In general, a respondent’s registration of a domain name that misspells a trademark, or is composed of added, substituted or transposed letters that vary the prototype, is not merely confusingly similar but implies knowledge and suggests targeting the trademark. For these minor orthographic variations of trademarks panelists invented the term “typosquatting,” De minimis changes “immediately raise[] suspicions and call[]or an explanation,” CareerBuilder, LLC v. Azra Kha, D2003-0493 (WIPO August 5, 2003). However, some differences genuinely spell different words. The Panel in 5127173 Manitoba Ltd., carrying on as “Canada Drugs IT” v. Suucess Incorporated, FA1001001302812 (Nat. Arb. Forum March 8, 2010) held that <canadarugs.com> is not identical or confusingly similar to CANADA DRUGS. The Complainant argued that by dropping “d” the Respondent is guilty of typosquatting. In typical typosquatting cases the confusing term does not form a dictionary word; respondents reorder letters. Rugs is not likely to be confused with drugs.

There are three levels of questions in typosquatting cases. The first concerns the protectability of generic and descriptive terms. The words “Canada” and “drugs” are as generic singly as they are joined. Panels frequently cite Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1147 (9th Cir. 2002) for the proposition that “[s]imilarity of marks or lack thereof are context-specific concepts. In the Internet context, consumers are aware that domain names for different Web sites are quite often similar, because of the need for language economy, and that very small differences matter.”

The second question concerns the timing of the domain name registration which in turn concerns the respondent’s knowledge or lack thereof of the complainant’s and its trademark’s existence. In 5127173 Manitoba the disputed domain name predated the Complainant’s trademark by a number of years, although the Respondent had passively held it for some of them; it became active again after the Complainant began marketing pharmaceuticals.

The third question is the content of the website which in the case of 5127173 Manitoba is an advertising portal for rugs and furniture. Of interest here is what may happen in the future if the domain name is transferred to a new owner who wants to go beyond the unremunerative advertising of rugs and furniture or if the Respondent does possibly triggering the construction held by the Panel in the March 8 Note on Eastman Sporto Group LLC v. Jim and Kenny, D2009-1688 (WIPO March 1, 2010).

Ordinarily, a finding against the complainant on the jurisdictional element under 4(a)(i) of the Policy makes it unnecessary to examine the record further, but in 5127173 Manitoba the Panel ruled that the Complainant also failed to satisfy the requirements of paragraphs 4(a)(ii) and 4(a)(iii). One explanation is that the Panel was uncomfortable in its jurisdictional ruling that the domain name was not confusingly similar to the trademark. After all, the confusion is not farfetched. In a number of early UDRP cases panelists were unsure about dismissing the complaint. Ode v. Intership Ltd., D2001-0074 (WIPO May 1, 2001): “However, in case we are wrong on this issue [that is, skipping the threshold finding], we find that the Complaint fails to meet any of the requirements of paragraph 4b of the Policy.”

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