Tuesday, May 20, 2008

Typosquatter's domain name found to dilute Complainant's trademark

One of two Wagamama® noodle house locations in Boston. Bet my friends in the UK love this place too.

In Wagamama Limited v. Park Hae Dong, Hae Dong Limited, WIPO Case No. D2008-0301 (Ross Wilson, May 6, 2008), the Panel required the transfer of wgamama.com to the Complainant owner the WAGAMAMA trademark.

The Panel first reaffirmed several other decisions in holding that a domain name that omits a letter of another's trademark is confusingly similar for purposes of the UDRP:

"The Respondent’s disputed domain name differs from the Complainant’s mark by simply one letter. In the disputed domain name the first 'a' is omitted. The Panel finds that the Respondent is obviously engaging in deliberately misspelling a known trademark - a practice commonly known as 'typosquatting'. The practice has been condemned by many panels and found to be confusingly similar to the marks which they mimic."

Because the Respondent used the domain in connection with a website offering "herbal supplements which claim to enlarge the male genitalia," the Panel concluded that the Respondent had no rights or legitimate interests in the domain name.

The following statement from the Panel made me wonder why it bothered to continue with an analysis of bad faith: "the Panel agrees with the Complainant that in the absence of any legitimate interests in the disputed domain name, its registration by the Respondent, and its subsequent use of it, cannot have been in good faith."

With bad faith apparently a moot point, the Panel nevertheless decided to find bad faith based on a dilution argument:

"[B]ad faith registration and use exists because many Internet users seeking the Complainant’s site would find the Respondent’s website offensive and, therefore, likely to cause tarnishment and dilution of the Complainant’s trademarks. The nature of a website (whether pornographic or otherwise) was considered in Christian Dior Couture v. Paul Farley, WIPO Case No. D2008-0008 (Warwick Smith, February 8, 2008). The panel stated that if the nature of the website is such that linkage with a complainant’s mark could reasonably be supposed to tarnish that mark then the result would be bad faith use. As in that case, this Panel has no doubt that the Respondent’s website is of a kind that would tarnish the Complainant’s marks if it were confusingly linked to those marks." (Emphasis added.)

And thus, transfer of the domain name was justified under the UDRP.

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