By Steve Levy
After about 30 years of watching cybersquatting flourish, I’d have thought that most typo domain names had been taken or transferred to their assertive brand owners through enforcement actions. Of course, there are more possible permutations available in the .com top-level domain space alone (587 to be exact) than there are stars in our observable universe so, as only a measly quarter billion of such domain names are currently registered, my optimism is pure fantasy. Every day I receive emails reporting on the latest UDRP decisions and typos continue to play a huge role in cybersquatters’ game plans.
For example, a recent claim against the domain name bayllist.com recently succeeded by the owner of the BABYLIST trademark for maternity goods and products for infants and children. The disputed domain name resolved to a classic pay-per-click website with “advertising links to other baby registry services, which offer baby clothes and products for new moms, identical to Complainant’s goods”. As expected, the Panel held that “Misspelling of a trademark and the addition of a gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i).”
Similarly, the domain name coldwellbankremoves.com was recently ordered to be transferred based on confusion with the well-known COLDWELL BANKER trademark. The Panel acknowledged that “the switching of the last two letters of the term ‘banker’ in the disputed domain name results to be a common, obvious, or intentional misspelling of the Complainant’s trademark”. The disputed domain name “resolves to a parking website comprising PPC links that compete with or capitalize on the reputation and goodwill of the Complainant’s trademark or otherwise mislead Internet users”.
Much as I had hoped that the pay-per-click and typosquatting era of domain name abuse were waning, the reality is that they have never gone away and continue to haunt brand owners and consumers through to the present. So, what are the best strategies to deal with this ongoing scourge? A proactive first step is to get the lay of the land with some research. A skilled domain name professional can find the most common and likely typographical variations on your trademark, develop and estimate of which ones are likely to get the most user traffic, and then separate out those that are available for purchase from those that are already available. The brand owner can then look at its available budget and prioritize which of the available domain names to register as part of its “defensive” portfolio (to prevent a cybersquatter from grabbing them). These can then be used to redirect traffic to the company’s main website and increase marketing and customer engagement.
As for those identified as already registered, a similar prioritization should take place but this one based on how aggressively the brand owner wishes to enforce its trademark rights. For those domain names that are clearly targeting the brand (based on a combination of the domain name itself and how it is used – for a website or email), the brand owner has a few tools in its arsenal. One could try sending an abuse or takedown notice to the hosting provider for the website to see if this is effective in stopping the offensive activity. A demand (cease-and-desist) letter could also be sent to the domain name registrant if a contact point for such person can be identified (this is not always easy in this age of online privacy). Finally, if these preliminary steps fail to yield results, a UDRP complaint can be filed and this should only be done by an experienced and skilled professional after careful evaluation of the likelihood of success for such a dispute.
In the end, the calculus always comes down to likely harm to the brand reputation and the availability of one’s enforcement budget. The pro-active approach is often less expensive leaving more room for casting a broader net. Since typo-squatted domain names are apparently not going away anytime soon, getting ahead of the abuses often spells success in the chaotic world of online brand enforcement.