## Facts

- Fagnelli Plumbing Company, Inc. and Gillece Plumbing and Heating, Inc. competed in the plumbing, heating, and cooling services market in Western Pennsylvania.
- Fagnelli had operated and advertised under the Fagnelli name for more than 50 years.
- Beginning around 2000, Fagnelli used the domain name **fagnelliplumbing.com** to advertise its services online.
- In 2007, Gillece acquired the domain name **fagnelli.com**.
- Visitors who typed **fagnelli.com** into a browser were automatically redirected to Gillece’s website, where Gillece advertised its competing services.
- The record showed Gillece registered almost 100 additional domain names that resembled the names of other competing plumbing/HVAC businesses and routed those domains to Gillece’s site.
- Fagnelli sued under the Lanham Act, including the Anti-Cybersquatting Consumer Protection Act (ACPA), and related unfair-competition theories, and sought summary judgment and injunctive relief.

## Issues

1. Whether “Fagnelli,” used for decades to identify Fagnelli’s services, was a protectable mark for purposes of the ACPA and Lanham Act.
2. Whether **fagnelli.com** was identical or confusingly similar to Fagnelli’s mark.
3. Whether defendants registered and used **fagnelli.com** with a bad-faith intent to profit from Fagnelli’s mark under the ACPA (15 U.S.C. § 1125(d)).
4. Whether redirecting **fagnelli.com** to Gillece’s commercial website created a likelihood of confusion (false designation of origin/unfair competition) under 15 U.S.C. § 1125(a).
5. Whether permanent injunctive relief was warranted to stop continued use of **fagnelli.com** and similar competitor-name domains.

## Decision

- The court granted summary judgment for Fagnelli on its cybersquatting and related Lanham Act unfair-competition theories and denied defendants’ request for summary judgment.
- The court found Fagnelli had enforceable rights in the “Fagnelli” name in its market based on longstanding use and recognition in connection with plumbing/HVAC services.
- The court concluded **fagnelli.com** was identical (or at least confusingly similar) to Fagnelli’s mark because it consisted of the mark itself paired with the “.com” top-level domain.
- The court held defendants acted with bad-faith intent to profit, relying on facts including (i) defendants’ status as a direct competitor, (ii) the commercial redirection of **fagnelli.com** to defendants’ business site, and (iii) the broader pattern of registering many domains based on competitors’ names.
- The court determined the redirection practice was likely to confuse consumers looking for Fagnelli and improperly diverted traffic to Gillece.
- The court entered a permanent injunction barring defendants’ use of **fagnelli.com** (and related conduct) to prevent ongoing consumer confusion and harm to Fagnelli’s goodwill.

## Legal Principles

- The ACPA imposes liability when (1) the plaintiff owns a distinctive or famous mark entitled to protection, (2) the defendant registers, traffics in, or uses a domain name that is identical or confusingly similar to the mark, and (3) the defendant acts with a bad-faith intent to profit. 15 U.S.C. § 1125(d).
- ACPA bad faith may be shown by evidence that the defendant intended to divert consumers for commercial gain by creating confusion, and by evidence of a pattern of registering multiple domains corresponding to others’ marks or names. 15 U.S.C. § 1125(d)(1)(B)(i).
- Lanham Act § 43(a) (15 U.S.C. § 1125(a)) prohibits uses of names or designations in commerce that are likely to cause confusion as to affiliation, sponsorship, or source; using a competitor’s name as a domain to route customers to the competitor’s own site supports liability where confusion is likely.
- Permanent injunctive relief is an available remedy in trademark and cybersquatting cases when the challenged conduct threatens continuing consumer confusion and continuing harm that monetary relief alone would not fully address.

## Conclusion

Fagnelli Plumbing Co. v. Gillece Plumbing and Heating, Inc. holds that a competitor’s purchase and use of a domain name identical to a long-used business name—combined with automatic redirection of consumers to the competitor’s own commercial website and a pattern of similar competitor-based registrations—supports ACPA cybersquatting and Lanham Act unfair-competition liability, justifying summary judgment and a permanent injunction.


Fagnelli Plumbing Co. v. Gillece Plumbing and Heating, Inc., 98 U.S.P.Q.2d 1997 (2011)