Fuccillo et al v. Century Enterprises, Inc. et al

Filing 89

ORDERED: Plaintiffs' Notice of Motion Pursuant to 15 U.S.C. § 1117(d) and FRCP 41(a)(2) 87 is GRANTED. Plaintiffs, William B. Fuccillo and Fuccillo Automotive Group, Inc., shall recover from Defendant Trent Silver as to Count I sta tutory damages in the amount of One Thousand Dollars ($1,000.00). Plaintiff, William B. Fuccillo, shall recover from Defendant Trent Silver as to Count V nominal damages in the amount of One Dollar ($1.00). Plaintiffs' claims in Coun ts II, III, and IV are DISMISSED with prejudice. The Clerk is directed to enter judgment in favor of Plaintiffs, William B. Fuccillo and Fuccillo Automotive Group, Inc, consistent with this order. The Clerk is further directed to close this case. Signed by Judge Charlene Edwards Honeywell on 5/18/2021. (JDE)

UNITED STATES DISTRICT COURT
MIDDLE DISTRICT OF FLORIDA
TAMPA DIVISION
WILLIAM B. FUCCILLO, FUCCILLO
ENTERPRISES OF FLORIDA, INC.
and FUCCILLO AUTOMOTIVE
GROUP, INC.,
Plaintiffs,
v.

Case No: 8:18-cv-1236-CEH-AEP

TRENT SILVER,
Defendant.
___________________________________/

ORDER
This matter comes before the Court on the Plaintiffs’ Notice of Motion Pursuant
to 15 U.S.C. § 1117(d) and FRCP 41(a)(2) (Doc. 87), filed on April 23, 2021.
Defendant Trent Silver has not responded to the motion, and thus the motion is
deemed unopposed. See M.D. Fla. Local Rule 3.01(c). In the motion, Plaintiffs request
the Court award statutory damages in their favor as to their claim in Count I under the
Anti-Cybersquatting Consumer Protection Act (“ACPA”), 15 U.S.C. § 1125(d), and
award nominal damages in favor of Plaintiff William B. Fuccillo as to his claim under
Fla. Stat. § 540.08 in Count V. Plaintiffs also seek entry of an order of dismissal
pursuant to Fed. R. Civ. P. 41(a)(2) as to Counts II, III, and IV. The Court, having
considered the motion and being fully advised in the premises, will grant Plaintiffs’
motion.

DISCUSSION
Plaintiffs, William B. Fuccillo (“Billy Fuccillo”), Fuccillo Enterprises of
Florida, Inc. (“Fuccillo Enterprises”), and Fuccillo Automotive Group, Inc. (“Fuccillo
Auto”) (collectively “Plaintiffs”) sued Defendant Trent Silver (“Silver” or
“Defendant”) in a five-count complaint for improper use of Plaintiffs’ trademarks—
“Billy Fuccillo” and “Fuccillo”—following an arbitration decision in Plaintiffs’ favor.
Doc. 1. Through arbitration, Plaintiffs established that Silver improperly registered
and used the domain name <fuccillo.com> in bad faith and with the intent to redirect
Plaintiffs’ customers to competitor Century Kia’s website. Specifically, the arbitration
panel concluded: (1) the domain name <billyfuccillo.com> was identical or
confusingly similar to the trademarks “fuccillo” and “billy fuccillo” in which Fuccillo
Auto and Billy Fuccillo had rights; (2) Silver had no rights or legitimate interests in
<billyfuccillo.com>; and (3) Silver registered and used the <billyfuccillo.com>
domain name in bad faith. As a result of these findings, the arbitration panel ordered
that the domain name <billyfuccillo.com> be transferred from Silver to Plaintiffs,
Fuccillo Auto and Billy Fuccillo.
After their success in recovering the <billyfuccillo.com> domain name through
arbitration, Plaintiffs instituted this action for money damages against Century
Enterprises, Inc. (operator of Century Kia) and Trent Silver. Defendant Century was
dismissed from this action on July 9, 2019. Doc. 28. Defendant Silver, proceeding pro
se, filed an answer to the complaint on July 20, 2018. Doc. 31.

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On September 28, 2020, the court granted summary judgment1 in favor of Billy
Fuccillo and Fuccillo Auto on the ACPA in Count I and in favor of Billy Fuccillo in
Count V for violation of Florida’s Right of Publicity under Fla. Stat. § 540.08. Doc.
78. Thereafter, a status conference was held on February 17, 2021, to discuss
scheduling the remaining claims and issue of damages for trial. Silver did not appear
at the hearing and has not participated in this litigation since filing his answer in 2018.
Now before the Court is Plaintiffs’ request that, in lieu of trial, the Court enter
damages in their favor on Counts I and V on which they prevailed at summary
judgment. Doc. 87. As to Count I under the ACPA, Plaintiffs seek statutory damages
in an amount not less than $1,000 and not more than $100,000 pursuant to 15 U.S.C.
§ 1117(d). As to Count V, Billy Fuccillo seeks an award of nominal damages or a
dismissal under Rule 41(a)(2). Plaintiffs advise they do not intend to pursue the
remaining claims and accordingly request an order of dismissal pursuant to Fed. R
Civ. P. 41(a)(2) as to Counts II, III, and IV. Silver has not responded to Plaintiffs’
motion, and the time for doing so has expired. M.D. Fla. 3.01(c) (“A party may
respond to a motion within fourteen days after service of the motion. . . . If a party
fails to timely respond, the motion is subject to treatment as unopposed.”).

Plaintiffs filed an initial motion for summary judgment on August 9, 2019, which the court
directed Plaintiffs to re-file to comply with the Local Rules and the requirements of the Case
Management and Scheduling Order. Docs. 35, 42. On October 23, 2019, Plaintiffs re-filed
their motion for summary judgment (Doc. 44), which was denied by the court without
prejudice (Doc. 58). On January 8, 2020, Plaintiffs filed their Second Motion for Summary
Judgment. Doc. 62. Despite being ordered to do so, Silver did not respond to any of Plaintiffs’
motions. See Docs. 40, 52, 67.
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Billy Fuccillo and Fuccillo Automotive prevailed on summary judgment on
their claim in Count I under 15 U.S.C. § 1125(d). “In a case involving a violation of
section 1125(d)(1) . . . , the plaintiff may elect, at any time before final judgment is
rendered by the trial court, to recover, instead of actual damages and profits, an award
of statutory damages in the amount of not less than $1,000 and not more than $100,000
per domain name, as the court considers just.” 15 U.S.C.A. § 1117(d). Plaintiffs here
elect to recover an award of statutory damages, instead of actual damages and profits.
Doc. 87-1 at 4. Plaintiffs do not submit any further evidence of damages, but rather,
request the Court determine the amount based on “the record as it presently stands.”
Id.
On the record before it, the Court finds evidence of only one customer
complaining of being redirected to Century Kia’s website after clicking on the
<billyfuccillo.com> domain. See Doc. 62-5. This evidence was presented by Plaintiffs
to the arbitration panel and this Court in support of Plaintiffs’ claims. The arbitration
panel in making its findings noted that “[c]omplainant has submitted clear evidence
that one Internet user, who sought Complainant’s products, felt misled by the disputed
domain name, which indeed sent him to the website of a third party.” Doc. 62-2 at 38.
No additional evidence of online searches being re-routed was submitted by Plaintiffs,
nor have Plaintiffs submitted any evidence of lost profits due to customers being
redirected to a competitor’s website. Courts considering appropriate statutory damages
for cybersquatting generally will take into account a number of factors,

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including the egregiousness or willfulness of the defendant’s
cybersquatting, the defendant’s use of false contact
information to conceal its infringing activities, the
defendant’s status as a “serial” cybersquatter—i.e., one who
has engaged in a pattern of registering and using a multitude
of domain names that infringe the rights of other parties—
and other behavior by the defendant evidencing an attitude
of contempt towards the court or the proceedings.
Digby Adler Grp. LLC v. Image Rent a Car, Inc., 79 F. Supp. 3d 1095, 1108 (N.D. Cal.
2015) (quoting Verizon Cal. Inc. v. Onlinenic, Inc., C 08–2832 JF (RS), 2009 WL 2706393
(N.D. Cal. Aug. 25, 2009)). Of note here, there has been no evidence that Silver
engaged in “serial” cybersquatting behavior or that he used false contact information
to conceal his infringing activities. That said, the Court did find that Silver clearly
violated the ACPA. Given the sole customer complaint upon which the violation was
founded, the Court concludes on this record that an award of the minimum statutory
damages of $1,000.00 is appropriate.
Billy Fuccillo requests an award of nominal damages for prevailing on Count
V. In the event of a violation of Fla. Stat. § 540.08(1):
the person whose name, portrait, photograph, or other
likeness is so used, . . . may bring an action to enjoin such
unauthorized publication, printing, display or other public
use, and to recover damages for any loss or injury sustained
by reason thereof, including an amount which would have
been a reasonable royalty, and punitive or exemplary
damages.
Fla. Stat. § 540.08(2). Billy Fuccillo has not proffered any evidence of injuries or losses
sustained. As with the claim in Count I, however, the Court observes that Billy
Fuccillo did prevail on his claim in Count V. Plaintiffs request nominal damages for
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this victory. Accordingly, the Court will award Billy Fuccillo nominal damages in the
amount of $1.00 for prevailing on this claim.
As for Plaintiffs’ claims in Counts II, III, and IV, Plaintiffs request an order of
dismissal. Doc. 87 at 2. Under Rule 41(a)(2), an action may be dismissed at the
plaintiff’s request by court order on terms that the court deems proper. Plaintiffs have
chosen not to pursue their claims for federal unfair competition, violation of Florida’s
Deceptive and Unfair Trade Practices Act, and common law unfair competition. That
is their prerogative, but the Court finds that dismissal with prejudice is warranted.
Plaintiffs have had an opportunity to pursue these claims in court and it would be a
waste of judicial resources to allow Plaintiffs to pursue these claims again at some
point in the future. Accordingly, the Court will dismiss Plaintiffs’ claims in Counts II,
III, and IV, with prejudice. Accordingly, it is hereby
ORDERED AND ADJUDGED:
1.

Plaintiffs’ Notice of Motion Pursuant to 15 U.S.C. § 1117(d) and FRCP

41(a)(2) (Doc. 87) is GRANTED.
2.

Plaintiffs, William B. Fuccillo and Fuccillo Automotive Group, Inc.,

shall recover from Defendant Trent Silver as to Count I statutory damages in the
amount of One Thousand Dollars ($1,000.00).
3.

Plaintiff, William B. Fuccillo, shall recover from Defendant Trent Silver

as to Count V nominal damages in the amount of One Dollar ($1.00).
4.

Plaintiffs’ claims in Counts II, III, and IV are DISMISSED with

prejudice.
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5.

The Clerk is directed to enter judgment in favor of Plaintiffs, William B.

Fuccillo and Fuccillo Automotive Group, Inc, in the total amount of One Thousand
Dollars ($1,000.00), with interest as provided by law, and against Defendant, Trent
Silver, as to Count I. The Clerk is further directed to enter judgment in favor of
Plaintiff, William B. Fuccillo, in the total amount of One Dollar ($1.00), with interest
as provided by law, and against Defendant, Trent Silver, as to Count V.
6.

The Clerk is further directed to close this case.

DONE AND ORDERED in Tampa, Florida on May 18, 2021.

Copies to:
Counsel of Record and Unrepresented Parties, if any

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