## Facts

- Ford Motor Company and affiliated trademark owners alleged that numerous third-party registrants registered domain names incorporating famous automotive marks (e.g., Ford, Lincoln, Jaguar, Volvo) and offered them for sale.
- GreatDomains.com, Inc. operated an online auction marketplace focused on domain-name sales and collected fees/commissions for hosting listings and related services.
- The registrant defendants listed the challenged domain names for sale through GreatDomains at prices exceeding registration costs.
- Ford sued GreatDomains and multiple registrants asserting cybersquatting under the Anticybersquatting Consumer Protection Act (ACPA) and claims under the Lanham Act, including infringement, false designation of origin, dilution, and related unfair competition theories.
- GreatDomains and certain registrants (including defendants associated with the Electronic Frontier Foundation) moved to dismiss for failure to state a claim under Rule 12(b)(6).

## Issues

1. Whether an auction-site operator that does not own or control the domain names “traffics in” the domain names under the ACPA, 15 U.S.C. § 1125(d), and can be directly liable for cybersquatting.
2. Whether listing domain names incorporating another’s marks constitutes actionable Lanham Act “use in commerce” “in connection with” goods or services for infringement, false designation of origin, or dilution claims.
3. Whether the complaint plausibly alleged that the registrant defendants registered, used, or trafficked in the domain names with a bad-faith intent to profit under the ACPA.

## Decision

- GreatDomains’ Rule 12(b)(6) motion was granted; all claims against GreatDomains were dismissed.
- The registrant defendants’ Rule 12(b)(6) motions were granted in part and denied in part.
- ACPA claims against the registrant defendants survived because the pleadings plausibly alleged registration/use/trafficking and bad-faith intent to profit.
- Lanham Act infringement, false designation of origin, and dilution theories were dismissed to the extent they depended on a statutory “use” of the marks “in connection with” goods or services not adequately alleged on the pleadings.

## Legal Principles

- Under the ACPA, “traffics in” focuses on transfers or receipts of domain-name interests for consideration; direct liability requires some participation in the transfer/receipt of ownership or control rather than merely providing a forum for others’ transactions.
- An intermediary that hosts auctions and collects commissions, without registering, owning, or conveying the domain names, does not “traffic in” domain names for ACPA purposes.
- Lanham Act infringement and related unfair competition theories require “use in commerce” of a mark “in connection with” the sale, offering for sale, distribution, or advertising of goods or services.
- Merely listing domain names for sale, without more, may be insufficient to plead trademark “use” “in connection with” goods or services for Lanham Act infringement, false designation, and dilution claims.
- ACPA claims against registrants may proceed at the pleading stage when allegations support that domains identical or confusingly similar to distinctive/famous marks were registered and offered for sale with bad-faith intent to profit.

## Conclusion

The court dismissed the auction-site operator because facilitating third-party domain auctions without owning or transferring the domains did not constitute ACPA “trafficking” or actionable trademark “use” in connection with goods or services, while allowing Ford’s ACPA cybersquatting claims to proceed against registrant defendants based on plausible allegations of bad-faith registration and attempted resale of domains incorporating Ford-related marks.


Ford Motor Co. v. Greatdomains.com, Inc., 177 F. Supp. 2d 635 (E.D. Mich. 2001)