Typosquatter Liable for Statutory Damages of $10,000 per Domain Name & Attorneys' Fees of $39,109
by Charles Runyan, Ph.D., J.D. Domain Name Law Attorney
On June 15, 2001, the United States Court of Appeals for the 3rd Circuit, in the case of Shields v. Zuccarini, upheld a federal district court award of statutory damages of $50,000 plus attorneys' fees of $39,109 in the court's first case involving the Anticybersquatting Consumer Protection Act, 15 U.S.C. § 1125(d) (the "Act"). This case is good news for trade mark owners, but very bad news for typosquatters and cybersquatters. It provides a lot of ammunition for owners of famous trade marks who desire to obtain infringing domain names plus obtain money damages and attorneys' fees from cybersquatters and typosquatters.
A "typosquatter" is a person who registers a domain name that is a misspelled variation of a trade mark or service mark. Typosquatting includes variations of marks resulting from adding or subtracting punctuation in a domain name such as "widget-world.com" to get viewers who mistakenly add a hyphen when typing "widgetworld.com."
Joe Shields is a famous cartoonist who markets cartoons under the names "Joe Cartoon" and "The Joe Cartoon Co." Shields also created the "Frog Blender," "Micro-Gerbil" and "Live and Let Dive" animations. For the past fifteen years, Joe has licensed his cartoon images for display on T-shirts, coffee mugs and other products using the "Joe Cartoon" label. Shields registered the domain name joecartoon.com on June 12, 1997. Visitors to Joe's web site may purchase Joe Cartoon products and download animations. The joecartoon.com web site averages over 700,000 visits per month.
In November 1999, John Zuccarini registered joescartoon.com, joecarton.com, joescartons.com, joescartoons.com and cartoonjoe.com, all of which were variations of the joecartoon.com domain name. Zuccarini's web sites only contained advertisements for other sites. People who mistakenly typed joecartoon.com and accessed Zuccarini's web sites became "mousetrapped," an HTML trick that prevents the visitor from exiting the web site until the visitor has clicked on a succession of advertisements. Advertisers paid Zuccarini $.10 to $.25 for every click.
Zuccarini was a wholesaler of Internet domain names. He operated more than 3,000 web sites that earned between $800,000 - $1,000,000 a year. From March 22, 2000, through the date of the hearing to determine statutory damages and attorneys' fees and costs, Zuccarini registered 1,644 domain names that were common misspellings of the names of other famous companies or celebrities.
In December of 1999, Shields sent cease and desist letters to Zuccarini, which Zuccarini ignored. Shields then sued Zuccarini alleging violations of the Act. Immediately after Shields filed his complaint, Zuccarini changed the five web sites to contain political statements and statements critical of Joe Cartoon, which Zuccarini claimed were protected by the First Amendment.
Trial Court's Orders
The district court issued a preliminary injunction against Zuccarini that required him to transfer the infringing domain names to Shields and to refrain from using or abetting the use of the infringing domain names or any other domain names substantially similar to Shields' trade marks. On June 5, 2000, the district court granted summary judgment in favor of Shields and issued an order finding that Zuccarini had registered five variations of Shields' name willfully, in bad faith, and in violation of the Act. The district court also entered an order and judgment awarding statutory damages to Shields of $10,000 for each infringing domain name plus attorneys' fees and costs in the amount of $39,109.46.
Court of Appeals' Findings
The 3rd Circuit Court of Appeals affirmed the district court's findings of the following facts:
Court of Appeals' Interpretation of the Anticybersquatting Consumer Protection Act
In upholding the decisions of the district court, the 3rd Circuit Court of Appeals shed the following light on the Anticybersquatting Consumer Protection Act:
More Bad News for Cybersquatters & Typosquatters
Shields v. Zuccarini is another nail in the coffin for cybersquatters and typosquatters. The Anticybersquatting Consumer Protection Act and ICANN's Uniform Domain Name Dispute Resolution Policy together give trade mark and service mark owners two powerful weapons with which to wrest control of domain names from cybersquatters and typosquatters.
For more information about the John Zuccarini and his typosquatting, see Notorious Cybersquatter Liable for $500,000 under the Anticybersquatting Consumer Protection Act and KEYTLaw's list of John Zuccarini's ICANN Uniform Dispute Resolution Policy Arbitrations.
This article was first published on April 1, 2001.
About Charles Runyan
Chuck Runyan, Ph.D., J.D., has been practicing intellectual property law since 1997. Chuck advises trademark holders about domain names that infringe on a trademark and if the trademark holder has a claim to a domain name under ICANN's Uniform Dispute Resolution Policy and the Anticybersquatting Consumer Protection Act. He has a Ph.D. in chemistry and has been a patent attorney since 1998 whose practice includes patent preparation, prosecution, portfolio management, and opinion work. Chuck represents individuals and businesses, start-ups through large, multi-national pharmaceutical companies, in their pursuit and enforcement of patent rights throughout the United States and worldwide. Charles Runyan is licensed to practice law in Arizona, California and Texas. Call Chuck at 480-205-9365, email at email@example.com and fax at 602-297-6890. Communicating with Charles Runyan via email, telephone or otherwise does not cause you to become a client of Chuck Runyan or KEYTLaw, LLC, or cause your communications to be confidential or subject to the attorney client privilege. Charles Runyan is of counsel to KEYTLaw, LLC.
Domain Name Law Consultations
Domain name lawyer & trademark lawyer Charles Runyan, Ph.D., offers phone consultations on domain name law and cybersquatting issues for $499 (1 hour) and $299 (1/2 hour). Call Chuck at 480-205-9365 or send an email to firstname.lastname@example.org.
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