## Facts

- Joseph C. Shields, a cartoonist doing business as “The Joe Cartoon Company,” used the “Joe Cartoon” name for many years and operated the website joecartoon.com to distribute animations and sell merchandise.
- Shields’ site gained substantial recognition and traffic, averaging hundreds of thousands of visits per month.
- John Zuccarini, a domain-name registrant, registered multiple typographical variants of Shields’ domain (joescartoon.com, joecarton.com, joescartons.com, joescartoons.com, and cartoonjoe.com).
- Zuccarini used the domains to divert users who mistyped Shields’ address to sites displaying advertisements and employing “mousetrapping” that forced users through successive ad pages.
- Zuccarini received pay-per-click revenue for user interactions and had a broader pattern of registering typo-variants of other well-known names.
- After Shields demanded transfer of the domains, Zuccarini refused.
- Shields sued under the Anticybersquatting Consumer Protection Act (ACPA), and the district court granted summary judgment for Shields, awarding $10,000 per domain name in statutory damages and attorney’s fees as an “exceptional” case.

## Issues

1. Whether registering and using intentional misspellings of a distinctive mark to divert users for commercial gain constitutes a violation of the ACPA.
2. Whether awarding $10,000 per domain name in ACPA statutory damages was an abuse of discretion.
3. Whether the case was “exceptional” such that an attorney’s fees award to the prevailing plaintiff was proper.

## Decision

- The Third Circuit affirmed summary judgment for Shields on ACPA liability.
- The court held that intentional misspellings can be “confusingly similar” to a protected mark and that Zuccarini acted with a bad faith intent to profit.
- The court affirmed the statutory damages award of $10,000 per domain name as within the permissible range and not an abuse of discretion.
- The court affirmed the award of attorney’s fees, agreeing the matter qualified as an “exceptional” case.

## Legal Principles

- ACPA liability attaches where a defendant, with bad faith intent to profit, registers, traffics in, or uses a domain name that is identical or confusingly similar to a distinctive mark. (15 U.S.C. § 1125(d)(1)(A))
- Typographical variations intended to capture users’ misspellings may satisfy “confusingly similar,” especially when used to divert consumers for commercial gain.
- Bad faith intent to profit may be shown through the statutory, nonexclusive factors, including intent to divert consumers and lack of legitimate rights in the domain names. (15 U.S.C. § 1125(d)(1)(B)(i))
- ACPA statutory damages may be awarded per domain name within the statutory range as the court considers just, serving compensatory and deterrent purposes. (15 U.S.C. § 1117(d))
- Attorney’s fees may be awarded to the prevailing party in “exceptional cases” under the Lanham Act, including cases involving deliberate, repeated, and exploitative cybersquatting conduct.

## Conclusion

The Third Circuit held that deliberate registration and use of typo-variants of a distinctive mark to divert and monetize mistaken web traffic constitutes actionable cybersquatting under the ACPA, and it affirmed per-domain statutory damages and attorney’s fees based on the defendant’s bad-faith, profit-driven scheme.


Shields v. Zuccarini, 254 F.3d 476 (3d Cir. 2001)