Internet: Domain names and typosquatting

On April 15 2004, the Arbitration and Mediation Center of WIPO (World Intellectual Property Organization, www.wipo.org) admitted the complaint filed by the owners of the trademark “MONOGRAFIAS.COM” and the domain name www.monografias.com, ordering the transfer of the disputed domain name, www.monografiass.com, registered by the respondent. The respondent used its domain name on a web site and competed in the same type of business as the complainants. Click here to see the full text of the Panel’s decision.

The case, in which Marval, O’Farrell & Mairal acted in the name of the complainants, consisted of a typosquatting maneuver, i.e. using someone else’s trademark by deleting or adding a letter to the trademark to obtain a misspelled word in order to divert the internet users.

Typosquatting is an illegal conduct that is rapidly growing among Internet squatters. Their main goal is to profit from advertising, which is generated by the users’ mistakes when they reach the typosquatters’ site. According to an article published last year the typosquatter’s annual income resulted in an accumulated revenue of US$ 800,000 to US$ 1,000,000 (Christopher E. Chalsen and Kerry D. Mcllroy, The Typo Trick, article published in “Trademark World” magazine, in the November 2003 edition).

During the past two years the Arbitration and Mediation Center of WIPO has issued many decisions in favor of trademark owners affected by typosquatters. For instance, a complaint has been admitted ordering the transfer to the complainants of the domain name www.0pusdei.com (written with a zero instead of an “o”). The same happened with the domain name www.arifrance.com (“arifrance” instead of “airfrance”).

Generally, the procedure is quite fast. A complaint should be filed together with all the documentary evidence. The complaint is sent to WIPO by e-mail and the original brief and documents by courier. Once the complaint is received, WIPO reviews the complaint for compliance with the formal requirements, and then orders the service of notice upon the respondent, who should file its answer within a 20-day term. Once the complaint is answered or the term to do so expires, the designated Panel issues its decision, within a 17-day term, on whether or not to cancel the disputed domain or transfer it to the complainant. If the complaint is admitted WIPO notifies the decision to the concerned registrar who must implement the decision within a 10-day term.

This proceeding with WIPO makes things easier for trademark owners harmed or squatted by Internet squatters. If the disputed domain name is a “top level” domain name (e.g..com, .org, .net, .biz, .info, .name), the trademark owner will be able to use this proceeding.