I have written a lot regarding the UDRP and the ACPA and recently received an inquary regarding which I would recommend when considering damages, specifically, the availability of damages and attorneyâs fees in cybersquatting cases. Obviously, under the UDRP no damages are available, as its only purpose is to transfer domain names from cybersquatters to the proper owners (usually brand owners of trade/service marks, but also individuals, especially famous celebrities).
The ACPA was an amendment to the Lanham Act, which is the federal law that governs trademarks. 15 USC 1125(d) controls civil actions for cybersquatting. The damages provision of the Lanham Act is codified at 15 USC 1117, it provides that a plaintiff may recover:
1) defendantâs profits,
2) any damages sustained by the plaintiff, and
3) the costs of the action. The court shall assess such profits and damages or cause the same to be assessed under its direction. In assessing profits the plaintiff shall be required to prove defendantâs sales only; defendant must prove all elements of cost or deduction claimed. In assessing damages the court may enter judgment, according to the circumstances of the case, for any sum above the amount found as actual damages, not exceeding three times such amount. If the court shall find that the amount of the recovery based on profits is either inadequate or excessive the court may in its discretion enter judgment for such sum as the court shall find to be just, according to the circumstances of the case. Such sum in either of the above circumstances shall constitute compensation and not a penalty. The court in exceptional cases may award reasonable attorney fees to the prevailing party. (emphasis added)
So the answer to the question is yes, attorneyâs fees and costs of the lawsuit are available, but maybe only in âexceptionalâ circumstances. But in particular, for lawsuits against cybersquatters, see 15 USC 1117(d), which says:
In a case involving a violation of section 1125 (d)(1) of this title, the plaintiff may elect, at any time before final judgment is rendered by the trial court, to recover, instead 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.
I think as a practical matter, serial squatters will see statutory damages amounts on the higher end of the spectrum, compared with âsmallerâ squatters. But note that as a plaintiff you get to choose the higher of the amounts that you want to request, actual damages/profits or the statutory award. So if you find out in discovery that the cybersquatter made large sums of money by selling products on the website, you could easily end up with damages in excess of the statutory range.
Please let me know if you are considering the merits of a UDRP complaint or a lawsuit. I'm happy to help you analyze your facts and come to a decision as to which is more beneficial for you.