WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
E, Inc. v. The Registrant of , Free Domains Parking, Andrey Vasiliev
Case No. D2006-0741
1. The Parties
The Complainant is E, Inc., Santa Monica, California, of United States of America, represented by Hitchcock Evert LLP, of the United States of America.
The Respondent is the Registrant of , Free Domains Parking, Andrey Vasiliev, Glavpochtamt, Moscow, of the Russian Federation.
2. The Domain Name and Registrar
The disputed domain name is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 13, 2006. On June 13, 2006, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On June 19, 2006, eNom transmitted by email to the Center its verification response confirming the contact details for the administrative and technical contact. On June�27,�2006, the Center transmitted by email a request to the registrar requesting confirmation of the identity of the registrant. On June 27, 2006, eNom responded to the Center by email advising that the registrant contact is unclear due to incomplete information displayed in the whois, and confirming that the information previously provided in its verification regarding the listed administrative and billing contact is correct. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 29, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was July�19,�2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 14, 2006.
The Center appointed Ms. Chiang Ling Li as the sole panelist in this matter on September�13,�2006. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The Complainant is a recognized leader in the automotive information industry and first published its Edmunds car buying guides in 1966, over forty years ago. Eleven years ago, in 1995, it launched its website www.e where car buyers and enthusiasts could obtain a large amount of technical, performance and sales information about cars. This website today serves over 12.3 million visitors a month.
In addition to the domain name (and the separate domain name ), the Complainant owns a United States trademark (United States trademark registration No. 2,106,713) consisting of the word “EDMUND’S” for magazines, non-fiction books and online information services featuring vehicle pricing information. It has used the EDMUND’S trademark in connection with its business since 1966. The Complainant’s website has been recognized by the Wall Street Journal as being famous in the automotive information industry.
The Respondent registered the domain name on February�14,�2000, (“Domain Name”). At the date of the Complaint, the Respondent was operating an active website using the Domain Name.
The Respondent has failed to file any response in the present proceedings.
5. Parties’ Contentions
A. Complainant
The Complainant’s submissions can be summarized as follows:
(a) Identical or Confusingly Similar
The Domain Name is virtually identical to the Complainant’s domain name as well as its business name or famous mark, “EDMUND’S”, differing only by the addition of a “o” between the letters “m” and “n” and the added letter does not significantly affect the appearance or pronunciation of the Domain Name.
(b) Rights or Legitimate Interests
The Respondent does not have any trademark or intellectual property rights or any other legitimate interest in the Domain Name. There is no indication that the Respondent uses this variation as its legal or business name. Moreover, there is no evidence to suggest that the Respondent ever used the Domain Name and/or a name closely corresponding to the EDMUND’S mark prior to the launch of “www.e” in 1995. The Respondent’s use of the disputed domain name is to improperly capitalize on the reputation and goodwill established by the Complainant.
(c) Registered and Used in Bad Faith
The Domain Name was registered and is being used in bad faith based on the following factors: (i) it is virtually identical to the trademark of the Complainant; (ii) it is a scheme to attract for commercial gain by diverting traffic through confusion; (iii) it is typosquatting; and (iv) it is using competitive material in the content of its website.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, in order to succeed, the Complainant must establish each of the following elements:
(i) The Domain Name is identical or confusingly similar to a trademark or service mark in which it has rights;
(ii) The Respondent has no rights or legitimate interest in respect of the Domain Name; and
(iii) The Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The first issue in this matter is whether the Domain Name is confusingly similar to the Complainant’s mark. There are two elements that must be satisfied to establish this: a) that the Complainant has rights in the particular mark or marks; and b) that the domain name in question is identical or confusingly similar to that mark.
The first element is readily established and independently verified by reference to the certified true and correct copy of the United States trademarks register. While the Panel notes that the trademark is in fact EDMUND’S (with an apostrophe) rather than simply EDMUNDS it also notes that punctuation is seldom included in domain names and in any event the Panel does not consider this omission to be material. The Panel is satisfied that the Complainant has rights in the mark EDMUND’S.
The Domain Name is not identical to, and differs from the mark EDMUND’S by the addition of the letter “o” in the domain name, and the omission of the apostrophe. However the Domain Name is a predictable misspelling of the domain name and neither the omission of the apostrophe nor the additional vowel significantly affects the appearance or pronunciation of it. This conduct is commonly referred to as “typosquatting” and creates a virtually identical and/or confusingly similar mark to the Complainant’s trademark (Humana Inc. v. Cayman Trademark Trust, WIPO Case No. D2006-0073).
The Panel therefore finds that the Complainant has satisfied the first requirement of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Respondent has failed to provide evidence of the type specifically detailed in paragraph 4(c) of the Policy which would prove it has a right or legitimate interest in the Domain Name. Because of this failure the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy if it can make a prima facie showing that Respondent does not have rights or legitimate interests in the domain name (Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
In the Panel’s opinion the Complainant has met this prima facie obligation by highlighting the apparent absence of evidence that the Respondent:
1. has any trademark or intellectual property rights or any other legitimate interest in the Domain Name;
2. uses this variation as its legal or business name; and/or
3. has ever used the Domain Name and/or a name closely corresponding to Edmunds mark prior to the launch of “www.e” in 1995.
The Domain Name seems to have no particular connection to the business of the Respondent since the website “www.” contains advertisements for car price quotes. The use of the name “Edmounds” does not seem to the Panel to be one that would be chosen by the Respondent except if it wanted to create in the mind of consumers a connection between its services and those of the Complainant. The Respondent’s use of the disputed Domain Name is arguably therefore to improperly capitalize on the reputation and goodwill established by the Complainant in its famous mark by creating confusion as to the source and sponsorship of that site and the products and services it offers (Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441).
In addition, typosquatting has been held to not constitute fair use and is the obverse of a legitimate noncommercial or fair use of a domain name (Microsoft Corporation v. Global Net 2000, Inc., WIPO Case No. D2000-0554).
The Panel therefore finds that the Complainant has met the requirement of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Having regard to the discussion above, the fact that the Respondent has not chosen to submit a response in this case is particularly relevant to the issue of whether the Respondent has registered and is using the Domain Name in bad faith. Paragraph Rule 14(b) of the Rules states that if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate. The inference to be drawn here seems to the Panel to be that the Respondent has no answer to those matters asserted by the Complainant.
The Domain Name redirects users to a site located at . This appears to be a car quote site targeted at an American audience (the Panel infers this from the fact it asks for a zip code, social security number and income in dollars for those looking to use its services and obtain a quote). Paragraph 4(b)(iv) of the Policy states that intentionally attempting to attract users to a website for commercial gain by creating a likelihood of confusion is evidence of the registration and use of a domain name in bad faith (Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455). The Panel concludes that the Respondent was in all likelihood aware of the Complainant’s trademark rights at the time of registration of the Domain Name since it has developed activities in the same field as the Complainant. The Respondent is therefore likely to gain financially from the confusion by deriving benefit from potential customers of the Complainant to its own website (i.e. those who wish to purchase a car and need a quote).
The Domain Name is confusingly similar to the Complainant’s trademark, except for the addition of the letter “o” and the omission of an apostrophe. This form of typosquatting is in itself evidence of bad faith (ESPN, Inc. v. XC2, WIPO Case No. D2005-0444).
Thus, for all the above-mentioned reasons, the Panel finds that the Complainant has met the requirement of paragraph 4(a)(iii) of the Policy.
7. Decision
For all of the above reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name be transferred to the Complainant.
Chiang Ling Li
Sole Panelist
Dated: September 25, 2006
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