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Typographical Variation of a Common Word: Typosquatting a Registered Mark

Adding, subtracting and transposing letters would seem to imply both knowledge of the complainant’s trademark and an intention to capitalize on the pre-existing goodwill associated with the complainant’s trademark. This is certainly true with recognized brands such as AMAZON (infringed by adding an extra “m” <ammazon.com>), Amazon.com, Inc. v. Victor Korotkov, D2002-0516 (WIPO August 13, 2002) (“The ploy of ‘typo-piracy’ is well recognized, whereby a domain name is composed with the intention of trapping users who seek the web site of a known trademark but make a predictable spelling or typing mistake”); and GE (prefixing “www” inside the TLD to form <wwwge.com>), General Electric Company v. Fisher Zvieli, a/k/a Zvieli Fisher, D2000-0377 (WIPO July 19, 2000)(“slight changes to, adds to, or subtracts from, the trademarks and service marks of others, in the apparent hope that those who seek to visit the web site of the mark holders might inadvertently make a typographical error and potentially could be taken to a web site constructed by Respondent to profit from this confusion …. has been dubbed ‘typosquatting’.”

The first appearance of a typographical error as cybersquatting – omission of a dash in the trademark C-COM – was not recognized as such by the Complainant who alleged that <ccom.com> (removal of a dash rather than an addition of one) was identical (rather than confusingly similar) to its trademark. Chernow Communications, Inc. v. Jonathan D. Kimball, D2000-0119 (WIPO May 18, 2000). The dissent jumped on this pleading “error” (not pleading “confusingly similar” in the alternative). He “[saw] no need to supplement the allegations that Complainant actually made with others that Complainant chose not to include, or to afford Complainant a second opportunity to allege what frankly is an obvious component of a prima facie case under the UDRP.” This uncharitable view failed to impress his colleagues then, was tacitly rejected in contemporary cases, and has left no mark on the jurisprudence.

But, every rule has exceptions. In the case of typosquatting, small differences do not per se infringe on the complainant’s rights. Adding an extra “m” to “Amazon” and prefixing “www” to “ge” are typosquatting but adding an “l” to NATURALAWN to form <naturallawns.com>) is not. NaturaLawn of America, Inc. v. Jeff Edwards, FA1102001372111 (Nat. Arb. Forum March 16, 2011). The reason is that “natural” and “lawns” are common words. An even more interesting example is Vanguard Trademark Holdings USA LLC v. Administrator, Domain / Vertical Axis, Inc., FA1104001383694 (Nat. Arb. Forum May 31, 2011) where the Respondent intentionally created a typographical error for its domain name, <natiional.com>. “The Panel agrees that there is ample evidence presented by the Complainant and not rebutted by the Respondent that the trademark NATIONAL and the domain name <natiional.com> are confusingly similar.”

The critical issue in Vanguard is whether the intentional registration of a misspelling of a common word is an abusive registration. “The Panel’s greatest concern, obviously, is ‘bad faith’.” The answer lies in the misspelling of a common word, but why does Amazon prevail for “ammazon” and Vanguard does not for “natiional”? The answer is that “some marks are stronger than others. [Natiional] is not a misspelling of a relatively unique mark.” AMAZON has penetrated further into the psyche. The Respondent’s typosquatting business model is quite evident. It is not questioned that the Respondent chose <natiional.com> “with the intention of creating a domain that would attract the typical misspelling of the word.” There is one AMAZON but many “NATIONALs”

In order for the intentional registration of a misspelled common word to be abusive the Complainant must show that the respondent targeted its mark. The Panel put it this way:

The word ‘national’ is just too common…. Therefore, the Panel’s is confronted with a policy decision. The mark and the domain name are confusingly similar. The typo-squatting business strategy is obvious…. Ultimately, it is the common word that prevents a finding for Complainant. “Rights in the name,” aside, the word ‘national’ is simply too common for the registration and use of the typo squatting variation “natiional” to be considered “bad faith”.

There is space in the marketplace for misspelled domain names as there is for trademarks composed of misspelled common words (omitting the “l” in “natural” so as to create the non-word NATURALAWNS).

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