Citation[]
Electronics Boutique Holdings Corp. v. Zuccarini, 56 U.S.P.Q.2d (BNA) 1705, 2000 WL 1622760 (E.D. Pa. 2000) (plaintiff's motion for a permanent injunction and statutory damages); 2001 U.S. Dist. LEXIS 765 (E.D. Pa. Jan. 25, 2001) (defendant's motion to set aside judgment)
Factual Background[]
Plaintiff owned the trademarks EB and ELECTRONICS BOUTIQUE, and operated a popular online store at "ebworld.com" and "electronicsboutique.com." Defendant registered the domain names with the misspellings "electronicboutique.com," "eletronicsboutique.com," "electronicbotique.com," "ebwold.com," and "ebworl.com," and operated websites at those names, all of which "mousetrapped" users with numerous pop-up advertising windows.
Trial Court Proceedings[]
On August 10, 2000, plaintiff obtained a temporary restraining order directing defendant to deactivate the websites at all these misspelled domain names. Shortly thereafter, the court granted plaintiff's motion for a preliminary injunction on its ACPA claim. Although defendant failed to appear at the preliminary-injunction hearing, the court found that defendant had actual notice of the proceedings.
In a subsequent decision, the court granted plaintiff's motion for a permanent injunction and statutory damages under the ACPA, in a proceeding the defendant failed to attend. Plaintiff established that its marks were famous and distinctive, that defendant's domain names were confusingly similar to plaintiff's marks, and that defendant had a bad-faith intent to profit because it "profits each time an Internet user makes a typing or spelling mistake which [defendant] correctly forecasts."
Furthermore, defendant had a history of registering misspelled domain names, even after being preliminarily enjoined from doing so in a separate action. The court ordered defendant to transfer the disputed domain names and enjoined defendant from using any domain name "substantially similar" to plaintiff's injunctions.
Additionally, the court awarded plaintiff $500,000 in statutory damages. In justifying the maximum award of $100,000 per infringing domain name, the court noted that: (1) defendant admittedly earned between $800,000 and $1,000,000 annually from his cybersquatting activities, and (2) defendant "boldly thumb[ed] his nose at the rulings of this court and the laws of our country" by continuing his cybersquatting even after this court in another case enjoined him and assessed statutory damages and attorney's fees . Finally, the court awarded plaintiff over $30,000 in attorney's fees and costs.
Four days after the court entered judgment in favor of plaintiff, defendant appeared for the first time and asked the court to set aside its judgment. Defendant argued that the court lacked personal jurisdiction over him because he had never been personally served with process. Because defendant had actual knowledge of the lawsuit and he "willfully evad[ed] repeated attempts at service," the court denied defendant's motion. In addition, the court awarded plaintiff almost $24,000 in costs and attorney's fees incurred in defending the motion.
Source[]
- This page uses content from Finnegan’s Internet Trademark Case Summaries. This entry is available under the Creative Commons Attribution-Share Alike License 3.0 (Unported) (CC-BY-SA).