Excerpt from Guzman Ruling on Intermatic.com matter:


Having found no infringement or unfair competition, it is not necessary to consider
the appropriate remedies for Intermatic under those counts. However, the controversy still at
issue in this case is whether Toeppen's conduct was willful, thus justifying an award of attorneys
fees to Intermatic under the provisions of 15 U.S.C. $51 125(c)(2) and 11 17. Intermatic asserts
that Toeppen acted with willful intent to hinder Intermatic's commercial exploitation of the
Internet. Toeppen maintains that he was merely asserting and defending his position that
trademark owners do not have a preemptive right to register their trademarks as domain names.
As in Panavision International, L.P. v. Toeppen, 945 F. Supp. 1296 we find that an award of
attorneys' fees in this case would be inappropriate. The particular issues dealt with in this case
were primarily issues of first impression and at the relevant period there was a lack of legal
precedent regarding issues arising from the intersection of trademark law and the Internet.
Furthermore, the remedies available under the Anticybersquatting Consumer Protection Act (
"ACPA"), 15 U.S.C. 5 1 125(d)(2)(D)(i) depend on when the unlawful activity took place. A
person who unlawfully registers, traffics in, or uses a domain name after the ACPA's date of
enactment, November 29, 1999, can be liable for monetary damages under 15 U.S.C. 5 1 1 17(d)
and can have the domain name transferred to the owner of the mark or canceled under 15 U.S.C.
8 1 125(d)(2)(D)(i). The only remedy available for ACPA violations that occurred before
November 29, 1999, however, is to have the domain name transferred to the owner of the mark
or canceled. Anticybersquatting Consumer Protection Act, Pub. L. No. 106-1 13,s 3010, 1 13

Stat. 1536. Toeppen's alleged cybersquatting occurred before the ACPA's date of enactment.
Nor do we find willful mess. It is apparent that defendant neither damaged nor intended to
damage plaintiffs reputation. It is also apparent that he did not in any way deceive or intend to
deceive the purchasing public. He did no more than what entrepreneurs and businessmen do or
try to do every day. He used his particular legitimately gained knowledge, in this case of a new
technology, to position himself, before others did so, so as to attempt to make a profit with very
little work. At the time he did this there was a vacuum in both statutory and case-law regarding
the degree to which, if any, the law of trademarks and unfair competition protected trademarks
from being used in this manner. In addition, when plaintiff objected the defendant immediately
did all he could do to ensure that he was not damaging plaintiffs reputation in any way. He
professed a willingness not to use the domain name in question to sell any product or service.
Thus eliminating any potential for product confusion. In short, he did everything but give up his
right to the use of the domain name. This he did not have to do as it was not at all clear that he
was legally bound to do so.


This Court hereby enters final judgment for defendant, and against plaintiff as to plaintiffs
willfulness allegations in Count 111; plaintiffs trademark infringement allegations (Count I);
plaintiffs federal unfair competition claims (Count 11); plaintiffs common law unfair
competition claims (Count V); plaintiffs Illinois Deceptive Trade Practices claim (Count VI);
and plaintiffs Illinois Consumer Fraud Act claim (Count VII). Judge Williams previously
entered judgments of permanent injunctive relief on Counts I11 and IV. All parties are to bear