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Posts Tagged ‘Typosquatting’

ASHLEY MADISON Gives Cheaters 101 More Domains

Monday, May 17th, 2010

ashleymadison

If you haven’t heard about Ashley Madison, then you are likely in a committed relationship and would never even consider cheating or you don’t pay much attention to commercials. In the recent cybersquatting case of Avid Dating Life, Inc. v. Private Whois Service FA1318204 (Nat. Arb. Forum May 13, 2010) a single member Panel was faced with a dispute over 101 domains. A full list of the domains is provided in the decision. Complainant is the owner of the well known website www.AshleyMadison.com where people can seek out others who are in committed relationships seeking to have an affair. As their own tag line states “Life is Short. Have an Affair.” No matter what you may think about such a service, it has become wildly popular and boasts nearly 6 million anonymous members. One of the disputed domains was registered in 2005, while all the others were registered in 2008 and 2009. Complainant has federal trademark rights dating back to at least 2004.

Paragraph 4(a) of the ICANN UDRP Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred: (1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (2) Respondent has no rights or legitimate interests in respect of the domain name; and (3) the domain name has been registered and is being used in bad faith.

The Panel began its analysis noting that Complainant established rights in its ASHLEY MADISON mark under Policy ¶ 4(a)(i) through its trademark registrations with the USPTO. All of the disputed domain names contained some typographical modification to the registered mark. The Panel found these domains were confusingly similar to the registered mark since they were common misspellings. For this reason, the Panel found that Policy ¶ 4(a)(i) had been satisfied.

The second part of the analysis the Panel noted that Complainant presented a prima facie case, and although Respondent failed to respond, it still chose to review the facts. The Panel found that Respondent was not commonly known by the disputed domains. Evidence presented to the Panel included proof that two of the disputed domains contained links to competing adult dating websites.

The Panel finds that Respondent’s use of the <ashleymadis0on.com> and <ashleymadision.com> domain names to display third-party links to competitors of Complainant is not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).

The Complainant noted that the other 99 domains did not resolve to active websites. The Panl found that failure to make active use of the domains meant they were “not connected with a bona fide offering or goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).” And lastly under this section, the Panel found “registration of the disputed domain names containing misspelled versions of Complainant’s mark is further evidence of Respondent’s lack of rights and legitimate interests in the names under Policy ¶ 4(a)(ii).” For all these reasons, Policy ¶ 4(a)(ii) had been satisfied.

Moving to the final element, bad faith, the Panel repeated many of the same facts and applied them in this section as stated earlier. This includes, the third party links, the inactive websites, the typographical variations on the domain names. The Panel also found that “Respondent’s registration of many trademark infringing domain names within a short period of time is evidence of bad faith registration and use under Policy ¶ 4(b)(ii).” For all these reasons, Policy ¶ 4(a)(iii) had been satisfied.

Ultimately, the Panel found that Complainant presented and proved all three elements, and ordered the domains be TRANSFERRED.

24 Hour Fitness Doesn’t Close and Doesn’t Like Typosquatters

Friday, May 7th, 2010

24hrfitness

In the recent domain name dispute decision of 24 Hour Fitness USA, Inc. v. Privacy Locked c/o Privacy Locked LLC FA1315677 (Nat. Arb. Forum, May 6, 2010) a single member Panel was faced with a dispute over the domain www.24horfitness.com. Complainant is the well known national chain of fitness centers and maintains a website at www.24hourfitness.com. Complainant has a trademark registration for 24HOURFITNESS.COM since October 2000. Respondent failed to respond to the Complaint. 

Paragraph 4(a) of the ICANN UDRP Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred: (1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (2) Respondent has no rights or legitimate interests in respect of the domain name; and (3) the domain name has been registered and is being used in bad faith.

The Panel began with a discussion of finding that the Complaint’s rights in the mark 24HOURFITNESS.COM were sufficient to establish trademark rights for the purposes of this dispute. “The Panel finds the misspelling of the mark in the disputed domain name does not differentiate the disputed domain name from Complainant’s mark and that the disputed domain name is confusingly similar to Complainant’s mark, pursuant to Policy ¶ 4(a)(i).” 

For the second element, whether or not respondent had any rights or legitimate interests in the domain, the Panel explained that 24 Hour Fitness had presented a prima facie case, and that although the Respondent did not respond, the Panel still reviewed the facts and evidence presented. First the Panel found that Respondent’s WHOIS information showed it was not commonly known by the disputed domain name. Second the domain name resolved to a web directory with third party competitor links. For this reason, Respondent had failed to use the domain for a bona fide offering of goods ro services. Lastly since this domain was an intentional misspelling of the mark, it was considered typosquatting and thus violated the Policy.

Moving to the final element, bad faith, the Panel explained that the third party competitor links were evidence of bad faith since it would disrupt Complainant’s business. Additionally, the practice of typosquatting was found to be bad faith registration and use pursuant to Policy ¶ 4(a)(iii). 

For all these reasons, the Panel found that Complainant met the requirements and ruled that the domain be TRANSFERRED.

Gay Porn Site Target of Typosquatting

Wednesday, March 31st, 2010

It should come as no surprise that adult web sites are targeted for cybersquatting. In the recent domain name dispute of Blu Media Inc. v. Transure Enterprise Ltd c/o Host Master FA1307892 (Nat. Arb. Forum, March 30, 2010) a single member panel was faced with a dispute over the domain www.justsuboys.com. Complainant uses its domain www.justusboys.com as a for profit adult website. The domain was originally launched in 2002, although complainant did not purchase it until January 2010. Respondent registered the disputed domain in October 2009.  Respondent failed to respond to the Complaint.

Paragraph 4(a) of the ICANN UDRP Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred: (1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (2) Respondent has no rights or legitimate interests in respect of the domain name; and (3) the domain name has been registered and is being used in bad faith.

In addressing the first element, the Panel noted that Complainant does not have a registration for the mark JUSTUSBOYS.COM.  Thus the Panel was forced to determine if the Complainant’s mark had established secondary meaning.

In support of its contention Complainant has submitted evidence of awards received for its e-magazine as well as critic reviews of its website and magazine.  Complainant further provides evidence of high “Alexa” rankings for the number of visitors to its website.  The Panel finds that Complainant has produced sufficient evidence to show it has common law rights in the JUSTUSBOYS.COM mark for purposes of Policy ¶ 4(a)(i) through continuous and extensive commercial use before Respondent registered the disputed domain name.

The Panel found that the disputed domain was confusingly similar to Complainant’s mark and that Policy ¶ 4(a)(i) had been satisfied

Moving to the second element, the Panel noted that Complainant submitted evidence sufficient for a showing and establishment of a prima facie case. Regardless the Panel chose to review the evidence presented. The Panel found that Respondent was not commonly known by the disputed domain. Additionally, the disputed domain was offering third party links to competing adult oriented web sites. “The Panel finds that Respondent’s reliance on typosquatting to create a confusingly similar disputed domain name, where it receives referral fees to websites in competition with Complainant is not a use in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).” Also, Complainant put forth evidence that Respondent was seeking to sell the disputed domain publicly and to Complainant. Lastly, the Panel remarked that the domain was a typosquatted version of the mark. For all these reasons, the Panel found that Respondent lacked any rights or legitimate interests in the domain, and that Policy ¶ 4(a)(ii) had been satisfied

In addressing the final element, the Panel began by examining Respondent offer to sell the domain for $5,000.00 to Complainant. “The Panel finds that Respondent’s general listing of the disputed domain name for sale, as well as its attempts to sell the disputed domain name to Complainant for amounts in excess of its initial costs are evidence of bad faith registration and use under Policy ¶ 4(b)(i).” The Panel also found that Respondent intentionally disrupted Complainant’s business. Additionally, the Panel found that the use of competitive third party links for financial gain was evidence of bad faith registration and use. Ultimately, the Panel ruled  that Policy ¶ 4(a)(iii) had been satisfied            

After review of all the elements the Panel ruled that Complainant met all three and ordered the domain be TRANSFERRED.

MATTEL Races To Victory With HOT WHEELS Domains

Monday, December 21st, 2009

           hot-wheels-logo

In two recent domain name dispute decisions, Mattel, Inc. v. Bladimir Boyiko (Nat. Arb. Forum, FA1290718, Dec. 16, 2009) and Mattel, Inc. v. Domain c/o VO (Nat. Arb. Forum, FA1289791 Dec. 15, 2009) two separate three member Panels were faced with disputes over www.wwwhotwheels.com and www.hotwheels.org. Mattel is the well known toy company responsible for the HOT WHEELS die cast cars. HOT WHEELS were first sold in the U.S. in 1968. Complainant operates web sites at www.hotwheels.com and www.mattel.com. Both Respondents failed to provide a response to the complaints.

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred: (1) the Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (2) Respondent has no rights or legitimate interests in respect of the Domain Name; and (3) the Domain Name has been registered and is being used in bad faith.

In the first case referenced above, the Panel recognized Mattel’s HOT WHEELS mark and had  “no difficulty in finding that the Domain Name is confusingly similar” to the mark. Mattel presented a prima facie case, which included an argument that Respondent was not commonly known by the disputed domain. Additionally, as the Panel found, Respondent was using the domain for third party link click through fee generation.  Lastly the Panel noted that the domain was an example of typosquatting. The Panel found that Respondent was involved in other UDRP proceedings and therefore was engaged in a pattern of bad faith.

In the second mentioned case, the Panel also noted that the HOT WHEELS mark was well known throughout the world and that the domain was identical to the disputed domain. The Panel found that Respondent was not commonly known by the disputed domain and that Mattel had presented a prima facie case. Lastly the Panel found that Respondent’s inaccurate or incomplete contact information was evidence of bad faith. Additionally, Respondent’s failure to respond was evidence against.

Ultimately, the Panels found in favor of Mattel and ordered the domains be TRANSFERRED.

Frederick’s of Hollywood Wins Ten Typosqautted Domains

Friday, December 4th, 2009

         Frederickslogo_FREDERICKS

In the recent cybersquatting domain dispute of Frederick’s of Hollywood Group Inc. v. Blue Water LLC FA1290927 (Nat. Arb. Forum, December 3, 2009) a single member Panel was faced with a dispute over ten domains. Complainant, uses the marks FREDERICK’S OF HOLLYWOOD and FREDERICK’S related to its women’s clothing and lingerie business since 1946. Complainant maintains a web site at www.fredericks.com. Complainant has a specific third party affiliate program, allowing fees to be paid to authorized third parties for directing traffic to Complainant’s official site. The affiliate policy specifically restricts the use of misspelled domains. Respondent registered one of the domain in 2003 and the other nine in 2006. According to the decision, all of the disputed domain names resolved to Complainant’s web site.        

Paragraph 4(a) of the ICANN UDRP Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred: (1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (2) Respondent has no rights or legitimate interests in respect of the domain name; and (3) the domain name has been registered and is being used in bad faith.

The Panel began its analysis, noting that Frederick’s of Hollywood has sufficiently shown its rights to the marks. The Panel found that the domains contained minor changes which were not sufficient to distinguish them from Complainant’s mark.

Additionally, one or more of the following changes were made in each disputed domain name to the mark (1) the addition of one extra letter; (2) the transposition of two letters in the mark; or (3) the replacement of one letter in the mark with another.  The Panel finds that these changes are insufficient to overcome the confusing similarity that arises from using Complainant’s mark in the disputed domain name. 

The Panel found the domain were confusingly similar to Frederick’s marks.  

Moving to the second element, the Panel noted that Frederick’s presented a prima facie case, and despite the lack of response from Respondent, it would still review the record. Complainant contended that Respondent was not licensed to use the marks. Additionally, the Panel found that Respondent was not commonly known by the disputed domains. The Panel found that Respondent’s attempt at profiting from Complainant’s affiliate program using these typosquatted domains was not a bona fide use. Additionally, the act of typosquatting was found to be evidence of lacking rights or legitimate interests. The Panel found that this second element was satisfied by Complainant.

Moving to the final element, bad faith, the Panel noted that the disputed domains began to be registered nearly forty-five years after Frederick’s established trademark rights. The Panel explained that since the disputed domains resolved to Complainant’s own web site, that consumers would be confused as to affiliation or control. Additionally, since the domains contained typographical errors, this was evidence of bad faith. Lastly, by violating Complainant’s affiliate program, this was also evidence of bad faith.

Ultimately, the Panel found that Complainant satisfied all of the elements, and ordered all ten domains be TRANSFERRED.

OFFICE DEPOT Takes Care Of Business With Cybersquatter, Nine Years Later

Friday, November 20th, 2009

office_depot_logo

In the recent domain name dispute decision of The Office Club, Inc. and Office Depot, Inc. v. Name Holding Company c/o Name Holding FA1287148 (Nat. Arb. Forum, November 16, 2009), a single member Panel was faced with a dispute over the domain www.officedpot.com. Complainant, Office Depot is the well known office products retailer and has used the OFFICE DEPOT mark since 1986. Office Depot maintains a website at www.officedepot.com. Respondent registered the disputed domain in May 2000 and failed to respond to this dispute.

Paragraph 4(a) of the ICANN UDRP Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (2) Respondent has no rights or legitimate interests in respect of the domain name; and (3) the domain name has been registered and is being used in bad faith.

In addressing the first element, the Panel noted that Complainant established rights in the OFFICE DEPOT mark. The Panel explained that the disputed domain differed from the mark only in that there was no space and the domain had removed the second letter “e” from the word. The Panel found this to be too close and thus confusingly similar to the OFFICE DEPOT mark.

Moving to the second element, the Panel noted that Office Depot presented a prima facie case, b ut still reviewed the record in consideration of the elements. The Panel found that Respondent was not commonly known by the disputed domain. Additionally, the disputed domain resolved to a web site where links to competitors were presented. This was considered to not be a bona fide offering of services. As a result, the Panel found Office Depot satisfied the second element.

The Panel analyzed the last element, bad faith, the Panel found that Respondent’s web site was disrupting Office Depot’s business by its competitive activity. Additionally, since Respondent was presumably commercially benefitting from the competing products and services, this was an intentional creation of likelihood of confusion.

Ultimately, the Panel found that Office Depot proved all three elements and ordered the domain be TRANSFERRED.

MARY KAY Enriches It’s Domain Portfolio

Monday, November 16th, 2009

        marykay

In the recent domain name dispute decision of Mary Kay Inc. v. Open Water Enterprises Limited c/o Louis S FA1286701 (Nat. Arb Forum, November 12, 2009) a single member Panel was faced with a dispute over the domain www.mayrkay.com. Complainant Mary Kay is the well known manufacturer and distributor of body care and cosmetic products, with rights dating back to 1963. Complainant owns the mark MARY KAY and operates a web site at www.marykay.com. Respondent registered the disputed domain in 2003 and failed to respond to the Complaint.

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred: (1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (2) Respondent has no rights or legitimate interests in respect of the domain name; and (3) the domain name has been registered and is being used in bad faith.

In addressing the first element, the Panel recognized the trademark registrations for the MARY KAY mark and found that Complainant’s rights were established under Policy paragraph 4(a)(I). The Panel found that the disputed domain was a misspelled version of Complainant’s mark MARY KAY, with the r and y letters transposed. For this reason, the Panel found that MARY KAY satisfied the first element.

In addressing the second element, whether Respondent had any rights or legitimate interests in the domain, the Panel explained:

The relevant WHOIS information identifies the registrant of the disputed domain name as “Open Water Enterprises Limited c/o Louis S,” and there is no evidence in the record to suggest that Respondent is otherwise commonly known by the <mayrkay.com> domain name.  Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii)….Respondent’s <mayrkay.com> domain name resolves to a website featuring click-through links and advertisements for Complainant’s competitors in the body care and cosmetics industry.  The Panel finds that Respondent’s use of the disputed domain name to redirect Internet users to Complainant’s competitors, presumably for financial gain, does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) or (iii)….Respondent’s <mayrkay.com> domain name qualifies as typosquatting, given the transposition of two letters in the MARY KAY mark.  As such, Respondent’s attempt to capitalize on the typographical errors of Internet users constitutes evidence that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).

Moving to the final element, bad faith, the Panel explained that Respondent had been involved in other prior UDRP proceedings and a pattern of bad faith registration has been established. Additionally, since the web site resolved to promote MARY KAY competitors via click-through links, it disrupted Complainant’s business. Further evidence of bad faith was from click through fees presumably generated from these links. Lastly, the Panel found that Respondent engaged in typosquatting.

For all these reasons, the Panel ordered the domain be TRANSFERRED.

FREECREDITREPORT.COM Wins 1,017 Domains!

Friday, November 13th, 2009

    FreeCreditReport

This domain dispute just needed to be discussed based purely on the number of domains at issue. In the recent domain name dispute decision of ConsumerInfo.com, Inc. v. Netcorp Netcorp c/o Netcorp FA1283469 (Nat. Arb. Forum, November 11, 2009), a single member arbitrator was faced with a dispute over 1,017 domains. The arbitrator, James Carmody has been involved with the UDRP for a long time and has decided more disputes then most, but he certainly earned his money sorting through all of these domains in this case. Complainant is the owner of the mark FREECREDITREPORT.COM. We know you have all seen the commercials so we won’t discuss belabor on the background. Suffice it to say they maintain a web site at www.freecreditreport.com. The disputed domains at issue were all registered after Complainant filed its trademark application, but before the mark was registered. Due to the large number of domains at issue we will not reproduce them, but see the decision if you are dying to know.

Paragraph 4(a) of the ICANN UDRP Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred: (1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (2) the Respondent has no rights or legitimate interests in respect of the domain name; and (3) the domain name has been registered and is being used in bad faith.

The Panel explained that the application and subsequent registration of the mark established Complainant’s rights dating back to the application date. The Panel found that Complainant established its common law rights sufficiently to merit protection and moved towards comparing the mark with the disputed domains. The Panel listed 15 separate ways in which the domains were similar to the mark:

(1) adding “ing,” changing the tense of the mark to a present participle; (2) adding the letter “s,” changing the mark from singular to plural; (3) adding a generic or descriptive word to the mark; (4) adding a generic or descriptive word to the mark that has an obvious association with Complainant’s business; (5) adding an abbreviation of a geographic word to the mark; (6) adding a geographic word to the mark; (7) misspelling the mark by changing a letter in the mark to a different letter; (8) misspelling the mark by changing a letter in the mark to a number; (9) misspelling the mark by adding a letter within the mark; (10) adding a letter to the beginning or end of the mark; (11) misspelling the mark by adding a number within the mark; (12) adding a number to the beginning or end of the mark; (13) omitting the period between the first-level domain, “www,” and the mark; (14) changing the generic top-level domain (gTLD) included in the mark from “.com” to “.org;” and/or (15) adding hyphens to the mark.  Any individual disputed domain name typically contains Complainant’s mark and one of these changes.  A few contain a combination of two of these changes.  The Panel finds that none of these differences between the mark and the disputed domain names create distinctiveness and that, therefore, the disputed domain names are confusingly similar to Complainant’s FREECREDITREPORT.COM mark pursuant to Policy ¶ 4(a)(i). 

As a result the Panel found that Complainant satisfied the first element. Moving to the second element the Panel noted that Respondent was not commonly known by any of the domains in dispute. Addiitonally, the Panel found that the disputed domains resolved to web sites with links to third party web sites and that this use was not in connection with a bona fide offering. In addressing the argument by Respondent that the disputed domains are comprised of generic words in common usage, the Complainant questioned why the majority of the domains were misspellings of the mark. The Panel found that Respondent was typosquatting. As a result, the Panel found that Complainant satisfied the second element.

Moving to the final element, the Panel found that all of the disputed domains contained variations of the mark, which was evidence of bad faith registration and use. Additionally, since the domains offered links which disrupted Complainant’s business, this was further evidence. Lastly, since Respondent engaged in typosquatting, this was more evidence of bad faith.

Ultimately, the Panel found that Complainant satisfied all the elements and ordered that all the domains be TRANSFERRED.

RED ENVELOPE Buys Itself A Gift..A New Typosquatted Domain

Wednesday, November 11th, 2009

    redenvelope

In the recent domain name dispute of Provide Gifts, Inc. d/b/a RedEnvelope v. Privacy Ltd. Disclosed Agent for YOLAPT c/o Domain Admin FA1286921 (Nat. Arb. Forum, November 9, 2009) a single member Panel was faced with a dispute over the domain www.redenevelope.com. Complainant is the well known online gift retailer who maintains a web site at www.redenvelope.com. Respondent registered the disputed domain in August 2000 and failed to reply to the Complaint.

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred: (1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (2) Respondent has no rights or legitimate interests in respect of the domain name; and (3) the domain name has been registered and is being used in bad faith.

In addressing the first element the Panel noted that Complainant had rights to the RED ENVELOPE mark through various trademark registrations. The Panel found that the disputed domain contained a misspelled version of Complainant’s RED ENVELOPE mark which was confusingly similar. The Panel found that Complainant satisfied Policy paragraph 4(a)(i).
 
Moving to the second element, the Panel found that Red Envelope presented a prima facie case and that Respondent failed to submit a response. The Panel found that Respondent was not commonly known by the disputed domain, was using the domain to display links advertising third-party web sites in competition with Red Envelope, and engaged in typosquatting. All these factors culminated to a conclusion that Respondent lacked any rights or legitimate interests in the domain. The Panel found Red Envelope satisfied Policy paragraph 4(a)(ii).

In reviewing the third element, bad faith, the Panel began by explaining:

…Respondent intended to disrupt Complainant’s business and take advantage of Complainant’s goodwill surrounding its mark by displaying third-party links to Complainant’s competitors in the online retail industry for upscale gifts.  The Panel therefore finds that Respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii). 

The Panel also relied on another bad faith factor and explained:

Additionally, Respondent has created a substantial likelihood of confusion as to the source and affiliation of the <redenevelope.com> domain name and the corresponding website.  Respondent benefits from such a likelihood of confusion, as it receives referral fees for the competitive upscale gifts advertisements that are displayed to the diverted Internet users.  The Panel finds this to be adequate evidence of Respondent’s bad faith registration and use pursuant to Policy ¶ 4(b)(iv). 

The Panel didn’t stop there noting that the typosquating also qualified for proof of bad faith under Policy paragraph 4(a)(iii).

Ultimately, the Panel found that Red Envelope satisfied all elements of the ICANN UDRP Policy  and ordered the domain be TRANSFERRED.

NETFLIX Snags Typosquatted Domain

Tuesday, November 10th, 2009

       netflix-logo

In the recent domain name dispute decision of Netflix Inc. v. Domain Name (FA1287000, Nat. Arb. Forum November 9, 2009), a single member arbitrator was faced with a dispute over the domain www.netfilx.com. Netflix is the well known online movie rental service and owns multiple registrations for the NETFLIX mark. Netflix operates a web site at www.netflix.com.  The disputed domain was registered on September 27, 1999 and Respondent failed to respond to the Complaint.

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred: (1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (2) Respondent has no rights or legitimate interests in respect of the domain name; and (3) the domain name has been registered and is being used in bad faith.

In addressing the first element, the Panel found that Netflix had established its rights in the mark NETFLIX through its trademark registrations. The Panel noted that the domain was a misspelled version of the NETFLIX mark, where the “i” and “l” were switched. The Panel found that the domain was confusingly similar and that Netflix had satisfied this element.

Moving to the second element the Panel explained that Netflix made a prima facie case in support of its allegations. The Panel chose to analyze the facts presented despite Respondent’s failure to provide a response.

The Panel finds that registrant’s WHOIS information demonstrates that Respondent is not commonly known by the disputed domain name.  Therefore, pursuant to Policy ¶ 4(c)(ii), Respondent lacks rights and legitimate interests in the disputed domain name….Respondent’s <netfilx.com> domain name resolves to a blank website.  The Panel finds that Respondent’s failure to make an active use of the disputed domain name is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). 

Interestingly, the Panel notes that Netflix failed to allege abuse through the misspelling, but the Panel still found this to be relevant in the overall decision. The Panel found that Netflix satisfied this element as well.

Moving to the final element, the Panel found that the disputed domain remained inactive, and that such inactivity was evidence of bad faith. Additionally, the Panel found that the typosquatted version of Complainant’s mark NETFLIX also constituted bad faith. Ultimately, the Panel found that Netflix proved all three elements and ordered the domain be TRANSFERRED.

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