Complainant is E, Inc. of Santa Monica, California, United States of America ("United States"), represented by Hitchcock Evert LLP, United States.
Respondent is Whois Privacy Services Pty Ltd of Fortitude Valley, Queensland, Australia / Lisa Katz, Domain Protection LLC of Dallas, Texas, United States. 2. The Domain Name and Registrar
The disputed domain name is registered with F (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on January 20, 2016. On January 21, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 22, 2016, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on January 25, 2016 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on January 28, 2016.
The Center verified that the Complaint together with the amended 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on January 29, 2016. In accordance with the Rules, paragraph 5, the due date for Response was February 18, 2016. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on February 19, 2016.
The Center appointed Lynda J. Zadra-Symes as the sole panelist in this matter on February 25, 2016. 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
Complainant is a provider of advice and data for purchasers and sellers of new and used cars. Beginning in 1966, Complainant's predecessor-in-interest published annual vehicle pricing guides for car buyers and car sellers. Since 1994, 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.
Complainant is the owner of the following United States Registrations:
No. 2,106,713 for the word mark EDMUND'S registered on October 21, 1997 for use in connection with "magazine and series of non-fiction books featuring vehicle pricing information", in International Class 16 and "information services, namely, providing vehicle pricing information by telephone and by means of an online communications network", in International Class 35;
No. 3,839,711 for the word mark EDMUNDS registered on August 31, 2010 in International 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";
No. 3,843,519 for the mark EDMUNDS.COM (& design) registered September 7, 2010 in International 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".
The disputed domain name was created on December 11, 2004 and has been used to redirect to several websites unaffiliated with Complainant, among which also pay-per-click parked websites. 5. Parties' Contentions A. Complainant
Complainant contends that the disputed domain name is confusingly similar to Complainant's EDMUND'S trademark, that Respondent has no rights or legitimate interests in respect of the disputed domain name and that the disputed domain name was registered and is being used in bad faith. B. Respondent
Respondent did not reply to Complainant's contentions. 6. Discussion and Findings
Complainant has the burden of proving each of the following three elements under paragraph 4(a) of the Policy in order to be entitled to a transfer of the disputed domain name:
(i) That the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) That Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) That the disputed domain name has been registered and is being used in bad faith A. Identical or Confusingly Similar
Complainant owns several United States Trademark Registrations for the word mark EDMUND'S. These registrations were issued many years before the disputed domain name was registered.
The disputed domain name incorporates Complainant's trademark in its entirety, with the addition of a single letter "l". This addition does not add any distinguishing element to the disputed domain name.
Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant's trademark. B. Rights or Legitimate Interests
Based on previous UDRP decisions, "a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such a prima facie case is made, the burden shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP". See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 2.1.
Complainant's allegations in the Complaint and evidence submitted on this issue are sufficient to make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant contends that Respondent registered the disputed domain name for the purpose of redirecting traffic from Complainant's website to several URL's unaffiliated with Complainant. Complainant attached evidence providing examples of such redirected traffic.
Respondent has not put forth any evidence that it has acquired trademark or other rights or legitimate interests in the disputed domain name. Respondent does not use the disputed domain name in connection with a bona fide offering of goods or services, but rather to divert traffic from Complainant's website and to profit from the paid advertisements placed on several of the pages to which customers are diverted.
Complainant contends that Respondent is not commonly known by the name "Edmunds", and Respondent has acquired no trademark or service mark right in "Edmunds". Respondent has failed to put forth any evidence to the contrary.
Accordingly, the Panel finds that Complainant has established that Respondent lacks rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
As discussed above and as supported by evidence submitted with the Complaint, Respondent apparently registered the disputed domain name for the purpose of redirecting traffic from Complainant's website to several URL's unaffiliated with Complainant.
The disputed domain name differs from Complainant's trademark only in the addition of the letter "l". The practice of such "typosquatting" is itself evidence of bad faith registration of a domain name, ESPN, Inc. v. XC2,WIPO Case No. D2005-0444.
Respondent uses the disputed domain name for the commercial purpose of diverting traffic from Complainant's website to, among other pages, pay-per-click parked websites, which falls in the circumstances described by paragraph 4(b)(iv) of the Policy.
Accordingly, the Panel finds that Respondent registered and is using the disputed domain name in bad faith. 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 Complainant.
Lynda J. Zadra-Symes
Sole Panelist
Date: March 8, 2016
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