Barfoot & Thompson v Domain Admin [2006] NZDNC 113

[2006] NZDNC 113
Transfer ; Complainant's Rights ; Degree of Name Similarity ; Typosquatting ; Unfair Registration ; CMD - Transferred

The complainant had traded under the name BARFOOT & THOMPSON since 1968 in the real estate business. It is commonly known purely as BARFOOTS in New Zealand. The complainant has applied for, but not yet obtained, registration in their trademarks (word and visual). Both of these marks feature the name prominently in full. The domain name was registered in 2006.

The complainant claimed reputation in both the full name and the shortened version as a result of extensive use. It claimed unfair registration against the respondent as it was targeted at the complainant's users who mistyped the address of the business. The domain name resolved at a website that featured many other links to other somewhat related sites.

Users who entered the site were likely to be confused into thinking that the complainant and the respondent are associated.

The respondent filed no response.

The expert found there was siginificant reputation generated in association with the trademark. The shortened form is an obvious abbreviation so the rights obtained in the complete phrase can be exercised through the abbreviation as well, and found the domain name to be similar to both BARFOOT & THOMPSON and BARFOOT(S).
The expert held this was a clear case of typosquatting and likely confusion leading to users arriving at the site to think that the complainant and the respondent are associated. As such, the respondent had unfairly registered the domain name against the rights of the complainant and the domain name was transferred.

Link to NZLII Decision

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