House Judiciary Committee Approves Anti-Cybersquatter Bill

(October 15, 1999) The House Judiciary Committee approved an amended version of HR 3028, an anti-cybersquatter bill sponsored by Rep. James Rogan, by a unanimous voice vote on Wednesday, October 13, 1999.

HR 3028, the Trademark Cyberpiracy Prevention Act, sponsored by Rep. James Rogan (R-CA), Rep. Rick Boucher (D-VA), Rep. Howard Coble (R-NC), and Rep. Bob Goodlatte (R-VA) protects trademark owners from those who register their trademarked names with a bad faith intent to profit from that trademark. The four original cosponsors of the bill all spoke in its favor. With little other discussion, the bill was amended and adopted unanimously.

This bill provides trademark owners civil injunctive and monetary remedies against those who use their trademarks in domain name with a "bad faith intent to profit from that trademark". The bill goes on to list 11 factors that a court may consider in determining whether such bad faith exists.

The trademark owners' remedies include monetary damages and a order compelling the domain name registrar to cancel or transfer the defendant's domain name. The bill also provides for in rem actions against the domain name. Finally, the bill provides some immunity for domain name registrars who cancel or transfer to the legal owner the trademarked domain names registered by cybersquatters.

Rep. Rogan and Rep. Coble introduced an amendment in the nature of a substitute at the Wednesday mark up meeting of the House Judiciary Committee. It is essentially the same as the bill adopted by the House Courts and Intellectual Property (CIP) Subcommittee on October 7.

One significant change in the bill has nothing to do with cybersquatting. Rep. Rogan and Rep. Coble slid in a new section requiring the U.S. Patent and Trademark Office to lower certain patent fees, and allowing the USPTO to "adjust" trademark fees.

Rep. Coble described the changes as "nonsubstantial technical changes." The U.S. Patent and Trademark Office supports these changes.

	Rep. James Rogan (R-CA)

Rep. Rogan stated that "cybersquatting takes place for a number of reasons. First, to extract payments from the rightful owners of the mark ..." He cited the example of a cybersquatter who registered four number of domains for $280 which contained trademarks owned by Warner Brothers, and latter offered them for sale to Warner Brothers for $350,000.

Rep. Rogan said that another purpose of cybersquatters is to capitalize on confusion. He cited the example of pornography web sites, such as whitehouse.com, which use this practice to lure unsuspecting people, including children, into their cites.

Another problem, said Rep. Rogan, is consumer fraud. He cited the example of a cybersquatter who register attcallingcard.com and then set up a fraudulent website which collected credit card information.

"There are no laws in any jurisdiction, national, or otherwise, that explicitly prohibit this practice," said Rep. Rogan. "HR 3028 provides a legal remedy for American businesses where traditional laws fail. It protects the trademarks of American businesses, while promoting the growth of electronic commerce."

Rep. Goodlatte stated at this markup, as he did at the CIP Subcommittee markup, that he favored expanding the scope of the bill to protect individuals' names. He stated that "it is my hope that we will include in this legislation, before it goes to the floor, provisions, where, if possible, allowing you to claim the use of their own name. And I understand, that the Chairman of the Subcommittee, Mr. Coble, that he too would like to see Congressmen work towards that goal, and he, under the auspices of the Subcommittee, negotiations will take place tomorrow on that very issue."

Rep. Rogan stated that "there are some first amendment issues," but that members would met to discuss this issue.

Rep. Rick Boucher (D-VA)

Rep. Boucher also spoke in favor of the bill. He said that current "legal remedies are expensive and uncertain, and I think, a great detail of time to obtain. And, many trademark owners conclude that it is simply easier to pay a cybersquatter's ransom, and in effect, buy his own trademark name."

"Mr. Rogan and I want to put cybersquatters out of business, by permitting a more certain legal remedy for trademark and service mark owners," he said.

Rep. Howard Berman (D-CA), the ranking minority member of the House CIP Subcommittee, stated that there were two types of domain name disputes. He said that there are legitimate disputes which will be addressed by ICANN, and cybersquatting on trademarks which is addressed by HR 3028.

Rep. Bob Barr (R-GA) inquired as to whether the bill contained any criminal sanctions, and expressed opposition to criminalizing cyber squatting. Rep. Rogan responded that the bill contained no criminal penalties -- only civil.

No one spoke against the bill, or any part of it.

The Committee adopted by unanimous voice vote the amendment in the nature of a substitute, and then the bill as amended. The members who were present for the votes were James Sensenbrenner (R-WI), George Gekas (R-PA), Howard Coble (R-NC), Elton Gallegly (R-CA), Charles Canady (R-FL), Bob Goodlatte (R-VA), Steve Chabot (R-OH), Bob Barr (R-GA), William Jenkins (R-TN), Asa Hutchinson (R-AR), Ed Pease (R-IN), James Rogan (R-CA), Mary Bono (R-CA), John Conyers (D-MI), Barney Frank (D-MA), H. Berman (D-CA), Rick Boucher (D-VA), Jerrold Nadler (D-NY), Melvin Watt (D-NC), Zoe Lofgren (D-CA), Bill Delahunt (D-MA), Robert Wexlar (D-FL), Steve Rothman (D-NJ), Tammy Baldwin (D-WI), Henry Hyde (R-IL).

The members who were not present for the vote were Bill McCollum (R-FL), Lamar Smith (R-TX), Chris Cannon (R-UT), Lindsay Graham (R-SC), Spencer Bachus (R-AL), Joe Scarborough (R-FL), David Vitter (R-LA), Robert Scott (D-VA), Sheila Lee (D-TX), Maxine Waters (D-CA), Marty Meehan (D-MA), and Andrew Weiner (D-NY).