Carnivale v Staub Design LLC

Carnivale v Staub Design LLC

United States District Court (D. Delaware)

Facts: Plaintiff Carnivale is an architect located in New York and Staub is a design company located in Arlington, Virginia, incorporated as an LLC in Delaware. Plaintiff wrote a book titled "The Affordable House" (C) in January of 1996. In May of 1996 plaintiff published his book under the website www.affordablehouse.com. Plaintiff registered the domain name in 1998 and has kept it current. In 200 Staub built a house an in promotional materials named it "The Affordable House" largely based on the fact that it was built using the autoclaved aerated concrete (AAC) method that Staub made the principal part of their business. After an internet search revealed plaintiffs registration defendant registered "www.theaffordablehouse.com" in 2004. Plaintiff filed for his registration of the mark THE AFFORDABLE HOUSE in February 2006 certifying use of the mark in commerce since 1996. The plaintiff discovered the defendant's website in 2007 and sent a cease and desist letter. The defendants then changed the name of their website to "www.staubdesign.com." Defendants subsequently moved to have plaintiffs registration cancelled, but those proceedings were stayed until the outcome of this, the plaintiffs infringement claim, in which he must prove bad faith. Plaintiff asserts injury here under the Anticybersquatting Consumer Protection Act (ACPA).

Procedural Histrory: This case comes to the District Court after the Plaintiff partially prevailed on collateral Summary Judgment motions. The trial was held to determine the issue of bad faith.

Holding: Plaintiff showed Bad Faith under the ACPA and the Defendants were ordered to pay $25,000 in damages.

Analysis: The ACPA requires a nine (9) factor analysis. Here three (3) of those nine (9) factors were found to weigh against bad faith while the other seven (7) supported the finding. Key to the courts analysis was that while the defendant did not "hoard and sell" domain names which was the main aim of the statute, here the defendants chose their name after learning of the plaintiffs website. Such a small change then solely for the purposes of avoiding the protections that plaintiff enjoyed in his registered mark was sufficient to impose a finding of bad faith.

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