Cybersquatters

Misspelled Trademark Does Not Save Cyber-Squatter or “Typo-squatter” From Adverse Arbitration Ruling

February 18, 2008 | Milord A. Keshishian

Domain-name arbitration complaint was filed by trademark owner Laerdal Medical Corporation at the WIPO. Laerdal had common law trademark rights in “Laerdal” before it filed a trademark application with the U.S. Patent & Trademark Office on October 16, 2000. The Disputed Domain Name leardal.com – a misspelling of the trademark which transposes the “a” and “e” – was registered by the Respondent on October 11, 2001, nearly one year after the trademark application filing date. Laerdal’s trademark registered with the USPTO on March 25, 2003, after the domain name was registered.

The Panel found that the medical company’s trademark and the misspelled domain name were confusingly similar. Also, the pay-per-click advertising on the parked website targeted the same consumers based upon offers for competing medical equipment and the registrant did not have any rights or interests in the confusingly similar trademark. Further, the Panel found that the domain was registered in bad faith because it was registered after the trademark application was filed and offered similar products through pay-per-click ads. Thus, the Panel ruled that the registration “was an act of typo squatting and was calculated to confuse Internet users as to the source of and to take commercial advantage of the Complainant’s rights in the LAERDAL trademark.” Click Here To Read The WIPO Arbitration Ruling.

PRACTICE NOTE: You should choose a strong trademark because it allows for instantaneous protection from the date of first use. For example, because laerdal’s trademark is strong, even though Laerdal’s trademark had not registered with the USPTO at the time the domain name was registered, the Panel found that the prior application date was sufficient to establish trademark rights. Fanciful, arbitrary, or suggestive trademarks are strong, whereas descriptive and generic marks are weak. Click Here For Additional Suggestions In Selecting A Trademark.

Domain Name: Marina Del Rey, California based ICANN Recommends Action Against Domain Name Tasting

February 8, 2008 | Milord A. Keshishian

The Internet Corporation for Assigned Names and Numbers (“ICANN”) is looking to effectively end domain tasting. Domain tasting is the use of the Add Grace Period (“AGP”) to test the profitably of a domain name registration by tracking traffic to a newly registered domain name. The AGP is a five-day grace period that allows the registration of the domain name to be deleted and a refund to be issued to a registrar for the annual ICANN fee. Cybersquatters and typosquatters will sometimes register a domain name, that is a misspelling of a trademark or service mark, and monitor traffic from visitors that misspell the proper domain name or trademark. The cyber-squatters and typo-squatters will then park the domain name and place advertisements, such as pay per click advertisements, and monitor the income for up to five days, cancelling the lower traffic domain names.

ICANN proposes to eliminate the AGP and charge a non-refundable ICANN fee upon registration of the domain. “Domain tasting has been an issue for the Internet community and ICANN is offering this proposal as a way to stop tasting,” said Dr Paul Twomey, ICANN’s President and CEO. “Charging the ICANN fee as soon as a domain name is registered would close the loophole used by tasters to test a domain name’s profitability for free.”

The original purpose of the AGP was logical because it allowed registrars to avoid costs if a domain name was mistyped or misspelled during the registration process. It is part of the .com, .net, .org, .info, .name, .pro, and .biz registry contracts.

Domain Name v. Registered Trademark: Transfer of Domain Name Constitutes New Registration And Trademark Rights Established Before Transfer Results In Transfer For Trademark Owner Complainant

February 7, 2008 | Milord A. Keshishian

WIPO domain name arbitration under the UDRP provides a thorough analysis of a domain name registrant’s rights and those of trademark owners. In HSBC Finance Corporation v. Clear Blue Sky, Inc., Case No. D2007-0062, Complainant HSBC had registered the trademarks CREDITKEEPER and CREDIT KEEPER (plus design) with the USPTO on July 13, 2004 and November 22, 2005, respectively. The domain name in dispute was initially registered by Peter Bradford on January 24, 2001 – prior to HSBC’s trademark registrations. On December 15, 2004, after HSBC’s trademark had already registered, Respondent Clear Blue Sky acquired the disputed domain name from Bradford for the sum of $48,000.

Clear Blue Sky argued that it should benefit from Bradford’s earlier domain name registration because it acquired all rights and interests through a written assignment and denied bad faith registration and use of the domain name. Paragraph 4(a) of the Policy requires that the Complainant prove three elements to obtain a decision that a domain name should be either cancelled or transferred, one of which includes that “the domain name has been registered and is being used in bad faith.” In rejecting Respondent’s “relation back” theory, the Panel found that:

The consensus view of WIPO Panelists is that, while a renewal of a domain name does not amount to registration for purposes of determining bad faith, the transfer of a domain name to a third party does amount to a new registration, requiring the issue of bad faith registration to be determined at the time the current registrant took possession of the domain name.