WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Eldorado Stone Operations LLC v. Transure Enterprise Ltd.
Case No. D2008-0684
1. The Parties
The Complainant is Eldorado Stone Operations LLC, South Jordan, Utah, United States of America, represented by Dorsey & Whitney, LLP, United States of America.
The Respondent is Transure Enterprise Ltd., Road Town, Tortola, British Virgin Island, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland.
3. The Domain Name and Registrar
The disputed Domain Name is registered with A, Inc.
4. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 1, 2008. On May 2, 2008, the Center transmitted by email to A, Inc. a request for registrar verification in connection with the domain name at issue. On May 5, 2008, A, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. 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 May 9, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was May 29, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 30, 2008.
The Center appointed Teruo Doi as the sole panelist in this matter on June 18, 2008. 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.
5. Factual Background
The facts stated in the Complaint are as follows:
(1) The Complainant has used, registered or applied to register the mark ELDORADO, the mark ELDORADO STONE, and the mark ELDORADO STONE & Design in the United States Patent and Trademark Office (the “USPTO”) and in jurisdictions around the world for a number of goods, such as cast artificial stone, bricks, tree- rounds, simulated slate, fireplace hearths, flagstones and non-metallic building materials, namely, synthetic, artificial and reformed stones, bricks, blocks and sheets as well as for services such as custom manufacture of molds for producing artificial building stones for others. The ELDORADO mark, the ELDORADO STONE mark and ELDORADO STONE & Design mark are hereinafter collectively referred to as the “ELDORADO STONE Marks.”
(2) In particular, the Complainant owns the following valid and subsisting U.S. trademark and service mark registrations: U.S. Trademark Registration No. 1,182,120 for the ELDORADO mark, dated December 15, 1981; U.S. Service Mark Registration No. 2,901,565 for the ELDORADO mark, dated November 9, 2004; and U.S. Trademark Registration No. 2,498,513 for the ELDORADO STONE & Design mark, dated October 16, 2001. The Certificate of Registration for each of the preceding trademark and service mark registrations and printouts from the USPTO Web site evidencing the Complainant’s ownership of the same are attached as Exhibit 2 to this Complaint. U.S. Registration No. 1,182,120 is incontestable pursuing to Section 15 of the Lanham Act, 15 U.S.C. Sec. 1065.
(3) The Complainant is a building materials manufacturer that specializes in manufactured stone veneer and sells its artificial stone veneer products throughout the United States and the world. It has been offering its products and services under the ELDORADO mark and the ELDORADO STONE mark since at least 1968.
(4) As a result of the Complainant’s long and prominent use of the ELDORADO STONE Marks for and in connection with its products and services, such trademarks and service marks have acquired worldwide recognition as identifying exclusively the products and services of the Complainant, and the vast and valuable goodwill symbolized by the ELDORADO STONE Marks when used in connection with such products and services belongs exclusively to the Complainant.
(5) The Complainant has spent considerable sums of time, effort and money for the research and development of its products and services that are promoted, marketed and sold under the ELDORADO STONE Marks. The Complainant has also spent considerable time, efforts and money extensively promoting its products and services under the ELDORADO STONE Marks throughout the world.
5. Parties’ Contentions
A. Complainant
On the basis of the facts stated above, the Complainant requests the Administrative Panel to issue a decision that the Domain Name be transferred to the Complainant, in accordance with Paragraph 4(b)(1) of the Policy, on the following grounds:
(1) The similarities between the Complainant’s ELDORADO STONE Marks and the Domain Name are evident. The words “eldorado” and “stone” are primary elements of the Domain Name, which simply repeats the last syllable “rado” of the word “eldorado” between the two elements of the Complainant’s distinctive ELDORADO STONE trademark and service mark. See, e.g., Eveready Battery Company, Inc. v. Oscar Haynes, WIPO Case No. D2003-1005 (February 27, 2004) (the addition of a top-level domain by itself (i.e., com) does not distinguish a domain name from a trademark).
The only difference between the Domain Name and the Complainant’s ELDORADO STONE trademark and service mark is the repetition of the last syllable of the first word “eldorado” between the two words forming the Complainant’s ELDORADO STONE mark. Visitors attempting to key in the legitimate domain name, , are likely to lose track of where they are in typing in the complete mark and legitimate domain name and enter an extra “rado” at the end of the word “eldorado”. When viewed in its entirety without close scrutiny, the domain name appears identical to the Complainant’s mark ELDORADO STONE. The repeated syllable appears to be attempting to capitalize on the complexity of the mark as it appears as a domain name in a form of typo-squatting. See, e.g., E, Inc. v. Triple E Holdings Limited, WIPO Case No. D2006-1095 (October 17, 2006) (the repeated letter “m” in the domain name considered virtually identical to mark EDMUNDS and considered typo-squatting); see also AltaVista Company v. Grandtotal Finances Limited, WIPO Case No. D2000-0848 (October 7, 2000) and Yahoo! Inc. v. Eitan Zviely et al., WIPO Case No. D2000-0273 (June 14, 2000) (domain names considered to be identical or at least confusingly similar and typo-squatting when based on “close variant” or “close misspelling” of the marks in question).
(2) The Respondent has no rights or legitimate interests in respect of the Domain Name. The Complainant has not authorized the Respondent to use any of the ELDORADO STONE Marks nor to register the disputed Domain Name. Thus, the Respondent cannot demonstrate that it has any rights or legitimate interests in the Domain Name.
The Respondent cannot show that it is making a legitimate non-commercial use or fair use of the Domain Name. Upon information and belief, the Respondent appears to be operating a sponsored link, pay-per-click website at , as discussed in further detail below and seen in Exhibit 3 hereto, in which the Respondent derives revenue based on the number of times visitors click on links appearing on the Web site. Such commercial use of the Domain Name does not constitute fair use of the Complainant’s ELDORADO STONE Marks. In fact, it appears that the Respondent is using the Domain Name to misleadingly divert consumers to its sponsors’ websites for its own commercial gain.
(3) The Respondent has registered the Domain Name in Bad Faith. The Respondent registered the Domain Name, without any bona fide basis, but in an attempt to unfairly capitalize on the goodwill of the Complainant’s well-known ELDORADO STONE Marks. Prior panels have held that bad faith is found if it is unlikely that the registrant would have selected the domain name in question without knowing of the reputation of the trademark or service mark. Such a finding is particularly apt where the Complainant’s trademark is well-known, as is the case with the ELDRADO STONE Marks. See. E.g., Veuve Cliquot Ponsardin, Maison Fondee en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163 (May 9, 2000) (bad faith registration found because the domain name is so obviously connected with a well-known product that its very use by someone with no connection with the product suggests opportunistic bad faith); Northwest Airlines, Inc. v. Mario Koch, NAF Case No. 95688 (October 27, 2000) (the selection of the domain name entirely incorporating the name of the world’s largest airline could not have been done in good faith).
The Complainant submits that the Respondent registered the Domain Name with the specific intent to cause consumer confusion and free ride on the vast goodwill associated with the Complainant’s ELDORADO STONE Marks. The Respondent registered the Domain Name with full knowledge that it is confusingly similar to the Complainant’s ELDRADO STONE Marks in order to re-route to the Respondent’s website Internet traffic likely destined for the Complainant’s Web sites.
(4) The Respondent is using the Domain Name in Bad Faith. The Respondent has been using the Domain Name to operate a sponsored link, pay-per-click website from which it derives revenue through Internet advertising. The Respondent has created an online directory at the website located at . Each of the listings in the Respondent’s directory appears to be an advertiser-supported listing from which the Respondent drives income based upon the number of times visitors of the Respondent’s Web site click on an item in the listing. The Respondent’s chances for increased revenues rise in direct proportion to the amount of Internet traffic that the Respondent attracts to its online directory. The Complainant submits that such is the primary reason that the Respondent registered and uses the Domain Name – to free ride on the goodwill associated with the Complainant’s websites. A copy of the representative page from the Respondent’s website at is attached as Exhibit 3 to this Complaint. Such use constitutes the Respondent’s Bad faith. See, e.g., Dollar Rent A Car Inc. v. Albert Jackson, NAF Case No. 187421 (September 24, 2003) (finding of bad faith appropriate where the respondent operates pay-per-click Web site using domain name that incorporates in whole the complainant’s trademark).
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph (4) of the Policy requires the Complainant to prove that each of the following elements is present:
(i) The domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no right or legitimate interests in respect of the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
The Panel notes that the Respondent has failed to respond to the Complainant within the stipulated time and, as such, does not contest the facts asserted by the Complainant in the Complaint. Accordingly, the Panel finds that:
A. Identical or Confusingly Similar
The Domain Name at issue, , registered and used by the Respondent is identical or confusingly similar to the Complainant’s ELDORADO STONE Marks. The word “eldorado” is the dominant part and distinctive element of the Complainant’s trademark ELDORADO STONE Marks. The Domain Name at issue simply inserts “rado” between “eldorado” and “stone”. The addition of “rado” between “Eldorado” and “stone” is in this Panel’s view a kind of typo-squatting and does not affect the Panel’s finding that the Domain Name at issue is confusingly similar to the Complainant’s ELDORADO STONE Marks.
B. Rights or Legitimate Interests
While the Complainant’s ELDORADO STONE Marks have been exclusively used by the Complainant for its business of manufacturing artificial stone veneer products and providing related services since at least 1968, and have become widely known as representing the Complainant’s goodwill, there is no proof before the Panel to show that the Respondent has been commonly known by the Domain Name, or that the Complainant has ever authorized the Respondent to include the Complainant’s ELDORADO STONE mark in the Respondent’s Domain Name at issue in a misspelled form. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
C. Registered and Used in Bad Faith
In view of the distinctive quality of the Complainant’s ELDORADO STONE Marks and the wide recognition of such marks as representing the Complainant’s goodwill in conducting its business, the Panel finds that the Respondent’s bad faith is evident in securing registration of the Domain Name at issue, , which creates the likelihood of confusion among Internet users and dilutes the distinctive power of the Complainant’s ELDORADO STONE Marks. The Respondent’s use of the Domain Name to post sponsored links from which revenue is presumably derived appears to be merely enabling the Respondent to profit from likely Internet user confusion between the Domain Name and the Complainant’s mark.
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.
Teruo Doi
Sole Panelist
Dated: July 2, 2008
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