Shields v. Zuccarini
| Decision Date | 22 March 2000 |
| Docket Number | No. CIV. A. 00-494.,CIV. A. 00-494. |
| Citation | 89 F.Supp.2d 634 |
| Parties | Joseph C. SHIELDS, individually and t/a The Joe Cartoon Co., v. John ZUCCARINI, individually and t/a Cupcake City. |
| Court | U.S. District Court — Eastern District of Pennsylvania |
Michael P. Coughlin, William J. Levant, Kaplin, Stewart, Meloff, Reiter & Stein, Blue Bell, PA, for Plaintiff.
Howard M. Neu, Pembroke Pines, FL, for Defendant.
We are faced in this case with one of the first motions for a preliminary injunction under the new Anticybersquatting Consumer Protection Act ("ACPA"), Pub.L. No. 106-113 (1999) (). We yesterday held a hearing on the motion, which defendant John Zuccarini (who also trades as Cupcake City) vigorously contested.
This memorandum will constitute our findings of fact and conclusions of law under Fed.R.Civ.P. 52(a). For the reasons that follow, we will grant the motion and enjoin Zuccarini from using his variations of the "Joe Cartoon" domain name during the pendency of this action.
Plaintiff Joseph Shields, a graphic artist from Alto, Michigan, creates, exhibits, and markets cartoons under the names "Joe Cartoon" and "The Joe Cartoon Co." His creations include the popular "Frog Blender", "Micro-Gerbil", and "Live and Let Dive" animations. Shields licenses his cartoons to others for display on T-shirts, coffee mugs, and other items, many of which are sold at gift stores across the country. He has marketed his cartoons under the "Joe Cartoon" label for the past fifteen years.
On June 12, 1997, Shields registered www.joecartoon.com as his World Wide Web site and has operated it ever since. Visitors to the site can download Shields's animations and purchase Joe Cartoon merchandise. Since April, 1998, when it won "shock site of the day" from Macromedia, Joe Cartoon's Web traffic has increased exponentially, now averaging over 700,000 visits per month.
In November of 1999, Zuccarini, an Andalusia, Pennsylvania "wholesaler" of Internet domain names,1 registered five World Wide Web variations on Shields's site: joescartoon.com, joecarton.com, joescartons.com, joescartoons.com, and cartoonjoe.com. Before Shields filed this action, Zuccarini's sites featured advertisements for other sites and credit card companies. Visitors were trapped or "mousetrapped" in the sites, unable to exit without clicking on a succession of ads. Zuccarini received between ten and twenty-five cents from the advertisers for every click. Immediately after Shields filed this suit,2 Zuccarini changed the five sites to "political protest" pages and posted the following message on them:
This is a page of POLITICAL PROTEST
— Against the web site joecartoon.com -
joecartoon.com is a web site that depicts the mutilation and killing of animals in a shockwave based cartoon format—many children are inticed to the web site, not knowing what is really there and then encouraged to join in the mutilation and killing through use of the shockwave cartoon presented to them.
— Against the domain name policys of ICANN -
— Against the CyberPiracy Consumer Protection Act -
As the owner of this domain name, I am being sued by joecartoon.com for $100,000 so he can use this domain to direct more kids to a web site that not only desensitizes children to killing animals, but makes it seem like great fun and games.
I will under no circumstances hand this domain name over to him so he can do that.
I hope that ICANN and Network Solutions will not assist him to attaining this goal.
If you support in me this—please write to ICANN and Network Solutions and tell them how you feel.
— Thank you -
Pl.'s Ex. 3.
Shields's complaint invokes the ACPA as well as federal and state unfair competition law, and seeks injunctive relief, statutory damages, and attorneys' fees. The complaint originally named Network Solutions, Inc. and the Internet Corporation for Assigned Names and Numbers as defendants, but on February 11, 2000, Shields filed a voluntary notice of dismissal with respect to these defendants.
On March 17, 2000, we denied Shields's motion for summary judgment, holding that Zuccarini had raised a material issue of fact under the ACPA. See March 17, 2000 Order. We also denied Shields's motion to consolidate the final trial on the merits with the preliminary injunction hearing, as Zuccarini has only recently retained counsel and has not had a full opportunity to take discovery or prepare a defense.
After affording the parties a brief time for expedited discovery, we held a hearing on the preliminary injunction motion yesterday at which we heard testimony from the protagonists.
The ACPA, which became law on November 29, 1999, is designed to "`protect consumers and American businesses, ... promote the growth of online commerce, and ... provide clarity in the law for trademark owners by prohibiting the bad-faith and abusive registration of distinctive marks as Internet domain names with the intent to profit from the goodwill associated with such marks—a practice commonly referred to as "cybersquatting."'" Sporty's Farm L.L.C. v. Sportsman's Market, Inc., 202 F.3d 489, 495 (2d Cir.2000) (quoting S.Rep. No. 106-140, at 4). The ACPA, which amended § 43 of the Lanham Act, provides as follows:3
(d) Cyberpiracy Prevention.
(1)(A) A person shall be liable in a civil action by the owner of a mark, including a personal name which is protected as a mark under this section, if, without regard to the goods or services of the parties, that person-
(i) has a bad faith intent to profit from that mark, including a personal name which is protected as a mark under this section; and
(ii) registers, traffics in, or uses a domain name that-
(I) in the case of a mark that is distinctive at the time of registration of the domain name, is identical or confusingly similar to that mark;
(II) in the case of a famous mark that is famous at the time of registration of the domain name, is identical or confusingly similar to or dilutive of that mark; or
(III) is a trademark, word, or name protected by reason of section 706 of title 18, United States Code, or Section 380 of Title 36, United States Code.
(B)(i) In determining whether a person has a bad faith intent described under subparagraph (A), a court may consider factors such as, but not limited to-
(I) the trademark or other intellectual property rights of the person, if any, in the domain name;
(II) the extent to which the domain name consists of the legal name of the person or a name that is otherwise commonly used to identify that person;
(III) the person's prior use, if any, of the domain name in connection with the bona fide offering of any goods or services;
(IV) the person's bona fide noncommercial or fair use of the mark in a site accessible under the domain name;
(V) the person's 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, either for commercial gain or with the intent to tarnish or disparage the mark, by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the site;
(VI) the person's offer to transfer, sell, or otherwise assign the domain name to the mark owner or any third party for financial gain without having used, or having an intent to use, the domain name in the bona fide offering of any goods or services, or the person's prior conduct indicating a pattern of such conduct;
(VII) the person's provision of material and misleading false contact information when applying for the registration of the domain name, the person's intentional failure to maintain accurate contact information, or the person's prior conduct indicating a pattern of such conduct;
(VIII) the person's registration or acquisition of multiple domain names which the person knows are identical or confusingly similar to marks of others that are distinctive at the time of registration of such domain names, or dilutive of famous marks of others that are famous at the time of registration of such domain names, without regard to the goods or services of the parties; and
(IX) the extent to which the mark incorporated in the person's domain name registration is or is not distinctive and famous within the meaning of subsection (c)(1) of section 43.
(ii) Bad faith intent described under subparagraph (A) shall not be found in any case in which the court determines that the person believed and had reasonable grounds to believe that the use of the domain name was a fair use or otherwise lawful.
(C) In any civil action involving the registration, trafficking, or use of a domain name under this paragraph, a court may order the forfeiture or cancellation of the domain name or the transfer of the domain name to the owner of the mark.
(D) A person shall be liable for using a domain name under subparagraph (A) only if that person is the domain name registrant or that registrant's authorized licensee.
(E) As used in this paragraph, the term "traffics in" refers to transactions that include, but are not limited to, sales, purchases, loans, pledges, licenses, exchanges of currency, and any other transfer for consideration or receipt in exchange for consideration.
In Bargain Bid v. Ubid, No. CV-99-7598 (E.D.N.Y. Jan. 3, 2000), Judge Leonard Wexler granted a preliminary injunction under the ACPA against conduct similar to the actions at issue here. See "Federal Cybersquatter Law Survives First Test in N.Y.", The Legal Intelligencer, Jan. 19, 2000, at 4.
When ruling on a motion for a preliminary injunction, we consider four factors: (1) the likelihood that plaintiff will prevail on the merits at final hearing; (2) the extent to which plaintiff is being irreparably harmed by the conduct complained of; (3) the extent to which defendant will suffer irreparable harm if the...
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