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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Edmunds.com Inc. v. Ed Munski

Case No. D2006-1094

 

1. The Parties

The Complainant is Edmunds.com Inc., Santa Monica, California, United States of America represented by Hitchcock Evert LLP, of Dallas, Texas, United States of America.

The Respondent is Ed Munski, Pzscek, Gdynsk, Poland.

 

2. The Domain Name and Registrar

The disputed domain name <edmuns.com> is registered with Tucows Inc.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 25, 2006. On August 28, 2006, the Center transmitted by email to Tucows Inc. a request for registrar verification in connection with the domain name at issue. On the same date, Tucows Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. 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 August 30, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was September 19, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 20, 2006.

The Center appointed David Perkins as the sole panelist in this matter on September 26, 2006. 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

4.1 The Complainant

4.1.1 Edmunds.com, Inc. is a leader in the automotive industry and has been since it first published its Edmunds car buying guides in 1966. Over the last forty years, the Complainant has remained at the forefront of the industry by continually developing its line of goods and services. While Edmunds’ customers primarily comprise consumers (i.e. the car buying public), the Complainant also provides data and data analysis to the automotive industry and its observers, automobile manufacturers, banks, Wall Street analysis and the Press.

4.1.2 The information provided includes vehicle pricing data, technical and performance specifications, automotive reviews, user discussion forums, automotive-related news, vehicle photos and videos and other data and information relevant to car buyers, owners and enthusiasts. The Complainant also provides business-to-business information, including its True Cost of Incentives Report, which gives per vehicle costs to the car manufacturer of their various incentive programs, including sub-vented interest rates and lease programs as well as cash rebates to consumers and dealers.

4.1.3 In 1995 Edmunds launched its “www.edmunds.com” website which was the first automotive information website. Currently, the “www.edmunds.com” website is the central focus of Edmunds’ business, serving over 127,000,000 pages per month to over 12.3 million monthly visitors (9.3 million unique monthly visitors), with each visit lasting an average of 16 minutes. In the eleven years since that launch, the Complainant claims that Edmunds has been the premier online resource for automotive information through its website.

4.1.4 The Complainant is the proprietor of US Trademark 2,106,713 for EDMUND’S in Class 16. The application was filed in July 1996 and registered in October 1997. First use in commerce of that trademark for publications featuring vehicle pricing information is claimed from 1966. First use in commerce of that trademark for information services (namely, the provision of vehicle pricing information by telephone and by means of online communications network) is claimed from 1994.

4.1.5 As an indication of the status of the EDMUND’S trademark, it was described by The Wall Street Journal in July 2000 in the following terms:

“Edmunds.com Inc, an auto-information company, has a well trafficked website and a brand name car buyers trust, a rarity in the automotive universe.”

4.1.6 Clearly, the EDMUND’S trademark is a very well-known trademark in the United States.

4.2 The Respondent

In the absence of a Response, nothing is known about the Respondent except that the domain name in issue resolves to a website known as “www.megago.com”.

 

5. The Parties’ Contentions

5.1 The Complainant

5.1.1 In essence, the Complainant’s case is that it is a classic example of typosquatting and, for the reasons set out in the following paragraphs, the domain name in issue should be transferred.

Confusingly Similar

5.1.2 The only difference between the EDMUND’S trademark and the domain name in issue is that the second letter “d” is omitted in the domain name. Otherwise, it is visually, phonetically and conceptually identical to Complainant’s mark.

5.1.3 The Complainant cites two US authorities for what under US trademark law constitutes “confusing similarity”. In both the differences in the marks were also inconsequential and the Court held for the Plaintiff trademark owners. Namely, in the first case reported in 1969, JOHNNIE WALKER [Distiller’s famous Scotch whisky brand] and “Johnny Walker” for a motel in Hartsville, South Carolina and the second reported in 1988 “DreamWorks” the Hollywood entertainment colossus versus the earlier registered “Dreamwerks”, a small Florida company that since 1984 has been in the business of organizing conventions in the Northeast and Midwest of America, mostly with a Star Trek theme.

5.1.4 Of course, paragraph 4(a)(i) of the Policy does not require a showing of “confusing similarity” under US or any other national trademark law and a body of authority has been established in this respect from cases decided under the Policy, nevertheless, Panels can apply “… any rules and principles of law …” that they deem appropriate [Rules, para. 15(a)] and where, as in this case, the Complainant is doing business in the United Stats it is not uncommon for US trademark cases to be cited.

5.1.5 The Complainant has also cited a number of decisions under the Policy where confusing similarity has been held in circumstances where the domain name in issue differs in only minor respect from the Complainant’s trademark such as to amount to typosquatting. These Decisions are briefly summarized in the following paragraphs and in each of them confusing similarity was found.

5.1.6 In Neuberger Berman Inc. v. Alfred Jacobsen, WIPO Case No. D2000-0323, the Complainant was Neuberger Berman, Inc a financial services company founded in the 1930’s with NEUBERGER BERMAN registered as a US service mark in Class 36 since 1995. The domain name in issue differed in only one letter <newbergerberman.com>, the “w” being substituted for the “u” in the Complainant’s trademark.

5.1.7 In Dow Jones & Company, Inc. and Dow Jones LP v. John Zuccarini, WIPO Case No. D2000-0578, the Complainant was Dow Jones & Company, Inc the owner of “The Wall Street Journal” trademark. The domain names in issue were <wallstreetjounal.com> and <wallstreetjournel.com> both misspelling of “journal”

5.1.8 In Reuters Limited v Global Net 2000, Inc, WIPO Case No. D2000-0441, the Complainant was Reuters Ltd. and the domain names in issue were various misspellings of the Complainant’s REUTERS trademark including <reters.com>, <ruters.com> and <reuers.com>. Finding for the Complainant, the Panelists said

“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.”

5.1.9 In Stokes Seeds, Ltd. v. Peter Carrington, WIPO Case No. D2004-0526. The Complainant was Stokes Seeds Ltd. of Canada, which has provided vegetable and flower seeds to growers in Canada and in the United States since 1932 and which operates under the trademarks STOKES SEEDS and STOKES. The domain name in issue was <stokeseed.com>, omitting the second letter “s” from “Stokes”.

Rights or Legitimate Interests

5.1.10 The Complainant’s case is that the Respondent cannot bring himself within any of the circumstances set out in paragraph 4(c) of the Policy [see, paragraph 6.2 below]. Further, the Complainant relies on typosquatting having been found to be the obverse of a legitimate noncommercial or fair use of a domain name Microsoft Corp .v. Global Net 2000, Inc, WIPO Case No. D2000-0554. In the Microsoft case, where the domain name in issue included misspellings such as <hotmaill.com> and <homail.com>, the Panel characterized the Respondent’s actions as

“… manifestly not a ‘legitimate’ or ‘fair’ use and it is with intent for commercial gain to misleadingly divert consumers.”

Registration and Use in Bad Faith

5.1.11 The Complainant’s case is that the Respondent’s conduct falls fair and square with para. 4(b)(iv) of the Policy [see, paragraph 6.3 below]. Further, the Complainant relies on typosquatting being of itself evidence of bad faith, citing ESPN, Inc .v. XC2, WIPO Case No. D2005-0444. The Complainant was ESPN, which operates the ESP News network devoted to sports related news and information and which is distributed to some 43 million homes in the United States. The Complainant was the proprietor of US registered trademarks ESSPN and SSPNews. The domain name in issue misspelled ESP News as <espnnews.com>. In its Decision in that case holding that “the practice of typosquatting, of itself, is evidence of bad faith registration of a domain name”, the Panel cited 4 other Decisions under the Policy where typosquatting was found to be presumptive of bad faith.

5.1.12 The Complainant also refers to cases under the Policy where the registrants of the domain names in issue have adopted fictitious names, a certain indicator of bad faith. For example, in Yahoo! Ltd and GeoGities. v. Eitan Zviely, Claim No. FA03060001620600, the Respondent, otherwise known as comyahoo.com – one of the domain names in issue – used all of the domain names to redirect users to it <megago.com> website. As noted in paragraph 4.2 above, the domain name in this case redirects to <megago.com>. As the Panel in the Yahoo! case said:

“The listed registrants of the domain names are obviously fictitious, as many are a direct copy of the domain name itself or an invented facsimile thereof.”

Here, the domain name is <edmuns.com> and the registrant is Ed Munski.

5.1.13 The Complainant also refers to The Nasdaq Stock Market, Inc .v. NSDAQ.com et al, WIPO Case No. D2001-1492. In that case the names of the Registrants were the same as the domain names in issue, namely NSDAQ.COM; NASDQ.COM and NASAQ.COM. All of the disputed domain names again redirected to <megago.com>.

5.2 The Respondent

As stated, no Response has been filed.

 

6. Discussion and Findings

6.1 Paragraph 4(a) of the Policy provides that the Complainant must prove each of the following in order to succeed in an administrative proceeding:

- that the Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

- that the Respondent has no rights or legitimate interests in respect of the domain name; and

- that the domain name has been registered and is being used in bad faith.

6.2 As stated above, paragraph 4(c) of the Policy sets out circumstances which, in particular but without limitation, if found by the Panel to be proved shall demonstrate the Respondent’s rights or legitimate interest in the domain name in issue.

6.3 Paragraph 4(b) of the Policy sets out circumstances which, again in particular but without limitation, if found the Panel to be present shall be evidence of the registration and use of a domain name in bad faith.

6.4 Identical or Confusingly Similar

The Complainant’s EDMUND’S trademark and the domain name in issue, <edmuns.com>, are – as noted – different only in respect of a missing second letter “d” and an apostrophe in the domain name. They are, in every sense, confusingly similar. Accordingly, the Panel finds that the Complaint satisfies the requirement of paragraph 4(a)(i) of the Policy,

6.5 Rights or Legitimate Interests

Use of the domain name in issue has not been authorized by the Complainant. There is no evidence that the Respondent can bring itself within any of the circumstances set out in paragraph 4(c) of the Policy. There is no evidence that the Respondent is commonly known as the disputed domain name, despite the apparent similarity to the name “Ed Munski” provided in the registrant information. Nor indeed is there any evidence that such an individual exists other than the entry of the name itself. There is no website at the disputed domain name, which resolves automatically to a website at “megago.com”. This website includes a web directory, a search facility and a substantial number of what appear to be click-through links from which the operator presumably derives commercial revenue. The Panel is accordingly satisfied that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, which has not been rebutted by the Respondent. In the absence of a Response, the overwhelming indications are – as proposed by the Complainant – that this is a blatant case of typosquatting. The Panel agrees with the Microsoft Panel that typosquatting is the obverse of a legitimate or fair use of a domain name. Accordingly, on the facts presented in the Complaint – which have not been challenged by the Respondent – the Complaint meets the requirements of paragraph 4(a)(ii) of the Policy.

6.6 Registered and Used in Bad Faith

In the Panel’s view – in the absence of a convincing case to the contrary – a finding in the Complainant’s favour under paragraph 4(a)(ii) of the Policy in this case logically leads to a similar finding under paragraph 4(a)(iii). The Panel agrees with the ESPN Panel that typosquatting is of itself evidence of bad faith. The probability in this case is that the disputed domain name was chosen precisely because of its evident and confusing similarity to the Complainant’s known mark, and that the Respondent was intending and is now using the site to profit either directly or indirectly from this likelihood of confusion. The Panel is accordingly satisfied on balance in these circumstances that the domain name in issue was registered and is being used in bad faith. The fact that the registrant’s name – Ed Munski – is a close facsimile of the domain name <edmuns.com>, coupled with the fact that the domain name in issue redirects the Internet user to the “megago.com” website, if anything tend to confirm the likelihood of bad faith in this case. Accordingly, the Complaint also passes the dual hurdles of paragraph 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 name <edmuns.com> be transferred to the Complainant.

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David Perkins
Sole Panelist

Dated: October 3, 2006