Schmidheiny v. Weber , 285 F. Supp. 2d 613 ( 2003 )

285 F. Supp. 2d 613 (2003)

Stephan SCHMIDHEINY
v.
Steven WEBER d/b/a/ Domainsale and Famology.com, Inc. and Famology.com, Inc.

No. C.A.01-377.

United States District Court, E.D. Pennsylvania.

September 10, 2003.

Lile H. Deinard, Neil E. McDonell, Marc S. Reiner, from Dorsey & Whitney LLP, New York City, for Plaintiff.

Anthony DeGidio, Law Offices of Anthony DeGidio, Toledo, Ohio, for Defendants.

MEMORANDUM OPINION AND ORDER

WEINER, District Judge.

Plaintiff, Stephan Schmidheiny brought this action alleging violation of the Anti-cybersquatting Consumer Protection Act (ACPA), 15 U.S.C. § 1129. Presently before the court are the parties renewed cross motions for summary judgment predicated upon a joint stipulation of undisputed facts. For the reasons which follow, we enter judgment in favor of the Schmidheiny.

The joint stipulation establishes the following facts:

1. Plaintiff Stephan Schmidheiny (Mr. Schmidheiny) is a living individual.

2. Mr. Schmidheiny has been ranked among the wealthiest individuals in the world by Forbes magazine for the past three years. (McDonell Decl., Exh. 1 at p. 114; Exh. 2 at p. 263; Exh. 3 at p. 228)

3. The Internet domain name includes the Schmidheiny surname.

4. Mr. Schmidheiny did not consent to the defendants registration of the domain name . (McDonell Decl., Exh. 11 at & 1)

5. Mr. Weber has registered or otherwise acquired Internet domain names listing Domainsale and Weber Technologies as the registrants. (McDonell Decl., Exh. 13)

6. Famology.com, Inc. was incorporated in April 2000. (McDonell Decl., Exh. 32)

7. Mr. Weber is the President and Treasurer of Famology.com, Inc. (McDonell Decl., Exh. 32)

8. Mr. Weber is currently listed as the administrative and technical contact for Famology.com, Inc. for the domain name. (McDonell Decl., Exh. 7)

9. One or both of the defendants sold or transferred the domain name to a third party in return for a payment of $8,500. (McDonell Decl., Exh. 12)

10. One or both of the defendants sold or transferred the domain name to a third party in return for a payment of $9,500. (McDonell Decl., Exh. 12)

11. One or both of the defendants sold or transferred the domain name . (McDonell Decl., Exh. 12)

12. In 2000, one or both of the defendants offered the domain name for sale for $50,000 through , a website controlled by one or both of the defendants. (McDonell Reply Decl., Exh. 2; Exh. 3) That website states that "The following Domain Names are for sale," including . (McDonell Reply Decl., Exh. 2 at § 00036) The domain name includes a word that is a surname. (See Defendant's Cross Motion for Summary Judgment and Memorandum in Opposition to Plaintiff's Motion for Summary Judgment at p. 3 ¶¶ 4, 7)

13. One or both of the defendants has registered the domain name . (McDonell Decl., Exh. 10)

14. Jay Robert Pritzker and Thomas Pritzker have been ranked among the world's wealthiest individuals by Forbes magazine. (McDonell Decl., Exh. 1 at p. 112)

15. On or about October 14, 1999, Mr. Weber received a protest letter from counsel for Jay Robert Pritzker based on the registration of the domain name . (McDonell Decl., Exh. 19)

16. One or both of the defendants sold or transferred the domain name to a third party. (McDonell Decl., Exh. 12)

17. One or both of the defendants has registered the domain name . (McDonell Decl., Exh. 10)

18. Jerome Spiegel Kohlberg, Jr. has been ranked among the world's wealthiest individuals by Forbes magazine. (McDonell Decl., Exh. 1 at p. 124)

19. In May 2000, Mr. Weber was paid $3,000 by Kohlberg & Co., L.L.C. in exchange for the transfer of . (McDonell Decl., Exh. 15)

20. One or both of the defendants has registered the domain name . (McDonell Decl., Exh. 10)

21. One or both of the defendants was paid $9,000 by the entertainer Whoopi Goldberg or her representative or affiliated company in return for the domain name . (McDonell Decl., Exh. 12)

22. The Declaration of Marc Reiner in Support of Plaintiff's Motion for Summary Judgment, which was filed under seal, attaches as Exhibit 1 documentation of a payment received by one or both of the defendants in exchange for a domain name that includes an individual's surname.

23. One or both of the defendants has registered the domain names , , , , , , and . (McDonell Decl., Exh. 10; Exh. 12)

24. One or both of the defendants sold the domain names , , and for $500 each. (McDonell Decl., Exh. 12)

25. One or both of the defendants has registered the domain names , , , , , and . (McDonell Decl., Exh. 10)

26. One or both of the defendants has registered the domain names , , , and . (McDonell Decl., Exh. 10)

27. One or both of defendants has registered the domain name . (McDonell Decl., Exh. 10)

28. Ross Perot's company, Perot Systems Corporation, brought an arbitration proceeding against Domainsale. (McDonell Decl., Exh. 13)

29. The arbitrator in that proceeding found that Mr. Weber registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name for valuable consideration in excess of his out-of-pocket costs directly related to the domain name. (McDonell Decl., Exh. 11 at Response to Request to Admit No. 19)

30. The domain name was transferred to Perot Systems Corporation as a result of the arbitration. (McDonell Decl., Exh. 10)

31. One or both of the defendants has registered the domain names and . (McDonell Decl., Exh. 12)

32. In Jaguar Cars Ltd. et al. v. Steven Weber, Civil Action No. 98-70623, in the United States District Court for the Eastern District of Michigan, one or both of the defendants was sued based on the domain names and . (McDonell Decl., Exh. 14 at § 00083)

33. One or both of the defendants transferred the domain names and to Jaguar Cars Ltd. (McDonell Decl., Exh. 10)

34. One or both of the defendants has registered the domain name . (McDonell Decl., Exh. 10)

35. In Franklin Mint Company v. Steven Weber, Civil Action No. 98-CV-3011, suit was brought against one or both of the defendants in the United States District Court for the Eastern District of Pennsylvania by the Franklin Mint Company over the use of the domain name . (McDonell Decl., Exh. 14 at § 00083-84)

36. One or both of the defendants transferred the domain name to Franklin Mint Company. (McDonell Decl., Exh. 10)

37. One or both of the defendants has registered the domain name . (McDonell Decl., Exh. 10)

38. In The Claridge At Park Plaza, Inc. v. Steven Weber, Civil Action No. 98-CV-3757, suit was brought in the United States District Court for the Eastern District of Pennsylvania by The Claridge At Park Plaza, Inc. arising out of the registration by one or both of the defendants of the domain name . (McDonell Decl., Exh. 14 at § 00084)

39. One or both of the defendants transferred the domain name to the Claridge Casino & Hotel. (McDonell Decl., Exh. 10)

40. One or both of the defendants has registered the domain name . (McDonell Decl., Exh. 10)

41. SADD, Inc. brought an arbitration against the registration of by one or both of the defendants and the arbitrator ruled in favor of SADD, Inc. (McDonell Decl., Exh. 14)

42. One or both of the defendants transferred the domain name to SADD, Inc. (McDonell Decl., Exh. 10)

43. When registering a domain name, an individual the registrant enters into a contractual agreement with a registrar. (Network Solutions, Inc. v. Umbro, Intl. Inc., 259 Va.759, 529 S.E.2d 80, 86 (2000))

44. As part of that contractual agreement, the registrar agrees to allow the registrant the exclusive use of a specific domain name for a certain period of time. (Network Solutions, Inc. v. Umbro, Int'l. Inc., 259 Va.759, 529 S.E.2d 80, 86 (2000))

45. In exchange for the right to use the domain name for a fixed period, the registrant pays a certain sum of money and agrees to certain other conditions, which vary depending upon the registrar involved. (McDonell Decl., Exhs. 21, 23)

46. In March 2000, the named registrant for was "Weber Net" and the registrar was Network Solutions, Inc. (NSI). (McDonell Decl., Exh. 6)

47. In June 2000, the domain name was transferred from NSI, a U.S. domain name registrar, to a new registrar, Internet Names Worldwide ("INWW"), a division of Melbourne IT Ltd. (McDonell Decl., Exh. 19)

48. The named registrant for was changed in or after June 2000 to defendant Famology.com, Inc. (McDonell Decl., Exh. 9 at Response to Interrog. No. 5)

49. Defendant Famology.com, Inc. and Weber Net are not the same entity. (McDonell Decl., Exh. 11 at ¶ 11)

50. One or both of the defendants paid a fee and entered into a contract — a "Registration agreement" with INWW. (McDonell Decl., Exh. 23 at § 00146)

51. In exchange for paying a fee and entering into the Registration agreement, one or both of the defendants was permitted to transfer the domain name to INWW and to reserve the domain name for an additional year past its original February 2001 expiration date. (McDonell Decl., Exh. 23 at § 00146)

52. After the domain name was transferred to INWW, the new expiration date for became February 28, 2002. (McDonell Decl., Exh. 29)

53. On or around May 24, 2001, one or both of the defendants paid INWW a fee to reserve to Famology.com, Inc. the exclusive use of the domain name for an additional one-year period. (McDonell Decl., Exh. 28)

54. On the INWW website, INWW provides information about the registrant of domain names that are registered through INWW. (McDonell Decl., Exh. 7)

55. As of July 25, 2001, on the INWW website, INWW listed the "Registration Date" of as June 22, 2000. (McDonell Decl., Exh. 7)

56. Pursuant to the Terms and Conditions of NSI's "Registrant Name Change Agreement," the New Registrant enters into an agreement "for the registration" of the domain name and the effective date of that "registration" is the date of NSI's transmission of an acknowledgment to the New Registrant. (McDonell Decl., Exh. 22, at § 00117)

57. On the DirectNic website, the registrar gives instructions for transferring domain names to DirectNic from another registrar. As part of those instructions, the DirectNic website states: "At this time, your transferred domains can only be registered for one year. At the time of renewal you can change the number of years you have your domains registered." (See http://www.directnic.com/help/faq/index. php?question_id=72 & topic_id =5)

58. In November 2000, Mr. Weber sent an email with the following text to Ms. Evelyn Braun, Mr. Schmidheiny's assistant:

Hello,

I am sending this email to those who have shown an interest in the purchase of the Schmidheiny.com Domain Name. I recently received an offer of $1,000,000 for this domain name. I don't know why those people want this name or why they made such an elaborate offer but I certainly plan on accepting this offer regardless of their intent. I told them once the name was not for sale and they then made this offer. I believe that they are sincere though I have no idea why they want the name so badly. But for $1,000,000, I am not going to question their motives!

I figured I owened [sic] it to myself and to those who were interested in the name to allow you an opportunity to better this offer. I have no intentions on [sic] involving anyone in a bidding war. The people who made this offer clearly stated that their offer price was firm. Therefore, if anyone is willing and/or able to make an offer of $1.1 million I will certainly sell to you instead. If anyone is interested, please reply as soon as possible. Thank you for your time.

Sincerely,

Steve Weber

(215) 513-1788

(McDonell Decl., Exh. 25; Exh. 11 at ¶ 2)

59. Defendants did not produce in discovery a copy of the $1,000,000 offer referenced in Mr. Weber's e-mail to Ms. Braun.

60. Mr. Weber uses the Afternic.com domain name auction website under the username "santa." (McDonell Decl., Exh. 11 at ¶ 18)

61. On or about November 28, 2000, the domain name was listed on the Afternic.com website with the "seller" designated as "santa" and the "minimum offer" designated as $1,100,000. (McDonell Decl., Exh. 26)

62. According to the Afternic.com User Agreement, when a registrant lists a domain name for auction or sale he or she makes "a binding offer for sale that cannot be withdrawn." (McDonell Reply Decl., Exh. 1 at ¶ 12)

63. One or both of the defendants would have achieved a profit if he/it sold the domain name for $1 million or more. (McDonell Decl., Exh. 12 at Response to Interrog. No. 10)

64. Defendants did not produce any evidence in discovery that anyone with the Schmidheiny name has actually used any services that defendants provide at . (McDonell Decl., Exh. 9 at Response to Interrog. No. 8)

65. The Yahoo! search database of telephone directories contains no entries in the United States for the surname "Schmidheiny." (McDonell Decl., Exh. 5 at § 00149)

66. Armand Christopher has registered the domain names and and operated websites connected with those domain names. (McDonell Reply Decl., Exhs. 5-8) On the top of each of those websites is the heading "CYBERSQUATTERS.COM" and the text "PROTECT YOUR RIGHTS!" (McDonell Decl., Exhs. 7, 8)

67. One or both of the defendants has registered the following domain names. These domain names are identical to the surnames of individuals who have been ranked among the world' wealthiest individuals by Forbes magazine. The individuals on the Forbes list are indicated next to the domain names below.

Domain Name                       Individual
Sheldon Adelson
/     Rafik Al-Hariri
/   Nassir Al-Kharafi
Maria Aramburuzabala
Bernard Arnault
John Arrillaga
Alberto Bailleres
Otto Beisheim
Kunio Busujima
Robert Henry Dedman
John A. Fentener van Vlissingen
Thomas F. Frist, Jr.
Louis Gonda and Leslie Gonda
Walter Haefner
Erivan Haub
Dietmar Hopp
Eitaro Itoyama
Jim Jannard
Ingvar Kamprad
Kirk Kerkorian
Vinad Khosla
Alicia Koplowitz and Esther Koplowitz
/          Bruce Kovner
Scott Kriens
Kjeld Kirk Kristiansen
Ann Walton Kroenke
Andre Kudelski
Robert Kuok
Leng Beng Kwek
Andronico Luksic
Clayton L. Mathile
Adolf Merckle
David Howard Murdock
Robert Allen Naify
Yasuyuki Nambu
Pierre M. Omidyar
Francois Pinault
Vladimir Potanin
Mitchell Rales and Steven Rales
Ferit Sahenk
Henry Samueli
Stephan Schmidheiny
Stefan Schoerghuber
Jeff Skoll
John Albert Sobrato
Takernitsu Takizaki
Klaus Tschira
Yoshiaki Tsutsumi

Albert Lee Ueltschi
Hope Hill Van Beuren
August von Finck
Dieter von Holtzbrinck
Theodore Waitt and Norman Waitt
Gary Winnick

68. Defendants have no connection with any of the individuals listed above who have been ranked among the world' wealthiest individuals by Forbes magazine, including Mr. Schmidheiny.

69. The domain name schmidheiny.com was first registered on February 28, 1999, before the enactment of 15 USC 1129.

70. The only registrar of dot com domain names that existed at the time 15 USC 1129 was passed was Network Solutions Inc.

71. Plaintiff made no offer to purchase the domain name schmidheiny.com before he filed the instant case.

72. There are towns in Kansas, Michigan, Texas, and Wyoming named Moran.

73. On or about June 15, 2000, Weber received an email message from Evelyn Braun stating, in part, "Stephan Schmidheiny would be interested in the domain name schmidheiny.com . . . ."

74. Weber contacted Ms. Braun and indicated that the name was "not available for transfer."

75. There are about 95 individuals with the surname Schmidheiny in Switzerland.

76. The following domain names are owned by Plaintiff, or his brother, or one of their companies: schmidheiny.net, schmidheiny.org, stephan-schmidheiny.com, stephan-schmidheiny.net, stephan-schmidheiny.com, stephanschmidheiny.com, stephanschmidheiny.net, stephanschmidheiny.org, th-schmidheiny.com, th-schmidheiny.net, th-schmidheiny.org, thomas-schmidheiny.com, thomas-schmidheiny.net, thomas-schmidheiny.org, thomasschmidheiny.com, thomasschmidheiny.net, thomasschmidheiny.org, thschmidheiny.com, thschmidheiny.net, thschmidheiny.org.

77. Weber has registered hundreds of domain names which primarily fall into four different categories. Names of famous individuals such as Ross Perot. Generic words such as back.com, gymnasium.com, hypnotists.com, jets.com and others. Weber also registered hundreds of surnames including Gould.com, Smith. ly, Moran.com and numerous geographic descriptions.

78. Weber does not own weber.com.

79. Famology.com, Inc. currently offers web based email services using hundreds of different domain names which incorporate surnames. Anyone on the planet can obtain a free email address at schmidheiny.com through Famology.com Inc.

80. The Famology.com website currently provides links to genealogy web sites, links to family oriented web sites, a free message posting service, and a free email reminder service.

81. Weber currently operates a website about Mother Teresa at http://www.motherteresa.com/.

82. Weber donated four Princess Diana domain names he owned to the Diana Foundation.

83. The website NetIdentity.com (formerly MailBank.com) holds over 15,000 surname domain names, and uses them to provide email services.

84. Charlotte Weber is on the Forbes list of wealthiest individuals but Steven Weber is not. Their last names are identical.

85. Famology.com Inc owns the following domain names which do not represent individuals on the Forbes list of wealthiest individuals:

3DWORLDS.COM 3H.COM ABDUL.NET ABDUL.ORG ABODEOFPEACE.COM ACUPUNCTURISTS.COM ADAMS.WS AGORDO.ORG ALBRIGHTSVILLE.COM ALDERFER.COM ALESSANDRINI.ORG AL-MASRI.COM ALMASRI.NET AL-MASRI.NET ALMUHTADEEBILLAH.COM AMERICANJOURNAL.COM AMERICAN-JOURNAL.COM ANTIPOLO.COM ARCORE.ORG ARDILA.COM ARMAGH.COM AUCTIONCHAT.NET BACK.COM BADHOMBURG.ORG BAINUM.COM BAKRIE.COM BAL-HARBOR.NET BAL-HARBOR.ORG BANDARSERIBEGAWAN.COM BANGAR.COM BARNDT.COM BARRINGTON-HILLS.COM BARRINGTONHILLS.NET BARRINGTONHILLS.ORG BAZELON.COM BELAIT.COM BENALIA.COM BENTONVILLE.ORG BERAKAS.COM BIDIS.COM BILLCOSBY.COM BILL-COSBY.COM BILLUND.ORG BLOOMFIELD-HILLS.ORG BOLER.COM BONNE.COM BOUDJAKDJI.COM BRAINTEASERS.COM BREAST-CANCER.COM BREAST-CANCER.ORG BRENNINKMEYER.COM BRITISHCOLUMBIA.ORG BRITISH-COLUMBIA.ORG BRUMAIL.COM BRUNEII.COM BRUNEIAN.COM BRUNEIAN.NET BRUNEIAN.ORG BRUNEIANS.COM BRUNEIANS.NET BRUNEIANS.ORG BRUNEIDARUSSALAM.COM BRUNEIDARUSSALAM.NET BRUNEIDARUSSALAM.ORG BRUNEIINTERNET.COM BRUSEARCH.COM CAMDENCOUNTY.COM CARELL.COM CARSEY.COM CARTER.WS CASCINA.COM CASKET.COM CATHOLICS.NET CATHOLICS.ORG CHANUKAH.NET CHANUKAH.ORG CHARLIZE.COM CHERNICK.COM CHOWDRY.NET CHOWDRY.ORG CLEANSERS.COM CODESIGNS.COM CONSENT.ORG CROSSMANN.COM CROWN-POINT.NET CROWN-POINT.ORG CUCME.COM CYBERLADY.COM DABBIERE.COM DADE.COM DADECOUNTY.COM DADE-COUNTY.COM DAKOTA-DUNES.COM DAKOTADUNES.NET DAKOTADUNES.ORG DAWSONCREEK.COM DAWSON-CREEK.COM DEBROE.COM DEFFOREY.COM DELASKI.COM DEMOULAS.COM DENEME.COM DENOBLE.ORG DETERS.COM DEUTSCHE.NET DEUTSCHE.ORG DEXMIER.COM DKMB.COM DOLPHINS.COM DOMAINS4SALE.NET DOMAINSALE.COM DOMAINWANTEDADS.COM DOMMERMUTH.COM DONSKY.COM DOWNTOWNER.COM DRESHER.COM DUCHOSSOIS.COM DUMPED.COM EAFE.COM EASTER.NET EAU-CLAIRE.ORG EBBERS.COM ELKFORD.COM ENB.COM ENB.NET ENB.ORG E-NEWS.COM ENTERTAINMENT.CC ENVESTMENT.COM ENVESTMENTS.COM ENVESTOR.COM ENVESTORS.COM E-VESTING.COM EVESTMENT.COM E-VESTMENT.COM EVESTMENTS.COM E-VESTMENTS.COM EVESTOR.COM E-VESTOR.COM FAHIM.COM FAMILYAFFAIR.COM FAMOLOGY.COM FAMOLOGY.NET FAMOLOGY.ORG FATHERKNOWSBEST.COM FIRESTEIN.COM FLB.COM GADONG.COM GARCIA.WS GARIS.COM GLICKSON.COM GMAONLINE.COM GOIZUETA.COM GOKONGWEI.COM GOLDSCHMEDING.COM GOSSIP.NET GRAZER.COM GREENWOOD-VILLAGE.COM GROSSEPOINTESHORES.NET GWYNEDD.COM GYMNASIUM.COM GYMNASIUMS.COM HAEBLER.COM HAIFU.COM HALEWOOD.COM HAMADAYAMA.ORG HANIEL.COM HANUKKAH.ORG HASCOE.COM HASSANAL.COM HASSANALBOLKIAH.COM HASSANAL-BOLKIAH.COM HETGOOI.NET HETGOOI.ORG HHH.COM HISROYALHIGHNESS.COM HMSULTAN.COM HMSULTANOFBRUNEI.COM HNEWS.COM HOME-VIDEOS.COM HONICKMAN.NET HONICKMAN.ORG HORSEHEAD.COM HUBB.COM HUSSEIN.ORG HYPNOTISTS.COM IBM IBS.NET ILITCH.COM INEWS.COM I-NEWS.COM INEWSXCHNAGE.COM INVERMERE.COM ISTANANURULIMAN.COM ITAIL.COM JABATAN.COM JERMOLUK.COM JERUSALEM.NET JETS.COM JFKJR.NET JFKJUNIOR.COM J-J.COM JOAN.COM JUST5.COM KAPHAN.COM KARMANOS.COM KATZENBERG.COM KERRISDALE.COM KIDCO.ORG KIDRO.COM KITIMAT.COM K-K.COM KLAMATH-FALLS.NET KLAMATH-FALLS.ORG KOMANSKY.COM KOSHLAND.COM KRAUZE.COM KRETEKS.COM KUNZELSAU.COM KUNZELSAU.NET KUNZELSAU.ORG KUSHMAN.COM LAHAINER.COM LAWE.COM LAWSOCIETY.COM LEEKS.COM LEPRINO.COM LESLEY.COM LEWIS.WS LIEM.COM LIEMANDT.COM LIMBANG.COM LITWIN.COM LIVE.CC LIVEINTERNET.COM LIVEWWW.COM LNEWS.COM LOANANDHELP.COM LOANESCORT.COM LOANSPELL.COM LUMBY.COM MACARTHURPARK.COM MACARTHUR-PARK.COM MACRI.COM MAGERKO.COM MAKHTOUM.COM MALAWIAN.COM MANDM.COM MANOOGIAN.COM MARLETTE.COM MARPOLE.COM MARTIN.WS MARWICK.COM MASENO.COM MASHOUF.COM MAUNA.COM MCVANEY.ORG MEEGO.COM MEGGEN.NET MEGGEN.ORG MEGSI.COM MELROSE-PARK.COM MERCERISLAND.NET MERCER-ISLAND.ORG METRODADE.COM MEXICOCITY.ORG MIDLANTIC.COM MIDLANTIC.COM MILLINGTON.COM MNM.COM MOHAMMAD.NET MOHAMMAD.ORG MOLEY.COM MOMCO.COM MORANS.NET MORRILTON.ORG MOTHERTERESA.COM MOTHER-TERESA.COM MOTHERTERESA.NET MOTHER-TERESA.NET MOTHERTERESA.ORG MOTHER-TERESA.ORG MOUNTKISCO.NET MOUNT-KISCO.NET MUHTADEE.COM MUHTADEEBILLAH.COM MUHTADEE-BILLAH.COM NADING.COM NAHYAN.COM NANNY-CAM.COM NEGARABRUNEIDARUSSALAM.COM NEILSON.WS NETLINGS.COM NEW-ALBANY.NET NEW-ALBANY.ORG NEWTON-CENTRE.COM NEWTONCENTRE.NET NEWTONCENTRE.ORG NEWWESTMINSTER.COM NEW-WESTMINSTER.COM NIGHAM.COM NORTHERNVIRGINIA.COM NORTHVIRGINIA.COM NORWEGIANS.COM NOTOVIOLENCE.COM NTV.COM NTW.COM NTW.ORG NURMBERG.COM NURMBERG.NET NURMBERG.ORG NVIRGINIA.COM NYCITY.ORG NY-NY.NET NYNY.ORG OMAIZA.COM OMAIZA.NET OMAIZA.ORG ONB.COM OPPERMAN.COM OSANO.COM OSHIMA.COM OWINGS-MILLS.COM OWINGSMILLS.ORG OYSTER-BAY.NET OYSTER-BAY.ORG PADIAN.COM PARENTGARTEN.COM PCCC.COM PERENCHIO.COM PERUNDING.COM PETAR.COM PETSURF.NET PIECH.COM PINEAPPLEISLAND.COM PLASTIC101.COM PORTOLA-VALLEY.COM PRESLEY.ORG PRINCEJEFRI.COM PRINCEOFWALES.COM PRINCESS-DI.COM PRINCESSDI.NET PRIT.COM PRITZ.COM PRITZ.COM QANDQ.COM Q-Q.COM QUADRACCI.COM RAMAPHOSA.COM RASHMAN.COM READYWEAR.COM RESERVES.COM RNR.COM ROBINSIN.WS RODRIGUEZ.WS ROKKE.COM ROSKI.COM ROTHAUG.COM RYSZARD.COM SABLI.COM SADULPUR.NET SADULPUR.ORG SAINTMARYSPOINT.COM SANDB.COM SANDSTONE.COM SAN-MATEO.ORG SAVINGSNLOAN.COM SCANNERS.NET SCIFRES.NET SCIFRES.ORG SEAGAMES.ORG SEMAUN.COM SENGKURONG.COM SERICEL.COM SERICELS.COM SEYDOUX.COM SHAREWAREFIND.COM SHERMAN-OAKS.COM SHORT-HILLS.ORG SHOULD.COM SHUNTAK.NET SHUNTAK.ORG SIMONYI.COM SIPC.COM SKELTON.COM SNP500.COM SPARWOOD.COM SPORTUTILITYVEHICLE.COM SSEA.COM STEINBRUCH.COM STMARYSPOINT.COM STOCK-BROKERS.COM STRATHAM.NET STRATHAM.ORG SUBOTNICK.COM SULTANBRUNEI.COM SULTANOFBRUNEI.COM SULTANOFBRUNEI.NET SUNDAE.COM SUSKIND.COM SYNAGOGUE.NET SZLAM.COM TAPPEN.COM TECHNOLOGYSTOCK.COM TEMBURONG.COM TEWKESBURY.COM THELAWS.COM THEWES.COM TNA.COM TOPFER.COM TORESCO.COM TOTCO.COM TOYODA.COM TRACINDA.COM TSTOCK.COM TUTONG.COM TVBOOK.COM UANDU.COM UIRYUNG.COM UIRYUNG.NET UIRYUNG.ORG UNITED-KINGDOM.ORG UNSTONE.COM UNU.COM U-U.COM UUA.COM VACATIONFAMILY.COM VALBY.COM VERGNES.COM VERNON-HILLS.COM VICTORIA.ORG VINCIARELLI.COM VIRTUALESTATE.COM WALKER.WS WAWASAN.COM WBNEWS.COM WEBERNET.COM WEBERTEC.COM WEBERTECHNOLOGIES.COM WEBER-TECHNOLOGIES.COM WEISGLASS.COM WIDJAJA.COM WILKENSON.COM WILLIAMSLAKE.COM WILLIS.ORG WILLMOTH.COM WINLUCK.COM WIXOM.COM WONOWIDJOJO.COM WORKWATER.COM WRIGHT.WS WWWLIVE.COM XANDX.COM YAYASAN.COM YAYASAN.NET YAYASAN.ORG YESTOLOVE.COM YNY.COM YTL.COM Y-Y.COM ZANDZ.COM ZNB.COM ZNZ.COM ZWEBEN.NET ZWEBEN.ORG

86. Network Solutions currently charges $29.00 for domain name registrations. (See http://www.networksolutions.com).

87. The domain name schmidheiny.com is currently registered with the registrar DirectNic. (See http://www.directnic.com/whois/?query=schmidheiny.com).

88. According to the whois record at DirectNic, the "creation date" for the domain name schmidheiny.com is 28-Feb-1999.

89. According to the Internet Names Worldwide web site they currently charge $35.00 per year per domain name for registrations and renewals. (See pricing button at http://inww.com).

90. According to the DirectNic web site they currently charge $15.00 per year for domain name registrations and renewals (See http://www.directnic.com/features/prices.)

DISCUSSION

The ACPA contains a prohibition on the use of personal names in domain names. 15 U.S.C. § 1129(1)(A) provides:

Any person who registers a domain name that consists of the name of another living person, or a name substantially and confusingly similar thereto, without that person's consent, with the specific intent to profit from such name by selling the domain name for financial gain to that person or any third party, shall be liable in a civil action by such person.

Subsection (B) provides an exception for those who register personal names if such name is used in, affiliated with, or related to a work of authorship protected as a copyright under Title 17 of the U.S.Code. Section 1129(2) provides the remedies available for violation of ACPA:

In any civil action brought under paragraph (1), a court may award injunctive relief, including the forfeiture or cancellation of the domain name or the transfer of the domain name to the plaintiff. The court may also, in its discretion, award costs and attorneys fees to the prevailing party.

15 U.S.C. § 1129(2).

The elements of the cause of action established by the statute are straightforward. A person is liable under ACPA if he (1) registers a domain name; (2) that consists of the name of another living person (or one that is substantially and confusingly similar); (3) without that person's consent; (4) with the intent to profit from selling that domain name to the person or a third party. The stipulated facts demonstrate that plaintiff has satisfied his burden of demonstrating each of these elements. Defendants registered the domain name. That domain name consists of the name of Stephan Schmidheiny, a living person. Plaintiff did not consent to the registration. Finally, the stipulation establishes by a preponderance of the evidence that defendants specifically intended to profit from the sale of the domain name to the plaintiff. That intent is established by defendants' previous course of conduct of registering domain names of wealthy individuals and then selling or attempting to sell those domain names to those persons or others. That intent is also established by defendants' e-mails to the plaintiff offering to sell the domain name for $1.1 million, while falsely implying that others were in competition with plaintiff to purchase the domain name.

Defendants argue that summary judgment is not appropriate on the issue of specific intent. Specifically, they assert that the offer to sell the domain name in November 2000 is not necessarily probative of their intent to profit from the registration of the domain name in June 2000, arguing that a jury could find based upon the defendants' business plan to provide e-mail addresses that the intent at the time of registration was not to sell, but to develop the domain name. Given the content of the stipulation, we cannot agree.

In deciding a motion for summary judgment under Rule 56 of the Federal Rules of Civil Procedure, "the test is whether there is a genuine issue of material fact and, if not, whether the moving party is entitled to judgment as a matter of law." Medical Protective Co. v. Watkins, 198 F.3d 100, 103 (3d Cir.1999) (citing Armbruster v. Unisys Corp., 32 F.3d 768, 777 (3d Cir.1994)). As to materiality, the substantive law will identify which facts are material; only disputes over facts that might affect the outcome of the suit under the governing law will properly preclude the entry of summary judgment. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248, 106 S. Ct. 2505, 91 L. Ed. 2d 202 (1986). Furthermore, "summary judgment will not lie if the dispute about a material fact is genuine,' that is, if the evidence is such that a reasonable jury could return a verdict for the nonmoving party." Id. at 250, 106 S. Ct. 2505.

On a motion for summary judgment, the facts should be reviewed in the light most favorable to the non-moving party. See Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 587, 106 S. Ct. 1348, 89 L. Ed. 2d 538 (1986)(quoting United States v. Diebold, Inc., 369 U.S. 654, 655, 82 S. Ct. 993, 8 L. Ed. 2d 176 (1962)). The nonmoving party "must do more than simply show that there is some metaphysical doubt as to the material facts," Matsushita, 475 U.S. at 586, 106 S. Ct. 1348, and must produce more than a "mere scintilla" of evidence to demonstrate a genuine issue of material fact and avoid summary judgment. See Big Apple BMW, Inc. v. BMW of North America, Inc., 974 F.2d 1358, 1373 (3d Cir.1992).

Defendants' argument that the offer to sell the domain name in November 2000 is not necessarily probative of their intent to profit from the registration of the domain name in June 2000 — because a jury could find based upon the defendants' business plan to provide e-mail addresses that the intent at the time of registration was not to sell, but to develop the domain names — strikes the court as a textbook example of the type of "metaphysical doubt" described by Matsushita. The stipulation contains substantial evidence of defendants' specific intent to profit from the registration of the domain name. This includes evidence that they are in the business of buying and selling domain names; have registered numerous domain names that include trademarked names, names of celebrities, and names of wealthy persons; have registered domain names of numerous persons on the Forbes list while having no apparent connection to these names; have profited from the sales of domain names to others on the list; the time lapse between the registration in June 2000 and the offer of sale in November 2000, was relatively brief; defendants falsely implied that plaintiff was in competition with others in the bidding for the domain name; and, at the same time they offered the domain name to plaintiff, defendants also put the name up for auction at a price that had no reasonable connection to its value to anyone other than the plaintiff. Finally, defendants have come forward with no evidence to raise a jury issue on their claim that they intended to "develop" the web site. The fact that they offer a free e-mail address to anyone at the website, does not negate the evidence of specific intent to sell the site for profit to the plaintiff.

Accordingly, we find that plaintiff is entitled to summary judgment, injunctive relief, including the forfeiture or cancellation of the domain name or the transfer of the domain name to the plaintiff, and constitutes the prevailing party for the purposes of awarding costs and attorneys fees.

ORDER

The renewed motion of Stephan Schmidheiny for summary judgment (# 40) is GRANTED.

Judgment on the merits is entered in favor of Stephan Schmidheiny and against Steven Weber d/b/a/ Domainsale and Famology.com, Inc. and Famology.com, Inc.

Defendants Steven Weber d/b/a/ Domainsale and Famology.com, Inc. and Famology.com, Inc. are ORDERED to transfer the domain name to the plaintiff Stephan Schmidheiny and are ENJOINED from registering a domain name substantially or confusingly similar to the domain name in the future.

Plaintiff Stephan Schmidheiny is DIRECTED to file an application for costs and attorney's fees within twenty days.

IT IS SO ORDERED.