The ACPA did not not provide a cause of action for contributory cybersquatting. The U.S. Court of Appeals ruled December 4, 2013 on the matter. The court affirmed a district court’s grant of summary judgement in favor of the website, GoDaddy.com. (Petroliam Nasional Berhad v. GoDaddy.com, Inc.)
The ACPA imposed civil liability for cybersquatting on persons who used, registered, or trafficked in a domain name for the purpose of furthering “a bad faith intent to profit” from a protected mark.
According to PETRONAS, Congress had incorporated the common law of trademark infringement. According to the court, Congress enacted the ACPA in 1999 to protect consumers and to provide clarity for trademark owners by prohibiting the bad-faith and abusive registration of distinctive marks. Imposing contributory liability for cybersquatting would create incentives that induced “false positives”.
Finally, holders of infringed marks had sufficient remedies under the ACPA without the help of contributory liability. In addition to provisions that imposed civil liability on cybersquatters, the ACPA authorized in rem actions against domain names when registrants were not available to be sued personally. Trademark holders could also bring traditional claims for direct or contributory trademark infringement when the infringement arose from cybersquatting activities.