WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Kelley Blue Book Company, Inc. v. Michailov A.S.
Case No. D2002 - 0328
1. The Parties
The Complainant is Kelley Blue Book Company, Inc. whose address is 5 Oldfield Irvine, California 92618. The Complainant is represented by John P. Rynkiewicz, of Kaye Scholer LLP whose address is 901 Fiftheenth Street, N.W, Suite 1100, Washington D.C., United States of America.
The Respondent is Michailov A.S. whose address is Glavpochtamt, d/v Michailov Andrey Sergeevich, 101000 Moscow, Russia. The Respondent has no authorized representative for this proceeding.
2. The Domain Name And Registrar
The domain name in dispute ("Domain Name") is .
The Registrar with which the Domain Name is registered is BulkR, Inc of 10 East Baltimore Street, Suite 1500, Baltimore, Maryland 21202, United States of America.
3. Procedural History
(a) Filing and Procedure
The Complaint was filed in electronic format on April 5, 2002, and hard copies were filed on April 10, 2002. On April 11, 2002, the WIPO Arbitration and Mediation Center (the "Center") transmitted acknowledgment of receipt of Complaint. On April 12, 2002, the Center transmitted a request for register verification to BulkR Inc, in connection with this case.
On April 16, 2002, the Center transmitted a clarification email to Mr. Rynkiewicz, as representative for the Complainant. The clarification related to whether the Complainant had intended that 'www' be included in the Domain Name. On April 16, 2002, Mr. Rynkiewicz responded that it was intended that "www" be included in the Domain Name. The Center via electronic format on April 16, 2002, acknowledged the reply and proceeded with the Administrative Proceeding.
On April 17, 2002, the Center verified the Complaint satisfied the requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Resolution Policy (the "Rules") and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution (the "Supplemental Rules").
On April 17, 2002, the Center formally commenced this proceeding and sought to notify the Respondent that its Response would be due by May 7, 2002. The Center notified the Respondent of default on May 8, 2002.
On May 31, 2002, the Center notified the parties that an Administrative Panel had been appointed consisting of a single member: Professor Michael Charles Pryles, who had submitted a Statement of Acceptance and Declaration of Impartiality and Independence.
(b) Due Process
Where, as in this case, a Respondent does not submit a Response and the file does not contain any communication from the Respondent, the rules of due process require the Panel to verify, to the extent possible, that the Respondent is aware of the present proceedings. The panel is satisfied, on the basis of the file documents, that this is the case.
A hard copy of the Complaint was sent by the Center to the Respondent's address by courier and an electronic version was sent via email. The Center has discharged its responsibility under paragraph 2(a) of the Rules which provide that "when forwarding a complaint to the Respondent, it shall be the Provider's [the Center] responsibility to employ reasonably available means calculated to achieve actual notice to [the] Respondent".
4. Factual Background
The Complainant
(a) The Registered Trademark
The Complainant owns the registered trademark and service mark "kelley blue book" ("Registered Mark") in the United States of America. The Registered Mark was first registered with the United States Patent and Trademark Office on December 9, 1980, for a term of 20 years which was renewed for a further term of 10 years on December 9, 2000.
The Complainant has used the Registered Mark in connection with a variety of automotive related valuation goods and services since 1926. The Complaint states that the "[Registered Mark] maintains some of the strongest brand equity and name recognition in the world". Included in the suite of products and services offered by the Complainant is a website: . The Complainant contends that its website is the most visited "automotive" website on the Internet. Although, it should be noted, no evidence is provided in the Complaint to verify this claim.
Further, it is stated in the Complaint that the Complainant's website attracts over four million unique visitors each month, the greatest number of in market new and used car shoppers and over 20 million pricing reports on new and used vehicles every month. Although, once again, no evidence is provided by the Complainant to verify these claims. The Complainant has not licensed the Respondent to use the Registered Mark and the Respondent does not have any relationship with the Complainant that would entitle it to use the Registered Mark.
(b) Factual background
The Complainant unsuccessfully sought to contact the previous registrant of the Domain Name on several occasions. On November 14, 2000, December 6, 2000, and September 25, 2001, the Complainant sent email letters to the previous owner of the Domain Name as identified in the BulkR 'WhoIs' databases.
The Complainant advised the previous registrant of the Domain Name, in the above correspondence, that it viewed the registration of the Domain Name as an attempt to trap Internet users who had inadvertently entered "www" prior to the substantive part of the Complainant's domain name and had misspelled 'kelley' with the inadvertent omission of the letter 'e'.
The Complainant then advised the Registrar that the contact information for the previous registrant was false and that the address provided in Russia did not exist. The Registrar contacted the previous registrant directly via email. Shortly thereafter, the previous registrant transferred ownership of the Domain Name to the current registrant, the Respondent herein. The Complainant alleges that the previous registrant and the current registrant are related entities and are engaged in a scheme to sell diverted Internet traffic intended for the Complainant's website.
The Complaint sent a demand letter to the Respondent on March 5, 2002, after becoming aware that the Domain Name had been linked to a competitor's website ("Car-Prices-USA"). The Complainant also advised the competitor directly of the nature in which 'cyber traffic' had been diverted from the Complainant's website. The competitor then blocked such internet traffic emanating from the Domain Name. The Complainant alleges that on the next day, the Domain Name was listed for sale. While the Complaint exhibits the record of sale on the Domain Name, no evidence is provided in the Complaint of communications with the Complainant's competitor or indeed evidence of diversion of internet traffic to a competitor. The Panel would have been assisted if a document evidencing the diversion of internet traffic to the competitor's website had been exhibited to the Complaint.
The Respondent
According to Bulkr and Network Solutions' WhoIs database, the Respondent in this administrative proceeding is Michaillov AS. The Respondent has not filed a response.
5. Parties� Contentions
Domain Name and Registered Trade Mark Confusingly Similar (paragraph 4(a)(i) of the Policy)
The Complainant contends that the Domain Name is virtually identical or confusingly similar to its Registered Mark. The Complainant submits that the literal differences between its Registered Mark and the Domain Name, namely the misspelling of "kelley" and the addition of "www" are insufficient to avoid confusion that might arise. The Complainant refers to previous Administrative Panel decisions in General Electric Company v Fisher Zviele, a/k/a Zviele Fisher, WIPO Case No. D2000-0377 (July 15, 2000); America Media Operatoins, Inc. v Erik Simons, Case No, AF-0134 (""); World Wrestling Federation Entertainment, Inc v Matthew Bassetts, WIPO Case No. D2000-0256 ( and ); and InfoS, Inc. v Registrar Administrator Lew Blanck, WIPO Case No. D2000-0069 ().
Further, the Complainant submits that the inclusion of a ".com" suffix to the Registered Mark, as reflected in the Domain Name, does not distinguish the Domain Name in any significant way from the Complainant's Registered Mark.
The Complainant refers the Panel to section 43(a) of the Lanham Act 15 U.S.C. 1125(a), which prohibits the use of "any false designation of origin" by any person that is 'likely to cause confusion, cause mistake or to deceive as to the affiliation, connection or association or such person with another person or as to origin, sponsorship or approval of his or her goods, services, or commercial activities by another person.' This reference arises from the law of the United States of America.
In addition, the Complainant refers the Panel to another United States Act of Parliament, section 43(c) of the Federal Trademark Delusion Act and several decisions of United States Courts which emphasise the protection afforded owners of registered trademarks.
Legitimate Interest or Right in the Domain Name (paragraph 4(a)(ii) of the Policy)
The Complainant contends that the Respondent has no rights or legitimate interests in the Domain Name or the Registered Mark. The Respondent is not a licensee of the Complainant.
The Complainant contends that the Respondent has not made any non-commercial or fair use of the Domain Name. In support of its claims the Complainant refers to the decision in Telstra Corp Ltd v Nuclear Marshmallows, WIPO Case No. D2000-0003 (February 18, 2000) which states: "a Complainant's distinctive mark is not one traders would legitimately choose unless seeking to create an impression of association with the Complainant." The Complainant, therefore, submits that the Respondent had no legitimate interest in the Domain Name or the Registered Mark and sought to create an impression of an association with the Complainant.
Registration in Bad Faith (paragraph 4(a)(iii) of the Policy)
The Complainant alleges that the Respondent registered the Domain Name with an intent to attract for commercial gain Internet users to its website by creating a likelihood of confusion with the Complainant's Registered Mark. The Complainant contends that consumers will likely confuse an affiliation between the Complainant and the Domain Name. Consumers may erroneously conclude that the Complainant is the source, sponsor or endorsee of the Domain Name.
The Complainant once again refers the Panel to the decision in Telstra and contends that the Complainant's wide reputation in the name "Telstra" left no other possible interpretation of the Respondent's registration of the domain name other than that of bad faith. 'It is not possible to conceive of a plausible circumstance in which the Respondent could legitimately use the domain name '' It is also not possible to conceive of a plausible situation in which the Respondent would have been unaware of this fact at the time of registration'.
Similarly, the Complainant contends that given the wide appeal of the Registered Mark coupled with the Respondent's continued "cyber squatting" activities as reflected in previous panel decisions involving the Respondent, the Complainant submits there is no other conceivable interpretation of the Respondent's bad faith registration of the Domain Name.
The Respondent has not filed a response.
6. Discussion and Findings
General
Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following:
- The domain names are identical or confusingly similar to the trade marks; and
- The respondent has no right or legitimate interest in respect of the domain names; and
- The domain names have been registered and are being used in bad faith.
Paragraph 4(b) of the Policy sets out four illustrative circumstances that, if proved, constitute evidence of bad faith as required by paragraph 4(a)(iii) referred to above.
Paragraph 4(c) of the Policy sets out three illustrative circumstances that, if proved, constitute evidence of a right or legitimate interest as described in paragraph 4(a)(ii) referred to above.
Identical or Confusingly Similar Domain Name
The Domain Name in issue is . The trademark registered by the Complainant is . There are three obvious literal differences between the Domain Name and the Registered Mark:
(a) "www" appears before the Domain Name;
(b) "kelly" is spelt without an "e" in the Domain Name; and
(c) a ".com" suffix appears at the end of the Domain Name.
In relation to (a), the truncation "www" is synonymous with the phrase "world wide web". Given the primary purpose of any given domain name is the dissemination of information and communications through a web-site the Panel finds the addition of the truncation "www" will likely cause confusion. This is especially the case as a person is required to type "www" prior to any domain name in order to peruse the web-site. The Panel draws on previous panel decisions in: General Electric Company v Fisher Zviele, a/k/a Zviele Fisher, WIPO Case No. D2000-0377 (July 15, 2000); America Media Operatoins, Inc. v Erik Simons, Case No, AF-0134 (); World Wrestling Federation Entertainment, Inc v Matthew Bassetts, WIPO Case No. D2000-0256 ( and ); and InfoS, Inc. v Registrar Administrator Lew Blanck, WIPO Case No. D2000-0069 (), as further evidence of a body of opinion to this effect.
In relation to (b), the omission of the second "e" in "kelley" does not serve to distinguish the phonetic pronunciation of the Domain Name from the Registered Mark nor does it make them readily distinct in a visual sense. The Panel finds that the Domain Name is confusingly similar to the Registered Mark because it is phonetically identical and visually similar.
In relation to (c), the addition of a ".com" suffix has been held in numerous panel decisions to be insubstantial and will not preclude a finding that a domain name and a trademark are confusingly similar when the remainder of the domain name is identical or confusingly similar to the trademark.
The Panel, therefore, finds that the Domain Name and the Registered Mark are confusingly similar.
No Right or Legitimate Interest
The Respondent has not provided evidence of any interest as specified in paragraph 4(c) of the Policy, or of any other circumstances giving rise to a right to or legitimate interest in the Domain Name. In light of (i) the fact that the Complainant has not licensed or otherwise permitted the Respondent to use its Registered Mark or to apply for or use any domain name incorporating the Registered Mark, and (ii) the fact that the phrase 'kelleybluebook" is rather distinctive and unique, and as such is not one a person would legitimately choose unless seeking to create an impression of an association with the Complainant, the Panel finds that the Respondent has no rights or legitimate interest in the Domain Name.
Domain Name Registered and used in Bad Faith
In order to make a finding that paragraph 4(c) of the Policy is satisfied the Panel must find that the Respondent registered and used the Domain Name in bad faith. There are two limbs to this test.
(a) Registration of Domain Name in Bad Faith
The Complainant directs the Panel to a pattern of conduct by the Respondent known as "cyber-squating". There are several previous decisions of panels involving the Respondent for domain names similarly modeled on registered marks. While this evidence is not determinative of a registration in bad faith, the Panel is persuaded that the Respondent has engaged in similar conduct on previous occasions.
When the Panel considers that the Domain Name and Registered Mark are confusingly similar and it appears to the Panel that the similarities are designed to capitalize on typographical errors and more general errors of erroneous assumptions by web users that the Domain Name and the Complainant are affiliated, the Panel finds that the Domain Name was registered in bad faith.
(b) Use of the Domain Name in Bad Faith
The Panel finds that the offer of sale of the Domain Name by the Respondent, which is exhibited to the Complainant, is an example of a use incompatible with a genuine or legitimate use by the Respondent.
The Complaint contains evidence of a series of correspondence emanating from the Complainant to the Respondent complaining that the Domain Name was being used for an illegitimate purpose, namely diversion of Internet traffic to competitors of the Complainant and the offering of pornographic material and gambling services. It appears that the Respondent never responded to the correspondence and further appeared to supply the Registrar with contact details which may have been false. The Panel finds that the Domain Name is not part of a legitimate business offered by the Respondent.
Therefore, the Panel finds that the Domain Name was registered and used in bad faith by the Respondent.
7. Decision
The Administrative Panel decides that the Complainant has proven each of the three elements in paragraph 4(a) of the Policy. Accordingly, the Administrative Panel requires that the Domain Name be transferred to the Complainant.
Professor Michael Charles Pryles
Sole Panelist
Dated: June 13, 2002
Full & Egal Universal Law Academy