## Facts

- In 1999, Edward Hise registered the domain name gopets.com intending to create a pet-related website, but he did not develop the business.
- In 2004, GoPets Ltd. began operating an online virtual pet game using the name “GoPets.”
- In November 2006, GoPets registered “GoPets” as a service mark with the USPTO.
- GoPets attempted to buy gopets.com; in 2006 the Hises offered to sell it for $5 million, which GoPets rejected.
- In December 2006, Edward Hise transferred gopets.com to Digital Overture, Inc., a corporation owned by Edward and Joseph Hise; the registrar treated the transfer as a new registration entry.
- In late 2006, the Hises registered additional domain names similar to GoPets, including gopet.biz, gopet.org, gopet.info, and goingpets.com.
- GoPets sued under the Anticybersquatting Consumer Protection Act (ACPA) and related Lanham Act theories; the district court granted summary judgment for GoPets on ACPA liability, awarded statutory damages, and later awarded attorney’s fees.

## Issues

1. Whether a post-mark transfer (re-registration) of a domain name originally registered before the mark became distinctive is a “registration” under the ACPA that can trigger cybersquatting liability.
2. Whether registering additional domain names confusingly similar to a distinctive “GoPets” mark in 2006 constituted cybersquatting under the ACPA.

## Decision

- The Ninth Circuit reversed the ACPA liability finding as to gopets.com based on the 2006 transfer to Digital Overture.
- The court held that “registration” in 15 U.S.C. § 1125(d)(1) refers to the initial domain name registration, not ordinary transfers between owners.
- The Ninth Circuit affirmed ACPA liability for the newly registered domains (e.g., gopet.biz, goingpets.com) as confusingly similar registrations made after the mark became distinctive and with bad-faith intent to profit.
- The case was remanded for further proceedings, including recalculation of statutory damages and reconsideration of attorney’s fees in light of the partial reversal.

## Legal Principles

- For ACPA purposes, “registers” in § 1125(d)(1) targets the initial acquisition of a domain name; later transfers do not, by themselves, constitute a new actionable “registration.”
- A lawful domain registrant who registered before a mark became distinctive may transfer the domain without automatically creating ACPA liability from the transfer alone.
- ACPA liability may attach to later conduct that independently satisfies the statute, including registering new domains that are identical or confusingly similar to a distinctive mark with bad-faith intent to profit.
- Bad faith may be supported by a pattern of registering multiple confusingly similar domains after learning of the mark, the absence of a legitimate use, and attempts to extract a high price from the mark holder.

## Conclusion

The Ninth Circuit limited ACPA “registration” to the original domain registration, rejecting cybersquatting liability based solely on a later transfer of a previously lawful domain name, while affirming liability for separate, newly registered domains that targeted a distinctive mark in bad faith.


GoPets Ltd. v. Hise, 657 F.3d 1024 (9th Cir. 2011)