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Several months ago, U.S. District Judge Michael Mukasey of the Southern District of New York sentenced John Zuccarini to two and a half years in prison for bad spelling. But Zuccarini is no ordinary misspeller. One of the most notorious “typosquatters,” he registered Internet domain names that were intentional misspellings of distinctive or famous names. As a result, Zuccarini had been accused by the federal government of violating the Truth in Domain Names Act, 18 U.S.C. �2252B, which was enacted by Congress last year. Although his arrest and conviction remain the most significant actions taken under the statute, the Domain Names Act adds another possible step that can assist companies that are victimized by typosquatting on the Internet. THE PROBLEM People often make spelling errors when typing a Web address, and others attempt to commercially exploit those mistakes. Someone seeking to go to the McDonald’s site, for example, might type “macdonalds.com.” This is not a new phenomenon � companies with toll-free phone numbers that spell words (so-called vanity numbers) have faced this problem for years. For example, Holiday Inns promoted its toll-free number as 1-800-HOLIDAY. For some time, consumers who dialed a zero instead of the letter O were connected to a competitive hotel reservation line. See Holiday Inns Inc. v. 800 Reservations Inc., 86 F.3d 619 (6th Cir. 1996). Some businesses recognized this problem and obtained multiple toll-free numbers to address it. Companies with easily misspelled Web sites also may decide the prudent course is to register those misspelled domain names to direct surfers to the destination they seek. Yet there is a big difference between a vanity number that might prove confusing to callers and domain names that might be misspelled � there are many more ways to misspell a word. Typosquatters latched on to this peculiarity in an effort to benefit themselves financially, and many, indeed, do quite well. Zuccarini, for example, apparently made up to $1 million per year from these kinds of typing mistakes. CIVIL STEPS Two of the principal civil remedies available to businesses that face typosquatters are the Uniform Domain-Name Dispute Resolution Policy (UDRP) and the Anti-Cybersquatting Consumer Protection Act (ACPA). The UDRP, an alternative dispute resolution process generally incorporated in most domain name registration agreements, is a policy under which a party disputing the registration of an Internet domain name may challenge that registration. Complainants must show not only confusion between the complainant’s mark and the domain name registered, but also that the domain name was registered in bad faith. U.D.R.P. Rule 4(a)(iii). The ACPA, which became law in 1999, bars a person from registering or using with a “bad faith” intent to profit an Internet domain name that is “identical or confusingly similar” to the distinctive or famous trademark or Internet domain name of another person or company. See 15 U.S.C. �1125(d). The ACPA was intended to prevent “cybersquatting,” an expression that has come to mean the bad faith, abusive registration and use of the distinctive trademarks of others as Internet domain names, with the intent to profit from the goodwill associated with those trademarks. See S. Rep. No. 106-140 (1999). Under the ACPA, successful plaintiffs may recover statutory damages in an amount to be assessed by the District Court in its discretion, from $1,000 to $100,000 per domain name. See 15 U.S.C. �1117(d). In addition, successful plaintiffs may recover attorney fees in “exceptional” cases. See 15 U.S.C. �1117(a) A few years ago, the U.S. Court of Appeals for the 3rd Circuit applied the ACPA to the form of cybersquatting known as typosquatting. To the surprise of few in the industry, the case was brought against Zuccarini. The case was filed by Joseph Shields, a graphic artist from Alto, Mich., who creates, exhibits, and markets cartoons under the names “Joe Cartoon” and “The Joe Cartoon Co.” and who has a Web site at joecartoon.com. The plaintiff alleged that Zuccarini had registered five variations on his site: joescartoon.com, joecarton.com, joescartons.com, joescartoons.com, and cartoonjoe.com. Zuccarini’s sites featured ads for other sites and for credit card companies. Visitors apparently were “mousetrapped” in the sites, meaning they were unable to exit without clicking on a succession of ads. Zuccarini received between 10 and 25 cents from the advertisers for every click. After he discovered the Zuccarini sites, Shields sent “cease and desist” letters, but Zuccarini did not respond. Shields filed suit under the ACPA as well as under federal and state unfair competition laws and sought injunctive relief, statutory damages, and attorney fees. The District Court granted summary judgment in favor of the plaintiff, holding that Zuccarini had registered five variations of Shields’ trademarks willfully, in bad faith, and in violation of the ACPA. The District Court awarded the plaintiff statutory damages of $10,000 for each infringing domain name and more than $39,000 in attorney fees and costs. Zuccarini appealed. 3RD CIRCUIT RULING In Shields v. Zuccarini, 254 F.3d 476 (2001), the 3rd Circuit noted that to succeed on his ACPA claim, Shields had to prove that (1) “Joe Cartoon” was a distinctive or famous mark entitled to protection; (2) Zuccarini’s domain names were “identical or confusinglysimilar to” Shields’ mark; and (3) Zuccarini had registered the domain names with the bad faith intent to profit from them. See 15 U.S.C. �1125(d)(1)(A). With respect to the first issue, the circuit noted that Shields ran the only Joe Cartoon operation in the nation and had done so for many years; it added that the longevity of this use suggested that Joe Cartoon had acquired some fame in the marketplace. Moreover, the circuit added, the Joe Cartoon site received more than 700,000 visits a month. In light of this, the appellate court decided, Joe Cartoon was distinctive and the site joecartoon.com qualified as being famous. Therefore, it held, the trademark and domain name were protected under the ACPA. The circuit then ruled that Zuccarini’s domain names were “identical or confusingly similar” to Shields’ mark, noting that they closely resembled joecartoon.com, with a few additional or deleted letters or, in the last domain name, by rearranging the order of the words. Indeed, the 3rd Circuit pointed out, Zuccarini had admitted that he had registered domain names, including the five at issue in this case, because they were likely misspellings of famous marks or personal names and would divert traffic to his sites. Zuccarini argued that registering domain names that were intentional misspellings of distinctive or famous names (or typosquatting) was not actionable under the ACPA because it was intended to prevent cybersquatting, which he defined as registering someone’s famous name and trying to sell the domain name to him or registering it to prevent the famous person from using it himself. The circuit rejected this argument, noting that the ACPA not only covered the registration of domain names that were “identical” to distinctive or famous marks but also domain names that were “confusingly similar” to distinctive or famous marks. See 15 U.S.C. �1125(d)(1)(A)(ii)(I), (II). In the circuit’s opinion, a reasonable interpretation of conduct covered by the phrase “confusingly similar” was the intentional registration of domain names that were misspellings of distinctive or famous names, causing an Internet user who made a slight spelling or typing error to reach an unintended site. Finally, the appellate court observed that Zuccarini had never used the infringing domain names as trademarks or service marks but rather that he deliberately had maintained these domain names “to divert consumers” from Shields’ site either for commercial gain or with the intent to tarnish or disparage Shields’ mark by creating a likelihood of confusion and thus had acted with a bad faith intent to profit from this confusion. Accordingly, the circuit upheld the District Court’s decision, including its ruling that this was an “exceptional” case under the ACPA so that the award of attorney fees could stand. DOMAIN NAMES ACT Zuccarini’s loss required him to pay damages, and his conviction under the act put him in jail. The key section of the Domain Names Act is �2252B, which does not bar all typosquatting but rather bars typosquatting in circumstances that essentially involve obscenity. Subsection (a) of the statute provides that “[w]hoever knowingly uses a misleading domain name on the Internet with the intent to deceive a person into viewing material constituting obscenity shall be fined under this title or imprisoned not more than 2 years, or both.” Subsection (b) provides that “[w]hoever knowingly uses a misleading domain name on the Internet with the intent to deceive a minor into viewing material that is harmful to minors on the Internet shall be fined under this title or imprisoned not more than 4 years, or both.” The term material that is harmful to minors is defined to mean “any communication, consisting of nudity, sex, or excretion, that, taken as a whole and with reference to its context � (1) predominantly appeals to a prurient interest of minors; (2) is patently offensive to prevailing standards in the adult community as a whole with respect to what is suitable material for minors; and (3) lacks serious literary, artistic, political, or scientific value for minors.” The government contended that Zuccarini had scores of sites that related to entertainment figures, cartoon characters, and celebrities popular with minors; for example, Bob the Builder and Teletubbies. These sites used misspellings such as bobthebiulder.com and teltubbies.com to direct minors to a porn site. Zuccarini’s action violated the act, the government asserted. He pleaded guilty and apologized, but was sentenced to prison by Judge Mukasey. (In 2001, the Federal Trade Commission had filed an injunction against Zuccarini in the U.S. District Court for the Eastern District of Pennsylvania, but he successfully evaded service of that injunction until he was arrested, in Florida, in connection with criminal prosecution in New York under the Domain Names Act.) Typosquatters who mislead adults to view obscenity, or mislead minors to view harmful material as defined in the Domain Names Act can be held criminally responsible, as the Zuccarini case makes clear. (Because of the egregious nature of the mousetrapping in Zuccarini’s case, no issues arose as to possible constitutional ambiguity in the definitions contained in the Domain Name Act.) At this time, however, where that moral line is not crossed, companies seeking to protect their domain names essentially are left with civil remedies. Civil suits did not completely stop Zuccarini, who had been named in numerous UDRP and ACPA proceedings before the government commenced its criminal action against him under the Domain Names Act. Nonetheless, they offer companies battling typosquatters the ability to put pressure on them, and to regain control over their Web presence. Shari Claire Lewis is a partner at New York’s Rivkin Radler (www.rivkinradler.com), specializing in litigation in the areas of Internet, domain name, and computer law as well as professional liability and medical device and products liability. This article first appeared in the ALM daily newspaper New York Law Journal .

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