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Reproducing Distinctive Part of the Trademark, Omitting Article: A Form of Typosquatting

SAVE THE CHILDREN and <savechildren>. Omitting an article, in this case the “the” but retaining the verb and subject, Save the Children Federation, Inc. v. Steve Kerry, North West Enterprise,Inc, D2009-1404 (WIPO December 9, 2009) does not create a distinctive new combination and has some of the earmarks of typosquatting; that is, a de minimus variation of the prototype. It is not the “the” that makes the trademark distinctive which means that the domain name is sufficiently similar to the trademark to pass the jurisdictional test. The trademark in its common law form is decades old; registration on the Principal Register dates back to the 1980’s. The parties are both resident in the U.S. While the Respondent’s default deprives the Panel of direct evidence of its intention its motivation is clear, not to aid children but itself by generating pay-per-click revenue. But, how is a finding of bad faith registration generated from these facts? In many cases, bad faith use informs intention in registering the domain name. Bad faith use is readable on the surface – it either is or is not; bad faith registration is subsurface. From this can be inferred that. There is no doubt that the combination “save children” could be differentiated in use from the trademark but that depends on the content of the website.

It is generally true that silences as much as submissions contain clues of intention. There are electronic footprints; who the respondent is and its history are either discoverable or deducible. In Save the Children the Respondent has a history of abusive registration that includes typosquatting which typically involves adding or omitting letters. 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. De minimis changes “immediately raise[] suspicions and call[]or an explanation,” CareerBuilder, LLC v. Azra Kha, D2003-0493 (WIPO August 5, 2003) (<careeerbuilder.com>, an extra “e”).

The Save the Children Respondent left a larger than usual “silent record.” It was involved in a prior proceeding involving the same domain name, D2006-0388 (WIPO May 15, 2006). This suggests that the Complainant (or its counsel) has been less than vigorous in policing its trademarks. Nevertheless, as with the earlier proceeding, so in this one. Use of a “disputed domain name to direct Internet users to other charitable organizations is not a bona fide offering of services,” Id. The existence of an earlier proceeding – not mentioned incidentally in the later one – is evidence of actual knowledge of the Complainant’s trademark. (This is one of the rare instances – indeed, a solitary one – in which the same parties are arbitrating the same claim without reference to their earlier combat). In this later proceeding, the Panel apparently ignorant of the earlier proceeding, in essence fell back on constructive knowledge: “Respondent either knew, or should have known, of Complainant’s SAVE THE CHILDREN mark when it registered the Domain Name insofar as, well before Respondent registered the Domain Name, the Mark had been in use (since 1939), the Mark was well-known in the United States and abroad.”

Omitting the “the” – contracting the trademark to its essence by eliminating the article – but leaving the distinctive elements in place could only be defended if a domain name is used to attract visitors for the value of the combined dictionary words. It does not do this. It is this failure that ultimately establishes the Respondent’s mala fides.

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