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Typosquatting and Appearance of Typosquatting

A respondent telegraphs both intent and knowledge when it squats on a trademark by creating minor typographical variations. There are a number of recent examples of variations on COMERICA: as in (reversing “m” and “e”), (adding an additional “e” before “i”), (doubling letters) and (selecting letters adjacent on the qwerty keyboard, “u” and “i” ). Substituting a “d” for an initial “c” to form “domerica” (“d” is adjacent on the board above “c”) may be less obvious – the Respondent claimed it “ independently coined the distinctive mark DOMERICA as a portmanteau of the words “domains” and “America.” The Panel was unimpressed because Respondent offered no evidence to support its use of in the manner specified to pass the 4(c)(i) test, Comerica Incorporated v. Charles M. Hatcher, D2012-1375 (WIPO August 24, 2012). “Domerica” could have passed muster had Respondent genuinely been using the domain name consistent with the portmanteau:

It is not clear that Respondent is even relying on paragraph 4(c)(i) of the Policy but giving Respondent the benefit of the doubt the Panel has considered Respondent’s evidence in accordance with it… [However,] [t]he evidence Complainant has provided the Panel shows an intermittent or sporadic use of the Domain Name for different commercial purposes (i.e., selling other domain names, sponsored links). The Panel is left to conclude that Respondent chose a domain name that infringed the rights of Complainant in order to attract Internet users to his site for financial gain. An infringing use is not a bona fide offering of goods or services.

This is where the telegraphing comes in. If the respondent lacks rights or legitimate interests in the domain name, then varying the domain name is conclusive on the intent and knowledge factors to satisfy conjunctive bad faith.

There are other factual situations, however, that at first glance may appear to be typographic variations, but are in an entirely different class. In LivingSocial, Inc. v. chris jensen, FA1208001456244 (Nat. Arb. Forum September 10, 2012) the dispute was over an absent “i”. LIVING SOCIAL and. But here the Respondent countered that “socal” was an abbreviation for “Southern California” and that it uses the domain name “to host a website describing the real estate market in Southern California and providing information regarding Respondent’s real estate practice.” The Panel held

The Panel finds that a respondent is free to register a domain name consisting of common terms and that the domain name currently in dispute contains such common terms.

Another example is the dispute in Netbank Inc. v. Banco Nacional de Mexico, D2012-1436 (WIPO September 2, 2012). Complainant claims to have common law rights to NETBANK and BANKNET. Respondent registered apparently adding an “a” between “bank” and “net.” Separate and apart from Complainant’s failure of proof for standing to maintain the proceeding, the Respondent contended

that the trademark BANCANET is used by the Respondent with respect to financial services through different means, including its use on the Respondent’s website at “www.banamex.com”, and more specifically, in the URL https://bancanet. boveda.banamex.com.mx/serban/index.htm, that such use is a legitimate commercial use and also demonstrates that the Respondent has rights and legitimate interests in respect of the name BANCANET and in the disputed domain name.

In this case, even assuming that Complainant held registered marks in the United States and Canada, its apparent markets for financial services, it would have failed to make its prima facie case based on the Respondent’s rebuttal proof that it had both rights and legitimate interests in the use of the domain name.

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