There are endless different combinations that can be applied to a domain name that gives it another secondary meaning. However, what is the degree of change that is permissible as compared to a previously registered domain name? Can the change of an alphabet to a name already registered, give it an entirely different meaning? Different enough that competitors can use it?
Liberty Puzzles, LLC is a family owned business that has been operating since 2005. The company excels at making unique specialized puzzles. These puzzles are sold across stores and the domain name LibertyPuzzles.com. However, someone had registered a very similar domain name LibertyPuzzle.com. The puzzle company filed for a UDRP at the Forum.
The complainant argued that the domain name wasn’t used for any bonafide purpose. It resolved to a landing page that had the links of the direct competitors of the complainant.
The respondent had registered the domain name in December 2007. The complainant had claimed common law rights from its first usage since 2005. However, the panel didn’t find appropriate evidence from the complainant, explaining that between 2005 and 2007 it had achieved enough recognition and goodwill, so that the respondent must have been aware of.
The panel stated that although the domain names are undoubtedly similar, the complainant must also present legitimate rights. In case of common law marks, a certain notoriety is required. This wasn’t the case here.
The panel thus, declined the complaint.
You can read the full case here.