Tag Archives: statutory damages

Cybersquatter hit with maximum penalty

Citigroup, Inc. v. Shui, 2009 WL 483145 (E.D. Va. Feb. 24, 2009)

Court enjoins use of citybank.org, orders defendant to pay $100,000 in statutory damages and to pay Citibank’s attorneys’ fees.

Defendant Shui registered the domain name citybank.org and established a site there promoting financial services, sometimes using the mark CITIBANK. The real Citibank, armed with its trademark registrations in over 200 countries and over 50 years of use of its CITIBANK mark, filed suit against Shui under the Anticybersquatting and Consumer Protection Act, 15 USC 1125(d) (“ACPA”).

Citibank moved for summary judgment on its ACPA claim and also asked the court to enter an injunction against Shui. Citibank also sought $100,000 — the maximum amount of statutory damages available under the ACPA, plus payment of Citibank’s attorneys’ fees. The court granted all of Citibank’s requested relief.

To prevail on the ACPA claim, Citibank had to show that (1) Shui had a bad faith intent to profit from using the domain name, and (2) that the domain name at issue was identical or confusingly similar to, or dilutive of, Citibank’s distinctive or famous mark.

Finding of bad faith

The court found Shui registered the domain name in bad faith because:

  • Shui did not have any trademark or other intellectual property rights in the domain name, and the registration of the domain name was not sufficient to establish any rights.
  • The domain name consisted of the legal name of Citibank (with one letter difference) and not the legal name of, nor any name that was otherwise used to identify Shui.
  • Shui had not engaged in prior use of the disputed domain name in connection with the bona fide offering of any goods or services prior to registering the domain name.
  • Shui’s use of the domain name was commercial in nature. Notably, some of the advertisements on Shui’s site were exact replicas of the marks CITIBANK and CITI. Each clickthrough provided Shui with advertising revenue, even though clicking on a link with Citibank in the title did not redirect the user to any website affiliated with the real Citibank.
  • Shui clearly intended to confuse, mislead and divert internet traffic from Citibank’s official website to his own in order to garner more clickthrough revenue from the misleading “citibank” advertisements.
  • Subsequent to the filing of the complaint, Shui sold the domain name for financial gain to a third-party in an apparent effort to avoid liability.
  • Shui registered other internet domain names which were identical or similar to Citibank’s marks, and the CITIBANK mark was distinctive and famous at the time Defendant registered the disputed domain name.

Confusing similarity

On the issue of confusing similarity, the court observed the strength of Citibank’s mark and the fact that the parties both offered financial services. Taking those facts in combination with the bad faith demonstrated by Shui, the court found the disputed domain name to be confusingly similar to Citibank’s marks.

The remedy

Accordingly, the court found in favor of Citibank on the ACPA claim. The court was stern in its remedy. It found that Shui’s registration of the confusingly similar domain name was “sufficiently willful, deliberate, and performed in bad faith to merit the maximum statutory award of $100,000 and an award of attorney’s fees.”

$100K photo courtesy Flickr user Ricardo (Kadinho) Villela under this Creative Commons license.

Statutory damages for copying competitor’s catalog on website

Silver Ring Splint Co. v. Digisplint, Inc., 2008 WL 2478390 (W.D.Va. June 18, 2008)

Silver Ring and Digisplint are competitors in a niche industry, each producing and selling fine jewelry quality finger splints made of gold and sterling silver. Silver ring sued Digisplint for copyright infringement alleging that Digisplint copied text from Silver Ring’s 1994 catalog, and posted that text on Digisplint’s website.

Before trial, the court awarded summary judgment to Silver Ring on the question of liability for copyright infringement. The question of damages proceeded to trial. Finding that “nearly identical and very similar text comprise[d] substantial portions of both [works],” and that the similarities were “obvious and persuasive,” the court awarded Silver Ring $30,000 in statutory damages pursuant to 17 U.S.C. §504(c)(1). It found that Digisplint’s copying was willful, and although Digisplint reaped no profits from the infringement, the award was to serve as a deterrent to future conduct of the sort.

Digisplint had filed a counterclaim pursuant to the Anticybersquatting Consumer Protection Act (ACPA) over Silver Ring’s registration of digisplint.com. The court found in favor of Digisplint on this claim, and entered an injunction against any further registration of a confusingly similar domain name. But because Silver Ring registered the domain name in 1998, prior to the enactment of the ACPA, Digisplint was entitled to no money damages, only an injunction.