Judge: Gillece 'cybersquatting' aimed at causing confusion

A federal judge Tuesday pulled the plug on Gillece Plumbing & Heating Inc.'s practice of registering Internet domain names containing all or part of its competitors' names, ruling the company did so to confuse customers.

U.S. District judge Arthur Schwab ruled in favor of Fagnelli Plumbing Co. Inc. of Oakland on its claims that Gillece Plumbing of Bridgeville violated the federal anti-cybersquatting law and state and federal trademark laws when it registered fagnelli.com and www.fagnelli.com. The Oakland company's real site is www.fagnelliplumbing.com.

Fagnelli sued Gillece last year when a customer trying to find its website entered "fagnelli.com" into his browser and was redirected to Gillece's website. Gillece denied in court documents that it tried to lead Internet searchers to its site through the fagnelli.com address.

Gillece registered the domain names without telling competitors and used many of the domains to offer its services, Schwab said.

"Such registration establishes defendant's pattern of behavior that may have kept potential customers from accessing the legitimate websites of competing businesses or divert customers to its own website," the judge said.

Schwab issued a permanent injunction that orders Gillece to give Fagnelli the domain names related to the name and refrain from registering future domain names that contain "fagnelli." The judge ordered the companies to resolve remaining issues in mediation.

Ed Friedman, an attorney for Fagnelli, said damages remain unresolved.

"We're very pleased that the court recognized that Gillece Plumbing had no right to take the Fagnelli name," he said.

The judge noted that Fagnelli elected to seek statutory damages, which can range from $1,000 to $100,000 under the anti-cybersquatting law.

Gillece referred questions to its lawyer Paul Robinson, who couldn't be reached for comment.

University of Pittsburgh law professor Michael Madison said Gillece's registration of almost 100 domains with competitor names was "pretty damning." Motive separates a legitimate registering of a domain name from cybersquatting, he said.

"The relevant language in the law is a 'bad-faith intent to profit,' " Madison said.

If someone not in the plumbing business, for example, registered fagnelli.com, it would not be illegal unless the person tried to extort money from Fagnelli Plumbing in return for handing over the domain name.

Companies have sued over critics registering names such as www.microsoftsucks.org. Collectively known as the "sucks cases," the recent trend in federal court rulings favored defendants because "no reasonable person would go to a sucks site" and think it was operated by the company or person being mocked, Madison said.

One early domain name case happened in Western Pennsylvania when Zippo Manufacturing Co. of Bradford sued Zippo Dot Com, a California company, for registering zippo.com, zippo.net and zipponews.com. The California company subsequently disbanded, and the lawsuit settled in a confidential agreement giving Zippo Manufacturing control of the domain names.

Tracking the frequency of such cases is problematic because companies can file lawsuits or seek arbitration through an international system set up by the Internet Corporation of Assigned Names and Numbers, Madison said.

Although only a federal court can award damages, the arbitrator can order the transfer of the domain name, and arbitration is faster and cheaper than suing, he said.

Because arbitrations are handled outside court, "that makes it difficult to track what's happening," Madison said.