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Appellate Court Deems Typo-Squatting Punishable

JoeCartoon.com — a Web site showcasing animations with names such as Frog Blender, Look at My Monkey and Joe Fish — is entitled to protection from typo-squatting under the Anti-Cybersquatting Consumer Protection Act, according to an opinion issued by the U.S. Court of Appeals for the Third Circuit on Friday.

The appellate court upheld the decision of the U.S. District Court for the Eastern District of Pennsylvania, which ruled that the owner of five URLs similar to animation site www.joecartoon.com was liable for damages and attorney's fees under the anti-cybersquatting act.

While the registration of a trademarked name or a celebrity's name clearly falls under the act, at issue in this case was whether typo-squatting, the practice of setting up camp on the Internet under a domain name that is similar to an existing domain name, is against the law under the act.

The judges ruled that the Joe Cartoon Web site operator proved — under the provisions of the anti-cybersquatting act — that its site was “a distinct or famous mark entitled to protection,” that the defendant's domain names were “identical or confusingly similar” and that the defendant registered the domain names “with bad faith intent to profit from them.”

“The appellate court affirmed that in fact misspellings of a domain name — not just the identical name — can constitute cybersquatting under the act,” said David Opderbeck, a partner in the intellectual property information technology law group at McCarter & English, Newark, NJ.

In November 1999, John Zuccarini registered five variations of the Joe Cartoon URL, including www.joescartoon.com, www.joecarton.com, www.joescartons.com, www.joescartoons.com and www.cartoonjoe.com.

The plaintiff in the case, Joseph Shields, has run the Joe Cartoon Web site since June 1997. He filed a cease-and-desist letter in December 1999 and sued for relief under the anti-cybersquatting act.

In response, Zuccarini changed the content of the five Web sites and declared them to be “political protest” sites in reaction to what he considered offensive content on the Joe Cartoon site.

Nonetheless, a U.S. District Court judge ruled in Shields' favor. Zuccarini appealed the decision. In upholding the lower court's decision, the appeals court ruled that Shields is entitled to $10,000 in statutory damages for each infringing domain name plus attorney's fees from Zuccarini.

Opderbeck cited two main reasons why this decision is important.

“It's important for recognizing that typo-squatting clearly can be cybersquatting and that the appellate courts are going to give the trial courts broad latitude in what kind of damage awards they will uphold,” he said.

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