Bernard J. Carl v. Bernardjcarl.com; Fabrice Marchisio; Cotty Vivant Marchisio & Lauzeral

UNPUBLISHED
UNITED STATES COURT OF APPEALS
FOR THE FOURTH CIRCUIT
No. 09-2325
BERNARD J. CARL,
Plaintiff - Appellant,
v.
BERNARDJCARL.COM; FABRICE MARCHISIO; COTTY VIVANT MARCHISIO
& LAUZERAL,
Defendants – Appellees,
and
NS HOLDING, INC., f/k/a Network Solutions, Incorporated;
JOHN DOE #1; JOHN DOE #2,
Defendants.
Appeal from the United States District Court for the Eastern
District of Virginia, at Alexandria. T. S. Ellis, III, Senior
District Judge. (1:07-cv-01128-TSE-TRJ)
Submitted: October 21, 2010 Decided: December 3, 2010
Before NIEMEYER, DUNCAN, and AGEE, Circuit Judges.
Affirmed in part, vacated in part, and remanded by unpublished
per curiam opinion.
Bernard J. Carl, Appellant Pro Se.

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Unpublished opinions are not binding precedent in this circuit.

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PER CURIAM:
Bernard J. Carl brought suit in the district court
against French law firm Cotty Vivant Marchisio & Lauzeral
(“CVM&L”) and one of its partners, Fabrice Marchisio. In the
district court, Carl alleged that Marchisio and CVM&L purchased
the domain name “bernardjcarl.com” and posed a defamatory
message under a false identity claiming that Carl owed them
money for services performed as a subcontractor for a law firm
hired by Carl to assist with the acquisition of a French luxury
brand. Carl brought claims under the Anti-Cybersquatting
Consumer Protection Act, 15 U.S.C. §§ 1125(d)(1), (2) (2006),
the Lanham Act, federal anti-cyberpiracy law, 15 U.S.C.A. § 8131
(2010), and Virginia state law trademark and libel. The
Defendants did not file responsive pleadings, and Carl moved for
default judgment.
The district court dismissed all of Carl’s federal
claims as well as his state law trademark claim. The court
found Marchisio and CVM&L liable on Carl’s defamation claim and
awarded $10,000 in compensatory damages, but also found that
Carl had not established that Marchisio and CVM&L had acted with
“actual malice,” and therefore denied his request for punitive
damages. The court also declined to award Carl costs and
attorney’s fees. Carl appeals. For the reasons that follow, we

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affirm in part, vacate in part, and remand for further
proceedings.
Carl’s first claim on appeal is that the district
court misinterpreted 15 U.S.C.A. § 8131, the federal anti-
cyberpiracy law. The statute 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.
15 U.S.C.A. § 8131(1)(A).
The district court determined that Carl had not shown
that Marchisio or CVM&L had the intent to profit by selling the
domain name back to Carl or to a third party. We have reviewed
the record, and we agree. The statute’s language is specific,
and while the defendants may have been attempting to profit,
they did not do so in the means specified in the statute.
Carl next concedes that the district court was correct
to dismiss his Lanham Act and state law trademark claims because
this court has rejected the “initial interest confusion”
doctrine in trademark cases. See Lamparello v. Fallwell, 430
F.3d 309, 316 (4th Cir. 2005). He argues, though, that we
should revisit that decision. The merits of this request aside,
a panel of this court cannot overrule the decision of a prior

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panel. United States v. Simms
Carl next argues that the district court erred in
determining that Marchisio and CVM&L did not act with actual
malice and therefore could not be subject to punitive damages
for defamation. When reviewing a trial court’s decision to
award punitive damages, a reviewing court “must examine the
facts pertinent to the punitive-damage award and exercise
independent judgment to determine whether the record establishes
actual malice with convincing clarity.”
, 441 F.3d 313, 318
(4th Cir. 2006).
Williams v. Garraghty,
455 S.E.2d 209, 217 (Va. 1995) (internal citations and
quotations omitted). Conversely, a trial court’s decision not
to award damages is also reviewed independently. In order to
receive punitive damages in a defamation case under Virginia
law, the plaintiff must prove “actual malice by clear and
convincing evidence that the defendant either knew the
statements were false at the time he made them, or that he made
them with a reckless disregard for their truth.” Government
Micro Resources, Inc. v. Jackson
Our review of the record persuades us that Carl has
made a sufficient showing of actual malice to support an award
of punitive damages. The evidence demonstrates that Marchisio
and CVM&L at least acted recklessly when they made libelous
, 624 S.E.2d 63, 70 (Va. 2006)
(internal citations omitted).

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statements concerning a purported debt owed by Carl. We find
particularly compelling the fact that the Defendants in this
matter were attorneys who knew they never contracted with Carl,
that they represented to Carl’s former counsel a desire to
avenge an insult, and that they went to great lengths to conceal
their identities. Because the Defendants’ reckless disregard
for truth is sufficient to establish malice, the district court
improperly concluded that it could not award punitive damages.
However, whether to award punitive damages, and the amount of
any such award, are matters within the district court’s
discretion. See Hamilton Dev. Co. v. Broad Rock Club, Inc., 445
S.E.2d 140, 144 (Va. 1994). Thus, we vacate the district
court’s denial of punitive damages and remand for further
proceedings on this issue.1
Finally, Carl argues on appeal that the district court
erred by failing to award attorney’s fees and costs. 2
1 To be clear, although we disagree with the district
court’s finding that actual malice was not established, we
express no opinion about whether the district court should award
punitive damages, or the amount of any such award.
The
general rule under Virginia law is that attorney’s fees and
costs may not be recovered by a prevailing litigant as an item
2 Carl sought to recover the costs of investigating and
prosecuting his civil case, rather than the recoverable costs
enumerated in 28 U.S.C. § 1920 (2006).

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of damages. State Farm Fire and Cas. Co. v. Scott
We therefore affirm the district court’s judgment with
respect to Carl’s cyberpiracy claim, his trademark claims, and
the court’s decision not to award attorney’s fees and costs. We
vacate the district court’s finding of no actual malice, and
remand for further proceedings on that claim. We dispense with
oral argument because the facts and legal contentions are
adequately expressed in the materials before the court and
argument would not aid the decisional process.
, 372 S.E.2d
383, 386 (Va. 1988). We find no reason to deviate from that
general rule here.
AFFIRMED IN PART,
VACATED IN PART,
AND REMANDED

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