Notorious cybersquatter free to use 'frelotto.com'
In PlasmaNet Inc v Zuccarini, World Intellectual Property Organization (WIPO) panellist John Hughes has refused to order the transfer of 'frelotto.com' to PlasmaNet, owner of the 'freelotto.com' website and a number of trademarks, including FREELOTTO. Hughes held that there was no evidence of bad-faith registration because notorious cybersquatter John Zuccarini had registered the disputed domain name prior to PlasmaNet's trademark registrations.
PlasmaNet provides free online gaming at its 'freelotto.com' website and it registered the US federal trademarks FREE LOTTO, FREELOTTO.COM and FREELOTTO in August 2002. Zuccarini registered 'frelotto.com' in 1999 and was using it to host a pornographic website. PlasmaNet brought an action under the Uniform Domain Name Dispute Resolution Policy (UDRP) against Zuccarini arguing that his registration and use of 'frelotto.com' infringed its rights in its trademarks and the 'freelotto.com' domain name.
At the WIPO proceedings, Hughes held that:
- 'frelotto.com' is confusingly similar to PlasmaNet's trademarks and domain name;
- Zuccarini has no legitimate rights or interests in the domain name; and
- Zuccarini is using the domain name in bad faith.
However, Hughes was unable to find evidence that Zuccarini had registered the domain name in bad faith pursuant to Paragraph 4(a)(iii) of the UDRP and therefore refused to order its transfer. Hughes reasoned that although Zuccarini's domain name is no more than a minimal typographical error away from PlasmaNet's trademarks, PlasmaNet did not obtain rights in those marks until after Zuccarini had registered 'frelotto.com'. Hughes stated that there was nothing to suggest that either the trademarks or the domain name 'freelotto.com' had achieved any secondary meaning in the marketplace prior to 1999, and indeed it was only when PlasmaNet registered its marks in August 2002 that its rights were triggered. He concluded that even if Zuccarini's registration amounts to typosquatting on PlasmaNet's domain name, he is not necessarily guilty, for the purposes of the UDRP, of illegally cybersquatting on its marks.
Gordon J Zimmerman, Borden Ladner Gervais LLP, Ontario
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