Heaven Hill Distilleries recent win against a typosquatter holding heavenhlll.com provides a textbook example of a typo/cybersquatting claim. Craft distillers, craft brewers, and wineries, and other beverage brands should understand that there are straightforward legal remedies for obtaining or shutting down (or both) these types of offending domain names.
A brief background on going after these types of confusing domain name issues – generally they arise in the form of cybersquatting or this form of typosquatting where traffic potentially looking for information or to interact with your beverage brand is redirected for a different purpose.
In order to shut down one of these websites, you’ll likely proceed under ICANN’s Uniform Domain Name Dispute Resolution Policy (UDRP) or through the Anticybersquatting Consumer Protection Act (ACPA). The ICANN system is generally regarded as being cheaper and faster – it is what got used in this case. For U.S. companies, the forums for your ICANN UDRP suits are likely going to be either the the National Arbitration Forum (NAF) or the World Intellectual Property Organization (WIPO) although ICANN has other international dispute resolution organizations. For a claim under the ACPA, you’ll be filing a lawsuit. Again, many prefer the ICANN UDRP method as it provides quicker results if a party does not respond but sometimes if you are bringing additional claims such as claims for manufacturing knock-off or counterfeit products and you need an injunction to stop such a practice then the ACPA combined with claims under other brand protection statutes like the Lanham Act are the method you will want to proceed with.
In any event, the point is you have choices, and good methods and generally the parties that set up as cybersquatters and typosquatters are hoping for a quick payout from you or are operating anonymously and want to stay that way, so the hassle of an arbitration or a lawsuit is something they’ll not deal with and the failure to respond likely puts you in the position of controlling and owning the offending web address – URL.
So, back to Heaven Hill. The spirits company filed a complaint with the WIPO Arbitration and Mediation Center over a typosquatting web address that substituted a lower case “L” for the “I” in Heaven Hill creating and controlling “heavenhlll.com.”
The bourbon maker detailed in its complaint how it holds trademarks to HEAVEN HILL in the US, the EU, Japan, Mexico and elsewhere and has registered its domain names and other names containing the HEAVEN HILL mark along with typosquatting variations of it. (Brand Tip: registering typosquatting versions of your own brand name is a good way to help you get the typosquatting traffic and protect against having to deal with typsoquatter issues.)
The opinion from the WIPO notes that little is known about the typosquatter in this case as they were concealed behind a privacy screen.
A bit about the timeline here so you can see how quickly these matters proceed when unanswered. The typosquatted web address was registered on April 1, 2020. Heaven Hill must subscribe (or their attorneys do) to a service that keeps track of and alerts them to similar names (yes, these services exist for trademark and other filings to help you protect your brand) and the alcoholic beverage maker filed the arbitration demand on April 9 with the WIPO. By April 14 the domain name registrar was contacted by WIPO and they gave up the registrants contact information the next day (again, an anonymous screened address) and by April 20, WIPO had transmitted that information back to HH and they’d amended their complaint to include the information. The deadline to respond was May 11, the default occurred then on May 12, and on May 25, the WIPO appointed an arbiter and the order of default was entered on June 1.
Before transferring the offending URL to Heaven Hill, the opinion makes quick work of the case noting the history and protection efforts of the bourbon maker in protecting and registering various forms of its name and notes the legal standard and adjudication precedent for such cases. This information is valuable for an understanding of what these arbitration panels look to in assessing and ruling on these cases:
- Identical or Confusingly Similar
The disputed domain name begins with and contains the entirety of the Complainant’s long-registered and well-known trademark with the substitution of an ‘l’ for the ‘i’, i.e. ‘Heavenhlll’ in lieu of ‘Heavenhill’. It is long established in UDRP case law that a slight misspelling or additional letter resulting in a confusingly similar approximation of a trademark can readily be found to be confusingly similar within the meaning of the Policy. See, e.g., Fuji Photo Film U.S.A., Inc. v. LaPorte Holdings, WIPO Case No. D2004-0971; Estée Lauder Inc. v. estelauder.com, estelauder.net and Jeff Hanna, WIPO Case No. D2000-0869. In the instant case the substitution of an ‘l’ results in a disputed domain name that is almost visually identical to the trademarked name and is of confusing similarity to the Complainant’s trademark.
Paragraph 4(a)(i) of the Policy is accordingly proven by the Complainant.
- Rights or Legitimate Interests
The Complainant has affirmed that it has no knowledge of any right of the Respondent to use its trademark in the disputed domain name or otherwise. There is, moreover, no reason to believe that the Respondent is known by the name ‘Heavenhlll’ or some variation thereof. Furthermore, far from making any legitimate use of the disputed domain name, the Complainant submits that the Respondent is making use of it for possible criminal conduct.
It is in any event clear in UDRP jurisprudence that a complainant needs to establish at least a prima facie case that the respondent has no rights or legitimate interests in respect of the disputed domain name. See section 2.1 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455. Where such a prima facie case is made, the burden shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name. If the respondent fails to do so, the complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the Policy. See also, Meizu Technology Co., Ltd. v. ‘osama bin laden’, WIPO Case No. DCO2014-0002; H & M Hennes & Mauritz AB v. Simon Maufe, Akinsaya Odunayo Emmanuel and Nelson Rivaldo, WIPO Case No. D2014-0225.
The Complainant has here established such a prima facie case, and the Respondent has failed to answer the Complaint. Further, there is nothing in the case file that would rebut or contradict the Complainant’s assertions as to the Respondent’s absence of any rights or legitimate interests in the disputed domain name. It can therefore be affirmed that the Complainant has met its burden under paragraph 4(a)(ii) of the Policy
- Registered and Used in Bad Faith
As a threshold point, the choice of the disputed domain name by the Respondent cannot reasonably be considered to be serendipitous or arbitrary; the name contains a typo that results in a deliberate confusing similarity to the Complainant’s trademarks and name, and can only logically be assumed to have been registered with a bad faith intent to exploit that similarity.
The Complainant submits that: ‘a mere act of typo-squatting a famous mark presents ample evidence of bad faith.’ See Six Continents Hotels, Inc. v. null John Zuccarini d/b/a Country Walk, WIPO Case No. D2003-0161; see also ESPN, Inc. v. XC2, WIPO Case No. D2005-0444 (’It is well-settled that the practice of typosquatting, of itself, is evidence of the bad faith registration of a domain name.’) (citing Longs Drug Stores California,, Inc. v. Shep Dog, WIPO Case No. D2004-1069 (finding typosquatting to be evidence of bad faith domain name registration)). On the facts here, the Panel concurs.
Bad faith use is here further demonstrated by a documented attempt–on the day the disputed domain name was registered–to use the disputed domain name, and its confusing similarity to the Complainant’s trademark, as a tool for dishonest phishing. The Respondent’s apparent concealment of its identity behind a privacy screen and failure to answer the Complaint is consistent with the above findings of bad faith.
The Complainant has, accordingly, proved bad faith registration and use within the meaning of paragraph 4(a)(iii) of the Policy.
All in all, a great lesson for those worried about how to protect their brand against typosquatters, cybersquatters and other URL ne’er duwels.
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