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Cyber Infringement of Trademarks by Typosquatting

A fabled, serial cybersquatter of the early Internet argued that typographical errors in domain names were not cybersquatting at all because they had their own distinct identities. Moreover, “I have” (he argued) “just as much right to own the [misspelled] Domain Names as the person who owns the correct spelling of [a] domain name.” That dispute involved and <wallstreet journel.com>. Dow Jones & Company, Inc. and Dow Jones LP v. John Zuccarini, D2000-0578 (WIPO September 10, 2000). Not surprisingly, the Panel disagreed about “just as much right”:

It is plain that Zuccarini registered and has used the two domain names solely for the purpose of trading on the global reputation of THE WALL STREET JOURNAL, taking advantage of the tendency of Internet users to misspell, and attracting such users to his own sites, and thus to profit from his own sales of advertising and from links to other websites. Zuccarini’s admissions in the Shields case [an earlier cybersquatting dispute], and the Court’s [later] findings in that case (e.g. “there is overwhelming evidence that Zuccarini acted with a bad-faith intent of profit”) buttress this conclusion.

While it’s possible for panels to deny standing where a string of characters is similar but not confusingly so to trademarks (extremely rare, incidentally, although small differences could matter) standing will not be denied for strings omitting, adding, transposing, and substituting letters of marks, regardless of their strength (shwab.com, papperlesspost.com, lanssend.com, clrins.com). The reason for this is that registering domain names with typographical errors of words, phrases, and surnames with marketplace associations implicitly admits knowledge of the mark. So, unless respondents persuasively explain the registration (again, extremely rare) the domain name will either be cancelled or transferred.

Where the typo is in a common word (detur.com for detour, cedit.com for credit, natiional.com for national—same respondents in each) standing may be granted (similar but barely confusing), but otherwise there is no actionable claim for cybersquatting. This illustrates a kind of error that is not an admission of knowledge but intentional for other reasons than targeting complainants. In Vanguard Trademark Holdings USA LLC v. Administrator, Domain / Vertical Axis, Inc., FA1104001383694 (Forum May 31, 2011) (NATIONAL and <natiional.com>) Respondent appeared and argued that its business model was registering typographical variations of common words. In Detur International B.V., Tatil Seyahat Turizm Anonim Sirketi v. Vertical Axis Inc. D2012-0919 (WIPO July 16, 2012) stated that “[o]ver the years, Respondent has registered hundreds of generic dictionary word domain names that incorporate typographical errors.” The three-member Panel in Vanguard agreed: “‘[r]ights in the name,’ aside, the word ‘national’ is simply too common for the registration and use of the typo squatting variation ‘natiional’ to be considered ‘bad faith.’” The Panel concluded that,

a respondent is free to register a domain name consisting of misspelling of common terms where there is little or no other evidence of the elements of “bad faith” and particularly where there is no evidence that Respondent had another party or its trademark in mind when it registered the “typo” domain name.

Zuccarini’s earlier model of typographical errors is different in that he targeted well-known marks (officmax.com, fideilty.com) and celebrities (kevinspacy.com). So although cyber infringement by typosquatting may be dead on arrival, it continues to be a popular sport, although rarely to a successful end. Because of this, it’s rare that respondents appear and defend, but when they do it lightens one’s day.

In Oracle International Corporation v. Danny B / Admedia, FA1605001674542 (Forum June 27, 2016) Respondent claims to have registered 18 years ago—“unverifiable” according to Complainant “given that the domain name was registered to a privacy service at that time.” At times during the past 18 years the domain name was used to distribute malware and other times directed to adult web sites. Taking a page from Zuccarini, Respondent defended himself by denying culpability. He argues that he

was not in control of the <oracl.com> domain name during the time in which it was being used for malware. Respondent uses the domain as a shopping portal which sells products to end consumers, which is a legitimate non-competing business.

The Panel, however, was not impressed:

While Respondent has claimed that he did not control the <oracl.com> domain name at the time that it was being used for malware, he remains responsible for the content associated with it… Therefore, given the evidence that the <oracl.com> domain name has, for several years, been alternately used for malware, to redirect to pornographic material, and to advertise competing products, it is clear that it has been used in bad faith.

The principle here is that respondents are responsible for the contents and use of their domain names even when they deny culpability for use in bad faith; the “not me” defense is a sure loser.

Defaulting Respondents in two registrations incorporating typographical errors of a well-known bank mark, DOLLAR BANK have no explanation and no defense. Note in Dollar Bank, Federal Savings Bank v. Above.com Domain Privacy / Transure Enterprise Ltd, D2016-0700 (WIPO June 10, 2016) (<dollarbanl.com>) and Dollar Bank, Federal Savings Bank v. Pham Dinh Nhut, D2016-0787 (WIPO June 9, 2016) (<dollaebank.com>) the character errors “l” instead of “k” and “e” instead of “r” are adjacent on the Qwerty keyboard. In the first, the Panel explained that,

[t]he disputed domain name is inherently likely to mislead Internet users, and the Respondent has not attempted to argue, nor is there any evidence that it could realistically argue, that it has been making a legitimate noncommercial or fair use given the presence on the linked website of pay-per-click links relating to the field in which the Complainant is active, namely financial services.

In the second case,

Having regard to all the evidence, the Panel finds on the balance of probabilities that the Respondent has registered the disputed domain name with the intention of typosquatting on the Complainant’s trademarks, in the expectation that some users seeking the Complainant will accidentally hit the “e” key instead of “r” and be misled into visiting the Respondent’s website, potentially generating commercial gain for the Respondent by confusion of the visitor within the contemplation of paragraph 4(b)(iv) of the Policy.

That the domain name doesn’t resolve to an active website is not preclusive of a finding of bad faith. The principle here is that the domain name,

incorporates the registered trademarks of an established bank and logically has been purchased by the Respondent for some purpose, but it is not reasonably possible to conceive of any use to which it could be put by the Respondent that would be in good faith.

But could it not be argued that “dollar” is like “national” and shouldn’t it be treated in the same way, in respondent’s favor? Actually, “doller” and “dolar” are registered domain names but have never been challenged. They are the very same kind of typographical errors held by Respondent in the <natiional.com> dispute. Properly spelled “dollar” with a qualifier such as “simple”—<simple dollar.com>—was unsuccessfully challenged by a complainant with an alleged common law mark but never by Dollar Bank.

By Gerald M. Levine, Intellectual Property, Arbitrator/Mediator at Levine Samuel LLP

Information about the firm can be found on the Firm’s website at iplegalcorner.com. Mr. Levine has a litigation and counseling practice representing clients in Intellectual Property rights and management, Internet and Cyberspace issues, domain names and cybersquatting, as well as a diverse range of legal and business matters from working with client to resolve commercial disputes, to copyright and trademark counseling and registrations. He is the author of a treatise on Trademarks, Domain Names, and Cybersquatting, Domain Name Arbitration: A Practical Guide to Asserting and Defending Claims of Cybersquatting Under the Uniform Domain Name Dispute Resolution Policy. A Second Edition of the treatise was published July 2019 and is available from Amazon or from the publisher, Legal Corner Press (LCP). For inquiries to LCP write to .(JavaScript must be enabled to view this email address) or Mr. Levine at .(JavaScript must be enabled to view this email address).

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