The ruling by the 3rd US Circuit Court of Appeals was made under
the US Anticybersquatting Consumer Protection Act. It follows a
similar decision last year by a Pennsylvania district court in
which Zuccarini and his company Cupcake Patrol were ordered to pay
the sum of $500,000 in damages over five domain names based on
misspellings of games seller Electronics Boutique.
In the UK, an aggrieved trade mark owner in these circumstances
can bring a case before national courts, relying on trade mark law
and a legal wrong known as passing-off. Alternatively, cases can be
taken to a panel of the World Intellectual Property Organisation
(WIPO) or similar bodies.
In the US, aggrieved parties have the additional choice of
bringing a case under the Anticybersquatting Consumer Protection
Act of 1999 which provides for the remedy of damages up to $100,000
for each offending domain name. For any action under the Act it
must shown that there was “deliberate, bad-faith and abusive
registration of internet domain names in violation of the rights of
trade mark owners”.
The owner of joecartoon.com, Joseph Shields, registered the
domain name in June 1997 and has used it to host his creations such
as the popular “Frog Blender” which brings him ”significant”
advertising revenue.
In November 1999, Mr Zuccarini registered five other domain
names, joescartoon.com, joecarton.com, joescartons.com,
joescartoons.com, and cartoonjoe.com. These names took visitors to
sites with multiple pop-up ads for other sites and credit card
companies, a practice known as “mouse-trapping.” Zuccarini received
payment for each click.
