A Delaware federal court has ruled for an architect in his anti-cybersquatting battle against a building design firm. It’s an important Anticybersquatting Consumer Protection Act (“ACPA”) decision. Here’s what happened.
Plaintiff was an architect that wrote a book called “The Affordable House” in 1996. Plaintiff subsequently published the book on his Internet Web site www.affordablehouse.com. In addition to containing excerpts from the book, the plaintiff’s site also advertised and sold blueprints for home plan designs and sold copies of his book. In 2006, plaintiff registered the trademark THE AFFORDABLE HOUSE with the USPTO for “architectural plans and specifications” and “on-line retail store services featuring books and blue prints” (Reg. No. 3058545).
Defendants were Staub Design, LLC, a residential design company located in Arlington, Virginia and its principals John and David Staub. They specialize in the design of buildings using a lightweight concrete called AAC. Defendants built a house using AAC in 2000 and called the house “The Affordable House”. They registered the domain name www.theaffordablehouse.com and proceeded to use that domain to post information on AAC and their design firm. On their Web site, the defendants used the slogan “The Affordable House- a project of Staub Design LLC”.
After discovering defendants’ site in March of 2007, plaintiff sent defendants a “cease and desist” letter. In response, defendants moved the content of their Web site to the url www.staubdesign.com. Defendants also asked the USPTO to cancel plaintiff’s trademark registration. Plaintiff then brought this lawsuit, alleging the defendants had violated ACPA .
The court in Carnivale v. Staub Design LLC carefully analyzed each of the bad faith factors set out by the ACPA and concluded that the defendants had acted in bad faith by registering the domain www.theaffordablehouse.com. (The court had previously determined in response to a motion for summary judgment that plaintiff’s mark was distinctive and that plaintiff’s mark and defendants’ domain name were identical or confusingly similar).
First, the court concluded that defendants did not own any rights in any trademark that was identical or similar to THE AFFORDABLE HOUSE nor was THE AFFORDABLE HOUSE a legal name or nickname of defendants. Further, plaintiff’s use of THE AFFORDABLE HOUSE mark predated any use by defendants. The court also concluded that defendants’ use of the mark was for commercial purposes and that defendants’ knowing and wholesale inclusion of the mark in their domain name implied that defendants might have sought to divert customers away from plaintiff’s website.
Although the court held that several of the factors did not weigh in favor of a finding of bad faith (for example, defendants did not offer to sell the domain to plaintiff, defendants did not provide misleading contact information when registering the domain name and defendants did not register numerous domain names that resembled plaintiff’s mark), on balance, the court concluded that the defendants acted in bad faith. The court noted that it was authorized by the ACPA to award statutory damages from $1,000 to $100,000 per domain name violation and awarded $25,000 statutory damages in light of defendants’ bad faith infringement of plaintiff’s mark.
Lesson learned? To ensure you are not infringing on anyone else’s mark, arrange for a trademark search and consult with counsel before choosing your domain. Here, defendants were aware of plaintiff’s use of www.affordablehouse.com before choosing www.theaffordablehouse.com — a red flag that was either not caught or not heeded – Jean Voutsinas