WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
E, Inc. v. Keyword Marketing Inc. a/k/a Marketing Total S.A. a/k/a Domain Drop S.A.
Case No. D2007-1427
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 Keyword Marketing Inc. a/k/a Marketing Total S.A. a/k/a Domain Drop S.A. Charlestown, Saint Kitts and Nevis.
2. The Domain Names and Registrars
The disputed domain names , , and are registered with Capitoldomains, LLC and DomainDoorman, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 26, 2007. On September 28, 2007, the Center transmitted by email to Capitoldomains, LLC and DomainDoorman, LLC a request for registrar verification in connection with the domain names at issue. On September 28, 2007, Capitoldomains, LLC and DomainDoorman, LLC transmitted by email to the Center its verification response confirming the names of the registrants and providing the contact details. The Center verified 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 October 3, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was October 23, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 25, 2007.
The Center appointed Harini Narayanswamy as the sole panelist in this matter on November 13, 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 is E, Inc., a New York Corporation having its principal place of business in Santa Monica, California. The Complainant is a provider of automotive information with a prominent online presence. The Complainant owns the websites “www.E”, and “www.E”. It also owns a federal trademark registration bearing registration No. 2,106,713 for the EDMUNDS mark for “magazine and series of non-fiction books featuring vehicles pricing information” and “information services, namely providing vehicle pricing information by telephone and by means of online communication network”.
The Respondents are the registrants of the four disputed domain names, and are collectively referred to as “the Respondent” in these proceedings. The registrants of the disputed domain names are: Keyword Marketing, Inc. for the domain name , Keyword Marketing, Inc. for the domain name , Marketing Total S.A, Inc .for the domain name and Domain Drop S.A, for the domain name . The Complainant believes the registrants are one and the same entity for the reason that all the registrants have the same contact address and use related registrars.
The Complainant reinforces its submissions by stating that the websites linked to these domain names have a similar pattern, the same links and the same list of related categories. The Complainant also provides evidence of the Respondent’s previous history of using aliases. It refers to the cases Cr�dit Industriael et Commercial S.A v. Domain Drop S.A., WIPO Case No. D2007-0532, Educational Testing Services v. Caribbean Online International Ltd., Keyword Marketing Inc., Maison Tropicale S.A and Wan- Fu China Ltd.,WIPO Case No. D2007-0500, which lists out the cases where the Respondent has used one or more than one of its alias. The Panel agrees with the Complainant’s contention that the registrants are the same entity.
5. Parties’ Contentions
A. Complainant
The Complainant, E, Inc., is a leading automotive information provider founded in the year 1966. It launched its website “www.E”, in 1995, which was a significant mile stone in the Complainant’s history. It was the first automotive information website of its kind. In the twelve years since its launch, the Complainant has been the premier online resource for automotive information. Over the past four decades it has maintained its leadership in this area by consistently offering innovative, user friendly features through its website. The information provided on its website includes vehicle pricing, technical and performance specifications, automotive reviews, user discussion forums, automotive- related news, vehicle photos and videos and other data of relevance to car buyers, owners and enthusiasts.
The Complainant has used the EDMUNDS mark since its inception in 1966, and describes its mark as its most valuable asset. It quotes the Wall Street Journal, which refers to its mark as “a brand name car buyer’s trust”. Presently, the central focus of the Complainant’s business is its website: “www.E”. It claims to serve over 127 000 000 pages per month to 12.3 million monthly visitors (9.3 million are unique monthly visitors), each visit lasting for about sixteen minutes.
The Complainant asserts that it is recognized as a premier online resource for automotive information by the industry and mainstream press. The Complainant’s website is ranked first among third party auto websites by Keynote Customer Experience Ranking for third party Auto Web sites in winter 2006. Business Week Online (March 6, 2006), has noted that “www.E” is “one of the leading sites for car buyers”. The Complainant states that its website has also become a source of automotive information to the media and provides a table of media references made to “www.E”, in March 2006. The total media mentions are shown as 1,359, and total media impressions are 689 198 208. “www.E”, is also a designated news source for Google News.
The Complainant’s main contention is that the domain names are confusingly similar to its mark and is a classic case of typo-piracy. The Respondent Keyword Marketing, Inc. (a/k/a Marketing Total S.A and Domain Drop S.A) has registered the domain names which are confusingly similar to its famous mark and its business name. The Complainant has provided a table to emphasize the visual similarity between the mark and the disputed domain names when a side by side comparison is made.
The Complainant states that Courts have consistently found confusing similarity in slight spelling differences. It cites the cases John Walker & Sons Ltd. v. Bethea , 305 F Supp. 1302 (D.S.C 1969), (where the court found the difference in spelling between the Defendant’s mark “Johnny Walker” and the Plaintiff’s JOHNNIE WALKER mark was inconsequential and held the two were practically identical.) and Dreamworks Production Group, Inc v. SKG Studio. 142 F 3d 1127, 1131 (9th Cir. 1998), (minor modifications or spelling differences in the mark may lead persons to believe that the modification was intentionally adopted by the owner of the trademark to identify an ancillary division of the same company).
The Complainant also relies on decisions made under the Policy, which have repeatedly held that slight variations in spellings of established marks used in domain names are confusingly similar to the marks. In Neuberger Berman Inc. v. Alfred Jacobson, WIPO Case No. D2000-0323, where the respondent registered the domain name, it was held to be confusingly similar due to its phonetic similarity with the trademark and company name of Neuberger Berman Inc. It was held in that case, that the practice of typo piracy or the registering and using of domain names by misspelling famous marks is done with the bad faith intention of deliberately luring search engines to their website. The Complainant cites two other cases, Dow Jones & Company Inc. v. John Zuccarini,WIPO Case No.D2000-0578, where the famous name “wall street journal” was misspelled by replacing “a” with an “e” as and Reuters Limited v. Global Net 2000, Inc.,WIPO Case No. D2000-0441, which found the domain names with various misspellings of the REUTERS name confusingly similar.
The Complainant states that for two of the disputed domain names, and the adjacent letters have been transposed. Comparing the first domain name to that of the Complainant’s, the letter “d” has been transposed with the adjacent letter “m”. In the second domain name the letter “n” has been transposed with the adjacent letter “d”. The Complainant cites a similar case Volvo Trademark Holding AB v. Unasi, Inc.,WIPO Case No. D2005-0556, where there was transposing of letters of the mark VOLVO to and it was found similar to the complainant’s mark. Other cases are cited such as Wachovia Corporation v. Peter Carrington,WIPO Case No. D2002-0775 which found that interchanging letters is construed as typo-squatting which creates a virtually identical or confusingly similar mark or name, also Blue Cross and Blue Shield Association v. Garret Ltd. /John Nunley,WIPO Case No. D2003-0028, where it was held that the domain name is confusingly similar to the complainants marks BLUE CROSS and BLUE SHIELD, despite interchanging of letters “i” and “e”.
In the domain names the only difference between the offending domain name and the mark is the addition of the letter “s” between letters “n” and “d”. In the domain name domain is the addition of an extra “o” between letters “n” and “d”. Addition of an extra letter was held to be typo-squatting in Humana Inc. v. Cayman Trademark Trust, WIPO Case No. D2006-0073, adding an extra letter “n” was found to be confusingly similar as it created a virtually identical mark.
The Complainant alleges that the Respondent has no rights or legitimate interests nor any intellectual property rights in the four disputed domain names. There is no indication that Respondent uses any of these variations as a legal name or business name. Further, there is no indication of the Respondent’s use of the domain names prior to the Complainant’s launch of its “www.E” web site in 1995. It is only to capitalize on the reputation and goodwill and long history of the Complainant that the Respondent has registered these domain names.
The Complainant states that the Respondent’s registration and use of the disputed domain names cannot constitute “fair use”. The Complainant cites, Microsoft Corp. v. Global Net 2000 Inc., WIPO Case No. D2000-0554, where it was held that misspelling of the “Microsoft” name was an attempt to trade on its goodwill, and that misspelling of others intellectual property does not constitute fair or non commercial use. Similarly in the present case, the Respondent has made domain names confusingly similar to the Complainant’s name. The content on the website linked to the disputed domain names are confusingly similar to the Complainant’s web pages, which according to the Complainant, is further evidence of the Respondent’s attempts to divert Internet users.
The Complainant alleges that the Respondent’s selection of domain names is evidence of its bad faith, as these are virtually identical to its mark. The only difference between the Complainant’s mark and the Respondents’ domain names are the adding or transposing of letters. This, according to the Complainant creates a likelihood of confusion to attract uses to the Respondent’s website for commercial gain. The Complainant has referred to several typo squatting cases, such as ESPN Inc., v. XC2,WIPO Case No. D2005-0444, where typo-squatting in and of itself was found to be evidence of bad faith; Longs Drug Store California Inc. v. Shep Dog, WIPO Case No. D2004-1069, Lexar Media Inc., v. Huang, WIPO Case No. D2004-1039, Wal-mart Stores Inc. v. Longo WIPO Case No. D2004-0816. The Complainant concludes by stating that the Respondent is a serial cyber squatter with an extensive history of typo-squatting, and has been in violation of the Policy in at least thirty one NAF cases and in thirty two WIPO cases and provides a list of six such cases. The Complainant requests the transfer of the domain names, for the reason that the Respondent ought not to benefit from such bad faith registrations and use.
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 the following three elements for the transfer of the disputed domain names:
(i) The domain names registered by the Respondent are 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 domain names, and
(iii) The domain names were registered and are being used in bad faith.
A. Identical or Confusingly Similar
The Complainant is required, under paragraph 4(a)(i) of the Policy, to establish its rights in the mark and demonstrate that the disputed domain name is either identical or confusingly similar to its mark.
The Panel is convinced that the Complainant has rights in its well known EDMUNDS mark, based all the evidence provided by the Complainant. The Panel also agrees with the Complainant that the domain names are misspellings of the Complainant’s mark and there is visual similarity between the disputed domain names and the Complainant’s mark when a side by side comparison is made.
Typo squatting or typo piracy is the obvious misspelling of trademarks in domain names where domain name registrants routinely target well known trademarks to bolster Internet traffic to their websites. The practice of typo squatting has been considered to constitute confusing similarity in numerous cases under the Policy, see for instance Nationwide Mutual Insurance Company v. Forum LLC,WIPO Case No. D2006-0309, and Sierra Health Styles LLC v. Modern Limited – Cayman Web Development, WIPO Case No. D2006-0020.
In the two domain names and where the adjacent letters are transposed, the Panel finds the domain names are confusingly similar to the mark and that the interchanging or swapping letters in a trademark is typical of typo-squatting. Panel finds adding of the letter “s” in the domain name is strategic, as the letter “s” is next to the letter “d” on the key board. The adding of the letter “o” between letters “n” and “d” in the domain name makes the domain name visually similar to the mark. The Panel finds the domain names in the present case are the typo-piracy variations of the Complainant’s mark and are therefore confusingly similar to the Complainant’s mark.
The Panel finds that the Complainant has established its rights in the EDMUNDS mark and that the disputed domain names are confusingly similar to the mark, and fulfilled the requirements under paragraph 4(a)(i).
B. Rights or Legitimate Interests
The Complainant has to make a prima facie case that the Respondent has no rights or legitimate interests under paragraph 4(a)(ii).
The Complainant has put forth the following arguments to show that the Respondent has no rights or legitimate interests in the domain names: The Respondent has no intellectual property rights in the four disputed domain names, nor uses any of these variations as a legal name or business name. The Respondent has registered the domain names much after the Complainant’s mark has acquired fame. It was only to capitalize on the reputation and goodwill of the Complainant that Respondent has registered these domain names. The misspelling of others’ intellectual property does not constitute fair or non commercial use.
The Policy paragraph 4(c) sets out the circumstances for the Respondent to demonstrate its rights or legitimate interests. The Respondent did not file a response; hence the Complainants assertions remain unchallenged. In the absence of any rebuttal from the Respondent, it is fair to conclude that the Respondent has no rights. See Incorporated v. Sigfedo Alviera,WIPO Case No. D2007-1273.
The Panel finds that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in the domain names. There is no evidence on record to show that the Respondent has any rights or legitimate interests in the domain names.
C. Registered and Used in Bad Faith
The Complainant has to establish that the Respondent has registered and used the domain names in bad faith under paragraph 4(a)(iii) of the Policy.
An indication of bad faith at the time of registration is found when there is misspelling of the trademark in a domain name. See Bell Gardens Bicycle Club dba The Bicycle Casino (“TBA”) v. Craig Miller, WIPO Case No. D2006-0536. Given the distinctiveness and the fame of the Complainant’s mark, the misspelling of the mark constitutes bad faith registration and use under the Policy. See National Association of Professional Baseball Leagues v. Zuccarini,WIPO Case No. D2002-1011.
The Panel finds the Respondent is intentionally trying to capitalize on typographical errors made by users to divert potential customers of the Complainant. Further, the Respondent has tailored the content on the website linked to the disputed domain names in a manner confusingly similar to the Complainant’s web pages. It is presumed that the Respondent is diverting users for the purpose of receiving revenue, See Digipoll Limited v. Domain Administrator,WIPO Case No. D2007-0999.
The Respondent has been involved in several previous domain name disputes and has been ordered to transfer domain names to its legitimate owners. The Panel finds that records show that the Respondent has a history of registering domain names that infringe trademark rights.
The Panel finds that the Complainant has established that the Respondent has registered and used the domain names in bad faith and has met the requirements of 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 names, , , and be transferred to the Complainant.
Harini Narayanswamy
Sole Panelist
Date: November 27, 2007
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