Nationnal.com and Natiional.com – One is a Trademark Typo, the Other Isn’t
Thursday, June 2nd, 2011
Two different panels come to different conclusions in essentially the same case.
I’m frequently perplexed by UDRP decisions for similar domain names. Here’s another example.
National Arbitration Forum has handed down decisions for nationnal.com and natiional.com literally within days of each other. Both domains are typos of “National”, and both are parked at HitFarm. The cases were brought by Vanguard Trademark Holdings, which owns the National Car Rental brand.
In both cases the respondents’ attorney (it was Ari Goldberger for both cases) argued essentially the same thing: it’s a generic typo that wasn’t registered to target National Car Rental.
Yet the owner of Nationnal.com lost; the owner of Natiional.com won.
Let’s start with Nationnal.com, in which the Complainant won in a 2-1 split decision. All three panelists found that it was confusingly similar and that the domain owner had no legitimate interest. But panelist James Bridgeman dissented on bad faith registration, stating “there is no evidence that Respondent registered the disputed domain name to target Complainantâ€™s goodwill.”
Now switch to Natiional.com, another clear typo of National.
Remember, both domains were parked at the same parking company and showed generally the same links. But in this case, the panel determined that any links on the parked page related to car rentals were “troubling” but minor.
The Panel has reviewed the website as it exists to date, and sees that the list of car rental referrals contained in the website is fairly short and if not incidental, certainly not a significant portion of the revenues potentially generated by the site.
The panel goes on to decide that this is merely a generic typo, and reaffirms the right to own generic typos if they aren’t registered specifically to target the trademark owner:
The Panel finds that Complainant has not shown that it was targeted by this typographical variation registration. The word â€œnationalâ€ is just too common.
Therefore, the Panelâ€™s is confronted with a policy decision. The mark and the domain name are confusingly similar. The typo-squatting business strategy is obvious.
Ultimately, it is the common word that prevents a finding for Complainant. â€œRights in the name,â€ aside, the word â€œnationalâ€ is simply too common for the registration and use of the typo squatting variation â€œnatiionalâ€ to be considered â€œbad faith.â€
The panel continues later:
The Panel finds that a respondent is free to register a domain name consisting of misspelling of common terms where there is little or no other evidence of the elements of â€œbad faithâ€ and particularly where there is no evidence that Respondent had another party or its trademark in mind when it registered the â€œtypoâ€ domain name.
So it’s certainly interesting that panels came up with two different answers here.
Are you ready for the kicker?
National Car Rental doesn’t own National.com.
Yep, that’s right. National.com is owned by National Semiconductor. So a panel just handed National Car Rental a typo of a semiconductor firm’s web site.