The ruling by the 3rd US Circuit Court of Appeals was made under the US Anticybersquatting Consumer Protection Act. It follows a similar decision last year by a Pennsylvania district court in which Zuccarini and his company Cupcake Patrol were ordered to pay the sum of $500,000 in damages over five domain names based on misspellings of games seller Electronics Boutique.
In the UK, an aggrieved trade mark owner in these circumstances can bring a case before national courts, relying on trade mark law and a legal wrong known as passing-off. Alternatively, cases can be taken to a panel of the World Intellectual Property Organisation (WIPO) or similar bodies.
In the US, aggrieved parties have the additional choice of bringing a case under the Anticybersquatting Consumer Protection Act of 1999 which provides for the remedy of damages up to $100,000 for each offending domain name. For any action under the Act it must shown that there was “deliberate, bad-faith and abusive registration of internet domain names in violation of the rights of trade mark owners”.
The owner of joecartoon.com, Joseph Shields, registered the domain name in June 1997 and has used it to host his creations such as the popular “Frog Blender” which brings him ”significant” advertising revenue.
In November 1999, Mr Zuccarini registered five other domain names, joescartoon.com, joecarton.com, joescartons.com, joescartoons.com, and cartoonjoe.com. These names took visitors to sites with multiple pop-up ads for other sites and credit card companies, a practice known as “mouse-trapping.” Zuccarini received payment for each click.