A recent dispute managed by the IP Dispute Resolution Center MFSD covered an interesting new case of typosquatting.
As known, typosquatting is a particular case of cybersquatting. Whilst the latter consists in an unlawful activity brought by a subject who registers domain names correspondent to trademarks or other distinctive signs of a third party, only to gain an unfair advantage to the detriment of the subject holder of the above-mentioned rights, the typosquatting consists in the registration of domain names correspondent to others’ – often popular – trademarks but with transposed letters or common, obvious or intentional typos. In particular, such errors may consist in:
- the typing of letters adjacent in the keyboard;
- the substitution of similar characters (for example upper-case and lower-case letters or numbers used to look like letters);
- the typing of different letters which appear similar if used in different fonts;
- the use of accented or non-Latin characters;
- the inversion of letters and numbers;
- the addition of other terms or numbers.
The above-mentioned dispute involved the domain name “Acquatetrapack.it” and the petitioner, the company that is part of the well-known group world leader in the packaging and distribution of food, complained that the domain name under exam could be confused with its own earlier trademarks including the wording “TETRA PAK”, that the defendant was not the holder of rights or legitimate interests that justified the registration of the domain name and that its registration and use occurred in bad faith.
Therefore, the petitioner asked for the transfer of the domain name “acquatetrapack.it” in its favor.
Pursuant to art. 3.6. (1) of the Disputes Resolution Regulation in the ccTLD “it” “Domain names for which a third party (called “petitioner”) makes the following claims are subject to re-assignment:
- the domain name object of opposition is identical to or such as to cause confusion with a trademark or any other distinctive business sign, on which it claims rights, or to his name and surname; and that
- the present assignee (called “defendant”) has no right or title in relation to the domain name object of opposition and, finally, that
- the domain name has been registered and is used in bad faith”.
If the petitioner proves the simultaneous existence of conditions “a)”, and “c)” and in turn the defendant does not prove to have right or title in relation to the opposed domain name, it is transferred to the petitioner.
With decision of September 3rd 2021, provided during the dispute under exam, MFSD stated that, in relation to the requirement of which in letter a) of art. 3.6 (1) the domain name “acquatetrapack.it” could be confused with the earlier trademarks “TETRA PAK” of the petitioner. This because the element “TETRAPACK” of the contested domain name is very similar to the trademark “TETRA PAK”, as the addition of the letter “c” can be qualified as an example of typosquatting and cannot be sufficient to exclude the similarity of the contested domain name with the petitioner’ trademarks.
Moreover, the element “ACQUA” of the domain “acquatetrapack.it” can be consider as a descriptive term of the products packaged by the petitioner and the addition of descriptive elements in a domain name is not generally adequate to exclude the likelihood of confusion among the signs.
MSFD considered the presence of the rights or legitimate interests in the contested domain name of the defendant as not proven (also because the holder of the domain marketed its own products with a brand different from the sign “acquatetrapack”) and considered the registration in bad faith. The domain name “acquatetrapack.it” was therefore transferred to the petitioner company.
Chiara Morbidi