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November 11, 2010 / Nate Harris

The Right Approach for gTLD “typos”?

What timing! Yesterday I blogged about New Dream Network, LLC v. Yuanjin Wu (WIPO Case No. DCO2010-0013), in which the Panel found <dreamhost.co> to be a “typosquat” of <dreamhost.com>. Today, another decision was published that deals with nearly identical facts.

In PFIP, LLC v. Igor Golub (WIPO Case No. DCO2010-0018), the respondent registered the disputed domain <planetfitness.co>, and pointed it at a site that had links and pop-up ads to competitors of Planet Fitness (the complainant). Planet Fitness owns several trademark registrations for the mark PLANET FITNESS, and operates a website at <planetfitness.com>. It’s not clear from the complaint whether Planet Fitness claimed this was typosquatting or not, but the Panel treated it as run-of-the-mill cybersquatting and awarded the disputed domain to Planet Fitness.

The Panel noted that the gTLD is irrelevant for purposes of the first prong (identity or confusing similarity). Therefore, the disputed domain is legally identical to the PLANET FITNESS mark.

As for the second prong, Planet Fitness made out a prima facie case that the Mr. Golub had no relationship to Planet Fitness and was not known by the disputed domain name. According to Planet Fitness, Mr. Golub was also not making a bona fide offering of goods or services, and was not making a legitimate noncommercial or fair use of the domain name. Mr. Golub did not respond to the complaint, and so did not rebut the prima facie case.

Finally, the Panel finds that Mr. Golub was using the disputed domain to attract users who are looking for Planet Fitness’s website, thereby demonstrating bad faith.

For those reasons, the Panel awards the disputed domain to Planet Fitness.

I think this is the right approach to take where the “typo” is in the gTLD. It keeps the focus on the complainant’s mark (which the complainant has to prove rights in as part of the “zeroth prong”), rather than the complainant’s domain (which the complainant may or may not have trademark rights in.)

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