In GoPets Ltd. v. Hise, __ F.3d __, Nos. 08-56110, 08-56114 (9th Cir. Sep. 22, 2011), the Ninth Circuit had an opportunity to review the applicability of the Anticybersquatting Protection Act (ACPA) to re-registration of a domain name in connection with the business activities of domainers. The case serves as a lesson to start-ups, brand owners, domainers, and their attorneys about how to handle disputes over domain names that acquire value because of a use arising after the original registration of the domain name.
Edward Hise registered the domain name <gopets.com> in 1999 with the alleged intent of providing a web portal regarding pets in connection with his cousin’s veterinary business. Since then he and his brother Joseph decided to become domainers through their corporation Digital Overtures, which registered over 1300 domains during the aughts.
In 2004, GoPets Ltd., a Korean company, created a game called “GoPets” featuring virtual pets and obtained a trademark registration for GOPETS in the U.S. in 2006. From 2004 – 2005 GoPets attempted to acquire the <gopets.com> domain name from Edward Hise, but he wouldn’t sell for the amounts proposed by GoPets – no more than $1,000. Digital Overtures re-registered <gopets.com> in 2006.
GoPets then filed a complaint with the World Intellectual Property Organization (WIPO) under the Uniform Dispute Resolution Policy (UDRP). It lost because the WIPO arbitrator found that the UDRP required the transfer of a domain name only “if the name was initially registered in bad faith.” This decision resulted in GoPets ultimately offering $40,000 for the domain name. Not only did the Hises reject this offer, they sent a letter to GoPets threatening., among other things, to use search engine optimization to drive traffic to <gopets.com> and away from GoPets’ official website located at <gopetslive.com>. (more…)