WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
E, Inc. v. Polanski
Case No. D2001-0928
1. The Parties
The Complainant is E, Inc., a New York Corporation with a principal place of business at 2401 Colorado Avenue, Suite 250, Santa Monica, California 90404-3551, USA. It is represented by Rollin A. Ransom, Esq. of Sidney Austin Brown & Wood, Los Angeles, California, USA.
The Respondent is Polanski of Ul. Dietla 13/2, Krakow, PL 31-031, POLAND.
The Respondent�s administrative and technical contact is Victor Lashenko Register Help Co. of Ul. Shevchenko 26, Kiev, UA 21100, UKRAINE.
2. The Domain Names and Registrar
The domain names, which are the subject of this Complaint, are:
The Registrar for all of them is BulkR of 10 East Baltimore Street, Suite 1500, Baltimore, Maryland 21202, USA ("BulkRegister").
3. Procedural History
On July 19, 2001, a Complaint was received by the WIPO Arbitration and Mediation Center ("the Center") by e-mail pursuant to the Uniform Domain Name Dispute Resolution Policy ("the Policy") of the Internet Corporation for Assigned Names and Numbers ("ICANN") and under the Rules for the Uniform Domain Name Dispute Resolution Policy implemented by ICANN ("the Rules"). A hard copy of the Complaint was received by the Center via courier on July 20, 2001.
The Center sent a Request for Registrar Verification to BulkRegister on July 23, 2001, by email. BulkRegister responded on July 25, 2001, and confirmed: (1) that it was in receipt of a copy of the Complaint, (2) that it was the Registrar for all of the disputed domain names, (3) that the Respondent, Polanski, was the current Registrant of the disputed domain names, (4) that the Respondent�s contact details were correct, (5) that the UDRP applied to all of the domain names, and (6) that the current status of all of the contested domain names was �Registrar LOCK�.
On July 26, 2001, the Center sent the Notification of Complaint and Commencement of Administrative Proceeding to the Respondent by post/courier and e-mail, as well as to its Administrative and Technical contact.
No more was heard, and the Center sent a Notification of Respondent Default to the Respondent on August 16, 2001.
The Center sent a Notification of Appointment of Administrative Panel giving a Projected Decision Date of September 6, 2001, to the Respondent and the Complainant on August 23, 2001, via email. A copy was also sent to the Panel on the same date by email.
The Center sent by email a Transmission of Case File to the Panel, the Respondent and the Complainant on August 23, 2001. Hard copies of this material were sent to the Panel on August 29, 2001, and received on September 1, 2001.
On September 2, 2001, the Panel requested further information from the Complainant under Rule 12 of the Rules. The Complainant responded to this request on September, 7 2001.
On September 7, 2001, the Center extended the Decision Date until September 19, 2001.
4. Factual Background
Activities of the Complainant
The following information was asserted as fact by the Complainant and remains uncontested.
The Complainant, E, was founded in 1966 for the purpose of publishing printed guides to assist automotive buyers in making informed decisions respecting the purchase of new and used vehicles. In 1994, the Complainant took advantage of the development of the Internet and posted the vehicle data from its printed guides in a so-called �gopher� site. The following year, the Complainant became the first company to establish a site on the World Wide Web � � at which consumers could obtain vehicle information at no cost. This information includes vehicle pricing data, technical and performance specifications, automotive reviews, user discussion forums, automotive-related news, warranty data, and a host of other material and information relevant to car buyers and enthusiasts.
The website is a central focus of the Complainant�s business today. The website averages 2.8 million visitors per month, with each visit lasting an average of twenty minutes. The Complainant has therefore established itself as one of the leading Internet-based sources of consumer automotive information. The Complainant�s reputation as a premier provider of such information has been widely recognised in the press, and a number of relevant press cuttings and journal extracts testifying to this were filed as Annexes to the Complaint.
The Complainant�s Trademarks
In its Complaint, the Complainant claimed to own US trademark registration No. 2,106,713 dated October 21, 1997 in the USA for the word EDMUND'S, in Classes 16 and 36 in respect of "magazine and series of non-fiction books featuring vehicle pricing information" and "information services, namely, providing vehicle pricing information by telephone and by means of an online communications network" which it contends it has used in connection with its business since the company was founded in 1966. This mark, which was described in the Wall Street Journal as "a brand name car buyers trust", according to an Annex to the Complaint, is alleged by the Complainant to be famous in the industry and to be one of the Complainant�s most valuable assets. A copy of trademark No. 2,106,713 was annexed to the Complaint but this showed the owner to be, not the Complainant � E, Inc. � but a company with a similar name � Edmund Publications Corp. � and a different address.
In response to a request from the Panel, the Complainant filed copies of documents proving that Edmund Publications Corp. had changed its name on May 24, 1999, to E, Inc. Thus, the Panel is satisfied that US registration No. 2,106,713, EDMUND�S, did belong to the Complainant at the time of the Complaint.
5. The Parties� Contentions
A. Complainant
The Complainant draws attention to the facts set out above and, firstly, contends that the Respondent's ownership of the disputed domain names, amounts to a case of typo-piracy. The Respondent, Polanski, has registered three domain names � , , and � each of which is confusingly similar to the Complainant�s name and famous mark EDMUND'S. The Complainant contends that the similarity between the contested domain names and its own name and mark is apparent from a simple comparison of each domain name with the letter string EDMUND�S. The first domain name, , is alleged to vary from the Complainant�s mark and domain name by one letter (namely the omission of the letter "n"). The second domain name, , is alleged to vary from its mark and domain name by one letter (namely by substituting the "u" with an "i"). The third domain name, , is alleged to vary from its mark and domain name by one letter (namely by substituting the "u" with an "o"); it also includes the familiar "www" prefix that precedes the domain name, albeit without the intervening full stop.
Secondly, the Complainant contends that the Respondent has no rights or legitimate interests in respect of the domain names that are the subject of this Complaint because not only does he not have any trademark or intellectual property rights in the domain names , , or , but he also does not use any of these variations as his legal or business name. Moreover, none of the contested domain names resolve to a website that features any of the terms involved (or any similar term). The Complainant further contends that in fact all of the contested domain names resolve to a website at , which features, among other things, automotive information and services in direct competition with the Complainant�s business, and that consequently the Respondent�s registration and use of the contested domain names cannot constitute "fair use".
Lastly, the Complainant contends that the disputed domain names have been registered and are being used in bad faith because the Respondent is making no use of them and has no rights in any of them and, since the registration of a domain name unrelated to the marks used in connection with the Registrant's business is evidence that the domain name has been registered for an improper purpose, this is bad faith. Furthermore the Complainant alleges that the Respondent does not maintain a website at any of the contested domain names, but that instead each of the contested domain names resolves to a website entitled which is operated by an enterprise that competes directly with the Complainant. A copy of the home page from the website, which appeared when the Complainant�s representative entered each of the domain names into his browser on July 16, 2001, was annexed to the Complaint. Moreover, it is alleged that when a user attempts to leave the website, he or she is presented with a "pop-up" screen directing the user to , another service that competes with Edmunds. A copy of this screen was also provided as an Annex to the Complaint. Both and are owned by the same entity, called WeD, as was evidenced by the copy of a WHOIS database search that was provided as an Annex to the Complaint. The Complainant contends that this deliberate theft of customers looking for the Complainant�s website, and the effort to misdirect such users to competing websites is likewise conclusive evidence of bad faith, and highly probative of the Respondent's familiarity with the competing website maintained by the Complainant.
In conclusion, the Complainant contends that its name and mark are highly distinctive. They have no inherent meaning with respect to the automotive industry, and are therefore entitled to the strongest protection. The Complainant argues that the registration of a domain name that is similar to a highly distinctive mark is strong evidence of bad faith, as the distinctive nature of the mark reduces or eliminates any claim that the Registrant's infringement was "innocent".
B. Respondent
The Respondent did not respond to the Complaint or to the allegations made therein.
6. Discussion and Findings
Since the Respondent has not submitted a Response, not only does the Panel have no alternative but to accept as true all of the factual contentions made by the Complainant, but the Respondent is also in default, in accordance with paragraph 6 of the Notification of Complaint. Nevertheless, even though there has been no Response, the Panel must still, under paragraph 14(a) of the Rules, "proceed to a decision on the complaint" which the Panel will now do.
Paragraph 4(a) of the Policy states that in order to be successful, the Complainant has the burden of proving that all of three elements are present in its Complaint. The Panel will now consider each of them in detail:
4(a)(i) "your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights."
The Complainant has established that it has registration rights in the trademark EDMUND�S. The Complainant has also alleged that its trademark is both highly distinctive and famous. It is true that in many jurisdictions, the more distinctive a particular trademark is the greater will be its aura of protection, and a mark that is proved to be well-known or famous will enjoy wide protection. However the Complainant has not produced any independent evidence of either the distinctiveness or the fame of its trademark EDMUND�S for the Panel to pass judgement on this claim.
The trademark EDMUND�S is not identical to any of the contested domain names but in the opinion of the Panel it is clearly confusingly similar to two of them � and . The third contested domain name, , is a little further removed from the trademark, but in the opinion of the Panel it is still confusingly similar to it and even more so to the domain name in which the Complainant has undisputed rights.
Consequently the Panel rules that all of the contested domain names are similar to trademark and other rights belonging to the Complainant.
4(a)(ii) "you have no rights or legitimate interests in respect of the domain name"
In connection with this paragraph, the Complainant has established an arguable case, so the burden of proof is therefore now shifted to the Respondent to show, by providing concrete evidence, that he has rights to or legitimate interests in respect of the disputed domain names.
By its default, the Respondent has done nothing to contest the allegations of the Complainant that it lacks any rights or legitimate interests in the disputed domain names. Consequently, since no circumstance has been evidenced by the Respondent that could reasonably support an inference in its favour under paragraph 4(c) of the Policy, the Panel finds that the Respondent has no rights or legitimate interests to the disputed domain names and that paragraph 4(a)(ii) has been proven.
4(a)(iii) "the domain name has been registered and is being used in bad faith"
By its default, Respondent has not responded directly to the allegation of the Complainant that the Respondent registered the domain names in bad faith. The burden of proof for doing so is on the Complainant which, in the opinion of the Panel, it has fully discharged. Nevertheless, with regard to �bad faith�, paragraph 4(b) of the Policy sets out various circumstances which could constitute evidence of registration and use in bad faith, albeit it is not exhaustive, and the Panel will consider each of them in turn.
4(b)(i) "circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trade mark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name;"
Neither the Complainant nor the Respondent made any approach to the other prior to the Complaint being filed, so it cannot be said that any offer to sell, rent or transfer was made. Thus this paragraph does not apply.
4(b)(ii) "you have registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct;"
Since the Complainant has operated its own website since 1995, with considerable success, it cannot be said that the Respondent�s activities have stood in the path of any of the Complainant�s domain names. Nor is there any evidence of cybersquatting on the part of the Respondent. Therefore this paragraph too does not apply.
4(b)(iii) "you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
4(b)(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant�s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location."
There is substantial evidence that both of these paragraphs apply to the present case. According to the Complaint, any user attempting to access any of the contested domain names will be directed to an entirely unconnected website, namely . However when the Panel accessed them, it was presented with a website called . Perhaps this changeover was effected after the Complaint was filed, but whatever the circumstances, there appears to be little difference between the contents of and . In the opinion of the Panel, this is a blatant attempt to attract, by typosquatting, potential customers of the Complainant to the website of one of its competitors. This certainly could disrupt the Complainant�s business in contravention of paragraph 4(b)(iii), but even if it does not, it is certainly an attempt to divert the Complainant�s potential customers to a rival website, which is a clear contravention of paragraph 4(b)(iv).
However, it should not be overlooked that paragraph 4(a)(iii) of the Policy requires both registration AND use in bad faith and, as has already been said above, the examples given in Paragraph 4(b) are not exclusive. As is clear from the above, there is both registration and use in this case.
These proceedings were binding on the Respondent. Nevertheless it failed to present the Panel with any submission, document, or communication whatsoever, despite the fact that it had been duly notified by the Center. In particular, the Respondent has not denied that it registered or is using the domain names in bad faith.
The Panel therefore concludes that the Respondent did indeed register and has used the contested domain names in bad faith.
7. Decision
In the result, the Panel, having found that the domain names registered by the Respondent are confusingly similar to the trademarks in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of any of the domain names, and that the domain names have been registered and are being used in bad faith, the Complaint succeeds.
Accordingly, the Panel directs that the registrations of the domain names , , and be transferred to the Complainant.
David H. Tatham
Sole Panelist
Dated: September 16, 2001
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