Misspelled names violate cybersquatting law

The US Court of Appeals for the Third Circuit has dealt a blow to notorious cybersquatter John Zuccarini. In the case of Shields v Zuccarini, Zuccarini registered domain names that were intentional misspellings of the well-known animation site joecartoon.com. The three-judge panel held that Zuccarini's use of these domain names violated the new Anti-Cybersquatting Consumer Protection Act (ACPA). The decision was made on appeal from a Pennsylvania district court decision from June 2000 that had awarded plaintiff Joseph Shields $10,000 for each of the five domain names and $39,109 in attorneys' fees.

In his decision, the Pennsylvania district court judge applied the three-prong test required by the ACPA to determine if a violation has occurred. To qualify for ACPA protection:

  • a site must be famous;

  • the defendant must intentionally register the misleading name in bad faith; and

  • the defendant must profit or intend to profit from use of the misleading name.

The lower court found that the joecartoon.com site is famous because it receives hundreds of thousands of visits per month, that Zuccarini registered each of the domain names intentionally, and that he did so with the sole intention of profiting from Shields's success. Zuccarini made thousands of dollars from visitors who unintentionally typed in his misspellings.

The appellate panel unanimously endorsed the district court judge's understanding of the law and his findings of fact.

This case demonstrates that those who register intentionally misspelled domain names for profit violate the ACPA. Those who commit such violations are liable for damages between $1,000 and $100,000 per violation, and in exceptional cases, attorneys' fees.

Douglas Wood and Linda Goldstein, Hall Dickler Kent Goldstein & Wood, New York

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