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Exploiting Inadvertent and Artless Misspelling of Trademarks

Potential, inadvertent and artless misspelling of trademarks by Internet users while typing in the domain name was quickly exploited by entrepreneurial registrants as a source of income. The first appearance of a typographical error – omission of a dash in the trademark C-COM – was not recognized as such by the Complainant who alleged that <ccom.com> was identical (rather than confusingly similar) to its trademark, Chernow Communications, Inc. v. Jonathan D. Kimball, D2000-0119 (WIPO May 18, 2000). The dissent saw no reason for the respondent forfeiting the domain name because the second level domain was not identical to the trademark and the Complainant had not alleged confusing similarity. He “[saw] no need to supplement the allegations that Complainant actually made with others that Complainant chose not to include, or to afford Complainant a second opportunity to allege what frankly is an obvious component of a prima facie case under the UDRP.” This uncharitable view failed to impress his colleagues then, was tacitly rejected in contemporary cases, and has left no mark on the jurisprudence.

In a number of cases contemporary with Chernow, respondents repeated the affix “www” within the second level domain, for example, <www.wwwge.com>, General Electric Company v. Fisher Zvieli, a/k/a Zvieli Fisher, D2000-0377 (WIPO July 19, 2000). The Panel noted that “slight changes to, adds to, or subtracts from, the trademarks and service marks of others, in the apparent hope that those who seek to visit the web site of the mark holders might inadvertently make a typographical error and potentially could be taken to a web site constructed by Respondent to profit from this confusion …. has been dubbed “typosquatting.” Illustrations of “slight changes” in cases decided in the first full year of the Policy include “attt” (repeating a letter), “american-on-line” (adding a letter) and “ayhoo” (transposing a letter).

Views sharpened against typosquatting as the practice accelerated in the second and third years of the Policy. In a 2003 case, the Panel held that de minimis changes to trademark terms is “inherently parasitic and by itself evidence of bad faith,” Nat’l Ass’n of Prof’l Baseball Leagues v. Zuccarini, D2002-1011 (WIPO January 21, 2003). This came after the same respondent had argued in two earlier 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) that he had as much right to register typosquatted domain names “as the person who owns the correct spelling of domain name.” That contention was given short shrift. De minimus changes “immediately raise[] suspicions and call[]or an explanation,” CareerBuilderLC v, L. Azra Kha, D2003-0493 (WIPO August 5, 2003).

In almost every other circumstance, the complainant must prove that the respondent both registered and used the domain name in bad faith. With typosquatting, the proof is unitary. By 2010, it was possible to conclude that typosquatting is “as close as it is possible to come to per se cybersquatting,” Apple Inc. v. Andrew Sievright, Domain Source, D2010-1916 (WIPO December 8, 2010) (omitting final “e” from trademark, <appl.com>); also, Apple Inc. v. Oakwood Services Inc. – N/A N/A, D2010-1917 (WIPO December 28, 2010) (<aplle.com>, on the qwerty keyboard, striking “l” instead of “p”, which is above it on the right).

Absent a plausible explanation, one can infer from “slight changes” that the respondent 1) had knowledge of the complainant’s trademark; 2) made the changes intentionally; and 3) expected to obtain a benefit from registering and using the domain name. The only other example of per se cybersquatting is phishing.

 

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