WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
E, Inc. v. WWWEDMUNDS.com and DMUNDS.com
Case No. D2001-0937
1. The Parties
The Complainant is E, Inc., 2401 Colorado Avenue, Suite 250, Santa Monica, CA 90404-3551.
The Respondents are WWWEDMUNDS.COM, 62 Cleghorn Street, Belize City, Belize and DMUNDS.COM, 62 Cleghorn Street, Belize City, Belize.
2. The Domain Names and Registrar
The domain names at issue are and . The domain name registrar is BulkR.
3. Procedural History
Complainant filed its Complaint with the World Intellectual Property Organization Arbitration and Mediation Center (the "Center") which was received by email on July 20, 2001, and in hard copy on the same day.
On July 23, 2001, the Center transmitted a request for register verification to BulkR in connection with this case.
On July 25, 2001, BulkR sent via email to the Center a verification response confirming that the Respondents are the registrants of the domain names in question as well as the administrative and technical contact.
On July 26, 2001, the Center verified that the Complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") and the Supplemental Rules for Uniform Domain Name Dispute Resolution (the "Supplemental Rules").
On July 26, 2001, the Center formally commenced this proceeding and notified Respondents that its response would be due by August 15, 2001. The notification was sent to the Respondents by courier, fax and by email. The first 16 pages of the fax were transmitted without problems. The last nine were not transmitted. WIPO was not contacted by the recipient to retransmit any part of the fax or to complete the fax transmission. The fax number for the recipient appears to be that of a law firm with the same address as that of the Respondents.
The Respondents filed no Response.
On August 16, 2001, the Center issued a Notification of Respondent Default. This was sent to the parties by email, and was successfully transmitted to the Respondent by fax to the fax number in the Respondents' registration with BulkR.
Complainant elected a one-member Panel. On August 22, 2001, after clearing for potential conflicts, the Center appointed Thomas H. Webster as the Panelist and set September 5, 2001, as the deadline for issuance of a decision.
Based on the above, the procedural requirements of the Policy, Rules and Supplemental Rules have been met.
4. Procedural and Factual Background
The following facts are taken from the Complaint and are generally accepted as true in the circumstances of this case given the absence of a Response:
"E, Inc. ("Edmunds") 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, Edmunds took advantage of the development of the Internet and posted the vehicle data from its printed guides in a gopher site. The following year, Edmunds became the first company to establish a site on the World Wide Web -- "www.e" -- 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. A true and correct copy of the home page from Edmunds' website is provided as Annex 5 to the Complaint.
The website is a central focus of Edmunds' business today -- the website averages 2.8 million visitors per month, with each visit lasting an average of twenty minutes. Edmunds has therefore established itself as one of the leading Internet-based sources of consumer automotive information. Indeed, Edmunds' reputation as a premier provider of such information has been widely recognized in both the industry and mainstream press�.
In addition to the e domain name (as well as the domain name ), Edmunds owns a federal trademark registration for the mark EDMUND'S, for "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" (United States Trademark Registration No. 2,106,713)."
5. Parties' Contentions
Complainant makes the following allegations in the Complaint.
A. Respondents� Relationship to One Another
Complainant maintains that these proceedings are properly brought against both Respondents based on the following:
"According to a search of the Whois database maintained by BulkR, www.bulkr/brwhois.phtml, the Respondents in this administrative proceeding are WWWEDMUNDS.COM and DMUNDS.COM. (A printout of the database search conducted on July 17, 2001, is provided as Annex 1 to this Complaint). On information and belief, WWWEDMUNDS.COM and DMUNDS.COM are in fact the same entity, and the subject domain names were registered by or on behalf of the same entity. The registrant's address and the administrative and technical contact's address, telephone number, and facsimile number are identical for both of the subject domain names. On information and belief, the subject domain names were registered by or on behalf of Offshore Professionals, which is the business located at the phone number that is provided in the Whois records for both of the domain names (501-2-31244). Finally, as discussed further below, both of the domain names at issue resolve to the same website, ."
B. Similarity of the Domain Name and Trademark
In respect of the domain name being identical or confusingly similar to a trademark or service mark in which the Complainant has rights, Complainant alleges that:
"In this classic case of typo-piracy, Respondent has registered two domain names -- wwwe and -- each of which is confusingly similar to Edmunds' name and famous EDMUND'S mark. The confusing similarity between the contested domain names and Edmunds' name and mark is apparent from simple comparison of each domain name with the letter string EDMUNDS. The first domain name, wwwe, is identical to Edmunds' mark and domain name, except that it includes the familiar "www" prefix that precedes the e domain name, albeit without the intervening period. The second domain name, , varies from Edmunds' mark and domain name by just one letter (i.e., by omitting the "e")."
C. Respondents� Rights and Legitimate Interests
Complainant contends that the Respondents have no rights or legitimate interests in the domain name on the basis of the following elements:
"Respondent does not have any trademark or intellectual property rights or legitimate interest in the domain names wwwe and . There is no indication that Respondent uses any of these variations as its legal or business name. Moreover, neither of these domain names resolves to a website that features these terms (or any similar term). On the contrary, as discussed in greater detail below, both of the domain names resolve to a website at , a search engine that can be used to locate websites that compete with and provide information similar to that available at e."
D. Bad Faith Registration and Use
Complainant claims that the domain name was registered and used in bad faith by the Respondents and relies on the following elements:
"Respondent has registered and used the contested domain names in bad faith. Courts have recognized that consumers expect to find a company on the Internet at a domain name address comprised of the company's name or mark. �. Respondent's registration of confusingly similar domain names could only have been intended to serve one end: to "capture" consumers looking for Edmunds' website who, through inadvertence or ignorance, misspell or mistype the intended domain name.
That Respondent acted in bad faith is confirmed by several undeniable facts. First, Respondent is making no use of and has no rights in any of the domain names at issue. 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. Second, Respondent does not maintain a website and any of the subject domain names; instead each of the domain names resolves to a search engine at . � This website maintains links to numerous automotive-related websites that compete with the services provided by Edmunds. � It is therefore apparent that Respondent's registration of the subject domain names is intended to capture users who inadvertently omit the period between "www" and , or users who inadvertently omit the letter "e" from the beginning of , and to misdirect those consumers to other websites. There is simply no other explanation that can account for Respondent's registration of two domain names so strikingly similar to .
Finally, the Edmunds 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. 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.""
6. Discussion and Findings
The burden for the Complainant under paragraph 4(a) of the Policy is to prove:
(i) That the domain names registered by the Respondents are identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) That the Respondents have no rights or legitimate interests in respect of the domain names; and
(iii) That the domain names have been registered and are being used in bad faith.
A. Procedural Issues
The threshold issue is whether the Complainant is entitled to bring these proceedings against both Respondents.
As noted above, neither of the Respondents has filed a response.
The main factors relied upon by the Complainant to treat the Respondent as one entity are the identical addresses, telephone number and facsimile number and the fact that the domains both resolve to the same domain "". Moreover, the Complainant alleges that the domain names are registered with the business of Offshore Professionals at the same address and contact numbers.
Generally, these factors are not sufficient to permit consolidation. However, in this case, the Panelist finds that they are sufficient based on the following factors.
First, the Respondents in this case appear to have given themselves names that do not indicate their corporate status. Indeed, there is no evidence that they exist as legal entities.
Second, when the Respondents were contacted, it was made clear that these proceedings were brought against them jointly. Despite the fact that they were notified of the proceedings � at what appears to be a professional office � the recipient did not respond and in particular did not state that there were two separate legal entities each holding a different domain name.
B. Similarity of the Domain Name and Trademark
Complainant has established its rights in the trademark EDMUND'S.
The domain name is clearly similar to the Complainant's trademark. The addition of "www" is immaterial as it is simply an indication of an Internet address and the deletion of the apostrophe is also immaterial in the context of Internet use. In short, this is a typical case of "typosquatting".
The domain name is varied by only one letter, but it is the first letter of the domain. Therefore, optically the name does not appear to be similar to that of the Complainant. Nor would sound similar to the domain name, at least to the English speaker. However, the similarity and confusion is intended to arise in the typing and not in the optical or aural aspects of the domain name. Therefore, this Panelist agrees that this is "typosquatting" and as such causes confusion between the domain names and the Complainant's trademarks. The Panelist agrees in particular with WIPO Case No. D2000-0587 Yahoo! Inc. and GeoCities v. Data Art Corp., DataArt Enterprises, Inc., Stonybrook Investments, Global Net 2000, Inc., Powerclick, Inc., and Yahoo Search, Inc.
Therefore, the Complainant has satisfied the first requirement.
C. Respondents� Rights and Legitimate Interests
The Complainant has established that its trademark has been registered in the United States and that it is well known. Such trademark registration was prior to the date on which the domain names were registered.
The Complainant does not appear to have licensed or otherwise authorized the Respondents to use its trademarks or to apply for any domain name incorporating the trademarks. Therefore prior to any notice of this dispute, the Respondents had not used the domain name in connection with any bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy.
Nor is there any evidence that the Respondents are commonly known by the domain name or are making a legitimate noncommercial or fair use of the domain name within the meaning of paragraph 4(c)(ii) or (iii) of the Policy. The simple use of the domain name as the name of the registering entity without explanation is not sufficient to establish that anyone has actually known the Respondents by these names.
The Respondents have not filed any response and have therefore failed to demonstrate that they have any rights or a legitimate interest in the domain names, pursuant to paragraph 4(c) of the Policy.
Therefore, the Panelist concludes on the basis of the evidence of the Complainant that the Respondents have no rights or legitimate interests in the domain names at issue and the Complainant has met the second requirement of the Policy.
D. Bad Faith Registration and Use
The Panelist is satisfied that EDMUND'S is a well-known trademark in the automotive sector. The fact that the Complainant's site has 2.8 million visitors per month attests to that fact.
Therefore, the circumstances indicate that, by registering as a domain name, the registrant was seeking to attract consumers who in fact were seeking to go to the Complainant's site.
Moreover, the fact that users are automatically redirected to another site indicates that the domain name is being used to redirect consumers. This is evidence of bad faith under paragraph 4(b)(iv) of the Policy.
The reasoning with respect to the domain name is similar, but not identical. The bad faith on registration of the domain name is not as obvious due to the lack of optical similarity. However, as the Complainant has pointed out, the "EDMUND'S" trademark is highly distinctive and no explanation has been proffered by the Respondents as to why this curious combination of letters would have been chosen other than to "typosquat". Therefore, this appears to be another instance of bad faith in the registration as well as in the use of the domain name as was found in similar circumstances in WIPO Case No. D2000-0441 Reuters Limited v Global Net 2000, Inc.
As a result, the Complainant has met the third requirement of the Policy.
7. Decision
For the foregoing reasons, the Panelist holds:
(a) that the domain names are confusingly similar to the EDMUND'S trademark in which the Complainant has rights; and
(b) that the Respondents have no rights or legitimate interests in respect of the domain names; and
(c) that the Respondents have registered and are using the domain names in bad faith.
Accordingly, pursuant to paragraph 4(i) of the Policy, the Panelist decides that the domain names and must be transferred to the Complainant.
Thomas H. Webster
Sole Panelist
Dated: August 31, 2001
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