Cingular Wireless Reclaims Five Domain Names from Typosquatter

In the case of Cingular Wireless II, LLC v. Ali Aziz, FA 892865 (Nat. Arb. Forum March 7, 2007), Cingular Wireless managed to wrestle no less than five domain names from a typosquatter.

Complainant, Cingular Wireless II, LLC, is the largest wireless carrier in the United States, offering digital voice and data goods and services. In connection with its wireless goods and services, Complainant registered numerous marks with the United States Patent and Trademark Office (“USPTO”), including CINGULAR (Reg. No. 2,596,041 issued July 16, 2002, filed September 8, 2000).

Respondent registered the cingualar.com and cungular.com domain names April 17, 2002, the cingurlar.com and cinglular.com domain names May 8, 2002, and the ciingular.com domain name May 24, 2002. Respondent was using the disputed domain names to display directories of links to third-party websites that offered goods and services in competition with Complainant.

The Panel first found that Complainant’s trademark registration of the CINGULAR mark with the USPTO sufficiently established Complainant’s rights in the CINGULAR mark pursuant to Policy ¶ 4(a)(i). Although Respondent’s registration of the cingualar.com, cingurlar.com, ciingular.com, cinglular.com, and cungular.com domain names predated Complainant’s USPTO registration, Complainant’s filing date of September 8, 2000, predated Respondent’s registration. Therefore, the Panel found that Complainant’s rights in the mark predated Respondent’s registration of the domain names in dispute. Furthermore, because each of the disputed domain names was found to be a slight misspelling of Complainant’s CINGULAR mark, the disputed domain names were found to be confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i). The Respondent failed to sufficiently distinguish the domain names from Complainant’s mark.

Turning next to the question of whether Respondent had any legitimate rights or interests in the domain names at issue, the Panel noted that the Complainant asserted that Respondent was not authorized to use Complainant’s CINGULAR mark or any variations of the mark. A review of the Respondent’s WHOIS information did not suggest, nor did any additional information in the record suggest, that Respondent was commonly known by the cingualar.com, cingurlar.com, ciingular.com, cinglular.com, and cungular.com domain names. Therefore, the Panel found that Respondent was not commonly known by the disputed domain names under Policy ¶ 4(c)(ii). Furthermore, Respondent was using the cingualar.com, cingurlar.com, ciingular.com, cinglular.com, and cungular.com domain names, which were confusingly similar to Complainant’s mark, to redirect Internet users seeking Complainant’s products and services to other websites, which offer competing products and services. Therefore, the Panel found that Respondent was not using the cingualar.com, cingurlar.com, ciingular.com, cinglular.com, and cungular.com domain names in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), and was not making a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).

Turning to the question of bad faith registration, the Panel found that because the Respondent presumably received click-through profits from its diversion scheme, it was taking commercial advantage of the confusing similarity between the disputed domain names and Complainant’s mark. Such use of the disputed domain names constituted bad faith registration and use under Policy ¶ 4(b)(iv).

Having established all three elements required under the ICANN Policy, the Panel concluded that relief be granted, and that the domain names be transferred to Cingular.