WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
E, Inc. v. SIA Bouns
Case No. D2007-1279
1. The Parties
The Complainant is E, Inc., California, United States of America, represented by Hitchcock Evert LLP, United States of America.
The Respondent is SIA Bouns, Riga, Latvia, represented by Anatoly Ostrovsky, Latvia.
2. The Domain Name and Registrar
The Disputed Domain Name is registered with DSTR Acquisition VII, LLC d/b/a D.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 28, 2007. On August 31, 2007, the Center transmitted by email to DSTR Acquisition VII, LLC d/b/a D a request for registrar verification in connection with the domain name at issue. On September 1, 2007, DSTR Acquisition VII, LLC d/b/a D transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on September 10, 2007. 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 September 14, 2007. In accordance with the Rules, Paragraph 5(a), the due date for Response was October 4, 2007. The Response was filed with the Center on September 22, 2007. On October 1, 2007 the Center received a Supplementary filing by the Complainant in response to the Respondent's filed response. On October 4, 2007 the Center received a Response Supplementary filing by the Respondent.
The Center appointed Mr. Alistair Payne as the sole panelist in this matter on October 3, 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. Jurisdictional Basis for the Administrative Proceeding
The Respondent has raised an objection on the basis that the Panel lacks jurisdiction in this matter. The Complainant contends that the dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute. The Panel notes that the Respondent accepted the Policy when it registered the Disputed Domain Name. Section 8 of the DotRegister Registration Agreement states that the domain name registrant is bound by the ICANN dispute policies and “The Dispute Policies are hereby incorporated and made a part of this Agreement”. The Policy applies this Mandatory Administrative Proceeding in the event that a third party (complainant) asserts that a domain name is:
(i) identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) the Disputed Domain Name has been registered and is being used in bad faith.
On this basis the Panel is satisfied that it has jurisdiction to decide the dispute.
5. Factual Background
The Complainant, E, Inc., is a leading automotive information provider in the automobile industry. It published its first car buying guides in 1966 and has been using the EDMUND’S name since that date. The Complainant also has a US trademark registration for EDMUND’S since 1996. The Complainant also has a registered domain name for since 1995. The Complainant is seeking the transfer of the Respondent’s registration for the Disputed Domain Name .
The Disputed Domain Name was registered in May 1999 for Salvia Corporation and the Respondent was registered as the owner on 31, August 2007. The Respondent also has a registered trademark in Latvia for EDUM NDS since November 2005.
6. Parties’ Contentions
A. Complainant
The Complainant contends that the Disputed Domain Name is identical or confusingly similar to its pre-existing registered domain name for . It suggests that the misspelling in the Disputed Domain Name is evidence of typo squatting. It is well established that misspelling a well-known trademark by interchanging letters is not sufficient to avoid confusion for trademark purposes. See Dreamwerks Production Group, Inc. v SKG Studio, 142 F. 3d 1127, 1131 (9th Cir. 1998). The Complainant alleges that the Respondent does not have rights or other legitimate interest in and does not use this name as it’s legal or business name. The Complainant alleges that the Respondent’s trademark for EDUM NDS is being relied on purely for the purpose of circumventing the application of the Policy and validating an otherwise illegitimate registration and use of the Disputed Domain Name. Furthermore, the Complainant notes that the Respondent had not used the Disputed Domain Name prior to the launch of the website in 1995. Finally, the Complainant contends that the Respondent registered and is using the Disputed Domain Name in bad faith. The Complainant notes that past decisions of the UDRP held that typo squatting, in and of itself, is evidence of bad faith registrations. The Complainant also points to the transfer of the Disputed Domain Name from the previous Registrant, Salvia Corporation, to the Respondent (a related company) as a method of avoiding a complaint. The Complainant alleges that this cyber-flight demonstrates bad faith use of the Disputed Domain Name.
B. Respondent
The Respondent asserts that the Panel lacks jurisdiction to rule on the merits of the dispute in the present Complaint. The Respondent alleges this on the grounds that it has registered competing rights in the form of a trademark for EDUM NDS registered in Latvia in 2005 and this is not a case of an abusive domain name registration. On this basis the Respondent also contends that it has legitimate rights and interests in the Disputed Domain Name in the form of the registered trademark for EDUM NDS. It contends that it registered this trademark two years prior to the present dispute and that it did not do so for the purpose of disrupting the Complainant’s business or competing with it.
7. Discussion and Findings
If the Complainant is to succeed, it must prove each of the three elements referred to in Paragraph 4(a) of the Policy, namely that:
i. the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
ii. the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
iii. the Disputed Domain Name has been registered and is being used in bad faith.
The Panel will proceed to establish whether the Complainant has discharged the burden of proof in respect of each of the three elements referred to in Paragraph 4(a) of the Policy.
A. Identical or Confusingly Similar
The Panel notes the evidence of the Complainant in this case demonstrating rights in the name EDMUND’S since 1966 and in the domain name since 1995. The Panel also notes the Complainant’s trademark for EDMUND’S was registered in 1996. The Complainant has made significant use of its mark and the Panel accepts that it has developed a reputation in this mark.
The Panel considers that the miss-spelling of the EDMUND’S trademark, in the present circumstances does not eliminate the confusing similarity of the Complainant’s trademark with the Disputed Domain Name for . See Volvo Trademark Holding AB v. Unasi, Inc.,WIPO Case No. D2005-0556 and Blue Cross and Blue Shield Association v Garrett Ltd./John Nunley, WIPO Case No. D2003-0028.
Therefore, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s trademark and that Paragraph 4(a)(i) of the Policy has been satisfied. B. Rights or Legitimate Interests
As noted above, the Panel accepts that the Complainant has developed a reputation in the EDMUNDS trademark and has registered rights for this mark and for . The Panel also accepts the Complainant’s evidence of its long standing use of the EDMUND’S mark both for car journals and through its website. The Complainant must make out a prima facie case that the Respondent does not have legitimate rights or interests in . The Complainant has pointed to the fact that it has not authorized or licensed the Respondent to register or use the Disputed Domain Name. The Disputed Domain Name was registered in 1999, three years after the registration of the trademark for EDMUND’S and four years after the registration of the domain name . The Respondent did not produce evidence to establish that it is commonly known under or has a reputation in . On this basis the Panel accepts that the Complainant has made out a prima facie case that the Respondent does not have rights or legitimate interests in and the onus is placed upon the Respondent to demonstrate otherwise.
The Panel accepts the Respondent’s evidence that it has a registered trademark for “EDUM NDS” in Latvia since 2005. However, the Panel notes that it is not an absolute rule that ownership of a trademark will create rights and a legitimate interest in a domain name. See Madona Ciccone, p/k/a Madonna v Dan Parisi and “M”WIPO Case No. D2000-0847. While the Panel notes that it does not have any jurisdiction to examine any competing claims to trademark rights it is absolutely proper for the Panel to examine the circumstances surrounding the registration and use of the Disputed Domain Name. The Panel was not provided with any evidence that, at the time that the Disputed Domain Name was registered, the Respondent or the previous registrant of had any trademark or reputation for EDUM NDS. It is the Panel’s view that the Respondent has not produced rebuttal evidence to show that it had rights or legitimate interests in the Disputed Domain Name at the time of registering in 1999. See Societe de Bains de Mer et du Cercle des Etrangers a Monaco Limited v Piranha Interactive Ltd WIPO Case No. D2000-1333.
In view of the Complainant’s reputation in relation to the EDMUND’S mark it seems unlikely to the Panel that the Respondent was not aware of the Complainant’s rights and the Respondent has not offered the Panel an explanation as to why it chose . The Panel concludes that on the balance of probabilities, Salvia Corporation and the Respondent knew of the Complainant’s rights when it used the Disputed Domain Name and as set out at Paragraph 7(C) below the Panel finds that the Respondent has not made out a bona fide offering of goods and services and is not using the Disputed Domain Name for legitimate reasons.
Based on this analysis the Panel finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name and the Panel is satisfied that the Respondent has not provided sufficient evidence to rebut these claims. The Panel finds that the Complainant fulfils Paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
As the Panel noted above at Paragraph 7(A) the Respondent’s Disputed Domain Name is confusingly similar to the Complainant’s trademark. There is no explanation given by the Respondent for the registration of a domain name that is a misspelling of the Complainant’s trademark. Given the length of time for which the Complainant has been using the EDMUND’S trade mark and the website it is highly unlikely that the Respondent did not know of the Complainant and the website business it runs. The Panel also notes the Respondent’s history of registering domain names that are confusingly similar to well-known trademarks and attempting to avoid domain name disputes through cyber-flight (See Grand Valley State University v SIA Bouns,WIPO Case No. D2006-0474). Given these facts, the Panel is satisfied that the Respondent intended to evade this dispute through “cyber-flight” and on the balance of probabilities the Respondent registered the Disputed Domain Name in bad faith for the purpose of typosquatting. See ESPN, Inc. v XC2, WIPO Case No. D2005-0444.
The Respondent’s website under provided car information that was very similar to the information that the Complainant provides on and there also appeared to be a link to the Complainant’s website from . On this basis there is a strong inference that the Respondent wished to create confusion among Internet users looking for the Complainant’s websites as to the source, sponsorship, affiliation or endorsement of the Respondent’s website. The Respondent has not provided the Panel with any evidence to rebut this inference. As also contained sponsored links to other websites the Panel concludes that on the balance of probabilities the Respondent was using the Disputed Domain Name for commercial gain. The Disputed Domain Name is now parked and the Respondent has not provided the Panel with evidence that it intends to use for a non-commercial or fair use.
Based on this analysis, the Panel finds that the Complainant has satisfied the requirements of Paragraph 4(b)(iv) of the Policy. The Complainant has shown that the Disputed Domain Name was registered and used in bad faith. In the absence of a satisfactory rebuttal from the Respondent the Panel finds, therefore, that Paragraph 4(a)(iii) of the Policy is fulfilled.
8. 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 Disputed Domain Name be transferred to the Complainant.
Alistair Payne
Sole Panelist
Date: October 19, 2007
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