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Deliberate Misspellings of Trademarks

Typosquatting is the term applied to deliberate misspellings of trademarks. A high percentage of UDRP disputes involve domain names that are “virtually” identical (complainant’s characterization in SAP AG v. / John Harvard, John Havard, D2013-1097 (WIPO August 9, 2013)), but more properly described as confusingly similar in making minor variations to the mimicked trademarks. An “a” for an “e” [Academy, Ltd., d/b/a Academy Sports + Outdoors v. Domain Privacy, FA130700 1509066 (Nat. Arb. Forum August 14, 2013) (<acadamyout] and a “v” for a “y” [, LLC v. Richard Hergerton, FA1306001506350 (Nat. Arb. Forum July 31, 2013) (<bodvbuilding>)] are recent examples. This particular practice is known as typosquatting, which is defined as the “intentional misspelling of words with intent to intercept and siphon off traffic from its intended destination, by preying on Internauts who make common typing errors.” Nat’l Ass’n of Prof’l Baseball League, Inc. v. Zuccarini, D2002-1011 (WIPO January 21, 2003). Typosquatting is a form of cybersquatting, but it carries a per se inference of knowledge of the trademark whereas in other forms of cybersquatting knowledge is an element complainants have to prove.

Mere registration and use of a domain name confusingly similar to a trademark is an actionable violation only if the respondent had the complainant’s mark in mind. With typosquatting, the lexical variations make it facially clear that respondent had complainant’s trademark in mind. They are “dodges designed to create a difference without a distinction and indeed with the intention of creating confusion rather than removing it.” NaturaLawn of America, Inc. v. Jeff Edwards, FA1102001372111 (Nat. Arb. Forum March 16, 2011) But, the same Panel points out that not all lexical variations are intended to prey on complainants. It distinguishes between typosquatting and innocent registration: NATURALAWN and <>, where the added “l” creates a distinctive name with its own associations. Rather, the proscribed practice encompasses cases in which alterations neither “change[] the meaning or colouration of the trademark [n]or change[] it in such a way that it sounds or looks like an entirely different concept.” The slight variations that “[do not] change[] the meaning or coloration of the trademark” telegraph knowledge of the complainant and its identify in the marketplace. They imply both knowledge of complainant’s trademark and an intention to capitalize on the pre-existing goodwill associated with it.

With some exceptions like <>, which adds an extra “l” to the mark and creates a new impression and association, in most instances mere replacement of a single letter with another one lexically equivalent or in near proximity on the QWERTY keyboard, adding and omitting a letter, or rearranging them is too tenuous and insubstantial to qualify as creating a name distinctive from a trademark. Indeed, “a deviation in the form of a typographical error, namely, an additional letter ‘e’ appears in the non distinctive part of the disputed domain name does not change this evaluation.” Telstra Corporation Limited v. Nuclear Marshmallows, D2000-0003 (WIPO February 18, 2000) (TELSTRA and <>). Where the “only apparent purpose would be to trade on mistakes by users seeking Complainant’s web site” the registration is abusive.

Complainants have two remedial choices: cancellation or transfer of the domain name registration. Most complainants elect transfer, probably because cancelled domain names are returned to the pool of available domain names and transfer may have some strategic benefits. One quizzical commentator writing on <> was surprised that in Body the “complainant was able to overcome the first prong given that ‘body building’ is merely descriptive.” “Mere[] descritive[ness]” of course is not a disqualification for registration on the Principal Register. The Panel accepted Complainant’s proof that it owned an unregistered trademark, but he may have been influenced in part by the fact that the Respondent was a competitor. That the commentator should be surprised is itself a surprise because, what is a “v” but a “y” without a tail.

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