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Strong Inference of Actual Knowledge with Misspelled Variations of Trademark

When dictionary words are misspelled in a domain name the inference is persuasive that the respondent had actual knowledge of the trademark targeted. “Naughty” is in the lexicon but “natchty”, “nauhhty” and “nnaughty” are not. The trademark is NAUGHTY AMERICA. The other misspellings are “ameriaca”, “amerixa”, and “ameroca.”  All of these variations in spelling clearly have the Complainant in mind. La Touraine, Inc. v. Above.com Domain Privacy / Transure Enterprise Ltd, Host Master, D2010-1118 (WIPO August 16, 2010). “The fact that the Respondent has registered no less than 9 domain names almost identical to the Complainant’s trademark is a clear indication of the Respondent’s knowledge of the Complainant’s trademark rights.” Four of the domain names are offered for sale.

In consequence of the Respondent’s default in the proceeding and the Complainant’s satisfaction of its prima facie case the Respondent has no right or legitimate interest in the domain name. It “has used the domain names for websites that are in connection with pay-per-click … landing pages providing links to third-party websites offering, inter alia, adult entertainment in competition with the Complainant.” While PPC is not per se inimical to rights or legitimate interests in a domain name it cannot rebut proof of mala fides use, which may be the reason for the Respondent’s non-appearance in La Touraine.

Assessment of bad faith builds on the finding in paragraph 4(a)(ii) of the Policy, but lack of rights or legitimate interests is only evidence rather than being conclusive of bad faith. Nevertheless, a misspelling is a flashing signal that the Respondent intended the Complainant’s trademark as its target. Intent is bolstered by the Respondent’s further acts. This includes, as the Complainant argued and the Panel agreed, the fact that the Respondent is currently attempting to auction four of the disputed domain names to the highest bidder. This further demonstrates the Respondent’s bad faith registration and use of the disputed domain names. Offering domains for auction is a violation of paragraph 4(b)(i); harvesting income from traffic is a violation of paragraph 4(b)(iv) of the Policy. As a recidivist typosquatter the Respondent is also engaged in a pattern of bad faith registration and use under paragraph 4(b)(ii).

As a footnote, a respondent is not to be charged for bad faith by using a privacy service to conceal its identity, unless “such use is connected with the registration and use of infringing domain names, such as in [La Touraine].”

Levine Samuel, LLP <researchtheworld.com>
Gerald M. Levine <udrpcommentaries.com>
E-Mail gmlevine@researchtheworld.com

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