Statute of Limitations Under the Anti-Cybersquatting Statute: A Very Limited Limitation

Despite being codified more than 20 years ago, there are many open questions regarding application of the Anti-Cybersquatting Consumer Protection Act, 15 U.S.C. § 1125(d) (“ACPA”). Certainly, domain name conflicts continue to evolve given the continued importance of the domain name system to the Internet and the constant changes in both technology and strategies of offenders. But there are also open questions in the application of the cybersquatting law itself, including the applicability and application of statutes of limitations. Does a statute of limitations apply to ACPA claims? If so, how long is it? And from when does it run? This article discusses the relatively small body of law that analyzes statutes of limitations for cybersquatting claims under the ACPA.

The precise answers to the basic questions are murky, but the upshot is clear: a statute of limitations is unlikely to bar an ACPA claim in all but the narrowest of circumstances. If the court finds a statute of limitations applicable (a big “if”), the use of a domain name to engage in cybersquatting is considered to be a continuing harm, such that the statute of limitations would run from the last date the domain was used. Even if a defendant could show bare registration without active use of the domain name, the re-registration of the domain could be considered a use creating harm, at least in the majority of federal courts that find re-registration to be covered by the ACPA. Given that re-registration typically occurs on an annual basis, it would be highly unlikely that a defendant could succeed in obtaining dismissal of a cybersquatting claim based on a statute of limitations.

1. Does a Statute of Limitations Apply to ACPA Claims?

The most basic question is, does a statute of limitations apply to ACPA claims? That depends on where a case is filed.

Courts including the Eastern District of Virginia in the Fourth Circuit, the District of New Jersey in the Third Circuit, and the Eastern District of Louisiana and the Northern District of Texas in the Fifth Circuit, have found statutes of limitations applicable to ACPA claims. Mercury Luggage Mfg. Co. v. Domain Prot., LLC, No. 3:19-CV-01939-M, 2020 WL 376609, at *2 (N.D. Tex. Jan. 22, 2020); Guidry v. Louisiana Lightning, LLC, No. CV 15-6714, 2016 WL 3127256, at *4 (E.D. La. June 3, 2016); D’Agostino v. Appliances Buy Phone, Inc., No. 13-cv-7122(PGS) [Dkt. No. 16] (D.N.J. Nov. 3, 2014); Int’l Bancorp, L.L.C. v. Societe Des Baines De Mer Et Du Cercle Des Etrangers A Monaco, 192 F. Supp. 2d 467, 488 (E.D. Va. 2002), aff’d on other grounds sub nom. Int’l Bancorp, LLC v. Societe des Bains de Mer et du Cercle des Estrangers a Monaco, 329 F.3d 359 (4th Cir. 2003).

However, the Sixth Circuit and courts within the Third and Seventh Circuits disagree. The Sixth Circuit found a statute of limitations defense inapplicable, ruling that the ACPA was an “equitable right created by Congress,” and thus laches, rather than statute of limitations, governs claims thereunder. Ford Motor Co. v. Catalanotte, 342 F.3d 543, 550 (6th Cir. 2003). Similarly, the Northern District of Illinois declined to apply a statute of limitations because the Lanham Act does not articulate a limitations period, but found that a defendant could assert laches. Flentye v. Kathrein, 485 F. Supp. 2d 903, 916 (N.D. Ill. 2007). The Eastern District of Pennsylvania also found that a statute of limitations did not apply, and instead applied laches. Am. Diabetes Ass’n v. Friskney Fam. Tr., LLC, 177 F. Supp. 3d 855, 878 (E.D. Pa. 2016).

Based on case law to date, it appears that more courts refuse to apply a statute of limitations to ACPA claims than allow such defenses. However, many courts have yet to consider this question. It also bears noting that, in the context of the ACPA, not all districts are created equal. The ACPA provides that in rem cybersquatting actions must be brought “in which the domain name registrar, domain name registry, or other domain name authority that registered or assigned the domain is located.”  15 U.S.C. § 1125(d)(2)(A). This places a disproportionate emphasis on jurisdictions such as the Eastern District of Virginia, where the .com, .net, and .org domain registries sit, and which appears open to the potential application of a statute of limitations.

2. What Is the Statute of Limitations for Cybersquatting Actions?

Should one find oneself in a jurisdiction that accepts an ACPA statute of limitations (or more likely, a jurisdiction that has not yet resolved the issue), how long is the applicable statute of limitations?  The leading treatise McCarthy on Trademarks and Unfair Competition posits that the statute of limitations provided under 28 U.S.C. § 1658 should apply, which would provide a four-year statute of limitations. 6 McCarthy on Trademarks and Unfair Competition § 31:23 (5th ed.). These authors agree—28 U.S.C. § 1658(a) applies to federal statutes enacted after 1990, and the ACPA was enacted in 1999.

However, the few courts that have recognized a statute of limitations curiously have not applied Section 1658’s four-year statute of limitations. The Northern District of Texas specifically declined to do so, based on a lack of precedent. See Mercury Luggage Mfg. Co. v. Domain Prot., LLC, No. 3:19-CV-01939-M, 2020 WL 7122859, at *2 (N.D. Tex. Dec. 4, 2020). Instead, the court applied what it viewed as the most analogous state-law statute of limitations—the same limitations that Texas applies to all Lanham Act claims, and, coincidentally, also four years. Id. Likewise, the Eastern District of Louisiana applied the most analogous state statute of limitations, the Louisiana Unfair Trade Practices Act, with a one-year limitation period. Guidry, 2016 WL 3127256, at *4. The Eastern District of Virginia has applied a five-year statute of limitations based on analogous injury to property limitations. See Lamparello v. Falwell, 360 F. Supp. 2d 768, 775 (E.D. Va. 2004), rev’d on other grounds, 420 F.3d 309 (4th Cir. 2005).

3. From When Does the Statute Run?

Finally, from when does any applicable statute of limitations run? Courts appear to be in agreement that cybersquatting creates a continuing harm, and therefore a statute of limitations would run from the last use of the domain, not simply when the domain was registered. See, e.g., Omega S.A. v. Omega Eng’g, Inc., 228 F. Supp. 2d 112, 139 (D. Conn. 2002) (“[T]he plain language of the [ACPA] can impose liability not only for a one-time event (such as registration) but also for iterative or on-going actions (such as trafficking and using). . . . The statutory language thereby conceptualizes the illegitimate use of a domain name as an ongoing harm”).

Perhaps a defendant who is not actively using a domain might find luck in asserting a statute of limitations defense. However, even the simple act of re-registration, which often occurs annually, could constitute bad faith use of a domain in violation of the ACPA. In Southern Grouts & Mortars v. 3M, which considered a statute of limitations as a guidepost for laches, the court suggested that even the act of re-registration of a domain could constitute use. No. 07-61388-CIV, 2008 WL 4346798 (S.D. Fla. Sept. 17, 2008), aff’d, 575 F.3d 1235 (11th Cir. 2009). There, the website to which the subject domain resolved had been deactivated since 2002, and the plaintiff did not bring an ACPA claim until 2007. Id. The court acknowledged that the domain had been re-registered in the interim, and only found laches applicable because of record evidence that the ministerial act of re-registrations did not abate the risk of prejudice from the plaintiff’s five-year delay in bringing the claims. Id. at *9. In the context of statutes of limitations, which would not hinge on the question of prejudice, a court may find differently.

Takeaway

In short, statutes of limitations are potentially applicable in cybersquatting claims under the ACPA, but the times, places, and circumstances under which they would bar a claim appear quite rare. This is not to say that a plaintiff can indefinitely delay bringing an ACPA claim—the doctrine of laches is very much in play, as the Southern Grouts & Mortars case demonstrates. However, a defendant would typically face an uphill battle in convincing a court that an ACPA claim is statutorily barred.

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