WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
E, Inc. v. Ult. Search Inc.
Case No. D2001-1319
1. The Parties
The Complainant is E, Inc., a New York corporation with its principal place of business at Santa Monica, California, U.S.A. The Complainant is represented by Mr. Rollin A. Ransom of Sidley, Austin, Brown & Wood, Attorneys of Los Angeles, California, U.S.A.
The Respondent is Ult. Search, Inc. of Hong Kong, S.A.R., China. The Respondent is represented by Dr. John B. Berryhill, Attorney, of Philadelphia, Pennsylvania, U.S.A. The Respondent was shown in a WHOIS database as "DNS Support." The Respondent claims that this information was due to Registrar error and that its true identity is as stated above.
2. The Domain Name and Registrar
The domain name at issue is . The domain name is registered with Computer Data Networks (trading as ). The name was registered to the Respondent in August 2001. It had previously been registered to the Complainant, which had allowed registration to lapse in May 2001.
3. Procedural History
The Complaint submitted by E, Inc. was received on November 2, 2001, (electronic version) and November 6, 2001, (hard copy) by the World Intellectual Property Organization Arbitration and Mediation Center ("WIPO Center").
On November 9, 2001, a request for Registrar verification was transmitted by the WIPO Center to the Registrar, requesting it to:
- Confirm that a copy of the Complaint had been sent to it by the Complainant as requested by WIPO Supplemental Rules for Uniform Dispute Resolution Policy ("Supplemental Rules"), paragraph 4(b).
- Confirm that the domain name at issue is registered with the Registrar.
- Confirm that the person identified as the Respondent is the current registrant of the domain name.
- Provide full contact details, i.e., postal address(es), telephone number(s), facsimile number(s), email address(es), available in the Registrar�s WHOIS database for the registrant of the disputed domain name, the technical contact, the administrative contact and the building contact for the domain name.
- Confirm that the Uniform Domain Dispute Resolution Policy ("UDRP") is in effect.
- Indicate the current status of the domain name.
By email dated November 19, 2001, the Registrar advised WIPO Center as follows:
- It had received a copy of the Complaint from the Complainant.
- It is the Registrar of the domain name registration .
- DNS Support (user name, ultsearch) of GPO Box 7862, Hong Kong is shown as the "current registrant" of the domain name and is also the administrative, technical and billing contact.
- The UDRP applies to the registration.
- The domain name registration is currently �active�.
- The Registrar has currently incorporated in its agreements the policy for Uniform Domain Name Dispute Resolution adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") (hereinafter simply the "Policy").
- The advice from the Registrar that the domain name in question is still �active� indicates the Respondent has not requested that the domain name at issue be deleted from the domain name database. The Respondent has not sought to terminate the agreement with the Registrar. Accordingly, the Respondent is bound by the provisions of the Policy. The Respondent has not challenged the jurisdiction of the Panel.
- Having verified that the Complaint satisfied the formal requirements of the Policy and the Rules for Uniform Domain Name Resolution Policy ("Rules"), the WIPO Center on November 21, 2001, transmitted by post-courier and by email a Notification of the Complaint and Commencement of Administrative Proceedings to the Respondent. A copy of the Complaint was also emailed to the Registrar and ICANN.
- The Respondent was advised that a Response to the Complaint was required within 20 calendar days. The Respondent was also advised that any Response should be communicated, in accordance with the Rules, by four sets of hard copy and by email.
- A Response was received by the WIPO Center from the Respondent on December 11, 2001, (electronic) and December 14, 2001 (hard copy). Although the Complainant had requested a single Panelist, the Respondent requested a three-person panel.
- WIPO Center invited the Honorable Sir Ian Barker QC of Auckland, New Zealand to serve as Presiding Panelist in the case. It invited Mr. Dennis A. Foster of Washington, DC, U.S.A, and the Honourable R. Glen Ayers of San Antonio, Texas, U.S.A. to be Panelists. It transmitted to each of them a Statement of Acceptance and requested a declaration of impartiality and independence.
- All Panelists duly advised acceptance and forwarded to the WIPO Center an executed declaration of impartiality and independence. The Panel finds that the Administrative Panel was properly constituted in accordance with the Rules and the Supplemental Rules. Both parties have paid to WIPO Center the appropriate fees.
- On January 17, 2002, WIPO Center forwarded to the Panel by courier the relevant submissions and the record. In terms of Rule 55(b), in the absence of exceptional circumstances, the Panel is required to forward its decision by February 1, 2002.
- The Panel has independently determined and agrees with the assessment of WIPO Center that the Complaint meets the formal requirements of the Rules and the Supplemental Rules.
4. Factual Background
Complainant has since 1966, published printed guides to assist automotive buyers to make informed decisions respecting the purchase of new and used vehicles. These guides have continuously been published under the name "Edmunds." Since 1994, the Complainant has posted vehicle data from its printed guides on to the Internet, to which consumers have recourse at no cost. The information includes vehicle pricing data, technical and performance specifications, automotive and reviews and other material relevant to car buyers and enthusiasts. Its website averages 2.8 million visitors per month with each visit averaging 20 minutes. The Complainant has received numerous tributes in the press as a provider of accurate and impartial consumer information on the automotive industry.
Complainant owns U.S. federal trademark registration for the mark EDMUND�S for "magazine and a series of non-fiction books featuring vehicle pricing information" and for "information services, namely, providing vehicle pricing information by telephone and by means of on-line communications network." The registration number of the trademark is No. 2106713. The EDMUND�S mark has been used ever since 1966. The Complainant also owns the domain name .
In May 2001, the Complainant failed to renew the registration for the domain name . The Respondent registered this domain name in August 2001. The Complainant asserted that its failure to re-register the name was �inadvertent�, but supplied no supporting material.
The Respondent�s website for the name included links to numerous categories of business including "autos." This page in turn generates links to websites of competitors of the Complainant. Respondent claims that it "parked" the domain name to resolve to a default page which provided a variety of general interest hyperlinks corresponding to various categories. This default parking page is utilized by the Respondent in connection with various domain names under development and use of such a parking page is common practice. Clicking on any of the links generates a series of search results corresponding to the link clicked by the visitor. Respondent claims that it has now removed the automotive category of links from the parking page but that the original presence of this category of links was because the Respondent utilizes the same generic page of links with names under development.
5. Parties� Contentions
Complainant:
The domain name is confusingly similar to the Complainant�s trademark EDMUND�S and to its common law trademark as found in its domain name . Courts and WIPO panelists have recognized as confusingly similar the use of terms spelt only slightly differently than well-established marks. For example a Court decision, John Walker and Sons v. Bethea, 305F.Supp. 1302 (D.S.C 1969). In that case, the trademark was Johnnie Walker and the defendant used the name Johnny Walker for a motel. Similarly in NetWizards Inc. v. Spectrum Enters, (WIPO Case No. D2000-1768), the Panel held that the difference between the domain name and the trademark �netwizards� was de minimis and so immaterial as not to preclude any confusion occurring. Accordingly, the Respondent�s omission of the �s� from the domain name is of no consequence in assessing the similarity of the marks.
Respondent has been given no right by the Complainant to use the disputed domain name nor has it any business or trademark registration to that end. Its use of the domain name does not constitute a legitimate commercial or fair use of this name. It is not used in connection with a bona fide offering of goods or services. The Respondent is engaging in a business that effectively competes with the Complainant by the linkage to the sites of competitors. Complainant relies on Scholastic Inc. v. Software Solutions Inc, (WIPO Case No.D2000-1629), where the Panelist said:
"Where someone in the same or similar field as the Complainant would not have chosen the domain name unless seeking to create the impression that there was some association with the Complainant there can be no rights or legitimate interests in respect of the domain name."
Respondent has registered and is using the domain name in bad faith. A customer unsure about the domain name, would often guess the domain name was also the company�s name (see Panavision International LP Toeppen, 141F.3d 1316, 1327 (9th Cir. 1998). Respondent�s bad faith is shown by its lack of any right in the domain name at issue: moreover its website directed consumers to competitors. The "Edmund�s" name and mark are highly distinctive in the automotive industry and entitled to the strongest protection. Registration of a name similar and identical to a highly distinctive mark is evidence of bad faith because the distinctive nature of the mark reduces or eliminates any claim that the Registrant�s infringement was innocent (see Reuters Limited v. Global Net 2000 Inc. WIPO Case No. D2000-0441).
The Panel can infer that the Respondent had actual knowledge of the Complainant�s prior rights at the time of its registration because:
(a) the Complainant had registered the disputed domain name some five years prior to the Respondent�s registration; and
(b) the trademark "Edmund�s" and the domain name are highly distinctive and famous. See, for example, an article in the Wall Street Journal, which characterised Edmund�s as a "brand name car buyers trust."
(c) alternatively, the Respondent must have had constructive knowledge of the Complainant�s trademark rights, even though the Respondent was resident in Hong Kong. Put another way, would a Respondent who was deemed to have been aware of the Complainant�s trademark rights, have adopted a domain name previously registered to the Complainant which was confusingly similar to the Complainant�s marks.
Respondent:
The disputed domain name is neither identical to nor confusingly similar to the Complainant�s mark. The name "Edmund" is a common first name and a common surname in the English language. The Complainant does not show any basis for asserting that a consumer in any particular jurisdiction would assume the term to be anything but a common name. For example, "Lloyd" is a common first name and surname, yet the commercial entity known as Lloyds would immediately be associated with the well-known English insurer.
To determine whether the domain name is confusingly similar to a mark, requires some reflection on whether the term, a priori, would be considered to be the Complainant�s mark rather than a common name. Other marks registered in the United States use the word "Edmund", such as Edmund K for a clothing manufacturer. Edmund Scientific Company and the Edmund Optics Company are well-known vendors of scientific and optical goods. Although the Complainant�s reputation for providing automotive information is not disputed, that reputation has not conferred on it a monopoly to the name "Edmund" and all variations thereof.
The policy does not require a legitimate interest to be a trademark interest, but may include "equitable interests", such as "a reliance interest in preparations to use the domain name" or "other interests recognisable at law or equity." The examples cited in the policy in paragraph 4(c) are not limiting and but examples of a variety of legal and equitable interests that may be established.
If equitable interests are relevant, the Respondent is entitled to rely on the behaviour of the Complainant in abandoning its previous registration of the domain name - it has not provided any evidence surrounding the "inadvertent" failure to reregister, despite expected reminders from the Registrar.
The Complainant has in the past engaged in taking proceedings under the Policy against others who had registered variations of its mark as domain names, (e.g. WIPO Case Nos. D2001-0928 and D2001-0937). These cases are readily distinguishable in that they showed a clear pattern of registration of domain names with no independent primary significance as common names and were clearly targeting the Complainant�s goodwill. These cases indicate that the Complainant there exercised the vigilance that it should have done on this occasion. Respondent cites a NAF decision (No. 98441) that involved lapse of a domain name which identically corresponded to a registered mark but which was subsequently reregistered by a party in Korea. There is a register of recently lapsed domain names maintained by the present Registrar.
The Respondent has shown demonstrable preparations to use the domain name. NAF cases show that even perfunctory preparations have been held to suffice. Respondent is a well-known provider of targeted key-word advertising services. It has registered a portfolio of domain names incorporating common terms, generic terms, short terms and useful phrases. Its domain names are employed in conjunction with an advertising subscription database operated by an advertising consolidator on the basis of correspondence between terms in the domain names and search terms for which advertisers have paid subscriptions on a performance basis.
The Respondent points to other WIPO proceedings in which it has been Respondent, including WIPO Case Nos. D2000-1840, D2001-0764 in which its legitimate business was upheld in those decisions.
More recently the Respondent sought to develop further advertising opportunities based on targeted opt-in email solicitations. It has collected a portfolio of domain names based on common names, surnames, initials and the like in order to provide advertising-free email services. To that end it has maintained a large collection of common names and surnames including and . The domain name is yet another common name variant of domain names which may be desirable for acquiring for email use by people named Edward, Eddie, Ed or Edmund.
The Respondent denies the constructive notice argument relative to bad faith registration. U.S. trademark law does not extend to Hong Kong. The Complainant has not shown that it has any operations there, nor has it shown actual knowledge by the Respondent of the domain name at the time of registration. Respondent did not possess any reckless intent. It is clear that the Respondent was intending to develop a collection of domain names centered around Ed or Edmund.
As to any bad faith inference to be drawn from the Respondent�s initial parking of the domain name, the Respondent has indicated that this was part of its usual procedure for parking newly-registered names and that, since alerted to the Complainant�s concerns, remedial action has been taken.
The Respondent�s removal of the automotive category of links from its undeveloped domain name page is not evidence of bad faith. On the contrary, it is a voluntary addressing of the Complainant�s objection. This being an equitable proceeding, the primary fault lies solely with the Complainant. The actual use or intent of a domain by a subsequent party is irrelevant in the Complainant�s purpose in bringing this suit. The Complainant seeks to make much of the Respondent�s ignorance of its trademark and its unintentional use of automotive links in a collection of general-interest links on a web page employed for parking of domains.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to:
"decide a Complaint on the basis of the statements and documents submitted in accordance with the policy, these rules and any rules and principles of law that it deems applicable."
The burden for the Complainant, under paragraph 4(a) of the ICANN Policy, is to show:
- That the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
- That the Respondent has no legitimate rights or interests in respect of the domain name; and
- The domain name has been registered and used in bad faith.
Similarity
In the judgment of the Panel, the disputed domain name is confusingly similar to the Complainant�s mark. The cases cited by the Complainant indicate that minor alterations to the wording of a mark are confusingly similar, particularly when the mark is well-known. The decisions were summarized by the Panel in the Scholastic decision (cit. supra) thus:
"Prior Panel decisions have determined that the addition of minor elements such as an �e� before a trademark, or �s� following the trademark have not altered the determination that the domain name adopted is identical or confusingly similar to the trademark in which the complainant has rights."
The Net Wizards decision (cit. supra) is also pertinent. There the Panel found confusing similarity where the contested name was �� and the mark �Net Wizards�. The Panel considered that the difference between the singular form in the name and the plural form in the mark would not be adequate to avoid confusion by users of the Internet. The same situation applies in this case. The Respondent�s arguments that Edmund is a common name are irrelevant in the context of the Complainant�s registered mark. The first criterion is therefore established.
Legitimacy
The second criterion is more difficult. The Respondent raises an allegation that equitable doctrines prevail under the Policy and that, because the Complainant was dilatory in allowing registration to lapse, it has no equity and that relief should be denied to it. The Panel cannot accept this submission. Although the concept of �rights� under the second criterion in the Policy may include some kind of equitable right conferred on a Respondent by a Complainant, there is no room for general equitable doctrines under the Policy such as would be possessed by Courts in common law jurisdictions. These doctrines, if applicable, could include, for example, laches (which would operate against a Complainant tardy in asserting its rights after it had known of an offending domain name) or �unclean hands� by a Complainant.
WIPO decisions have steadfastly maintained that the laws of any particular country do not apply to the dispute. The sole lodestar for a Panel must be the Policy. This Panel cannot see in the Policy any justification for denying the Complaint on the equitable grounds suggested by the Respondent. The fact that the name was free when registration was taken by the Respondent must be a factor that weighs in favour of the Respondent. For a less sophisticated Respondent, this factor might assist in showing good faith at the time of registration. In the NAF decision cited by the Respondent, the Panel there held that prior registration does not help a Complainant prove its case, although it might be able to show that a Respondent had no rights in the name and acted in bad faith.
However, as the cases under the Policy involving this Respondent show, this Respondent is not unsophisticated and is well aware of its rights. It is clear that the Complainant gave the Respondent no rights in respect of the name. Nor is there any evidence of Respondent�s using the domain name as a business name or of any �legitimate, non-commercial or fair� use of the name.
The Respondent�s main defence is that it sought to obtain the domain name to add to its collection of names relating to the name "Edward" or derivatives thereof. No evidence by way of affidavit was filed to support this contention: the linkage to competitors of the Complainant on the park site indicates to the contrary. In fact, the Respondent as a "well-known provider of targeted keyword advertising services" derived income from this operation. The Panel infers that the Respondent was aware of the Complainant�s well-known business and its mark and intended to exploit the mark.
The Panel cannot find that the Respondent can come within any of the criteria covered by paragraph 4(c) of the Policy which allow a Respondent in some circumstances to show that it has legitimate interests in a domain name. It considers the second criterion proved.
Bad Faith
The Respondent is a clearly sophisticated user of the Internet and the domain name system. Although based in Hong Kong, it clearly knows its rights, as its other WIPO cases have shown. The Panel infers that, at the time of registration of the name, the Respondent would have heard of the Complainant, which has a large reputation in the field of providing impartial advice concerning automotive products. It could well have known by the fact of the lapse of the name that there was a trademark involved. A search of the United States Trademark Register on-line would not have been difficult for a sophisticated operator in the domain name area, such as the Respondent.
In some WIPO decisions, the Panel has been unable to infer that the Respondent in country "A" knew of the existence of the Complainant and its mark registered in country "B", particularly when the Complainant had no presence in country "A." Two examples are: VZ Vermögens Zentrum AG v. A (WIPO Case No. D2000-0527) and KCTS Television Inc. v. Get-on-the-Web Ltd. (WIPO Case No. D2001-0154). Such is not the case here, given the Respondent�s �parking� of the domain name on to a site which gave entry to a site advertising competitors of the Complainant. The subsequent removal of that linkage is immaterial in deciding the inference to be taken from Respondent�s conduct right after registration. As was pointed out by the Panelist in the Net Wizard case (supra), registration and use of a domain name to redirect Internet users to websites of competing organizations constitutes bad faith registration and use under the Policy. The Complainant�s failure to renew its registration of the domain name might have compelled a different result had the Respondent not used the domain name to redirect Internet users to competitors of the Complainant.
The claim for entitlement to continued use of the domain name on the rather speculative basis that it will attract persons with the surname or first name of Edmund is not indicative of continued good faith. Rather the inference from the facts is that the Respondent is in bad faith under paragraph 4(b)(iv) of the Policy and is using the Complainant�s mark to attract Internet business for commercial gain. The third criterion is proved.
7. Decision
For the foregoing reasons, the Panel decides:
(a) That the domain name registered by the Respondent is confusingly similar to the trademark to which the Complainant has rights;
(b) That the Respondent has no rights or legitimate interests in respect of the domain name; and
(c) The Respondent�s domain name has been registered and is being used in bad faith.
Accordingly, pursuant to paragraph 4(i) of the Policy, the Panel requires that the registration of the domain name be transferred to the Complainant.
Hon. Sir Ian Barker, QC
Presiding Panelist
Dennis A. Foster
Panelist
Hon. R. Glen Ayers
Panelist
Dated: February 1, 2002
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