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Domain Names Visually and Phonetically Similar to Trademarks

Orthographic variations such as adding, omitting and transposing letters suggest that the respondent’s motivation for registering a disputed domain name was to capitalize on the pre-existing goodwill associated with the complainant’s trademark. This was implicitly admitted by the Respondent in two early cases, Dow Jones & Company, Inc. and Dow Jones LP v. John Zuccarini, D2000-0578 (WIPO August 28, 2000) and Eddie Bauer, Inc. v. John Zuccarini aka Cupcake Party, D2001-0224 (WIPO April 26, 2001). Although this multiple named Respondent rarely made an appearance he answered these two cases with the provocative assertion that he had as much right to register typosquatted domain names “as the person who owns the correct spelling of domain name” on the theory that they were distinguishable from the trademarks. This view of the parties’ respective rights and other arguments invoking the U.S. Constitution failed to ignite the Panel or to catch hold generally and in close to a 100 cases against the same Respondent the domain names were transferred.

Because 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) it is more usual for respondents to default than appear. So it was in Academy, Ltd., d/b/a Academy Sports & Outdoors v. Roiquest.com sprl c/o Domain Administrator, FA1002001306758 (Nat. Arb. Forum March 26, 2010) involving the domain name <acadamy.org>. Challenged Internet users may be surprised that this spelling is incorrect. More surprising is that the parties are geographically distant from each other and that the term “academy” (correctly spelled) alone or with other words appears in over a thousand active trademarks registered by or pending with the USPTO. The Panel found that the Respondent’s website included links to goods “in direct competition with Complainant’s business.” Presumably, the website also contained other links of a different kind having no relation to the Complainant.

A domain name comprised of a variation of a dictionary word, however, is different from a trademark well known in the marketplace, as were Zuccarini’s targets. In those cases, there was no issue as to the targets. On the other hand, with misspelled dictionary words any one of many trademark holders can step forward and prevail if somewhere on the offending website or by a search function it can find a link to competitive goods or services.  In this event the first to sue can claim bad faith even if it was not the one who the respondent was actually targeting. It would seem that the whole point of having a misspelled domain name confusingly similar to a generic or descriptive trademark is to capture the widest possible audience without thought of any one of the dozens of trademark holders who could claim to be targeted.

Gerald M. Levine <udrpcommentaries.com>

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