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Can There Be Typo-Piracy Before Issuance of a Trademark?

Registering 1,017 variants of the Complainant’s trademark FREECREDITREPORT.COM is eye-popping and in its way hugely comic. ConsumerInfo.com, Inc. v. Netcorp Netcorp c/o Netcorp, FA0909001283469 (Nat. Arb. Forum November 11, 2009). Here is a dozen sampling from the beginning of the alphabet: <arfreecreditreport.com>, <asfreecreditreport.com>, <bfreecreditreport.com>, <breecreditreport.com>, <cafreecreditreport.com>, <cfreecreditreport.com>, <cofreecreditreport.com>, <connecticutfreecreditreport.com>, <ctfreecreditreport.com>, <dcfreecreditreport.com>, <defreecreditreport.com>, <dfreecreditreport.com>.

How does a registrant explain these variations? Well, first of all when the trademark application was made for FREECREDITREPORT.COM the Examining Attorney rejected it “due to its descriptiveness.” Although the Complainant overcame the objections (according to the Respondent) it “had no rights in the mark at the time the domains were registered.” Timing in this case coupled with proof of a common law right is particularly important. The Complainant’s application was filed in February 2006 and the trademark issued in May 2008. However, the Complainant claimed a first use in commerce as January 1999. The evidence for a January 1999 first use was compelling. The Complainant asserted (without dispute from the Respondent) that

between 1999 and 2002 it spent more than $12 million per year promoting the services offered under the mark, and that advertising spending increased each year…. [In] September 2002 [the advertising] ran on 18 cable networks, generated 130,000 consumer responses, and resulted in 110,000 sales. In January 2003, another advertisement ran during the Super Bowl pregame telecast, exposing the mark to millions more consumers. Complainant contends that a survey in June 2005 indicated that 53% of consumers were at least somewhat familiar with the FREECREDITREPORT.COM mark.

The disputed domain names were registered during a period of intense nationwide exposure to the trademark. However, the question is whether the Respondent’s registrations were fortuitous in the sense of two people lighting on the same combination of common words, with the Respondent being the first to register? This was improbable because of the variations. If the Respondent had been the first to register in good faith there would have been no reason for variations. The Panel found 15 different kinds of variations, many being typographical, others changing the tense, still others “adding generic or descriptive words that ha[d] obvious association with the Complainant’s business” and still others “misspelling the mark by changing a letter in the mark to a different letter,” and more.

Typosquatting is defined as the “intentional misspelling of words with intent to intercept and siphon off traffic from its intended destination, by preying on Internauts who make common typing errors. Typosquatting is inherently parasitic and of itself evidence of bad faith.” Nat’l Ass’n of Prof’l Baseball Leagues v. Zuccarini, D2002-1011 (WIPO January 21, 2003). In general, a respondent’s registration of a domain name that misspells a trademark, or is composed of added, substituted or transposed letters that varies the prototype, is not merely confusingly similar but implies knowledge and suggests targeting the trademark. While a pay-per-click website can be “use in connection with a bona fide offering of goods or services” [paragraph 4(c)(i) of the Policy], it fails when it is used for “displaying links to third-party websites, some of which provide credit report viewing services in direct competition with Complainant.” Piggybacking on a complainant’s business model developed and advertised prior to trademark registration but after the complainant has established itself in the marketplace does not support registration in good faith; rather, it is abusive conduct.

Gerald M. Levine, <udrpcommentaries.com>

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