WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
E, Inc. v. Digi Real Estate Foundation
Case No. D2006-1043
1. The Parties
The Complainant is E, Inc., Santa Monica, California, United States of America, represented by Hitchcock Evert LLP, United States of America.
The Respondent is Digi Real Estate Foundation, Panama City, Panama.
2. The Domain Name and Registrar
The disputed domain name is registered with eNom, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August�15,�2006, by e-mail and on August�17,�2006, in hard copy. On August�18,�2006, the Center transmitted by email to eNom, Inc. a request for registrar verification in connection with the domain name at issue. On August�18,�2006, eNom, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact information for Respondent. The Center also obtained the contact details for the administrative, billing, and technical contact by doing a whois lookup at . 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 August�21,�2006. In accordance with the Rules, paragraph 5(a), the due date for Response was September�10, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September�11,�2006.
The Center appointed Manoel J. Pereira dos Santos as the sole panelist in this matter on September�22,�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 trademark upon which the Complaint is based is EDMUND’s. According to the documentary evidence and contentions submitted, Complainant owns a United States Trademark Registration No. 2,106,713 issued October�21,�1997, 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”. The trademark has been used in the United States since 1966. Reference is made to Annex 8 of the Complaint.
According to the documentary evidence and contentions submitted, Complainant is one of the leaders in the automotive information industry and it first published its Edmunds car buying guides in 1966. In 1995 Complainant launched “www.e” website, which was the first automotive information website and is now of the leading online resource for automotive information. Reference is made to Annexes 4, 5, 6, 7 and 9 of the Complaint.
The disputed domain name was registered with eNom, Inc. on January�30,�2005.
5. Parties’ Contentions
A. Complainant
Complainant argues that the disputed domain name is confusingly similar to Complainant’s EDMUND’s trademark and domain name because the only difference is Respondent’s addition of an extra letter “s” directly adjacent to the letter “s” contained in Complainant’s name and mark.
Complainant further contends that Respondent does not have any trademark or intellectual property rights or any other legitimate interest in the domain name because (i) Respondent does not use that name as its legal or business name (ii) Respondent never used the disputed domain name or any similar name prior to Complainant’s launch of website in 1995, and (iii) Respondent’s sole purpose in selecting the disputed domain name is to improperly capitalize on the reputation and goodwill established by Complainant. As a result, Respondent’s registration and use of the domain name cannot constitute a “fair use”.
Finally, Complainant argues that Respondent has registered and used the disputed domain name in bad faith because (i) Respondent’s intent was to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s domain name and trademark, (ii) “typosquatting” is in and of itself evidence of bad faith, and (iii) Respondent has a history of repeatedly violating the UDRP.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Effect of the Default
The consensus view is that the respondent’s default does not automatically result in a decision in favor of the complainant and that the complainant must establish each of the three elements required by paragraph 4(a) of the Policy (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, para. 2.2). However, paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, a panel shall draw such inferences as it considers appropriate from a failure of a party to comply with a provision or requirement of the Rules.
This Panel finds that there are no exceptional circumstances for the failure of the Respondent to submit a Response. As a result, the Panel infers that the Respondent does not deny the facts asserted and contentions made by Complainant from these facts. Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441; LCIA (London Court of International Arbitration) v. Wellsbuck Corporation, WIPO Case No.�D2005-0084; Ross-Simons, Inc. v. Domain.Contact, WIPO Case No.�D2003-0994. Therefore, asserted facts that are not unreasonable will be taken as true and Respondent will be subject to the inferences that flow naturally from the information provided by the Complainants. Reuters Limited v. Global Net 2000, Inc., WIPO Case No.�D2000-0441; RX America, LLC. v. Matthew Smith, WIPO Case No.�D2005-0540.
The Panel will now review each of the three cumulative elements set forth in paragraph�4(a) of the Policy to determine whether Complainant has complied with such requirements.
B. Identical or Confusingly Similar
Complainant relies on previous WIPO UDRP decisions recognizing as “confusingly similar” and/or “virtually identical” the use of terms that are a slight variation from a registered mark. Humana, Inc. v. Cayman Trademark Trust, WIPO Case No.�D2006-0073 (finding that the repeated consonant “n” does not significantly affect the appearance or pronunciation of the domain name ); Nueberger Berman Inc. v. Alfred Jacobsen, WIPO Case No. D2000-0323 (finding that the slight difference in spelling between “newberger” and “neuberger” and their phonetic identity make the domain name confusingly similar to complainant’s name Neuberger Berman, Inc. and domain name ); Dow Jones & Company, Inc. v. John Zuccarini, WIPO Case No. D2000-0578 (finding that the domain names and are identical or confusingly similar to complainant’s trademark The Wall Street Journal); Reuters Limited v. Global Net 2000, Inc., supra (finding domain names , , , and confusingly similar to trademark Reuters because of their visual similarity).
This is clearly a “typosquatting” case where the disputed domain name is a slight misspelling of a registered trademark to divert internet traffic. In fact, the domain name comprises the Complainant’s trademark EDMUND’s with a single misspelling of an element of the mark: a double consonant “s” at the end. Also, the disputed domain name is virtually identical to Complainant’s domain name . As a result, this is an example of confusing similarity and/or virtual identity brought about through easily made typing errors made by an Internet user: rather than typing the word “s” to visit Complainant’s website, an Internet user could easily type a double “s” and be diverted to a different website.
The practice of “typosquatting” has been consistently regarded in previous UDRP decisions as creating domain names confusingly similar to the relevant mark. ACCOR v. Brigit Klostermann, WIPO Case No. D2005-0627 (finding that “typosquatting”, the practice of misspelling an element of the mark, has consistently been regarded as creating domain names confusingly similar to the relevant mark); Sharman License Holdings, Limited v. IcedIt.com, WIPO Decision No. D2004-0713 (finding the circumstances of “typosquatting” to constitute confusing similarity); Ross-Simons, Inc. v. Domain.Contact, supra (finding that disputed domain names are confusingly similar to the marks which they misspell).
In addition, a visual and phonetic comparison between the trademark EDMUND’s and the domain name shows a clear likelihood of confusion. In sum, the case also passes the text for confusing similarity found by the consensus view in WIPO Panel decisions (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph�1.2).
Therefore, the Panel finds that the requirement of paragraph 4(a)(i) of the Policy is met.
C. Rights or Legitimate Interests
Complainant relies on previous WIPO UDRP decisions to argue that intentional misspellings of third parties’ intellectual property (commonly known as “typosquatting”) does 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 (finding that respondent’s use of the disputed domain names with a single letter difference from a registered trademark is the obverse of a legitimate noncommercial or fair use of a domain name).
Complainant further argues that Respondent not only made the disputed domain name confusingly similar to the Complainant’s trademark and domain name, but also made the content of its website pages similar to Complainant’s website because both involve the dissemination of information regarding automobiles. The Panel agrees that the evidence demonstrates that Respondent is attempting to divert consumers from Complainant’s website by using a confusingly similar domain name and providing similar content.
The consensus view in the WIPO URDP Panel decisions has been that complainant is required to make out an initial prima facie case, respondent carrying the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph�2.1).
The Panel finds that the Complainant has done enough to establish a prima facie case. In fact, Respondent is not commonly known by the disputed domain name; the principal element of the disputed domain name is the Complainant’s name, trademark and domain name; and it is evident that Respondent is unfairly capitalizing on the reputation and goodwill established by Complainant. The Panel also concurs with the previous WIPO UDRP decisions holding that “typosquatting” is the obverse of a legitimate noncommercial or fair use of a domain name.
In sum, the Complainant has satisfied its burden of providing sufficient evidence to show that Respondent lacks rights to or legitimate interests in the disputed domain name, and the Respondent has failed to provide the Panel with any of the types of evidence set forth in paragraph 4(c) of the Policy from which the Panel might conclude that Respondent has any rights or legitimate interests in the disputed domain name. Berlitz Investment Corp. v. Stefan Tinculescu, WIPO Case No. D2003-0465.
In light of the foregoing, the Panel finds that the requirement of paragraph 4(a)(ii) of the Policy is met.
D. Registered and Used in Bad Faith
As Complainant contends, the act of “typosquatting” or registering a domain name that is a common misspelling of a mark in which a party has rights has often been recognized as evidence of bad faith registration per se. Paragon Gifts, Inc. v. Domain.Contact, WIPO Case No. D2004-0107 (citing National Association of Professional Baseball Leagues, d/b/a Minor League Baseball v. Zuccarini, WIPO Case No. D2002-1011); ESPN, Inc. v. XC2, WIPO Case No. D2005-0444 (finding that the practice of “typosquatting”, of itself, is evidence of the bad faith registration of a domain name). The Panel concurs with this approach.
The Panel finds, for purposes of determining the lack of legitimate interests, that Respondent is attempting to divert consumers from Complainant’s website by using a confusingly similar domain name and providing similar content. The Panel further takes the view that the content of a website (whether it is similar or different from the business of a trademark owner) is relevant in the finding of bad faith use. This is so because where a potential visitor, after typing in a confusingly similar domain name, reaches the Respondent’s website offering similar contents, there is an implied act of unfair competition (deception of the consumer). Such an act is an evidence of bad faith.
There is a further element which is relevant in the resolution of this dispute. Complainant contends that Respondent has shown a pattern of registering domain names incorporating the marks of third parties. DaimlerChrysler AG v. Digi Real Estate Foundation, NAF Case No. FA0606000724594 (finding that some of the disputed domain names use common misspellings or typos of complainant’s mark in order to redirect Internet users seeking complainant’s goods and services, while others include complainant’s marks in their entirety, adding terms that describe complainant’s business); Toyota Motor Credit Corporation v. Digi Real Estate, WIPO Case No.�D2005-1111 (finding that respondent’s bad faith was established by the fact that respondent was involved in several domain name dispute resolution proceedings as a respondent). In fact, Respondent has a history of registering and using domain names in bad faith.
The Panel finds that the evidence produced in this case taken as a whole clearly supports a finding that Respondent registered and is using the domain name in bad faith. Therefore, the Panel concludes that the requirement of paragraph 4(a)(iii) of the Policy has been met.
7. Decision
For all the foregoing 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.
Manoel J. Pereira dos Santos
Sole Panelist
Date: October�6,�2006
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