## Facts

- Electronics Boutique Holdings Corporation (EB) operated retail and online sales of video games and computer software, including through ebworld.com and electronicsboutique.com.
- EB owned registered service marks including EB and ELECTRONICS BOUTIQUE, which the court found distinctive and famous in the relevant market.
- John Zuccarini registered multiple misspelled domain names closely resembling EB’s marks and domains, including electronicboutique.com, eletronicsboutique.com, electronicbotique.com, ebwold.com, and ebworl.com.
- Zuccarini used the domains to capture users who mistyped EB’s URLs and subjected them to numerous pop-up advertisements and “mousetrapping” techniques that impeded exiting the sites.
- Zuccarini profited from the diverted traffic on a per-click basis and had a broader pattern of registering misspellings of others’ marks and domains.
- EB presented evidence of actual confusion, including testimony from a customer who believed EB was associated with one of Zuccarini’s sites.
- After EB filed suit, the court issued a temporary restraining order and later a preliminary injunction on the ACPA claim; Zuccarini had actual notice but did not appear at hearings.
- The court conducted a consolidated merits and damages hearing; Zuccarini again failed to appear or obtain counsel.

## Issues

1. Whether EB’s marks were distinctive or famous and therefore protectable under the Anticybersquatting Consumer Protection Act (ACPA), 15 U.S.C. § 1125(d).
2. Whether Zuccarini’s misspelled domain names were identical or confusingly similar to EB’s marks.
3. Whether Zuccarini registered and used the domain names with a bad-faith intent to profit from EB’s marks.
4. What remedies were appropriate under the ACPA, including injunctive relief, transfer of domain names, statutory damages, and attorney’s fees and costs.

## Decision

- The court found EB proved all elements of its ACPA claim: EB owned distinctive and famous marks; the disputed domains were confusingly similar; and Zuccarini acted with bad-faith intent to profit.
- The court entered a permanent injunction barring Zuccarini from using the listed domains and any domain name substantially similar to EB’s marks.
- The court ordered Zuccarini to transfer the infringing domain names to EB.
- The court awarded statutory damages of $100,000 per domain name for five domains ($500,000 total).
- The court awarded more than $30,000 in attorney’s fees and costs, finding the matter exceptional and emphasizing deterrence.

## Legal Principles

- Under the ACPA, liability requires (1) a distinctive or famous mark, (2) a domain name identical or confusingly similar to the mark, and (3) registration, trafficking in, or use of the domain name with bad-faith intent to profit. 15 U.S.C. § 1125(d).
- Domain names that differ from a mark or legitimate domain only by common typographical errors can be “confusingly similar,” particularly where the design is to divert mistyped traffic and confusion is shown.
- Bad-faith intent to profit may be shown by the absence of any legitimate interest in the domain, a pattern of registering similar domains targeting others’ marks, and a revenue model dependent on diverted traffic and advertising clicks.
- Remedies under the ACPA include injunctive relief and transfer of the offending domain names to the mark owner.
- Statutory damages may be awarded per infringing domain name within the statutory range, and maximum awards and fee-shifting may be warranted where conduct is willful, repeated, and contemptuous of court orders.

## Conclusion

The court held that registering and monetizing misspellings of a well-known retailer’s marks and domains constituted cybersquatting under the ACPA, and it imposed broad injunctive relief with transfer of the domains, maximum statutory damages, and attorney’s fees to stop and deter serial typosquatting.


Electronics Boutique Holdings Corp. v. Zuccarini, 56 U.S.P.Q.2d 1705 (E.D. Pa. 2000)