In order to win under Anti-Cybersquatting statute, a plaintiff must prove the defendant (a) had a “bad faith intent to profit from the mark,” and (b) registered or uses a domain name that is “identical or confusingly similar” to the mark in question. 15 U.S.C. § 1125(d)(1)(A)(i)-(ii). Much of this turns on whether the defendant operates in the same goods as the plaintiff.
For example, in Bally Total Fitness Holding Corp. v. Faber, 29 F. Supp. 2d 1161 (C.D. Cal. 1998), the defendant operated a website under the name “ballysucks.com,” a website dedicated to complaints about the plaintiff’s Bally’s health-club business. The court found that even though the plaintiff and the defendant both hosted websites on the internet using the term “BALLY” in the domain name, the parties did not operate in “related goods.” Id. at 1163. The court concluded “[n]o reasonable consumer comparing Bally’s official web site with [the defendant]’s site would assume [the defendant]’s site to come from the same source, or thought to be affiliated with, connected with, or sponsored by the trademark owner.” Id. at 1163-65.
When faced with a claim under the Anti-Cybersquatting statute it is very important to evaluate an argument that the defendant does not operate related goods.