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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Edmunds.com Inc. v. Azra Khan
Case No. D2002-0281
1. The Parties
The Complainant in this administrative proceeding is Edmunds.com, Inc., a New York corporation with a principal place of business at 2401 Colorado Avenue, Suite 250, Santa Monica, California 90404-3551, United States of America.
The Respondent is Azra Khan, having an address at P.O. Box 382, Rawalpindi, 46000, Pakistan.
2. The Domain Name and Registrar
The domain name in dispute is <edmumds.com>.
The Registrar with which said domain name is registered is iHoldings.com, Inc. d/b/a DotRegistrar.com.
3. Procedural History
On March 23, 2002, the Complaint was received by the WIPO Arbitration and Mediation Center ("the Center") by e-mail and in hard copy on March 25, 2002.
On March 28, 2002, the Center sent a Request for Registrar Verification to the Registrar. On April 17, 2002, the Registrar responded stating that it had not received a copy of the Complaint, confirming that it is the registrar of said domain name and that the Respondent is the current registrant, Administrative Contact, Technical Contact and Zone Contact for said registration. The Registrar furthermore confirmed that the Uniform Domain Name Dispute Resolution Policy hereinafter ("the Policy") applies to said registration, that the current status of the registration is on "Registrar- HOLD", that the language of the registration agreement is English, and that in his registration agreement the registrant had submitted to the jurisdiction at the location of the principal office of the Registrar for court adjudication of disputes concerning or arising from the use of said domain name.
In accordance with Paragraph 4(a) of the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules") and paragraph 5 of the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("the Supplemental Rules") the Center reviewed the Complaint to ascertain whether it satisfied the formal requirements of the Policy, the Rules and the Supplemental Rules and that payment in the required amount had been made by the Complainant.
On April 18, 2002, the Center sent a Notification of Complaint and Commencement of Administrative Proceeding to the Respondent. Said Notification was sent to the Respondent by Post/Courier (with enclosures) and by e-mail (Complaint without attachments). A copy of said Notification was sent to the authorized representative of the Complainant by e-mail. Further copies of said Notification were sent to the Internet Corporation for Assigned Names and Numbers ("ICANN") and to the Registrar.
Said Notification of Complaint and Commencement of Administrative Proceeding inter alia advised the Respondent that this Administrative Proceeding had commenced on April 18, 2002, and that the Respondent was required to submit a Response to the Center on or before May 8, 2002.
No Response was received by the Center and on May 10, 2002, the Center sent a Notification of Respondent Default to the Respondent by e-mail. A copy of said Notification of Respondent Default was on the same date sent to the authorized representative of the Complainant by e-mail.
On May 15, 2002, after having received a Statement of Acceptance and Declaration of Impartiality from him in accordance with paragraph 7 of the Rules, the Center proceeded to appoint James Bridgeman as Administrative Panel. On the same day the case file was transmitted to the Administrative Panel.
In the view of this Administrative Panel, proper procedures were followed and this Administrative Panel was properly constituted.
4. Factual Background
The Complainant corporation was formerly known as and continues to do business in the State of California as Edmund Publications Corp. The Complainant was founded in 1966 for the purpose of publishing printed guides to assist automotive buyers in making informed decisions respecting the purchase of new and used vehicles. From the inception of the company, these printed guides and books have continuously been published under the mark EDMUND’S.
The Complainant is the owner of a United States Trademark Registration No. 2,106,713 EDMUND’S, for the following goods and services: "magazine and series of non-fiction books featuring vehicle pricing information" and "information services, namely, providing vehicle pricing information by telephone and by means of an online communications network".
In 1994, the Complainant took advantage of the development of the Internet and posted the vehicle data from its printed guides in a gopher site. The following year, the Complainant became the first company to establish a www site on the World Wide Web on which consumers could obtain vehicle information at no cost. This site was established at the www address <edmunds.com>. The information on the Complainant’s www site includes vehicle pricing data, technical and performance specifications, automotive reviews, user discussion forums, automotive-related news, warranty data, and other material and information relevant to car buyers and enthusiasts.
In the absence of a Response there is no information relating to the Respondent save the contact details filed with the Registrar and set out in the Complaint.
5. Parties’ Contentions
The Complainant submits that its www site at <edmunds.com> is a central focus of its business today -- the www site averages 2.8 million visitors per month, with each visit lasting an average of twenty minutes. The Complainant submits that it has therefore established itself as one of the leading Internet-based sources of consumer automotive information and that its reputation as a premier provider of such information has been widely recognized in both the industry and mainstream press. In support of this claim the Complainant has submitted copies of articles from numerous publications such as Time Out New York, Smart Computing, Mature Outlook Magazine, Boston Globe, TIME’s On Monthly, Southwest Airlines Spirit.
The Complainant further submits that its www site established at the <edmunds.com> address tops numerous industry surveys of www sites and has submitted evidence of such surveys in support of this claim also. Furthermore the Complainant has submitted a copy of the home page from its www site as an annex to the Complaint.
The Complainant submits that it has used the <EDMUND’S> trademark and service mark in connection with its business since the company was founded in 1966 and submits that this mark has become a famous mark in the industry and has been described in the Wall Street Journal as "a brand name car buyers trust".
The Complainant submits that the Respondent is engaged in a classic case of typo-piracy. The domain name <edmumds.com> registered by the Respondent is confusingly similar to the Complainants corporate name and its famous EDMUND’S trade mark. The Complainant submits that the confusing similarity between the contested domain name and the Complainant’s name and mark is apparent from a simple comparison of the domain name with the letter string EDMUNDS. The Respondent’s domain name differs from the Complainant’s mark and domain name by one letter (i.e., substitution of the letter "m" for the letter "n"). Notably, these letters are located next to each other on the standard computer keyboard or typewriter.
The Complainant submits that the courts in the United States have consistently held that there is a confusing similarity between marks where a word mark is spelt with only slight difference to a well-established mark. The Complainant cites as an example, John Walker & Sons, Ltd. v. Bethea, 305 F. Supp. 1302 (D.S.C. 1969), where the court held that there was trademark infringement. The Plaintiff’s trademark was JOHNNIE WALKER and the Defendant used the mark JOHNNY WALKER. The Complainant submits that the court held that the difference in spelling was inconsequential and the two marks were for all practical purposes identical.
The Complainant further referred to Dreamwerks Production Group, Inc. v. SKG Studio, 142 F.3d 1127, 1131 (9th Cir. 1998). The marks in dispute were DreamWorks and Dreamwerks. The court held: "Neither literally means anything . . . . leaving only the slight difference in spelling. Spelling is a lost art… Moreover, a perceptive consumer who does notice the ‘e’ and lower-case ‘w’ in Dreamwerks might shrug off the differences as an intentional modification identifying an ancillary division of the same company."
The Complainant submits that likewise, administrative panels applying the Policy have repeatedly held domain names that vary slightly in spelling from established marks to be confusingly similar to those marks. The Complainant cites the administrative panel decisions in Neuberger Berman Inc. v. Alfred Jacobsen, WIPO Case No.D2000-0323, (June 12, 2000) where the complainant took issue with the respondent’s registration of the domain name <newbergerberman.com>; Dow Jones & Company, Inc. v. John Zuccarini, WIPO Case No. D2000-0578 (August 28, 2000), where the administrative panel held that the domain names <wallstreetjounal.com> and <wallstreetjournel.com> were confusingly similar to THE WALL STREET JOURNAL; and Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441, (July 13, 2000) where the administrative panel held that the domain names <wwwreuters.com>, <reters.com>, <ruters.com>, <reuers.com> and <reutersnews.com> were confusingly similar to the complainant’s trademark REUTERS.
The Complainant submits that in the present Administrative Proceeding there can be no doubt but that the contested domain name <edmumds.com> is confusingly similar to the Complainant’s famous name and mark EDMUND’S.
As to whether the Respondent has any rights or legitimate interest in said domain name, the Complainant submits that the Respondent does not have any trademark or intellectual property rights or legitimate interest in the domain name <edmumds.com>.
Firstly, the Complainant states that it has never licensed or permitted the Respondent to use any "EDMUND" mark, or to register any domain name including this mark.
Secondly, there is no indication that the Respondent uses <edmumds.com> as its legal or business name, or is commonly known by the name <edmumds.com>.
Thirdly, this domain name does not resolve to a www site that features the word "edmumds" or any similar word. The Complainant submits that, on the contrary, the domain name <edmumds.com> resolves to a www site at www.gotoo.com/treasure/auto.html . This address resolves in turn to a www site at www.car-prices-usa.com/ivd.html, that features automotive information and services in direct competition with the Complainant’s services. The Complainant has submitted a copy of a printout from this www site dated March 21, 2002, as an annex to the Complaint.
Thirdly, the Complainant argues that the Complainant has not located any business name or trademark registration for the Respondent that includes the term "edmumds."
The Complainant submits that administrative panels have routinely considered similar factors in concluding that a domain name registrant lacked a legitimate interest in a particular domain name. In this regard the Complainant cites a number of administrative panel decisions viz. Compagnie de Saint Gobain v. Com-Union Corp., WIPO Case No. D2000-0020 (March 14, 2000) in which the administrative panel decided that the respondent had no legitimate interest where the registrant had not been licensed by the complainant, had not registered or used domain name as a trademark, and had not been known by domain name; Ronson Plc v. Unimetal Sanayi ve Tic.A.S., WIPO Case No. D2000-0011, (March 11, 2000) where the administrative panel decided that there was no legitimate interest where registrant had not registered or used domain name as trademark; Scholastic Inc. v. Applied Software Solutions, Inc. WIPO Case No. D2000-1629, (March 15, 2001) where the administrative panel stated that there can be no rights or legitimate interests in respect of the domain name where someone in the same or similar field as the complainant would not have chosen the domain name unless seeking to create the impression that there was some association with the complainant.
The Complainant submits that under these circumstances, the Respondent’s registration and use of the subject domain name cannot constitute a "fair use" in the context of sub-paragraph (iii) of paragraph 4(c) of the Policy.
The Complainant further submits that in Microsoft Corp. v. Global Net 2000, Inc., WIPO Case No. D2000-0554 (July 25, 2000) the administrative panel rejected just such a "fair use" argument. The Complainant submits that in that case the respondent had registered several domain names that were similar to marks owned by Microsoft, including <hotmaill.com>, <homail.com>, <hotmai.com> <otmail.com>, <hotmailcom.com>. In directing that the domain names in dispute be transferred to Microsoft, the administrative panel stated Respondent’s registration of intentionally misspelled domain names "is manifestly not a ‘legitimate’ or ‘fair’ use and it is with intent for commercial gain to misleadingly divert consumers. The Panel has no hesitation in finding that the Respondent has no rights or legitimate interests in the Domain Names."
The Complainant further submits that the Respondent has registered and is using the domain name in bad faith. The Complainant argues that courts have recognized that consumers expect to find a company on the Internet at a domain name address comprised of the company’s name or mark. In this regard the Complainant refers to the decision in Panavision Int’l, L.P. v. Toeppen, 141 F.3d 1316, 1327 (9th Cir. 1998) where the court stated that "[a] customer who is unsure about a company’s domain name will often guess that the domain name is also the company’s name" and further went on to assert that " [a] domain name mirroring a corporate name may be a valuable corporate asset, as it facilitates communication with a customer base."
The Complainant submits that the Respondent’s registration of a confusingly similar domain name could only have been intended to serve one end viz. to "capture" consumers looking for the Complainant’s www site who, through inadvertence or ignorance, misspell or mistype the intended domain name.
The Complainant further argues that the fact that the Respondent acted in bad faith is confirmed by several undeniable facts. Firstly, the Respondent is making no use of and has no rights in the domain name at issue. Registration of a domain name unrelated to the marks used in connection with the registrant’s business is evidence that the domain name has been registered for an improper purpose. Secondly, the Respondent does not maintain a www site at the subject domain name; instead the domain name resolves to www.gotoo.com/treasure/auto.html, which in turn resolves to another www site that competes directly with the Complainants business as promoted on the Complainant’s www site at the <edmunds.com> address.
The Complainant submits that this amounts to a deliberate theft of customers looking for the Complainant’s www site and the Respondent’s effort to misdirect such users to a competing www site is both conclusive evidence of bad faith and highly probative of Respondent’s familiarity with the competing www site maintained by the Complainant.
In support of this argument the Complainant refers to the decisions of the administrative panels in NetWizards, Inc. v. Spectrum Enters., WIPO Case No. D2000-1768 (April 4, 2001) in which the administrative panel stated that "[p]anels have found that registration and use of a domain name to re-direct Internet users to web sites of competing organizations constituted bad faith use and registration." and Scholastic Inc. v. Applied Software Solutions, Inc. WIPO Case No. D2000-1629, (March 15, 2001) where the administrative panel stated that offering educational services to the same market as that served by the Complainant amounted to evidence of bad faith registration and use under paragraph 4(b)(iv) of the Policy.
The Complainant submits that its EDMUND’S name and mark are highly distinctive. They have no inherent meaning with respect to the automotive industry, and are therefore entitled to the strongest protection.
The Complainant submits that registration of a domain name that is similar to a highly distinctive mark is strong evidence of bad faith, as the distinctive nature of the mark reduces or eliminates any claim that the registrant’s infringement was "innocent." In support of this argument the Complainant refers to the decision of the administrative panel in Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441, (July 13, 2000) supra. In that case the administrative panel stated: "[t]he trademark REUTERS is not descriptive of anything, and is thus highly distinctive of the Complainant’s business. A domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive."
The Complainant argues that it is not surprising that administrative panels have consistently found bad faith registration and use in situations similar to that presented in the present Administrative Proceeding.
In Yahoo! Inc., et al. v. Data Art Corp., et al., WIPO Case No. D2000-0587, (August 10, 2000) the administrative panel stated:
"Respondent is obviously engaging in "typosquatting," a practice that has been condemned and been found to be confusingly similar to the marks which they mimic. See, e.g., American Media Operations Inc. v. Erik Simons, ICANN Case No. AF-0134; AOL v. Asian On-Line This Domain For Sale, ICANN Case No. FA 00040000094636; Yahoo! Inc. v. Zviely, et al, WIPO Case No. D2000-0273…
Respondent is trading on the value established by Complainant in its marks to attract users who misspell or mistype Complainant’s mark when entering the URL, which includes Complainant’s domain name. Clearly, Respondent is deriving economic benefit from this practice, either by attracting users to Respondent’s web site, where goods and services are offered, or by the receipt of compensation from the owners of other web sites for delivering users to those sites. This constitutes bad faith registration and use as defined by [paragraph] 4(b)(iv) of the Policy . . . .
While a user who arrives at the site may promptly conclude that it is not what he or she was originally looking for, Respondent has already succeeded in its purpose of using the service mark to attract the user with a view to commercial gain. National Football League Properties, Inc. and Chargers Football Company v. One Sex Entertainment Co., a/k/a chargergirls.net, WIPO Case No. D2000-0118."
In conclusion the Complainant refers to the administrative panel decision in Neuberger Berman Inc. v. Alfred Jacobsen, WIPO Case No. D2000-0323, (June 12, 2000) where the administrative panel stated: "[c]omplainant has produced convincing evidence regarding the practice of "typo-piracy" whereby bad faith operators deliberately misspell a famous domain name trademark in hopes of luring search engines to their site in conjunction with searches for the famous name website.
This conduct is further evidence of the bad faith this Panel is empowered to find in addition to the specifically enumerated instances in the Policy 4(b)."
There was no Response filed by the Respondent.
6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, the Complainant must prove that:
(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 rights or legitimate interests in respect of the domain name in question; and
(iii) the domain name has been registered and is being used in bad faith.
Identical or Confusingly Similar
The Complainant has satisfied this Administrative Panel that it is the owner of a registered trademark EDMUND’S, details of which are set out above. Furthermore this Administrative Panel is satisfied that the Complainant has long established common law rights in the use of the word EDMUND’S as a trademark in the publishing business and latterly on the www.
As there is only one letter and an apostrophe in the difference between the Complainant’s trademark EDMUND’S and the domain name <edmumds.com> registered by the Respondent. In the view of this Administrative Panel the absence of the apostrophe is not significant. Furthermore considering the domain name and the trademark side by side this Administrative Panel is satisfied that said domain name is confusingly similar to the Complainant’s trademark both visually and aurally.
The Complainant has therefore satisfied the first element in the test set out in paragraph 4(a) of the Policy.
Rights or Legitimate Interest
In an excellently presented , well argued and well referenced Complaint, the Complainant has argued that there is no connection between the Respondent and the Complainant and that the Respondent has never been given authority to use the Complainant’s trademark or any similar mark.
It is clear from the Complainant’s submissions that it has a long established reputation in the use of the trademark and service mark EDMUND’S in the provision of information about automobiles. It is also clear that the Respondent was aware of this reputation. In reaching this conclusion this Administrative Panel is conscious that the Respondent has an address in Pakistan and that the Complainant’s registered trademark and focus of business is in the United States, nonetheless it is clear that the Respondent was aware of the Complainant’s reputation as he has caused the domain name to resolve to a www site that directly competes with the Complainant’s www site in providing information about automobiles.
It should be said that there is no evidence that the Respondent has any association with the proprietor of the www sites at www.gotoo.com/treasure/auto.html or www.car-prices-usa.com/ivd.html and this Administrative Panel does not infer any such association or connection.
This Administrative Panel accepts the Complainant’s submission that someone in the same or similar field of business as the Complainant would not have chosen the domain name unless seeking to create the impression that there was some association with the Complainant.
Furthermore given the well established reputation of the Complainant in the United States, the fact that said domain name is confusingly similar to the Respondent’s United States trademark and the fact that the Respondent has linked the domain name to a www site offering directly competing services relating to automobiles in the United States market, this Administrative Panel accepts that the Respondent could not have any rights or legitimate interest in the said domain name.
The Complainant has therefore established the second element of the test in paragraph 4(a) of the Policy.
Paragraph 4(b) of the ICANN Policy sets out a non-exhaustive list of circumstances that will be considered by an Administrative Panel to be evidence of the bad faith registration and use of a domain name:
(i) Circumstances indicating that the domain name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the domain name registrant’s out-of-pocket costs directly related to the domain name; or
(ii) The domain name was registered in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the domain name registrant has engaged in a pattern of such conduct; or
(iii) The domain name was registered primarily for the purpose of disrupting the business of a competitor; or
(iv) By using the domain name, the domain name registrant intentionally attempted to attract for financial gain, Internet users to the registrant’s web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the registrant’s web site or location or of a product or service on the registrant’s web site or location.
It is obvious to this Administrative Panel that the Respondent is engaged in "typo-piracy" by using the domain name to attract users who misspell or mistype the Complainant’s <edmunds.com> domain name.
The Complainant has set out a compelling argument that the Respondent’s registration of this confusingly similar domain name could only have been intended to serve one end viz. to "capture" consumers looking for the Complainant’s www site who, through inadvertence or ignorance, misspell or mistype the intended domain name.
Furthermore this Administrative Panel accepts the comments of the administrative panel in NetWizards, Inc. v. Spectrum Enters., WIPO Case No. D2000-1768, (April 4, 2001) that "[p]anels have found that registration and use of a domain name to re-direct Internet users to web sites of competing organizations constituted bad faith use and registration".
In the circumstances this Administrative Panel is satisfied that the Complainant should succeed in its application as it has also established the third and final element of the test in paragraph 4(a) of the Policy.
With specific reference to paragraph 4 of the Policy and paragraph 15 of the Rules it is the decision of this Administrative Panel that the Complainant has established that said domain name <edmumds.com> is confusingly similar to the trademark and service mark in which the Complainant has rights, that the Respondent has no rights or legitimate interest in said domain name and that the Respondent has registered and is using said domain name in bad faith.
This Administrative Panel therefore directs that said domain name <edmumds.com> shall be transferred to the Complainant.
Dated: May 29, 2002