Plumber sued for cybersquatting

Gillece Services has more than 200 registered Internet domain names. About 50 of them are variations on the name Gillece and possible misspellings of the word.

Dozens more are simply town names from Western Pennsylvania with the word "plumber" after them, like carrickplumber.com or monroevilleplumber.com, which then redirect visitors to the Gillece home page.

But 13 others are remarkably similar to other plumbing, heating and electrical companies in the region and have become part of a federal lawsuit against the Pittsburgh company, alleging trademark infringement and cybersquatting.

Fagnelli Plumbing Co. in Oakland filed a lawsuit against Gillece in May, claiming the company had improperly registered the Internet domain name fagnelli.com and then redirected Web traffic from that site to the Gillece home page. Though Fagnelli sent a cease and desist letter, demanding that Gillece turn over the domain name, that never happened.

Gillece did, however, stop redirecting traffic to its own site, and instead listed fagnelli.com on GoDaddy.com, which is a parking site for domain names that are registered but contain no content.

The case was supposed to have been settled following mediation at the end of September, but the settlement fell through when the parties couldn't agree on the confidentiality clause.

The case is now headed for a bench trial before U.S. District Judge Arthur J. Schwab on April 11. Fagnelli, which characterizes Gillece's behavior as "unscrupulous and unethical," is seeking damages of $100,000 plus costs and attorney fees.

In the meantime, on Tuesday, the parties filed motions for summary judgment -- asking the judge to rule in their favor.

As part of its motion, Fagnelli filed 13 separate affidavits written by the owners of local plumbing, heating and electrical companies, who all said that domain names similar to their business names had been registered by Gillece.

Mark Nix, who has operated Mark Nix Plumbing in Brentwood for more than 25 years, said he didn't know a domain name similar to his business had been registered until lawyers for Fagnelli told him.

Even so, he doesn't like that Gillece registered the name marknixplumbing.com.

"I think it's the wrong thing to do for Gillece -- to go take my website and put his name over top of mine," Mr. Nix said. "He's a big enough company, he really doesn't need to do something like that.

"He should have his own customers."

Paul Robinson, an attorney for Gillece, said Tuesday afternoon that he had not yet read the affidavits filed by Fagnelli and could therefore not comment on them. A response to the filing is due by Feb. 10.

But in its own motion and accompanying affidavits, Gillece President and CEO Thomas Gillece said that while he did register the domain name fagnelli.com, he never requested or directed anyone to redirect traffic from that site to that of his business.

Instead, Mr. Gillece wrote in the affidavit that he believed it was simply a mistake made by a new information technology employee, who was supposed to redirect only the variations on Gillece, as well as the geographical domain names.

Further, attorneys for Gillece argued that Fagnelli Plumbing cannot prove that their client ever purposely used the Fagnelli name.

"Gillece Plumbing did not ever use the www.fagnelli.com domain name in commerce for any reason, and never used that domain name with any intent, bad faith or otherwise, to profit from any use of that domain name," Mr. Robinson wrote. "Here, there is no evidence whatsoever of any intent by Gillece Plumbing to confuse any customer of Fagnelli Plumbing. In fact, there is no evidence whatsoever that the defendants intentionally requested the use in question, i.e., the redirection of any internet traffic from the www.fagnelli.com domain name to Gillece Plumbing.

"The mere registration of a domain name, without any intentional use of it to confuse, simply is not actionable."

The intentions of Gillece will likely be a turning point of the case, said Michael Madison, who teaches trademark law at the University of Pittsburgh.

Although there are a number of standards that must be considered by the court, the professor said, one of the most important is: "Did the defendant intend to cause confusion in the minds of consumers by using the plaintiff's trademark in some way?"

For Fagnelli, one way to prove that, Mr. Madison said, is for the company to show Gillece "engaged in a pattern of action that was not accidental and not consistent with the idea of legitimate competition in the market."

In that vein, Edward Friedman, the attorney for Fagnelli, included among the affidavits one from Arthur Scanlon, who operates Pleasant Hills Plumbing, Heating and Cooling, which has been in business since 1939. The name "Pleasant Hills Plumbing," was registered in Allegheny County and with the state in 1947. However, according to the affidavit, pleasanthillsplumbing.com redirects visitors to Gillece.

"It's one thing for Gillece to try to say this happened once, and there's some plausible explanation for it," Mr. Madison said. "What Fagnelli is trying to prove is that Gillece is intentionally trying to appropriate the goodwill associated with the plaintiff's trademarks.

"The redirection piece of the allegation clearly paints Gillece in a much more severe light."

Paula Reed Ward: pward@post-gazette.com or 412-263-2620.

First published on February 2, 2011 at 12:00 am