WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
E, Inc. v. Web Advertising, Corp. / Keyword Marketing, Inc.
Case No.�D2006-1380
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 Web Advertising, Corp. / Keyword Marketing, Inc., Kings Court, Nassau, Bahamas, with an alternative address in Charlestown, West Indies, Saint�Kitts�and�Nevis.
2. The Domain Names and Registrars
The disputed domain names and are registered with Capitoldomains, LLC and BelgiumDomains, LLC respectively.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the�“Center”) on October�26,�2006. On October�27,�2006, the Center transmitted by email to Capitoldomains, LLC and BelgiumDomains, LLC a request for registrar verification in connection with the domain names at issue. On November�2,�2006, both Capitoldomains, LLC and BelgiumDomains, LLC transmitted by email to the Center verification responses confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on November�7,�2006. The Center verified that the Complaint together with the amendment to 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 November�14,�2006. In accordance with the Rules, paragraph�5(a), the due date for Response was December�4,�2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December�5,�2006.
The Center appointed WiIliam�A.�Van�Caenegem as the Sole Panelist in this matter on December�11,�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.
The Complaint relates to two domain names with differing registrants, i.e. Web Advertising, Corp. and Keyword Marketing, Inc. respectively. By virtue of the Rules ‘[t]he complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder’ (Paragraph�3(c)). In this case the material submitted by the Complainant establishes that the two domain names resolved to websites with substantially similar contents and appearance on October�25,�2006 (consisting of a list of similar sponsored links; a list of related categories; and one of popular categories, all relevant to automotive retail). Further�material provided by the Complainant establishes that at an earlier date, September�3,�2006, a Whois database search revealed the same registrant details (Pertshire Marketing Ltd, of the West Indies) for both domain names. In spite of the change of registrant details the website content remained substantially the same. The�present registrant details also both reveal addresses in the West Indies. The Complainant also draws attention to the fact that the Respondent has been found in violation of the UDRP on other occasions. In one such case the Panel noted the provision of unreliable contact information by the Respondent (see Rheem Manufacturing Company v Domaincar c/o Pertshire Marketing WIPO Case No.�D2006-0502.
Accordingly, based on the evidence, the Panel is satisfied that the domain names are registered by the same domain-name holder. In the result, the Respondent in these proceedings is identified throughout as Web Advertising, Corp. / Keyword Marketing, Inc.
4. Factual Background
The Complainant is the registered owner of the trademark EDMUND’S in the United States of America (Registration No 2106713), for ‘magazines and series of non-fiction books featuring vehicle pricing information’ (first use in 1966 and continuous since then); and for ‘information services, namely providing vehicle pricing information by telephone and by means of an online communication network’ (first use in 1994 and continuous since then). Since 1995 the Complainant’s website has been the core of its business of providing third party independent consumer information concerning cars.
The Complainant establishes that its website “www.e” attracts very voluminous Internet traffic (12.3 million monthly visitors). As a website with independent third party automotive information for car buyers, owners and enthusiasts it has been assessed as amongst the first rank of such providers in the United States of America by independent analysts, of which the Complainant provides sufficient evidence.
5. Parties’ Contentions
A. Complainant
The Complaint contends that the domain names at issue, although not identical, are confusingly similar to the Complainant’s trademark. In the domain name (the first domain name), the incorporation of the Complainant’s unaltered mark in its entirety, with addition of the generic ‘car’ results in confusing similarity, since the addition does not dispel the suggestion of a connection with the Complainant. The non-trademark element evokes the Complainant more strongly as it is suggestive of the nature of its business.
The domain name (the second domain name), incorporating as it does the term ‘edmundz’ rather than the Complainant’s trademark EDMUND’S (or, as it perforce appears in its own website, ‘Edmunds’) is an example of typo-piracy, so the Complainant submits. This is the intentional registration of a domain name differing insignificantly, in this case only in one rather interchangeable letter, from a trademark, so as to attract misspelling or ignorant internet users to the registrant’s site. This domain name is also said to be confusingly similar to the Complainant’s trademark.
The Complainant contends that the Respondent does not have any trademark or intellectual property rights or any other legitimate interest in the domain name, and did not use the name prior to the launch of the “www.e” website. The addition of the term ‘car’ in the first domain name indicates a bad faith attempt to trade off the Complainant’s goodwill in the automotive world. As to the second domain name, the intentional misspelling of a well known trademark, linked to the provision of website information concerning cars, indicates the opposite of a legitimate or fair non-commercial use. Rather it constitutes an attempt to misleadingly divert consumers to a website unconnected to the Complainant.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The trademark and the first domain name are not identical. However, the domain name wholly incorporates the Complainant’s trademark, and the potential for confusion so caused is not dispelled by the addition of the term ‘car’. Rather than this resulting in a different, distinct and individual domain name, in the light of the nature of the Complainant’s business, it appears as a composite of two terms, reinforcing the suggestion of a connection with the Complainant which does not in fact exist. It has rightly been decided in numerous cases under the UDRP that the addition of a generic term is not sufficient to distinguish a domain name from an incorporated trademark, a fortiori where the generic term is evocative of the nature of the Complainant’s business.
As to the second domain name, although not identical, the difference between ‘s’ and ‘z’ is insufficient to distinguish it from the Complainant’s trademark. Such slight variations in spelling have often resulted in findings of confusing similarity, certainly where, as here, the difference does not result in any different meaning. It would be seen by Internet users as insignificant or maybe explained away as some deliberate variation adopted by the trademark owner.
Accordingly the Panel finds that the two domain names at issue are confusingly similar to the Complainant’s trademark.
B. Rights or Legitimate Interests
The Respondent has no autonomous trademark rights or other intellectual property rights in either of the domain names at issue, nor is the Respondent licensed to use the Complainant’s mark. The use the Respondent makes of the domain names, which resolve to websites that offer information and sponsored links to other websites concerned with the retail automotive business, does not reveal legitimate non-commercial use but rather the opposite: an attempt to derive benefit from the close resemblance between the domain names and the trademark and goodwill of the Complainant. The addition of ‘car’ to the first domain name further reinforces this conclusion because it is suggestive of the nature of the Complainant’s business. The second domain name suggests a deliberate alteration so as to benefit directly from consumer ignorance or vagueness about the correct spelling of the Complainant’s well-known mark. Such deliberation is not consistent with having rights or legitimate interests.
Accordingly the Panel finds that the Respondent has no rights or legitimate interests in the domain name.
C. Registered and Used in Bad Faith
The Respondent registered domain names incorporating the Complainant’s trademark, at a time that it was well known amongst Internet users interested in cars and related products. In the case of the first domain name, the addition of the term ‘car’ further reinforces the suggestion that the Respondent was aware of the Complainant’s business and reputation at the time of registration. Respondent’s registration of the second domain name is strongly suggestive of deliberate registration of a domain name whose particular closeness to the Complainant’s trademark held the promise of commercial gain stemming from consumer confusion or ignorance. As has been held in other Panel decisions, ‘typo-squatting’ of a well-known mark is evidence in and of itself of bad faith registration.
The Respondent has also used the domain names in bad faith: the names resolve to websites offering similar information services and sponsored links as are offered on the Complainant’s website. Thus the misleading impression inherent in the domain names themselves is not dispelled by the nature of the related website contents. Rather, the Respondent is clearly engaged in a scheme to attract for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark.
Furthermore, the Complainant supplies evidence that the Respondent has changed all aspects of its registrant information for its domain names, and attempted to disguise its identity. This is also indicative of bad faith, as has been decided in other cases.
Accordingly the Panel finds that both domain names at issue were registered and were being used in bad faith.
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 names and be transferred to the Complainant.
WiIliam A. Van Caenegem
Sole Panelist
Dated: December�25,�2006
Full & Egal Universal Law Academy