WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
E, Inc. v. Whois ID Theft Protection
Case No. D2007-0016
1. The Parties
The Complainant is E, Inc., of Santa Monica, California, United States of America, represented by Hitchcock Evert LLP, United States of America.
The Respondent is Whois ID Theft Protection, West Bay, Cayman Islands.
2. The Domain Name and Registrar
The disputed domain name is registered with R Services Corp.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 5, 2007. On January 8, 2007, the Center transmitted by email to R Services Corp a request for registrar verification in connection with the domain name at issue. On January 9, 2007, R Services Corp transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative and technical contact. 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 January 18, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was February�7,�2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 9, 2007.
The Center appointed Linda Chang as the sole panelist in this matter on March 2, 2007. 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 has been operating in the automotive information industry since�1966. Over the last forty (40) years, it has remained at the forefront of the industry by continually developing its line of goods and services to serve its customers. It launched “www.e” in 1995, which was the first automotive information Web site. This information includes vehicle pricing data, technical and performance specifications, automotive reviews, user discussion forums, automotive-related news, vehicle photos and videos, and a host of other data and information relevant to car buyers, owners, and enthusiasts.
The Complainant is also the registered owner of the US federal trade mark registration of EDMUND’S for ‘magazine and series of non-fiction books featuring vehicle pricing information by telephone and by means of an online communications network” (United States trade mark registration No. 2, 106,713).
Except for the name and contact details, there is no information on record about the Respondent.
5. Parties’ Contentions
A. Complainant
Identical or Confusingly Similar
The Complainant contends the following in terms of the identity and confusing similarity between the domain name at issue and the trade mark in which the Complaint has rights:
The Complainant contends that it is a leader in the automotive information industry and has been since it first published its Edmunds car buying guides in 1966. Over the last forty (40) years, the Complainant has remained at the forefront of the industry by continually developing its line of goods and services to best serve its customers. A watershed moment came in 1995, when Edmunds launched “www.e”, which was the first automotive information Web site. This information includes vehicle pricing data, technical and performance specifications, automotive reviews, user discussion forums, automotive-related news, vehicle photos and videos, and a host of other data and information relevant to car buyers, owners, and enthusiasts. In the eleven (11) years since its launch, the Complainant has been the premier online resource for automotive information by consistently offering innovative, user-friendly features through “www.e”. A true and correct copy of the home page from the Complainant’s web site is provided as Annex 3 to the Complaint. A true and correct copy of a summary of the history of the Complainant is provided as Annex 4 to the Complaint.
The Complainant contends that the “www.e” web site is the central focus of the Complainant’s business today, currently serving over 127,000,000 pages per month to over 12.3 million monthly visitors (9.3 million unique monthly visitors), with each visit lasting an average of 16 minutes. “www.e” has established itself as the premier online resource for automotive information. Indeed, “www.e”’s reputation has been widely recognized in both the industry and mainstream press. For example, Keynote Systems ranked “www.e” as the number one 3rd party auto website in its Winter 2006 Keynote Customer Experience Rankings for 3rd Party Auto Web Sites (a true and correct copy of an abstract thereof provided as Annex 5 to the Complaint). Moreover, BusinessWeek recently noted that “www.e” is “one of the leading sites for car buyers” (BusinessWeek Online (March 6, 2006), a true and correct copy of which is provided as Annex 6 to the Complaint)
The Complainant also contends that the website “www.e” has also become a leading source of automotive information to the media.
The Complainant also contends that in addition to the domain name , the Complainant also owns a federal trademark registration for the mark EDMUND’S 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” (United States Trademark Registration No. 2,106,713). A true and correct copy of a printout from the United States Patent and Trademark Office (“PTO”) web site identifying the registration of this mark is provided as Annex 7 to the Complaint. The Complainant has used the EDMUND’S mark in connection with its business since the company was founded in 1966. This mark – which the Wall Street Journal has correctly characterized as “a brand name car buyers trust” (Annex 8 to the Complaint) – is famous in the industry and one of the Complainant’s most valuable assets.
In this classic case of typo-piracy, the Respondent has registered a domain name which is confusingly similar to the Complainant’s domain name, as well as its business name and famous mark EDMUND’S. A side-by-side comparison illustrates the confusing similarity between the disputed domain name and the Complainant’s name and mark.
The Complainant also contends that the only difference is Respondent’s use of “.com” immediately following the Complainant’s full trademark.
The Complainant also contends that Panels have consistently found that the mere repetitious use of the top level domain name “.com” is virtually identical to domain names that use the “.com” designation only once.
The Complainant also contends that similarly, Courts have consistently recognized as “confusingly similar” the use of terms that are spelled only slightly differently than well-established marks. For example, in John Walker & Sons, Ltd. v. Bethea, 305 F.Supp. 1302 (D.S.C. 1969), at 1307 (provided as Annex 9 to the Complaint). Also Dreamwerks Production Group, Inc. v. SKG Studio, 142 F.3d 1127, 1131 (9th Cir. 1998) (provided as Annex 10 to the Complaint).
Likewise, the Complainant contends that Panels applying the Policy have repeatedly held domain names that vary slightly in spelling from established marks to be confusingly similar to those marks.
Rights or Legitimate Interests
The Complainant claims the following to indicate the Respondent does not have rights or legitimate interests in the domain name at issue:
The Complainant also contends that 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 Edmunds’ mark EDMUND’S prior to Edmunds’ launch of “www.e” in 1995. It is thus clear that the sole purpose of the Respondent’s selection of the disputed domain name is to improperly capitalize on the reputation and goodwill established by Edmunds over its long history.
The Complainant also contends that under these circumstances, the Respondent’s registration and use of the disputed domain name cannot constitute a “fair use.” Indeed, in a 2000 WIPO decision involving Microsoft Corporation, the panel expressly held that intentional misspellings of others’ 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 Corp. v. Global Net 2000, Inc., WIPO Case No. D2000-0554 (provided as Annex 13 to the Complaint)
The Complainant contends that the same conclusion should be reached in the present case. Respondent’s registration of a domain name which is one repetitious “com” designation different from Complainant’s famous mark constitutes an obvious intent to register the name for commercial gain and to misleadingly divert consumers. Supporting this conclusion is the fact that the Respondent in this case not only made the domain names highly confusingly similar, but the content of the pages is also similar – both involve the dissemination of information regarding automobiles. Referring to Annexes 3 and 14 that contain copies of the Complainant’s and the Respondent’s home pages, respectively, it is clear that Respondent is attempting to deceive consumers.
The Complainant contends that taken together, the evidence demonstrates that the Respondent has made every effort to divert consumers from the Complainant’s web site by offering a confusingly similar web site. Such actions are strong evidence that the Respondent has no rights or legitimate interest in the domain name.
Bad faith registration and use
The Complainant stated the following to indicate that the Respondent’s bad faith registration and use of the domain name at issue.
The Complainant contends that the Respondent’s selection of a domain name that is virtually identical (except for the repetitious “com”) to the heavily promoted and well-recognized trademark of the Complainant clearly indicates a bad faith intent. Respondent’s decision was part of a scheme to attract, for commercial gain, Internet users to the Respondent’s web site by creating a likelihood of confusion with Edmunds’ domain name and mark EDMUND’S. Of particular note, and as discussed in the preceding section, the Respondent has not only copied the Complainant’s domain name, but the Respondent’s web site also contains similar content as the Complainant’s web site.
Furthermore, the Complainant alleges that case law is clear that typo-squatting, in and of itself, is evidence of bad faith. In ESPN, Inc. v. XC2, WIPO Case No. D2005-0444 (provided as Annex 15 to the Complaint).
Finally, the Complainant contends that, in combination, the Respondent’s actions show its bad faith intent in registering the disputed domain name. The Respondent should not be allowed to benefit from its bad faith, and should be forced to transfer the disputed domain name to Edmunds.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph�4(a) of the Policy requires the Complainant to prove all of the following in order for its contentions to be supported in the proceeding:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests 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 Complainant is the registered owner of the US federal trade mark registration of EDMUND’S for ‘magazine and series of non-fiction books featuring vehicle pricing information by telephone and by means of an online communications network” ( US trade mark registration No. 2, 106,713).
Compared to the Complainant’s trade mark EDMUND’S, the domain name at issue is confusingly similar to the Complainant’s trade mark, the only difference being the repetitious use of the generic indicator of the gTLD “com” immediately following the Complainant’s full trademark. Previous Panel decisions under the UDRP have concluded that the addition of a generic term is not sufficient to prevent confusing similarity when the domain name contains a widely known trade mark. The Complainant has, among other things, made reference to PHE, Inc. v. Bill McCall, WIPO Case No. D2003-0516, and Microsoft Corporation v. Charilaos Chrisochoou, WIPO Case No.�D2004-0186. Based on the foregoing, the Panel finds the domain name at issue to be confusingly similar to the Complainant’s trade mark.
The Panel is therefore satisfied that the Complainant has met the requirements of paragraph�4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Respondent is not known by the subject domain name and is not authorized to use the Complainant’s mark. Although the Respondent default does not mean it will automatically lose the case, the information provided to the Panel does not lead to any of the situations as provided under Paragraph 4(c) of the Policy or any other situation that would justify the Respondent’s possession of legitimate rights or interests in the domain name at issue.
The Panel is satisfied that the Complainant has met the requirements of paragraph�4(a)(ii) of the Policy.
Registered and Used in Bad Faith
Paragraph�4(b)(iv) of the Policy provides for the implication of evidence of bad faith registration and use of a domain name in the circumstances that:
(iv) by using the domain names, intentionally attempting to attract, for commercial gain, Internet users to the Respondent’s website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location.
The information on record sufficiently indicates that the Complainant’s trade mark has been heavily promoted and is very well recognized by the relevant public. The print-out of Respondent’s web page under the domain name (provided as Annex 15 to the Complaint) clearly indicates the Respondent’s website provides or is intended to provide information in the same industry as the Complainant’s.
The combination of the above has led the Panel to the inference that the Respondent was probably aware of the Complainant’s trade mark when it registered the domain name at issue. The Respondent’s selection of the domain name in which it has no rights or legitimate interests but is virtually identical with the Complainant’s trade mark reflects the Respondent’s bad faith intention to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement. Such inference is strongly supported by the Respondent’s manner of using the domain name at issue. This situation falls within Paragraph�4(b)(iv) of the Policy.
The Panel is satisfied that the Complainant has met the requirements of paragraph�4(a)(iii) of the Policy.
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.
Linda Chang
Sole Panelist
Dated: March 20, 2007
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