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Spelling and Misspelling Variances to Trademarks

Varying the trademark in some minor way, or typosquatting as it is called generally involves misplacement or dropping of letters, adding or deleting the plural form, or inserting or removing dashes between words. But not all variances support a finding of bad faith even though the domain name may be confusingly similar to the complainant’s trademark and appear to the complainant to be a case of typosquatting. In Sears Brands, LLC v. Domain Asset Holdings, FA0912001298052 (Nat. Arb. Forum January 22, 2010) the minor variation substitutes for a “y” an “ies”, NORTHWEST TERRITORY and <northwestterritories.com>. Is this adventitious or infringing? It does not quite fit the typosquatting model because the variation spells out a recognizable location different from the trademark. Sears Brands’s trademark might at one time have been the title of a catalog advertising clothing and equipment for camping trips.

NORTHWEST TERRITORY is similar to other geographic trademarks associated with clothing in that it does not conjure any specific location. It could refer to anyplace and anywhere. In contrast, the domain name refers to a specific location: the “elements contained in the contentious domain name are common terms as they relate to a region of Canada whose official name is the ‘Northwest Territories’.”

Nevertheless, the domain name incorporates the trademark and is confusingly similar to it. Rights and legitimate interests and bad faith generally turn on either the timing of the registration or the active use of the website. Geographic domain names used as visitor websites are clear examples of legitimate interests when respondents actually use them in their generic sense. The Wonderful Copenhagen Foundation v. Nya Destination Stockholm Hotell & Teaterpaket AB, D2007-0296 (WIPO May 29, 2007) (<visit-copenhagen.com>). It can be less clear where the respondent uses the domain name as a link farm that allows Internet users to find goods or services similar to those offered by the complainant. “Complainant asserts that numerous links on Respondent’s website are directly related to goods associated to Complainant’s NORTHWEST TERRITORY Mark, as they relate to camping gears.” In “certain circumstances, such findings could greatly diminish Respondent’s claim of legitimate interests in a domain name, even in the presence of common terms.”

However, the respondent’s argument is strengthened where its website links are consistent with the domain name. The Respondent’s registration of <northwestterritories.com> could be abusive, unless absolved by the content of the website. There is no absolution where from the content it is clear that the domain name was chosen to piggyback on the complainant’s trademark. Greater Houston Convention & Visitors Bureau v. Jan Barta, FA0905001263850 (Nat. Arb. Forum June 29, 2009).

The Northwest Territories are a “vast area of wilderness where outdoor activities are a predominant feature.” The fact that there are links to camping equipment and related clothing is therefore not inconsistent with an Internet user’s expectations for the website. Consistency supports the respondent’s contention that it has a legitimate interest in the domain name and registered it in good faith; that is, that the variation is coincidental and not a case of typosquatting.

Gerald M. Levine <udrpcommentaries.com>
E-Mail:  gmlevine@researchtheworld.com

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