Fardo and Rogel Settle Cybersquatting Case in Federal Court

Originally published August 29, 2011. Updated October 2026.

In August 2011, attorneys Noah Fardo and William F. “Bill” Rogel reached a confidential resolution of a federal cybersquatting claim. The defendant was accused of using domain names similar to its competitors’ to divert web traffic to its own website.

What Is Cybersquatting?

The federal Anticybersquatting Consumer Protection Act (ACPA) targets people who, in bad faith, register or use a domain name that is confusingly similar to someone else’s distinctive mark. To bring a claim, a plaintiff generally must show:

• The plaintiff has a distinctive mark
• The domain name is identical or confusingly similar to that mark
• The defendant registered or used the domain name
• The defendant acted with a bad faith intent to profit

The Hard Part: Proving a Mark Is Distinctive

The challenge often lies in proving that the mark is distinctive, especially when it is not a registered trademark, as in this case. The plaintiff must then show that the public associates the name with its business, which is called secondary meaning. Courts have looked at factors such as:

• Sales and advertising that lead buyers to associate the mark with the business
• Length and exclusivity of use
• Evidence of copying
• Customer surveys and testimony
• Use of the mark in trade journals
• Size of the company and number of sales and customers
• Actual confusion

Damages

Because actual damages are often hard to prove in these cases, the law lets a plaintiff choose statutory damages instead. Under 15 U.S.C. § 1117(d), a court may award statutory damages of not less than $1,000 and not more than $100,000 per domain name, as the court considers just. In our experience, the largest outcomes involve clear bad faith, such as taking a competitor’s domain name and trying to sell it back at a steep price.

What This Means for You Today

This case is part of our firm’s history. Today our practice focuses on personal injury, medical malpractice and property tax appeals. Learn more about Noah Fardo and Bill Rogel.

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Past results do not guarantee a similar outcome. Every case is different.