Register typo domains or take the risk of third-party registration?

The medical and safety technology company Drägerwerk AG & Co. KGaA with the headquarter in Lübeck, Germany, now has had experiences with a typo domain that was registered by someone else. In this article we would like to discuss if it is better to register a domain or to take the risk of a third-party registration.

The company has sales and service locations in 50 different countries in Australia, Africa, South America, Asia and Europe. It is the trademark owner of a wide variety of brands such as "draeger" and "draeger" and has registered domains such as "draeger.com", "drägerwerk.com" and also "drager.us". It has now filed a complaint with the WIPO (World Intellectual Property Organization) and won the dispute over the mistyped domain "dreagerwerk.com". This is now to be transferred from the current domain owner to the company.

When reading the WIPO decision, it was only later noticed that it is not an umlaut domain, but a typo domain of the umlaut. The domain was registered on January 3, 2022 and redirects to the official website under the domain "www.draeger.com".

In a WIPO complaint, three important points must be met:

  1. identical or similar to confusion
    The domain is identical to existing trademarks of the complainant or confusingly similar to such trademarks.
  2. rights or legitimate interest
    The complainant has rights (trademark rights) or the respondent has no rights or legitimate interest in the domain name.
  3. bad faith registration and misuse
    The domain is registered in bad faith and there is an abuse by the respondent.

If all three points are met, chances are good that the panel at WIPO, which consists of one or three lawyers, will make a positive decision for the complainant.

In its complaint (D2022-1874), Drägerwerk AG & Co. KGaA points out that the disputed domain "dreagerwerk.com" is confusingly similar to its trademark as well as its domain, since it reproduces an intentionally incorrect spelling of the trademark or domain.

Likewise, the complainant states that the domain owner has neither a right nor a legitimate interest. No license, authorization or permission has been granted to use this domain.

The Complainant states that there is an indication of bad faith due to the use of the misspelled domain name. Further, the disputed domain redirects to the Complainant's official website and has MX records on file. The domain is apparently used for e-mail traffic. This is a common practice in spam or phishing attacks, where the domain owner tries to mislead recipients.

The Respondent has not submitted any comments to this Complaint to defend its position and demonstrate legitimate interest. The Panel for this complaint agrees with all the points and arguments of the Complainant and decides that the disputed domain should be transferred to the Complainant.

The fees to file the complaint with WIPO range from 1,500 USD to 5,000 USD and more, depending on the number of domains in a complaint and the size of the panel (1 or 3 participants). If there are more than 10 domains, it gets more expensive. These are only the fees for filing, in addition there are further and higher costs for lawyers or experts who prepare, elaborate and formulate the complaint. Or also for services to get more information about the disputed domain for the argumentation of the experts.

Whether it is better to register a domain than to take the risk of registering it with a third party can never be answered in a general way. Ex post, the recommendation here is that it is better to have the domain registered for the following reasons:
- .com it is a popular toplevel domain.
- The misspelling of the umlaut is not obvious at first glance.
- The domain name fits the portfolio, since "drägerwerk.com" is also part of the portfolio.
- The ratio of registration fees to costs for a WIPO complaint and possible risk of damage is very good: low registration fees meet high costs for a complaint, the risk for reputation damage is a latent danger.

Companies that operate globally are potentially more often perceived by people with criminal energy than local companies. This increases the risk of third-party registrations, be it through the exact brand name, a mistyped domain or, as in this case, a mistyped domain of the umlaut. A company-specific strategy as to which other domain names should be registered for protection and how to react to domains registered by third parties is therefore highly recommended. This individual strategy can answer the question whether a domain should be registered or the risk of a third-party registration should be taken.

We are experts in global domain management and can advise you individually and personally regarding your current domain portfolio, make a risk assessment of extended domain names and offer you options to protect your brands. Schedule a consultation now by calling +49 (0) 231/58698-123 or by email to support@123domain.eu.

Sources: wipo.int

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