Stealing both a trademark and a domain name? You'll pay for both.
The United States Court of Appeals for the Eleventh Circuit recently held that when you are found liable for infringement (essentially, theft) of a trademark or service mark and you hijack someone's identical domain name (cyberpiracy), there are two separate wrongs you've committed, and you'll pay for both.
In St. Luke's Cataract & Laser Inst., P.A. v. Sanderson, No. 08-11848 (July 9, 2009), Defendant Sanderson, an eye surgeon formerly employed by Plaintiff St. Luke's, had the registration information for two domain names changed to himself after leaving. Sanderson was found liable for both taking the domain names and for infringing the service mark, and St. Luke's was awarded damages (i.e., payment for harm) for both. Sanderson claimed that the two awards for damages were duplicate and, therefore, inappropriate.
The Court of Appeals disagreed.
First, the text of the Anti-Cybersquatting Protection Act ("ACPA"), 15 U.S.C. Sec. 1125(d)(3), states that any damages awarded under the ACPA shall be in addition to any other appropriate damages awarded in the case, and a claim of service mark infringement under the Lanham Act, 15 U.S.C. Sec. 1125(a), was appropriate in this case. So, even if the two damages awards are duplicative, the ACPA allows for both to be awarded. Second, however, these aren't duplicate awards. The key difference is that a case for cyberpiracy requires a showing of a "bad faith intent to profit" from a protected domain name, and so the award for damages served to punish Dr. Sanderson for his conduct in order to deter future violations of the ACPA by him. On the other hand, the award for damages under the Lanham Act was intended to compensate St. Luke's directly for its injuries and losses (for example, loss of business and profit) due to the service mark infringement.
The Court of Appeals added that this distinction between deterrence and direct compensation is consistent with how the Copyright Act (17 U.S.C. Sec. 504(c)(1)-(2)), a similarly worded statute, is interpreted, and as a result, other Federal Courts of Appeal have reached the same conclusion.
The lesson: If you steal the logo for "laserspecialist" and the domain laserspecialist.com, you'll pay for both.
