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.
