Proof of Ownership Required

Posted by on Jun 8, 2012 in Litigation, Trademark

Only owner of a mark can sue for cybersquatting — Garruto v. Longo, 2012 WL 1981838 (D.N.J. June 1, 2012)

Say a disgruntled customer of your business decides to complain to the world about how dissatisfied he is with the product you sold him.  He writes scathing online reviews.  He even goes so far as to register a domain name that includes part of your company’s name.  What can you do?

At first glance, one solution might be to sue under the Anticybersquatting Consumer Protection Act (ACPA).  But not so fast.  First, you need to be the legal owner of the trademark that’s part of the offending domain name.  The plaintiff in Garruto v. Longo apparently overlooked that step.

A pet store (Fancy Pups, Inc.) sold a German Shepherd puppy to the defendant (Longo).  Immediately after the sale, the puppy contracted the parvo virus and died.  Longo claimed the puppy contracted the virus at Fancy Pups.  According to the complaint, Longo then “began an internet crusade to run Fancy Pups out of business.”   Longo allegedly posted photos of the dead puppy on the Internet, called the owner of Fancy Pups a “puppy killer,” and labeled Fancy Pups a “puppy mill.”  Longo voiced her complaints on online review websites like Yelp! and published advertisements in a local newspaper.  Longo also created a company profile for Fancy Pups on Manta.com.  In the profile heading “About Fancy Pups,” Longo stated: “We sell sick puppies at top dollar that will die.  I am an unscuplious [sic] man who will take your money and leave you with a dead dog.  I am evil LIAR.”

Fancy Pups and its owner sued Longo under the ACPA.  Notably missing in the complaint was an allegation that “Fancy Pups” was registered as a trademark by the plaintiffs or that it is a famous mark that everyone knows.  This omission proved fatal to the ACPA claim.  A cybersquatting claim must be brought by the “owner of a mark,” and the plaintiffs failed to establish that “Fancy Pups” was entitled to trademark protection.  The court also noted that there was no allegation that Longo registered a domain name that included “Fancy Pups.”  The court concluded without much discussion that posting a fake profile on an online business directory like Manta.com does not constitute cybersquatting.

LegalTXT Lesson: Register your trademarks.  The ACPA won’t help you if you can’t establish you own the marks you’re trying to protect.

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