Ford Motor Company v. Peter Catalanotte

*The Honorable Algenon L. Marbley, United States District Judge for
the Southern District of Ohio, sitting by designation.
1
RECOMMENDED FOR FULL-TEXT PUBLICATION
Pursuant to Sixth Circuit Rule 206
ELECTRONIC CITATION: 2003 FED App. 0310P (6th Cir.)
File Name: 03a0310p.06
UNITED STATES COURT OF APPEALS
FOR THE SIXTH CIRCUIT
_________________
FORD MOTOR COMPANY,
Plaintiff-Appellee,
v.
PETER CATALANOTTE,
Defendant-Appellant.
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No. 02-1237
Appeal from the United States District Court
for the Eastern District of Michigan at Detroit.
No. 00-75260—Robert H. Cleland, District Judge.
Argued: June 18, 2003
Decided and Filed: August 28, 2003
Before: BOGGS and GILMAN, Circuit Judges;
MARBLEY, District Judge.*
_________________
COUNSEL
ARGUED: Anthony J. DeGidio, Toledo, Ohio, for
Appellant. Scott R. Ryther, HOWARD, PHILLIPS &
2 Ford Motor Co. v. Catalanotte No. 02-1237
ANDERSON, Salt Lake City, Utah, for Appellee.
ON BRIEF: Anthony J. DeGidio, Toledo, Ohio, for
Appellant. Scott R. Ryther, Gregory D. Phillips, HOWARD,
PHILLIPS & ANDERSON, Salt Lake City, Utah, for
Appellee.
_________________
OPINION
_________________
ALGENON L. MARBLEY, District Judge. Defendant-
Appellant, Peter Catalanotte (“Catalanotte”), appeals the
district court’s decision awarding Plaintiff-Appellee, Ford
Motor Company (“Ford”), $5,000 in statutory damages
pursuant to the Anticybersquatting Consumer Protection Act.
This Court has jurisdiction over this appeal pursuant to 28
U.S.C. § 1291 and 15 U.S.C. § 1121(a). For the following
reasons, we AFFIRM the district court’s award of statutory
damages.
I. BACKGROUND
A. Factual Background
Peter J. Catalanotte registered the Internet domain name
FORDWORLD.COM on January 21, 1997. Catalanotte, an
employee of Ford since 1978, knew that Ford publishes a
newspaper for its employees called Ford World. Catalanotte
never operated an Internet website using the domain name
FORDWORLD.COM.
Ford was unaware that Catalanotte had registered the
domain name FORDWORLD.COM until October 27, 2000,
when Catalanotte sent an e-mail message to Mr. Jacques
Nasser and Mr. William Clay Ford, officers of Ford.
Catalanotte’s e-mail message stated:
The domain name fordworld.com will be available for
a short period of time. . . . I have been receiving offers

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No. 02-1237 Ford Motor Co. v. Catalanotte 3
from various sources including the competition. I’ve
indicated to the other interested parties that I’m
extending this opportunity to you first before any
decisions are to be made.
In fact, Catalanotte had not received any offers for the domain
name FORDWORLD.COM.
In addition to registering the domain name
FORDWORLD.COM, Catalanotte also registered and sold
the domain names AANDE.COM and MRSPAULS.COM.
Catalanotte never operated a website using either of these
domain names. Catalanotte sold the domain name
AANDE.COM to the Arts & Entertainment Network, which
owns the trademark A&E, and he sold the domain name
MRSPAULS.COM to Mrs. Paul’s Kitchens, Inc., which owns
the trademark MRS. PAUL’S.
B. Procedural History
Ford filed its Complaint in this case on November 30,
2000, in the United States District Court for the Eastern
District of Michigan. Ford’s Complaint alleges cyberpiracy,
trademark dilution, trademark infringement, and false
designation of origin. Ultimately, the district court issued its
Findings of Fact and Conclusions of Law on January 10,
2002, finding Catalanotte liable under the Anticybersquatting
Consumer Protection Act of 1999. The district court granted
Ford injunctive relief and $5,000 in statutory damages.
II. STANDARD OF REVIEW
In reviewing the district court’s award of statutory
damages, we will not disturb the district court’s findings of
fact unless they are clearly erroneous, but we review any
issues of law de novo. Allard Enters., Inc. v. Advanced
Programming Res., Inc., 146 F.3d 350, 355 (6th Cir. 1998);
Champions Golf Club, Inc. v. Champions Golf Club, Inc., 78
F.3d 1111, 1116 (6th Cir. 1996).
4 Ford Motor Co. v. Catalanotte No. 02-1237
III. DISCUSSION
In 1999, Congress passed the Anticybersquatting Consumer
Protection Act (“ACPA” or the “Act”), Pub. L. No. 106-113,
app. I, §§ 3001–3010, 113 Stat. 1501, 1501A-545–52
(Nov. 29, 1999), as an amendment to the Trademark Act of
1946 (the “Lanham Act”). The ACPA applies to a person
who “registers, traffics in, or uses a domain name” that is
“identical or confusingly similar to” a “distinctive” mark or
that is “identical or confusingly similar to or dilutive of” a
“famous” mark. ACPA § 3002 (codified at 15 U.S.C.
§ 1125(d)(1)(A) (2000)). Liability under the ACPA requires
a “bad faith intent to profit,” and the ACPA provides a list of
factors that courts may consider in determining whether a
person acts in bad faith. ACPA § 3002 (codified at 15 U.S.C.
§ 1125(d)(1)(A)–(B)).
The ACPA provides for injunctive relief, ACPA
§ 3003(a)(1) (codified at 15 U.S.C. § 1116(a)), and recovery
of actual damages, ACPA § 3003(a)(2) (codified at 15 U.S.C.
§ 1117(a)). Furthermore, the ACPA permits a plaintiff to
seek, subject to court approval, between $1,000 and $100,000
in statutory damages per domain name in lieu of actual
damages. ACPA § 3003(b) (codified at 15 U.S.C. § 1117(d)).
The ACPA applies to “all domain names registered before,
on, or after the date of the enactment” of the ACPA, but
actual and statutory damages are not “available with respect
to the registration, trafficking, or use of a domain name that
[occurred] before the date of the enactment.” ACPA § 3010
(codified at 15 U.S.C. § 1117 note).
In this case, the district court granted Ford injunctive relief
and $5,000 in statutory damages because Catalanotte “‘used’
and ‘trafficked in’ the domain name FORDWORLD.COM
within the meaning of 15 U.S.C. § 1125(d) by offering to sell
the domain name to Ford Motor Company.”

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No. 02-1237 Ford Motor Co. v. Catalanotte 5
A. Pre-Enactment Registration
Catalanotte first argues that he cannot be required to pay
statutory damages for the registration, trafficking in, or use of
the domain name FORDWORLD.COM because he registered
the domain name before enactment of the ACPA. Ford
contends that although Catalanotte is not liable for damages
for the registration of the domain name, he can be held
accountable in damages for trafficking in the domain name
because he offered to sell the domain name on October 27,
2000, after enactment of the ACPA.
The ACPA contains the following “Effective Date”
provision:
Sections 3002(a), 3003, 3004, 3005, and 3008 of this
title shall apply to all domain names registered before,
on, or after the date of the enactment of this Act, except
that damages under subsection (a) or (d) of section 35 of
the Trademark Act of 1946 (15 U.S.C. 1117) [actual and
statutory damages], as amended by section 3003 of this
title, shall not be available with respect to the
registration, trafficking, or use of a domain name that
occurs before the date of the enactment of this Act.
ACPA § 3010 (codified at 15 U.S.C. § 1117 note).
Catalanotte argues that section 3010 precludes statutory
damages where registration, trafficking, or use of a domain
name has occurred before enactment of the ACPA. Thus, he
claims that statutory damages cannot be awarded against him
because he registered the domain name FORDWORLD.COM
before enactment of the ACPA, even though the district court
found that he trafficked in the domain name after enactment
of the ACPA.
Catalanotte’s construction of the Effective Date provision
of the ACPA is contrary to the plain language of the
provision. In fact, the first portion of the Effective Date
provision makes clear that the ACPA “shall apply to all
6 Ford Motor Co. v. Catalanotte No. 02-1237
domain names registered before, on, or after the date of the
enactment” of the ACPA. Id. Registration, trafficking, and
use of a domain name are separate acts upon which liability
may be based. Although damages may not be awarded for
pre-enactment registration, trafficking, or use, the fact that a
domain name was registered before the Act’s passage does
not absolve the registrant from liability for post-enactment
trafficking or use. In this case, the district court did not
award Ford any damages for Catalanotte’s registration of the
domain name FORDWORLD.COM. Instead, the district
court awarded damages only for Catalanotte’s trafficking in
and use of the domain name after passage of the Act, when
Catalanotte offered to sell the domain name to Ford.
Catalanotte cites several cases addressing the ACPA, but
they fail to support his position that the ACPA precludes
liability based on domain names that were registered prior to
enactment of the ACPA. In People for the Ethical Treatment
of Animals v. Doughney, 263 F.3d 359, 362 (4th Cir. 2001),
the defendant registered the domain name PETA.ORG in
1995 to host a website for “People Eating Tasty Animals,” a
parody of the plaintiff’s organization. The defendant used the
domain name for six months in 1995 and 1996 before moving
the website to a different domain name. Id. at 363. The
plaintiff in Doughney sued seeking only injunctive relief. Id.
Therefore, the court did not have an opportunity to consider
whether an award of damages was appropriate, although the
court found that the ACPA applies retroactively to all domain
names registered before enactment of the ACPA. Id. at 368.
The court quoted the ACPA’s prohibition against damages for
conduct before the Act’s enactment and noted that damages
could not be awarded because the defendant’s registration and
use of PETA.ORG all occurred before enactment of the
ACPA. Id.
Catalanotte also relies on Sporty’s Farm L.L.C. v.
Sportsman’s Market, Inc., 202 F.3d 489, 500 (2d Cir. 2000),
where the court found that damages under the ACPA were
unavailable because the domain name at issue “was registered

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No. 02-1237 Ford Motor Co. v. Catalanotte 7
and used . . . prior to the passage of the new law.” What
Catalanotte fails to note, however, is that the infringing party
in Sporty’s did not use the domain name after enactment of
the ACPA; therefore, the court had no reason to consider
whether the infringer could be liable for damages for conduct
after the ACPA’s enactment. In Sporty’s, a competitor of
Sportsman’s Market, Inc. registered the domain name
SPORTYS.COM in 1995. Id. at 494. In 1996, the competitor
sold the domain name to a newly formed subsidiary, Sporty’s
Farm, which grows and sells Christmas trees. Id. Sporty’s
Farm soon began using the domain name for a website
advertising its Christmas trees. Id. Although the ACPA was
not enacted until the Sporty’s case was on appeal, the district
court had issued an injunction pursuant to the Federal
Trademark Dilution Act, prohibiting Sporty’s Farm from
using the domain name SPORTYS.COM. Id. Thus, Sporty’s
Farm never used or trafficked in the domain name after
enactment of the ACPA. Unlike in Doughney and Sporty’s,
the district court in this case found that Catalanotte used and
trafficked in the domain name FORDWORLD.COM after
enactment of the ACPA when he offered to sell the domain
name to Ford in October 2000.
In several other cases, courts have found that damages are
available pursuant to the ACPA for post-enactment use or
trafficking, although the domain name at issue was registered
before the ACPA’s enactment. See E. & J. Gallo Winery v.
Spider Webs Ltd., 286 F.3d 270, 277 (5th Cir. 2002)
(“[A]lthough [the defendants] registered the domain name
before the effective date of the ACPA, because they used the
domain name after this date, they can be held liable for
statutory damages for this use.”); Shields v. Zuccarini, 254
F.3d 476, 486–87 (3d Cir. 2001) (deciding that although the
defendant had registered the domain names at issue before
enactment of the ACPA, his “continued use of the domain
names after November 29, 1999 subjects him to the statute’s
proscriptions and remedies”); Virtual Works, Inc. v.
Volkswagen of Am., Inc., 238 F.3d 264, 268 (4th Cir. 2001)
(“A person who unlawfully registers, traffics in, or uses a
8 Ford Motor Co. v. Catalanotte No. 02-1237
domain name after the ACPA’s date of enactment,
November 29, 1999, can be liable for monetary damages
. . . .”).
We reject, therefore, Catalanotte’s argument that the ACPA
precludes an award of damages based on trafficking in a
domain name that was registered before enactment of the
ACPA, but that was trafficked in after the Act’s enactment.
According to the plain language of the Act, liability may be
based on trafficking that occurred after the Act’s enactment,
regardless of when the domain name was registered.
B. Catalanotte’s Use or Trafficking in Domain Name
After November 29, 1999
Catalanotte argues that he did not register, traffic in, or use
the domain name FORDWORLD.COM after November 29,
1999, the date of the ACPA’s enactment. First, Catalanotte
registered the domain name on January 21, 1997, before the
Act’s enactment. Therefore, the district court did not base its
award of damages on Catalanotte’s registration of the domain
name.
Second, Catalanotte argues that he did not traffic in the
domain name FORDWORLD.COM because he intended to
give the domain name to Ford as a gift. Catalanotte argues
that a transfer must be “for consideration” for it to be
actionable as “trafficking” under the ACPA. 15 U.S.C.
§ 1125(d)(1)(E). But Catalanotte’s contention that he
intended to give Ford the domain name as a gift is
contradictory to the district court’s finding of fact that
Catalanotte offered the domain name to Ford for sale. The
district court found as follows:
The substance of the email sent by [Catalanotte] to the
executives of Ford clearly indicated, without attaching a
price tag, that the domain name was for sale, as it
juxtaposed the assertion that the domain name would be
“available for a limited time,” with the assertion that

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No. 02-1237 Ford Motor Co. v. Catalanotte 9
[Catalanotte] had already received “offers” from “various
sources including the competition.”
This finding was not clearly erroneous. Furthermore,
Catalanotte states that he does not contest the district court’s
findings of fact. Therefore, we reject Catalanotte’s argument
that his offer to Ford was an offer to give Ford the domain
name FORDWORLD.COM as a gift.
At oral argument, counsel for Catalanotte argued that
Catalanotte did not traffic in the domain name
FORDWORLD.COM when he offered it for sale to Ford.
The ACPA defines the term “traffics in” as referring to
“transactions that include, but are not limited to, sales,
purchases, loans, pledges, licenses, exchanges of currency,
and any other transfer for consideration or receipt in exchange
for consideration.” § 1125(d)(1)(E). Catalanotte argues that
although the definition of “traffics in” is broad, the definition
requires a “transaction” such as a sale or purchase, not a mere
offer for sale or purchase. He contends that such an offer is
not a “transaction.”
We conclude that, when Catalanotte registered the domain
name FORDWORLD.COM and later offered it for sale to
Ford, he trafficked in the domain name for the purposes of the
ACPA. Registering a famous trademark as a domain name
and then offering it for sale to the trademark owner is exactly
the wrong Congress intended to remedy when it passed the
ACPA. In fact, the ACPA includes offers for sale as an
example of the kind of conduct that courts may consider in
determining whether a domain name registrant acts in bad
faith. § 1125(d)(1)(B)(i)(VI) (“In determining whether a
person has a bad faith intent . . . , a court may consider . . . the
person’s offer to transfer, sell, or otherwise assign the domain
name to the mark owner . . . .”); see also Virtual Works, 238
F.3d at 270 (finding that an offer to sell the domain name
VW.NET to Volkswagen for a profit evidenced bad faith).
Accordingly, we conclude that Catalanotte trafficked in the
10 Ford Motor Co. v. Catalanotte No. 02-1237
domain name FORDWORLD.COM for purposes of the
ACPA when he offered to sell the domain name to Ford.
Finally, Catalanotte contends that he did not use the domain
name FORDWORLD.COM after November 29, 1999, as the
district court found that he never operated a website with the
domain name. The district court, however, determined that
Catalanotte both used and trafficked in the domain name
FORDWORLD.COM when he offered to sell the name to
Ford on October 27, 2001. Catalanotte argues that Congress
must have meant something different by the terms “traffics
in” and “uses” in the ACPA, 15 U.S.C. § 1125(d)(1)(A)(ii),
because had Congress meant the term “uses” to include
“traffics in,” it would not have included both terms in the
statute. Ford responds that Catalanotte’s warehousing of the
domain name and subsequent offer to sell the name
constitutes use under the Act. We need not decide on this
appeal whether “uses” includes “traffics in” under the ACPA
because the district court based its award of statutory damages
solely on Catalanotte’s offer to sell the domain name
FORDWORLD.COM to Ford. Whether that offer is
characterized merely as trafficking in the domain name or
both “trafficking in” and “using” the domain name is of no
consequence to the district court’s award of statutory
damages. Because we conclude that Catalanotte trafficked in
the domain name FORDWORLD.COM when he offered to
sell it to Ford, we need not consider the meaning of the term
“uses” in 15 U.S.C. § 1125(d)(1)(A)(ii) on this appeal.
C. Statute of Limitations
Catalanotte argues that the district court should have
dismissed Ford’s entire ACPA claim because it was barred by
the statute of limitations. He claims that although the
Lanham Act lacks an express statute of limitations, courts
generally apply an analogous state statute of limitations to
federal actions. In that vein, Catalanotte urges that a three-
year statute of limitations applies for Lanham Act claims
brought in Michigan. Ford responds that the equitable

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No. 02-1237 Ford Motor Co. v. Catalanotte 11
doctrine of laches governs Lanham Act claims, not the
Michigan statute of limitations, and therefore, because Ford
filed suit just over a month after learning of Catalanotte’s
registration of FORDWORLD.COM, laches does not bar its
ACPA action.
Catalanotte registered the domain name
FORDWORLD.COM on January 21, 1997 and offered it for
sale to Ford on October 27, 2000. Ford filed its Complaint in
this case on November 30, 2000. Catalanotte argues that the
statute of limitations bars Ford’s ACPA claim because Ford
filed suit more than three years after Catalanotte registered the
domain name FORDWORLD.COM.
Catalanotte’s argument is an attempt to apply a statute of
limitations that is inapplicable to Lanham Act claims.
Although the Supreme Court has adopted analogous state
statutes of limitations in the context of certain federal actions,
see, e.g., Reed v. United Transp. Union, 488 U.S. 319, 334
(1989) (noting the “well established rule that statutes of
limitations for federal causes of action not supplied with their
own limitations period will be borrowed from state law” and
applying that rule to claim brought pursuant to the Labor-
Management Reporting and Disclosure Act of 1959); Wilson
v. Garcia, 471 U.S. 261, 266–67, 280 (1985) (applying
analogous state statute of limitations to 42 U.S.C. § 1983
claim), courts have not treated Lanham Act cases in the same
manner. Instead, the “Lanham Act does not contain a statute
of limitations. In determining when a plaintiff’s suit should
be barred under the Act, courts have consistently used
principles of laches as developed by courts of equity.” Tandy
Corp. v. Malone & Hyde, Inc., 769 F.2d 362, 365 (6th Cir.
1985). Unlike statutes of limitations, “laches is not . . . a
mere matter of time; but principally a question of the inequity
of permitting the claim to be enforced.” Holmberg v.
Armbrecht, 327 U.S. 392, 396 (1946). Laches, rather than a
state statute of limitations, governs claims brought to enforce
an “equitable right created by Congress.” Id. at 395.
12 Ford Motor Co. v. Catalanotte No. 02-1237
Catalanotte notes that there is a “presumption of laches”
that holds that “an action is barred if not brought within the
period of the [analogous state] statute of limitations and is
alive if brought within the period.” Tandy Corp., 769 F.2d at
365. The analogous state statute of limitations in this case is
three years. Herman Miller, Inc. v. Palazzetti Imports &
Exports, Inc., 270 F.3d 298, 321 (6th Cir. 2001). But
Catalanotte otherwise fails to address the elements of laches,
which are of crucial importance in this case. To invoke the
equitable doctrine of laches, a party must show: “(1) lack of
diligence by the party against whom the defense is asserted,
and (2) prejudice to the party asserting it.” Id. at 320.
With respect to the first requirement, a party’s notice or
lack of notice that its rights are being infringed is particularly
relevant to determining whether that party lacked diligence in
protecting its rights. See id. at 321. In this case, Ford first
learned of Catalanotte’s registration of FORDWORLD.COM
on October 27, 2000, when Catalanotte offered to sell the
domain name to Ford. Therefore, Ford did not lack diligence
in asserting its rights because it filed a lawsuit against
Catalanotte on November 30, 2000. Furthermore, with
respect to the second element of laches, the district court
found that Catalanotte “did not reasonably rely to his
detriment upon any knowing inaction on the part of [Ford] in
registering, using, or trafficking in the domain name
FORDWORLD.COM.” For this reason, Catalanotte cannot
show that he was prejudiced by Ford’s failure to assert its
rights before November 30, 2000.
Accordingly, we conclude that Ford’s ACPA claim is not
barred by the equitable doctrine of laches because Ford did
not lack diligence in asserting its rights and because
Catalanotte was not prejudiced by the timing of Ford’s
lawsuit.

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No. 02-1237 Ford Motor Co. v. Catalanotte 13
IV. CONCLUSION
For the foregoing reasons, we AFFIRM the district court’s
award of $5,000 in statutory damages to Ford.

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