This is a somewhat rare cybersquatting case brought under the Anticybersquatting Consumer Protection Act (ACPA). It is a case involving a domain name “newportnews.com” that started out in 1997 referring to city events and advertising about the city of Newport News. Plaintiff, a trademark owner for Newport News for women’s fashions, brought in 2000 and lost an ICANN arbitration wherein the arbitration panel found no likelihood of confusion between the domain name and plaintiff’s identical trademark because consumers, seeing city events would not be confused as to plaintiff’s women’s fashions. About the year 2007, defendant changed management of its website from a company that handled city events to personal management by defendant and then emphasized women’s fashions. The District Court (ED Va.) granted summary judgment on the ACPA claim, awarding statutory damages plus attorney fees and sanctions against counsel.
To establish an ACPA violation, plaintiff was required to "(1) prove that defendant had a bad faith intent to profit from using the [newportnews.com] domain name, and (2) that the domain name is identical or confusingly similar to, or dilutive of, the distinctive and famous Mark". Calling the mark “famous” seems like a bit of a stretch to this writer and may indicate a predisposition by the appellate court on the strength of the mark when no trial had yet been held (this is an appeal of summary judgment on the ACPA claim).
The appeals court found both bad faith, from the commercial intent of the website relating to women’s fashions and confusing similarity. Defendant argued that the ACPA permits a registered trademark to be used by someone other than the mark owner if it is a "use, otherwise than as a mark, . . . of a term or device which is descriptive of and used fairly and in good faith only to describe the goods or services of such party, or their geographic origin." 15 U.S.C. ß 1115(b)(4). The district court found that this provision did not apply here because "[o]n VCV's website, Newport News is no longer used to describe VCV's goods or services, or their geographic origin, because the site is dedicated primarily to women's fashion."
The change in the character of the website in 2007 was seen as wilfull conduct, justifying high side statutory damages, while some tactical errors caused attorney fees.
