Buchanan Intellectual Property Shareholder S. Lloyd Smith Obtains Reversal of Anticybersquatting Act Decision

S. Lloyd Smith, an Intellectual Property shareholder in Buchanan Ingersoll & Rooney's Alexandria office, secured a reversal on behalf of client Staub Design LLC in an Anticybersquatting Consumer Protection Act (ACPA) case.

In December 2010, the U.S. District Court for the District of Delaware used the nine-factor test laid out by the ACPA to conclude the defendant used the plaintiff's domain in bad faith and, as such, in violation of the ACPA. But in an opinion filed January 4, 2012, the U.S. Court of Appeals for the Third Circuit concluded the District Court erred in evaluating two of the factors — "the intent to divert consumers from the mark owner's online location to a site accessible under the domain name that could harm the goodwill represented by the mark" and "the extent to which the mark incorporated in the domain name registration is or is not distinctive and famous within the meaning of subsection (c) of this section." The Third Circuit remanded the case to the District Court for further proceedings consistent with its ruling.

Smith was joined on brief by Buchanan Counsel Peter J. Duhig, and was assisted by associates Bryce J. Maynard and Jennifer M. D'Angelo.