The Complainant is E, Inc. of Santa Monica, California, United States of America (“US”), represented by Hitchcock Evert LLP, US.
The Respondent is APRO Software of Praha, Czech Republic. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 17, 2015. On June 18, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 19, 2015, the Registrar 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” or “UDRP”), 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 June 23, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was July 13, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 14, 2015.
The Center appointed Clive Duncan Thorne as the sole panelist in this matter on July 16, 2015. 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
According to the Complainant, it is one of the leading providers of advice and data for purchasers and sellers of new and used cars. Beginning in 1966, the Complainant’s predecessor in interest published annual vehicle pricing guides for car buyers and car sellers. Since 1994, the Complainant has offered information to consumers principally at its website “www.e”. Individuals interested in purchasing or selling an automobile can research purchase prices, resale values, costs of ownership and maintenance, reliability, financing options and numerous other data points to help them make an educated purchase or sale decision.
The Complainant is the owner of a number of US trademark registrations for the word mark EDMUND’S; in particular it is the owner of US registration number 2106713 registered on October 21, 1997 for use in connection with “magazine and series of non-fiction books featuring vehicle pricing information” in Class 16 and information services “namely providing vehicle pricing information by telephone and by means of an online communications network” in Class 35. At Annex 4 to the Complaint is a copy of the registration and at Annex 5, a copy of the assignment of the registration as recorded at the US Trademark Office.
The Complainant is also the owner of US trademark registration number 3839711 for the word mark EDMUNDS registered on August 31, 2010 in Classes 35, 36, 38, 41 and 42 for use in connection with inter alia “providing information and advice to consumers regarding the selection of products and services to be purchased in the field of automotive dealerships, motor vehicles and motor vehicle services”. A copy of the registration is set out at Annex 6 to the Complaint.
The Complainant is also the owner of US trademark registration number 3843519 for the mark EDMUNDS.COM (plus design) registered on September 7, 2010 in classes 35, 36, 38, 41, 42 and 45 for use in connection with inter alia “providing information and advice to consumers regarding the selection of products and services to be purchased in the field of automotive dealerships, motor vehicles and motor vehicle services”. A copy of the registration is annexed at Annex 7 to the Complaint.
According to the Complainant, the Respondent is an individual residing in the Czech Republic. There is evidence set out at Annex 8 to the Complaint showing that the Respondent registered the disputed domain name for a commercial purpose i.e., to maintain a website containing content that suggests an affiliation with the Complainant. The title of the Respondent’s homepage is “E New Cars, Used Cars, Car Reviews”. The text on the website claims that the site relates to the Complainant’s and “New Cars, Used Cars, Car Reviews”. There is a copyright notice at the bottom of the site stating “Copyright (C) 2015 E. All Rights Reserved”.
On the basis that there is no response to the Complaint, the Panel accepts that the evidence referred to above and adduced by the Complainant is true and proceeds to determine this Complaint on the basis of the Complainant’s evidence. 5. Parties’ Contentions A. Complainant
1. The Complainant asserts that the disputed domain name is identical or confusingly similar to the Complainant’s trademarks EDMUND’S and EDMUNDS.
2. That the Respondent has no rights or legitimate interests in respect of the domain name and is not making a legitimate noncommercial or fair use of the domain name. To the contrary, the Respondent’s use is purely commercial and intended to suggest contrary to the fact an affiliation with the Complainant’s trademarks.
3. The disputed domain name was registered and is being used in bad faith. The evidence supports a finding that the Respondent’s decision was part of a scheme to attract, for commercial gain, Internet users for the Respondent’s website by creating a likelihood of confusion with the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Panel finds on the basis of the evidence of trademark rights referred to above and submitted by the Complainant that the Complainant is the owner of US trademark registrations in respect of the marks EDMUND’S, EDMUNDS and EDMUNDS.COM (plus design). In the Panel’s view, the disputed domain name is confusingly similar to the Complainant’s registered trademarks because the dominant part of the disputed domain name incorporates the word “edmunds”.
Accordingly, the Complainant has satisfied the first element of the Policy. B. Rights or Legitimate Interests
The Panel has reviewed the evidence of the Respondent’s website content set out at Annex 8 to the Complaint. It is clear that this is intended to create an affiliation with the services the Complainant has rendered in providing used car services. There is no evidence of any justification on the part of the Respondent for being entitled to do so. Accordingly, the Respondent’s website constitutes an attempt to deceive visitors accessing the website, that the user of the site has reached a website belonging to the Complainant.
The Complainant also submits that the Respondent has no trademark or intellectual property rights or any other legitimate interests in the disputed domain name. There is no evidence that the Respondent is commonly known by the disputed domain name and has therefore not acquired trademark or service rights in the disputed domain name.
Accordingly, the Panel finds that the Respondent is not making legitimate noncommercial or fair use of the disputed domain name. To the contrary, the Respondent’s use is commercial and intended to suggest contrary to the fact and affiliation with the Complainant’s trademarks.
The Complainant has satisfied the second element of the Policy. C. Registered and Used in Bad Faith
The evidence of the Respondent’s website (Annex 8 to the Complaint) which includes “E” at the very top is clear evidence that the Respondent had the Complainant in mind when it registered the disputed domain name.
The Respondent intended to create an appearance that the Respondent is the Complainant or somehow related to the Complainant for its own commercial gain, by diverting Internet users to its website by creating a likelihood of confusion with the Complainant’s mark and disrupting the Complainant’s trading activity. In particular, at Annex 9 to the Complaint, there is evidence of the Respondent having placed sponsored advertisements on its website. This too is evidences the Respondent’s bad faith.
Accordingly, the Panel finds that the Respondent has registered and is using the disputed domain name in bad faith. The Complainant has satisfied the third element of the Policy. 7. Decision
For 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.
Clive Duncan Thorne
Sole Panelist
Date: July 27, 2015
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