar, a domain name registry, or any other domain name registration authority that takes any action described in subsection (a) or (b) that affects a domain name shall not be liable to any person for that action, regardless of whether the domain name is finally determined to infringe or dilute a trademark or service mark.

§482-C Determining bad faith intent. In determining whether there is bad faith intent pursuant to section 482-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 diverted consumers 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's provision of material and misleading false contact information when applying for the registration of the domain name, the person's intentional failure to maintain accurate contact information, or the person's prior conduct indicating a pattern of such conduct;

(8) The person registered or acquired multiple domain names that the person knows are identical or confusingly similar to marks of others that are distinctive at the time of registration of such domain names, or dilutive of famous marks of others that are famous 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 described in 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 reasonably believed that the use of the domain name was a fair use or otherwise lawful.

§482-D Damages and remedies. (a) Any individual whose rights under section 482-B have been violated 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 an individual's rights, the court may award:

(1) Injunctive relief, including the forfeiture 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) Attorneys' fees, as appropriate; and

(7) Any other relief the court deems appropriate.

(c) The individual who files suit under this part may elect, at any time before final judgment is rendered by the court, to recover, instead of actual damages and profits, an award of statutory damages in the amount of not less than $2,500 and not more than $100,000 per domain name, as the court considers just."

SECTION 2. Sections 482-1 to 12, Hawaii Revised Statutes, are designated "PART I. GENERAL PROVISIONS".

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

SECTION 4. This Act shall take effect upon its approval.

INTRODUCED BY:

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