Shields v. Zuccarini

Citation: Shields v. Zuccarini, 2000 WL 1053884 (E.D. Pa. Jul 18, 2000), aff’d, 254 F.3d 476, 59 U.S.P.Q.2d (BNA) 1207 (3rd Cir. 2001).

Factual Background
The plaintiff alleged that the defendant intentionally registered five domain names that were variations on plaintiff's domain name, . The defendant's domain names included , , ,  and . A user who went to these sites would see advertisements and would be forced to click on one of the ads before it could leave the site. (After the suit was filed, the defendant changed the sites to “political protest” sites criticizing the cartoons on the plaintiff's site.)

Trial Court Decision
In July 2000, the district court issued a judgment for plaintiff under the Anticybersquatting Consumer Protection Act (ACPA) and awarded the plaintiff damages of $50,000 and attorneys' fees of $39,109.

Appellate Court Decision
On June 15, 2001, the Court of Appeals for the Third Circuit upheld the trial court's decision. The court held that the Joe Cartoon could be considered “famous” because the site got hundreds of thousands of hits per month, that products are sold on the site, and the site and plaintiff had been profiled in the New York Times.

The court held that the intentionally misspelled names were “identical or confusingly similar” to the plaintiff's mark, and that the defendant's intent was “to register a domain name in anticipation that consumers would make a mistake … increasing the number of hits his site would receive, and consequently, the number of advertising dollars he would gain.”