Judge Unclogs Issue on Redirection of Internet Traffic Between Competing Companies

by:  Joseph R. Carnicella, intellectual property associate with Picadio Sneath Miller & Norton, P.C.

On February 15, 2011, Judge Schwab of the Western District of Pennsylvania ruled in favor of Fagnelli Plumbing Company, Inc. on its motion for summary judgment and found that there were no genuine issues of fact relating to the claims against Gillece Plumbing and Heating, Inc., et al., for a cybersquatting violation of the Anticybersquatting Consumer Protection Act (ACPA), a violation of the Lanham Act, 15 U.S.C. § 1125(a)(1)(A), and common law trademark infringement and unfair competition.  

According to the Judge’s Memorandum Opinion, Fagnelli Plumbing has been the registrant of the domain name “fagnelliplumbing.com” since 2000, and Gillece Plumbing purchased and registered the domain name “fagnelli.com” with GoDaddy in March 2007.  After learning that internet traffic was being redirected to Gillece Plumbing’s website and requesting in a letter that Gillece Plumbing cease and desist from redirecting internet traffic, Fagnelli Plumbing commenced the lawsuit on May 18, 2010. 

With respect to Fagnelli Plumbing’s cybersquatting claim, the Court analyzed the ACPA and concluded that the name “Fagnelli” was a distinctive mark entitled to protection, the registration of “fagnelli.com” was identical or confusingly similar to the name “Fagnelli” and Gillece Plumbing acted in bad faith with the intent to profit.  In regard to the alleged Lanham Act violation, the Court noted that generally the Lanham Act does not protect surnames unless they are distinctive or famous, yet held that “Fagnelli” acquired a distinct and secondary meaning with Western Pennsylvania at the time when Gillece Plumbing began to use the mark.  The Court also determined that Gillece Plumbing’s use of “Fagnelli” created a likelihood of confusion in the marketplace.  Moreover, the Court granted summary judgment on Fagnelli Plumbing’s claims for common law trademark infringement and unfair competition because the Court found these claims to be identical to the violation of the Lanham Act claim.  In addition to granting Fagnelli Plumbing’s motion for summary judgment, the Court also granted a permanent injunction prohibiting Gillece Plumbing from redirecting internet traffic from fagnelli.com or any other domain name using the word “Fagnelli” and owning the domain name fagnelli.com or any similar domain name.  The Court noted that a subsequent proceeding will be held to determine damages against the Defendants.

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