# GoPets v. Hise: Re-Registration Is Not 'Registration' Under the ACPA

> The Ninth Circuit held that ACPA registration means initial registration only, so transferring a domain that predates the mark is not cybersquatting.

Topic: Trademarks  |  Author: Lidiia Levitska  |  Source: Intellectual Property Law (outsideipcounsel.com)
Canonical: https://outsideipcounsel.com/blog/gopets-v-hise-acpa-re-registration/


In *GoPets Ltd. v. Hise*, 657 F.3d 1024 (9th Cir. 2011), the Ninth Circuit answered a question the Anticybersquatting Consumer Protection Act never quite asks out loud: when a domain name changes hands, does the transfer count as a new "registration" that can trigger cybersquatting liability? Argued January 10, 2011, and decided September 22, 2011, the opinion by Judge William A. Fletcher, joined by Judges Diarmuid O'Scannlain and Richard Clifton, held that it does not. "Registration" under 15 U.S.C. § 1125(d)(1) means the initial registration of the domain name. A domain first registered before a trademark existed can therefore be renewed, transferred, or re-registered years later without exposing the new holder to ACPA liability, no matter how the mark has flourished in the meantime.

The rule matters because timing is the load-bearing wall of every cybersquatting claim. The statute reaches only marks that were distinctive "at the time of registration of the domain name," so fixing the registration date at the domain's original creation immunizes an entire aftermarket of aged domains. Three other circuits read "registration" the other way, making *GoPets* the minority anchor of a live circuit split that, as of July 2026, the Supreme Court has still not resolved.

## At a glance

- **Case:** *GoPets Ltd. v. Hise*, 657 F.3d 1024 (9th Cir. 2011) (Nos. 08-56110, 08-56112, 08-56114)
- **Decided:** September 22, 2011; opinion by Judge William A. Fletcher, joined by Judges O'Scannlain and Clifton; reversed in part, affirmed in part, and remanded
- **Holding:** Re-registration of a domain name by a new registrant is not a "registration" under § 1125(d)(1); because gopets.com was first registered in 1999, before the GOPETS mark existed, its 2006 transfer could not support cybersquatting liability.
- **Status:** Final, and still Ninth Circuit law as of July 2026, on the minority side of a circuit split with the Third, Eleventh, and Fourth Circuits. The Supreme Court denied certiorari on the question in *JFXD TRX ACQ LLC v. trx.com*, No. 25-188, on December 15, 2025.

## The ACPA's timing rule

Congress enacted the ACPA in 1999 to reach the then-new business of warehousing domain names that matched other people's trademarks. Section 1125(d)(1)(A) imposes liability on a person who has "a bad faith intent to profit" from a mark and who "registers, traffics in, or uses" a domain name that is identical or confusingly similar to a mark "that is distinctive at the time of registration of the domain name."

That last clause makes the registration date the anchor of the entire claim. Domains are handed out first come, first served, and Congress did not want to let later-arriving trademark owners claw back names that were innocently registered before the mark meant anything. But the statute never defines "registration," and domain names do not sit still: they are renewed, moved between registrars, and sold in a robust secondary market, each event generating a new registration record. The question in *GoPets* was whether any of those later events restarts the ACPA clock.

## A 1999 domain, a 2004 mark, and a $5 million counteroffer

Edward Hise registered gopets.com in March 1999, planning a pet-owner resource site that never seriously materialized. Five years later, Erik Bethke founded GoPets Ltd. in Korea and launched a virtual-pet game called GoPets; the company filed a U.S. service mark application on September 30, 2004, claiming first commercial use as of August 20, 2004, and the GOPETS registration issued in November 2006.

GoPets Ltd. wanted the matching domain. Bethke offered $750 in October 2004 and got no response, and a $100 offer in May 2005 fared no better. GoPets Ltd. then filed a UDRP complaint, and on July 26, 2006 a WIPO arbitrator decided for Hise for a reason that would echo through the later litigation: Hise had registered gopets.com five years before GoPets Ltd. was founded, so the name was not initially registered in bad faith. Bethke resumed negotiating after that loss, offering $5,000 in October 2006 and $40,000 in November, and telling the Hises he had to commit to a domain name by December 11. On December 12, the brothers answered with a four-page letter aimed at GoPets Ltd.'s investors, warning that gopetslive.com "may face competitive Meta Tagging" and offering to sell gopets.com for $5 million. Two days later, Edward Hise transferred the gopets.com registration to Digital Overture, Inc., a corporation he owned with his brother Joseph. Between November 2006 and early 2007 they also registered 18 additional domains built on the mark, including gopets.mobi, gopets.name, gopetssite.com, and goingpets.com.

GoPets Ltd. sued in the Central District of California in March 2007, asserting ACPA cybersquatting, service mark infringement, dilution, and unfair competition claims. Judge A. Howard Matz granted summary judgment to GoPets on May 27, 2008, holding that Digital Overture's 2006 re-registration of gopets.com violated the ACPA, awarding $100,000 in statutory damages for that domain and $1,000 for each of the additional domains, and ordering gopets.com transferred.

## Registration means initial registration

The Ninth Circuit reversed on the flagship domain. The district court had reasoned, plausibly enough, that a re-registration is literally a registration. Judge Fletcher's opinion rejected that reading by looking past the bare text to "traditional property law." Domain-name registrants own rights that the law ordinarily makes transferable, and nothing in the ACPA suggests that Congress meant a right held by an initial registrant to evaporate the moment the name is conveyed to someone else. If every transfer were a fresh "registration" measured against the mark's current distinctiveness, then any domain matching a later-blooming trademark could never safely be sold, gifted, or moved into a family company. GoPets Ltd.'s interpretation, the court wrote, would make rights in many domain names "effectively inalienable," a result Congress gave no indication it intended.

Congress therefore "meant 'registration' to refer only to the initial registration." Because Edward Hise registered gopets.com in 1999, years before GoPets Ltd. or its mark existed, the December 2006 transfer to Digital Overture violated no right of GoPets Ltd., and the $100,000 award and the transfer order fell with it. The court did not need to decide whether a routine renewal by the same registrant counts, but its logic sweeps in renewals and transfers alike: the original registration date controls.

## What the Hises still lost

*GoPets* is sometimes shorthanded as a defense win, but the Hises lost nearly everything else. The 18 additional domains were registered in and after November 2006, when GOPETS was indisputably distinctive, and the record of bad faith was vivid: a $5 million demand, an explicit threat to divert consumers through metatags, and no bona fide use of any of the names. The court affirmed ACPA liability on all 18, rejected the argument that the WIPO decision gave the Hises reasonable grounds to believe their conduct lawful under the statutory safe harbor, and affirmed statutory damages of $1,000 per domain, the statutory minimum, holding that no jury trial was required where liability was established on summary judgment and the court imposed only the minimum award.

The panel also affirmed a straight Lanham Act infringement holding: the Hises had posted content on gopets.com describing it as "GoPets.com the official online website," a use of the mark in commerce likely to confuse visitors looking for the game company. The case went back to the district court to fashion relief on that claim and to reconsider attorney's fees.

## A split that has only widened

The Ninth Circuit acknowledged tension with *Schmidheiny v. Weber*, 319 F.3d 581 (3d Cir. 2003), which held in the context of the ACPA's personal-name provision that "registration" is not limited to the first registration, so a re-registration after the Act's effective date was actionable. The disagreement has since hardened into a genuine split over § 1125(d)(1) itself. In *Jysk Bed'N Linen v. Dutta-Roy*, 810 F.3d 767 (11th Cir. 2015), the Eleventh Circuit expressly rejected *GoPets* and held that a re-registration of bydesignfurniture.com was a "registration" supporting an ACPA claim. And in *Prudential Insurance Co. of America v. Shenzhen Stone Network Information Ltd.*, 58 F.4th 785 (4th Cir. 2023), decided January 24, 2023, the Fourth Circuit joined the majority view. It called the Ninth Circuit's alienability worry "well-taken" but held that the concern is best addressed through the statute's separate bad-faith inquiry: a registrant loses rights at a transfer or renewal only by acting in bad faith, so innocent transfers of aged domains remain safe even under the broad reading.

The practical result, as commentators have put it, is a West Coast free pass. The same conduct, buying a pre-mark domain and re-registering it with intent to profit from someone else's now-famous brand, is actionable in the Third, Fourth, and Eleventh Circuits and immune in the Ninth, home to a large share of registrars and internet defendants. The Supreme Court has had a clean shot at the question and passed: in *JFXD TRX ACQ LLC v. trx.com*, where the Ninth Circuit applied *GoPets* to defeat a claim against a domain first registered in 1999, the Court denied certiorari on December 15, 2025, over an amicus brief from the International Trademark Association urging it to take the case. *GoPets* therefore remains binding Ninth Circuit precedent as of July 2026.

## Open questions

- **Renewals versus transfers.** *GoPets* involved a transfer to a related corporate entity. The opinion's property-law logic covers routine renewals by the same registrant a fortiori, but the court never expressly decided whether a renewal accompanied by a change in use or a newly formed bad-faith intent could ever matter.
- **How far the other prongs reach.** The ACPA also punishes one who "traffics in" or "uses" a domain with bad-faith intent. Whether those prongs can capture most of what the re-registration theory would reach, and thereby shrink the practical stakes of the split, remains underdeveloped.
- **Supreme Court resolution.** With three circuits on one side and the Ninth alone on the other, the question keeps reaching the Court, which denied certiorari in *JFXD TRX ACQ LLC v. trx.com*, No. 25-188, on December 15, 2025. A denial decides nothing on the merits, so the split is still open as of July 2026 and awaits a future vehicle.
- **Interaction with the UDRP.** WIPO panels apply their own timing rules to transfers, so the same facts can produce opposite outcomes in arbitration and in a Ninth Circuit courtroom.

## Implications for brands and businesses

- **Timing is everything in a cybersquatting claim.** Before sending a demand letter, establish exactly when the domain was first registered and when your mark became distinctive. If the domain came first, an ACPA claim in the Ninth Circuit is likely dead on arrival regardless of later transfers.
- **Forum choice can decide the case.** The same re-registration is actionable in the Third, Fourth, and Eleventh Circuits and immune in the Ninth. Where personal jurisdiction and venue give you options, the registration-timing rule should drive the choice.
- **The ACPA is not the only lever.** *GoPets* itself shows the fallback: bad-faith use of a domain can still support ordinary infringement claims, and satellite registrations made after the mark became distinctive remain fully actionable.
- **Domain investors should still document good faith.** Even under *GoPets*, an aged domain protects only against the registration prong. Demand letters seeking outsized payments, diversion threats, and confusing site content can convert a safe asset into Lanham Act liability.

## Frequently asked questions

**Does GoPets v. Hise mean domain transfers can never violate the ACPA?** No. The decision construes only the word registration in 15 U.S.C. § 1125(d)(1). A transferee can still face liability for trafficking in or using a domain name in bad faith, and the initial registration itself remains actionable if the mark was distinctive at that time.

**Which courts have rejected the GoPets rule?** The Third Circuit in Schmidheiny v. Weber, the Eleventh Circuit in Jysk Bed'N Linen v. Dutta-Roy, and the Fourth Circuit in Prudential v. Shenzhen Stone Network all read registration to include re-registrations, leaving the Ninth Circuit alone on the narrow view as of July 2026.

**Why did the Hises still lose most of the case?** Because they registered 18 new domain names confusingly similar to the GoPets mark after it became distinctive, the Ninth Circuit affirmed cybersquatting liability with statutory damages of $1,000 per domain, plus service mark infringement for content posted on gopets.com.

## Authorities and sources

- [*GoPets Ltd. v. Hise*, 657 F.3d 1024 (9th Cir. 2011), slip opinion](https://cdn.ca9.uscourts.gov/datastore/opinions/2011/09/22/08-56110.pdf)
- [*GoPets Ltd. v. Hise*, 657 F.3d 1024, full text on govinfo](https://www.govinfo.gov/content/pkg/USCOURTS-ca9-08-56110/pdf/USCOURTS-ca9-08-56110-0.pdf)
- [15 U.S.C. § 1125(d), the Anticybersquatting Consumer Protection Act (Cornell LII)](https://www.law.cornell.edu/uscode/text/15/1125)
- [*Jysk Bed'N Linen v. Dutta-Roy*, No. 13-15309 (11th Cir. 2015), slip opinion](https://media.ca11.uscourts.gov/opinions/pub/files/201315309.pdf)
- [*Prudential Ins. Co. of America v. Shenzhen Stone Network Info. Ltd.*, No. 21-1823 (4th Cir. 2023), slip opinion](https://www.ca4.uscourts.gov/opinions/211823.P.pdf)
- [*JFXD TRX ACQ LLC v. trx.com*, No. 25-188, Supreme Court docket (certiorari denied December 15, 2025)](https://www.supremecourt.gov/docket/docketfiles/html/public/25-188.html)
- [Wiley Rein, "Fourth Circuit Finds Re-registration of a Domain Can be Cybersquatting: A Prudential Clarification to the ACPA"](https://www.wiley.law/alert-Fourth-Circuit-Finds-Re-registration-of-a-Domain-Can-be-Cybersquatting-A-Prudential-Clarification-to-the-ACPA)
- [Fordham IPLJ, "Cybersquatting: The West Coast Free-Pass"](http://www.fordhamiplj.org/2023/04/25/cybersquatting-the-west-coast-free-pass/)
- [Quimbee case brief, *GoPets Ltd. v. Hise*](https://www.quimbee.com/cases/gopets-ltd-v-hise)