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Internet Trademark Case Summaries

Popular, Inc. v. Stout

2007 WL 44777 (M.D. Fla. Jan. 5, 2007)

Plaintiff offered banking and financial services under the registered mark BANCO POPULAR and various POPULAR-formative marks.  While an employee with plaintiff’s subsidiary Popular Financial Services, defendant registered the domain name “” in his own name and using his personal email address as the contact email address.  More than a year after the termination of his employment with plaintiff, defendant offered to sell the domain name to plaintiff.  Plaintiff sued for cybersquatting.  Defendant defaulted and plaintiff sought a default judgment for transfer of the domain name and statutory damages of $10,000.  Regarding plaintiff’s cybersquatting claim, the court held that the POPULAR mark was descriptive but that plaintiff had sufficiently pleaded secondary meaning to satisfy the distinctiveness requirement.  Regarding whether the domain name was identical or confusingly similar,  the court noted that it would be unconvinced if it only compared the domain name to plaintiff’s “” name, but ultimately held that plaintiff sufficiently pleaded a likelihood of consumer confusion when compared to plaintiff’s family of Popular marks, which combine the word “popular” with various financial services.  Plaintiff also alleged sufficient facts to establish defendant’s bad faith to profit, including defendant’s offer to sell the domain name to plaintiff.  The court refused to transfer the domain name to plaintiff because another company, Popular Bank in Florida, had successfully established its priority in the mark.  The court instead ordered cancellation of the domain name.  Plaintiff sought $10,000 in statutory damages because (1) it was on the lower end of available statutory damages, (2) plaintiff did not request attorney’s fees and costs, and (3) to deter defendant and others from similar behavior in the future.  The court compared the facts of this case to Shields v. Zuccarini and to E. & J. Gallo Winery v. Spider Webs, Ltd., and held that although defendant’s actions were “less egregious” in this case, statutory damages of $10,000 were still appropriate because of defendant’s violation of the ACPA and to deter similar conduct in the future.