UDRP Panel: “.co” domain registration is typosquatting of its “.com” counterpart
Summary of New Dream Network, LLC v. Yuanjin Wu
(WIPO Case No. DCO2010-0013)
Filed: August 31, 2010; Decided: October 25, 2010 (Panelist: James A. Barker)
Disputed domain name: <dreamhost.co>
Complainant New Dream Network, LLC (“New Dream”) has been in the webhosting business since 1997. Its main site is accessible at <dreamhost.com>, and it owns a trademark registration for DREAMHOST.
Respondent Yuanjin Wu uses the disputed domain name to redirect to his “rewards account” page at <dreamhost.com>, which pays him a referral fee for everyone he directs to <dreamhost.com>. Mr. Wu has engaged in “serial and systematic typosquatting with respect to other domains” including <googlle.com.mx>, <hotifle.com>, and <tinysepck.com>.
Identity or Confusing Similarity
New Dream has proven rights in the mark DREAMHOST. As the gTLD extension is irrelevant for purposes of this prong, the Panel finds that the disputed domain is “relevantly identical” to New Dream’s mark. However, New Dream has accused Mr. Wu of typosquatting, in that the disputed domain name merely leaves off the last letter of <dreamhost.com>. The Panel notes that typosquatting is irrelevant for this prong, as it has already found that the disputed domain is identical to the mark. However, the issue of typosquatting may be relevant for purposes of rights/legitimate interests and bad faith. Therefore, it addresses the issue:
Typosquatting is the practice of misspelling an element of a mark, and has consistently been regarded as creating domain names confusingly similar to the relevant mark: see e.g. ACCOR v. Brigit Klostermann, WIPO Case No. D2005-0627. Panels have also found that the relevant misspelling does not need to be a misspelling of the mark itself – it is sufficient if the misspelling is of a word associated with the mark. See e.g. Ross-Simons, Inc. v. Domain.Contact, WIPO Case No. D2003-0994, in which the Panel discusses typosquatting in a case where the misspelling related to a descriptive word linked to the trademark even though the mark was accurately reproduced. In this case, the Complainant’s argument is that the misspelling relates to the gTLD extension, rather than its mark per se, even though the Complainant’s mark is accurately reproduced.
Rights or Legitimate Interests
There is no evidence that Mr. Wu has a right or legitimate interest in the mark. This lack of rights is further buttressed by the evidence of typosquatting.
As noted above, the disputed domain name is a form of typosquatting. As noted by the Panel in Go Daddy Software, Inc. v. Daniel Hadani, WIPO Case No. D2002-0568, ‘[t]yposquatting is virtually per se registration and use in bad faith. It is difficult to conceive of circumstances that would overcome the inference that the typosquatter ‘intentionally attempted to attract, for commercial gain, Internet users to [Respondent’s] web site . . . by creating a likelihood of confusion with the complainant’s mark as to the source’ of the web site”. For these reasons, the Panel also finds that the disputed domain name was registered and used in bad faith, in the way described in paragraph 4(b)(iv) of the Policy.
The Panel orders that the disputed domain be transferred to New Dream.
Clearly, there was bad faith on the part of the Respondent here, and I think this was the right outcome. But is this really a case of typosquatting? I understand typosquatting to be “the practice of misspelling an element of a mark,” as quoted by the Panel. Here it is the gTLD that is “misspelled.” New Dream never proved rights in DREAMHOST.COM, just in DREAMHOST, so the mark was not misspelled. Is this a distinction without difference?
<newdream.co> still points to Mr. Wu’s rewards account page.