Internet Trademark Case Summaries

Taverna Opa Trademark Corp. v. Ismail

2010 WL 1838384 (S.D. Fla. May 6, 2010)

Plaintiff Taverna Opa Trademark Corporation (“Taverna Opa”) owned and operated a chain of Florida restaurants featuring Greek cuisine and tabletop Mediterranean-style dancing.  In 2002, Taverna Opa federally registered its TAVERNA OPA mark and registered the domain name tavernaoparestaurant.com.  Defendant Aisha Ismail (“Ismail”) worked at a Taverna Opa restaurant as a belly dancer until 2001, when she left the company and registered the domain name tavernaopa.com.  Ismail posted advertisements for a competing Greek restaurant, Milos, on her website at tavernaopa.com.  In 2008, Taverna Opa sued Ismail for cybersquatting.  Ismail did not respond to the complaint, and Taverna Opa filed a motion for default judgment, statutory damages under the ACPA, injunctive relief, and attorney’s fees. 

The district court granted Taverna Opa’s motion.  In its cybersquatting analysis, the court noted Taverna Opa’s ownership of the TAVERNA OPA mark for Greek dining and entertainment and found that the mark was famous in the South Florida area.  The court then found that Ismail used Taverna Opa’s mark as a domain name without Taverna Opa’s consent, and that this use was likely to cause confusion among consumers.  The court next held that Ismail had a bad-faith intent to profit from the TAVERNA OPA mark, finding that Ismail concealed her identity when she registered the infringing domain name, offered to sell the domain name to Taverna Opa for $25,000, and hosted advertisements for a competing Greek restaurant on her website.  Accordingly, the court found Ismail liable for cybersquatting.  The court then considered Taverna Opa’s request for ACPA statutory damages of $100,000, and instead awarded $10,000.  The court awarded the lower amount because (1) Ismail’s website had been discontinued for some time, (2) Ismail engaged in cybersquatting on a single domain name, and (3) in its initial motion for default judgment (which was denied due to defective service), Taverna Opa requested a statutory award of $10,000.  The court held that the lesser amount was “more realistic and consistent with the nature of the infringement.”  Finally, the court ordered Ismail to transfer the tavernaopa.com domain name to Taverna Opa, permanently enjoined Ismail from using or registering the TAVERNA OPA mark or any confusingly similar mark, and awarded Taverna Opa its attorney’s fees and costs in an amount to be determined.