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The Respondent Who Specializes in Misspellings

As trademarks composed of dictionary words or descriptive phrases descend the classification scale there is an increasing likelihood of registrants registering and using domain names corresponding to trademarks plausibly lacking knowledge of trademark owners. In the past several months the lower end includes <summertechcamp.com>, <asclepius.com> (God of Medicine), <hopscotch.com>, <topcare.com>, <bankwell.com>, and <unblock.com>. Earlier there were <verb.com> and <quirk.com>.

There are respondents who specialize in place names, <cambridge.com> and <havanna.com>. Others specialize in surnames such as <mankarious.com>, <hargress.com>, <johnsons.com> and <trudeau.com>. Others specialize in animal names such as <squirrels.com> and “elephant.com”; and fruits <peaches.com> (but not “blackberry”).

There are, oddly, also respondents who specialize in misspellings. If a letter is missing from or added to a term that appears to be taking advantage of a trademark and there is no explanation the assumption favors typosquatting. The burden falls on respondents to prove they are not typosquatters.  Ordinary, the misspelling is obviously referencing the trademark, as for example and SHERATON (an “a” for an “o”). However, it is unusal for a misspelled dictionary word (“c[r]edit”) to be a trademark (CEDIT). Who would know that omitting a letter would create a trademark in a foreign language?

The respondent in Florim Ceramiche S.p.A. v. Domain Hostmaster, Customer ID: 24391572426632, Whois Privacy Services Pty LTD / Domain Administrato, Vertical Axis Inc., D2015-2085 (WIPO February 11, 2016) holds a domain name which it claims is a purposeful variant of “credit.” It explained that it registered <cedit.com>

in good faith based on the inherent value of the common dictionary word “credit”. This is not a case of a “typosquatter” profiting from the typo of a trademark; the disputed domain name is rather a typo of a highly valuable and regularly searched dictionary word. Accordingly, the Respondent has used the disputed domain name in connection with a bona fide offering of goods and services in the form of pay-per-click ads related to the word “credit”.

Respondent pointed out further that its “strategy corresponds to the Respondent’s business of registering generic dictionary term domain names, including generic domain names with typographical errors” and that it did not have “Complainant’s foreign trademark [CEDIT] in mind.” If a letter is missing from or added to a term that appears to be taking advantage of a trademark and there is no explanation the assumption favors typosquatting. The burden would then falls on respondent to prove it was not typosquatting. Ordinarily, a typosquatting domain name starts with fractional changes to the trademark—SHERATON (an “a” for an “o”)—but in this case Complainant charges that the omission of “r” creates a word that doesn’t exist in English but infringes its trademark.

Central to the assessment of typosquatting is credibility. In Florim Ceramiche, Respondent established its credibility by showing its holdings, not by merely alleging that it had other such domain names:

The Respondent indeed appears to have registered hundreds of generic dictionary term domain names and numerous domain names incorporating typographical variations of English dictionary words. To substantiate its claim, the Respondent has listed in its Response 20 domain names incorporating the term “credit” and 10 domain names incorporating typographical variations of dictionary words.

Although we don’t know the other “10 domain names incorporating typographical variations of dictionary words” (the Panel is not include the information in the decision) there is no documented history they have ever been challenged. The important point is that the Respondent has been careful in populating the website to which <cedit.com> resolves. A useful comparison can be made with Camilla Australia Pty Ltd v. Domain Admin, Mrs Jello, LLC, D2015-1593 (WIPO November 30, 2015) where the Respondent was not careful, although given Respondent’s priority this shouldn’t have made any difference.

Mrs. Jello is a major aggregator of domain names. It lost <camilla.com>, despite registering the domain name prior to the trademark registration, because the website contained hyperlinks to Complainant’s competitors in the fashion industry. Unfortunately, the Panel based its award on a misguided theory that liability can be predicated on speculative registration even if it predates
complainant’s trademark:

In the present case, the Panel finds that the disputed domain name was registered speculatively with an open mind as to the exploitation of trademark rights, and has in fact been used to exploit the Complainant’s trademark rights.

There is nothing unlawful in registering domain names speculatively as long as they don’t morph to infringing; or predate the trademark. (Mrs. Jellow filed an ACPA action that resulted in vacation of the UDRP award “in its entirety.”)

However, for registrations postdating trademarks, there is precedent for imposing a heavier duty on high volume registrants. The Camilla Panel cites Media General Communications Inc v. RareNames WebReg, D2006-0964 (WIPO September 23, 2006) for this proposition. The Respondent in Florim Ceramiche made no such gaffe in populating its website, which supports its claim that it lacked knowledge of Complainant’s trademark. The Panel found that Respondent’s position appears to be plausible for the following reasons:

(i) the Complainant’s trademark does not seem to be well-known and is only designated for some European countries, but not for the Respondent’s country of domicile, being Australia in the case of the registrar’s privacy service and Barbados in the case of the named Respondent;

(ii) the Respondent has not engaged in activities that could induce to believe that it registered the disputed domain name in contrast with a legitimate interest conduct;

(iii) the trademark CEDIT does not appear on the Complainant’s website; and

(iv) the Complainant waited over eleven years to initiate these proceedings.

The Panel concluded by noting that “[a]gainst this background, it also seems to be relevant that the Complainant has failed to prove a prime facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.”

In order to rebut the prima facie assumption of typosquatting an accused respondent would have to persuasively show a distinction between typosquatting and a purposefulness in deliberately registering a “variant” of a dictionary word. In the case of “cedit” the missing “r” is next to “e” on the Qwerty keyboard and evidently much misspelled by searchers looking for “credit” websites, for if it was not much misspelled by searchers there would have been no rationale for registering it.

For its dictionary word and descriptive phrase domain names Respondent has an enviable record of holding onto its inventory, but the database of decisions is filled with transfers for respondents wedded to the typosquatting model.

Mr. Levine is the author of a treatise on trademarks, domain names, and cybersquatting, Domain Name Arbitration, A Practical Guide to Asserting and Defending Claims of Cybersquatting under the Uniform Domain Name Dispute Resolution Policy. (Legal Corner Press, 2015). Learn more about the book at Legal Corner Press. Available from Amazon and Barnes & Noble. Ongoing Supplement here.

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