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Omitting, Adding, Transposing and Substituting Letters as Evidence of Typosquatting

The Panel in Apple Inc. v. Andrew Sievright, Domain Source, D2010-1916 (WIPO December 8, 2010) (<appl.com>) notes that “[t]yposquatting is as close as it is possible to come to per se cybersquatting.” The reason for this is the obviousness of respondent’s knowledge of the trademark and its opportunism in making typographical variations of it for commercial gain. Omitting an “e”, but populating the website with links to competitors is conclusive proof of abusive registration. Other 2010 cases illustrate the cat and mouse game by adding, transposing and substituting letters to defer or elude detection. The Respondent in Credit Agricole S.A. v. Dick Weisz, D2010-1683 (WIPO December 1, 2010), for example, added a hyphen and omitted the accent from the letter “e” in registering <credit-agricole.info>. It has long been established that “minor modifications to a trademark do not diminish in any significant way the likelihood of confusion between the disputed domain name and Complainant’s trademark.”

In many instances, respondents compose their domain names in the expectation that Internet users will mis-type or mis-remember the spelling of the the trademark. In Wells Fargo & Company v. Adjaele Global Internet Ltd., FA1010001352949 (Nat. Arb. Forum December 6, 2010) the respondent switched “e” and “r” which are side by side on the querty keyboard and spelled WELLS FARGO as <wellsfaego.com>. In McAfee, Inc. v. QTK Internet/Name Proxy/Private Registration /Damian Macafee, FA1010001351950 (Nat. Arb. Forum December 3, 2010), the Respondent added an “a” to MCAFEE to create <macafee.com>. These, like APPLE, are more obvious because the trademarks are well known or famous. The Panel in Apple, however, cautioned that not all mis-spellings of “apple” are typosquatting. He says, “[e]ven the renown of Complainant and its marks does not confer a worldwide monopoly on the right to use the word APPLE or a variant in a domain name, under the Policy or under United States trademark law. The Panel points this out in the hope that Complainant, unlike some other owners of famous brands that incorporate common words, will limit its vigilance to proper circumstances, as it apparently has so far done.”

It happens that there are not a few cases in which typosquatting could be alleged because of a one letter difference, but there is no persuasive evidence of abusive registration. This was observed, for example, in Webvisions Pte Ltd. v. WebVision, D2010-1702 (WIPO November 26, 2010) discussed in the December 15 Note. The Respondent’s domain name was confusingly similar to the Complainant’s trademark by “reduc[ing the word from] a plural term to the singular,” WEBVISIONS to <webvision.com>. The difference between the APPLE reduction and the WEBVISIONS reduction is that the content in Apple allowed for a strong inference of opportunism. If content clearly demonstrates a respondent active in a completely different line of business, using a confusingly similar name does not support lack of right or legitimate interest. Complainant’s failure to prove paragraph 4(a)(ii) of the Policy or the respondent’s proof it has a right or legitimate interest in the disputed domain name is conclusive against abusive registration.

A respondent’s assertion that its domain name is composed of a generic term with an added “a”, Cabela’s, Inc. v. Elisa Browning, FA1009001345984 (Nat. Arb. Forum November 7, 2010) (<cableas.com> is as equally unfounded as a complainant who asserts its trademark is fanciful, Havanna S.A. v. Brendhan Hight, Mdnh Inc., D2010-1652 (WIPO November 26, 2010) (<havanna.com>). In Cabela’s the respondent was tripped up on her content; in Havanna, the Complainant learned that “Havanna” is the correct spelling in a number of European languages for what in English is Havana and that Respondent’s website contained links of travel information useful to European travelers to Cuba. Thus, while “[t]yposquatting is as close as it is possible to come to per se cybersquatting,” some apparently incorrect spellings are, well, correct for the audience and content of the website. Omission of letters is the more likely candidate to have been registered in good faith (“appl” notwithstanding), as opposed to adding and transposing letters as seen in several of the cases noted above.

Levine Samuel, LLP <researchtheworld.com>

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