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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Edmunds.com Inc. v. Wan-Fu China, Ltd.

Case No. D2007-0339

 

1. The Parties

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

The Respondent is Wan-Fu China, Ltd., of Nassau, Bahamas.

2. The Domain Name and Registrar

The disputed domain name <wwedmund.com> is registered with BelgiumDomains, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 7, 2007. On March 9, 2007, the Center transmitted by email to DomainDoorman, LLC a request for registrar verification in connection with the domain name at issue. On March 10, 2007, DomainDoorman, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details and informing the Center that the disputed domain name is registered at BelgiumDomains, LLC (same contact person for both registrars). In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on March 20, 2007. The Center verified that the Complaint together with the amendment to 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 April 22, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was April 11, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 12, 2007.

The Center appointed Susanna H.S. Leong as the sole panelist in this matter on April 25, 2007. 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

The Complainant, Edmunds.com, Inc. is in the automotive information industry business and has first published its EDMUND’S car buying guides in 1966. Over the last forty years, the Complainant has continuously developed its line of goods and services to best serve its customers. In 1995, the Complainant launched “www.edmunds.com”, which was the first automotive information website. The information provided on the Complainant’s website includes vehicle pricing data, technical and performance specifications, automotive reviews, user discussion forums, automotive-related news, vehicle photos and videos, and a host of other data and information relevant to car buyers, owners, and enthusiasts. In the eleven years since its launch, the Complainant has been providing online resources for automotive information by consistently offering innovative, user-friendly features through its website “www.edmunds.com”.

In addition to the <edmunds.com> domain name (as well as the domain name <edmund.com>, the Complainant also owns a federal trade mark registration for the mark EDMUND’S for “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” (United States Trademark Registration No. 2,106,713). The Complainant has used the EDMUND’S mark in connection with its business since the company was founded in 1966.

 

5. Parties’ Contentions

A. Complainant

Identical or Confusingly Similar

The Complainant has used the EDMUND’S mark in connection with its business since the company was founded in 1966 and asserts that this mark is famous in the industry and is one of the Complainants’ most valuable assets. The Complainant cites the Wall Street Journal which has characterized the Complainant’s mark as “a brand name car buyers trust”. The Complainant asserts that its website “www.edmunds.com” is the central focus of the Complainant’ business today, currently 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. The Complainant’s website “www.edmunds.com” has established itself as the premier online resource for automotive information and its reputation has been widely recognized in both the industry and mainstream press. In addition to the <edmunds.com> domain name (as well as the domain name <edmund.com>), the Complainant also owns a federal trade mark registration for the mark EDMUND’S for “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” (United States Trademark Registration No. 2,106,713). Thus, the Complainant asserts that it has rights in the registered trade mark EDMUND’S.

The Complainant asserts that the Respondent has registered a domain name <wwedmund.com> which is confusingly similar to the Complainant’ domain name, its business name and its famous mark EDMUND’S. A side-by-side comparison of the disputed domain name and the Complainant’ name and mark shows that the only differences are Respondent’s addition of the non-distinct “ww” at the beginning and omitting the letter “s” from the end of Complainant’s name and mark. The Complainant argues that this may also be viewed as an omission of a “w.” and an “s” in typing Complainant’s domain name <edmunds.com>. Furthermore, the Complainant pointed out the fact that it has also registered the domain name <edmund.com> long before the Respondent’s registration of disputed domain name <wwedmund.com>. The Complainant cited previous UDRP WIPO Panels’ decisions in which the panel has found domain names neglecting the period after the “www” prefix as well as misspelling the mark are confusingly similar to the asserted mark. The Panel has also held that domain names only typing a “ww” prefix are confusingly similar to the Complainant’s mark. See Amazon.com, Inc. v. Lorna Kang a/k/a Yonng Li a/k/a Mahmoud Nadim a/k/a The Data in Bulkregister.com’s WHOIS Database is p a/k/a Amjad Kausar, WIPO Case No. D2005-0635 (September 7, 2005); Neuberger Berman Inc. v. Alfred Jacobsen, WIPO Case No. D2000-0323 (June 12, 2000); Dow Jones & Company, Inc. v. John Zuccarini, WIPO Case No. D2000-0578 (August 28, 2000); and Reuters Limited v. Global Net 2000, Inc., D2000-0441. In addition, the Complainant also argues that the Courts have consistently recognized as “confusingly similar” the use of terms that are spelled only slightly differently than well-established marks. See John Walker & Sons, Ltd. v. Bethea, 305 F.Supp. 1302 (D.S.C. 1969); Dreamwerks Production Group, Inc. v. SKG Studio, 142 F.3d 1127, 1131 (9th Cir. 1998).

After considering all relevant factors, the Complainant asserts that there can be no doubt that the disputed domain name is confusingly similar to the Complainants’ famous name and mark.

Rights or Legitimate Interests

The Complainant asserts that the Respondent does not have any trade mark or intellectual property rights or any other legitimate interest in the domain name <wwedmund.com>. There is no indication that the Respondent uses this variation as its legal or business name. Moreover, there is no evidence to suggest that the Respondent ever used the domain name and/or a name closely corresponding to Edmunds’ mark EDMUND’S prior to Edmunds’ launch of “www.edmunds.com” in 1995. Thus, the Complainant asserts that it is thus clear that the sole purpose of Respondent’s selection of the disputed domain name is to improperly capitalize on the reputation and goodwill established by the Complainant over its long history.

The Complainant argues that under these circumstances, the Respondent’s registration and use of the disputed domain name cannot constitute a “fair use.” The Respondent’s choice of the disputed domain name shows an obvious attempt to trade on the goodwill of Complainant. Such obvious attempts to trade on another’s goodwill are not a legitimate noncommercial or fair use of the name as required by Paragraph 4(c) of the UDRP. The Respondent’s registration of a domain name which obviously trades on the Complainant’s famous mark and goodwill constitutes an intent to register the name for commercial gain and to misleadingly divert consumers.

The Complainant concludes that the evidence taken together demonstrates that the Respondent has made every effort to divert consumers from the Complainant’s website by offering a confusingly similar website. Such actions are strong evidence that the Respondent has no rights or legitimate interest in the <wwedmund.com> domain name.

Registered and Used in Bad Faith

The Complainant asserts that the Respondent’s selection of a domain name that is “confusingly similar” to the heavily promoted and well-recognized trade mark of Complainant clearly indicates a bad faith intent. The Complainant argues that the Respondent’s decision was part of a scheme to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainants’ domain name <edmunds.com> and mark EDMUND’S. The Complainant cites Edmunds.com Inc. v. Web Advertising, Corp. / Keyword Marketing, Inc., WIPO Case No. D2006-1380 (December 25, 2006) in which the panel noted that the Respondents were the same entity despite the changing registrant names and addresses and in its determination, the panel considered the facts that: (1) the websites were substantially similar, (2) the websites were the same as they had been under a prior registrant name and address, (3) the prior registrant information was the same for each respondent, (4) all addresses were within the West Indies, and (5) Respondent has a history of providing unreliable contact information.

The Complainant asserts that the Respondent has engaged in a pattern of changing domain servers and the registrant name and address and the Complainant has collated evidence of this change which is evidence of the Respondent registering and using the disputed domain name in bad faith.

Finally, as further evidence of the Respondent’s bad faith intent in registering the disputed domain name, the Complainant reminds the Panel in the present case that the Respondent has a history of violating the UDRP. As of January 4, 2007, the Respondent had the same exact address as a defaulting respondent in a UDRP complaint brought by the Complainant. Instead of responding to such complaint, the Respondent simply defaulted. However, the Respondent then continued its bad faith pattern by registering the disputed domain name <wwedmund.com> on January 1, 2007.

Consequently, the Complainant argues that in combination the Respondent’s actions show its bad faith intent in registering and using the disputed domain name.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

 

6. Discussion and Findings

In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the disputed domain name, the Complainant must establish that each of the three following elements is satisfied:

i) the domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;

ii) the Respondent has no rights or legitimate interests in respect of the domain name; and

iii) the domain name has been registered and is being used in bad faith.

Paragraph 4(a) of the Policy clearly states that the burden of proof lies with the Complainant to establish that all these three elements are satisfied in this proceeding.

Furthermore, pursuant to paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Moreover, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under the Rules of any request from the Panel, the Panel shall draw such inferences therefrom, as it deems appropriate.

On the basis of the evidence introduced by the Complainant and in particular with regard to the content of the relevant provisions of the Policy, (paragraphs 4(a), (b), (c)), the Panel concludes as follows:

A. Identical or Confusingly Similar

The Complainant has produced substantial evidence to demonstrate that it has registered trade mark rights and continue to have such rights in the EDMUND’S mark in United States of America. Furthermore, the Complainant has adduced evidence before the Panel to show that it has established a substantial Internet presence through the registration of domain names such as <edmunds.com> and <edmund.com> which incorporated in their entirety the Complainant’s trade mark EDMUND’S.

In assessing the degree of similarity between the Complainant’s trade mark and the disputed domain name, the Panel shall have regard to the degree of visual, aural or conceptual similarity between them and where appropriate, evaluate the importance to be attached to these different elements. The issue of degree of similarity between the Complainant’s EDMUND’S mark and the disputed domain name is to be considered from the perspective of the average consumer of the goods or services concerned and in this case, the average consumer is the Internet user seeking to purchase or download information about the Complainant’s products and services.

The disputed domain name <wwedmund.com> comprises a reproduction of the Complainant’s trade mark EDMUND’S but without the letter “s” and an inclusion of the letters “ww” in beginning. The Panel finds that the omission of the letter “s” and the addition of the letters “ww” are insignificant to distinguish the Respondent’s domain name from the Complainant’s mark EDMUND’S. This finding is further buttressed by the fact that the Complainant has since 1995 been using the domain names <edmunds.com> and <edmund.com> and has established a substantial Internet presence through the wide usage of these domain names incorporating in their entirety the Complainant’s trade mark EDMUND’S.

In addition, bearing in mind the following factors, in particular (a) the widespread reputation of the Complainant’s trade mark both online and offline; (b) the dominant component of the disputed domain name; and (d) the visual, aural and similarities between them, the Panel finds that the omission of the letter “s” and the addition of the letters “ww” in the Respondent’s domain name does not prevent the disputed domain name from being identical or confusingly similar and is not sufficient to render the disputed domain name distinctive from the trade marks of the Complainant.

The Panel finds for the Complainant in the first part of the test.

B. Rights or Legitimate Interests

Based on the following reasons the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name:

1. The Respondent has not provided evidence of a legitimate use of the domain name or reasons to justify the choice of the word “wwedmund” in its business operations;

2. There was no evidence to show that the Complainant has licensed or otherwise permitted the Respondent to use its trade mark or to apply for or use any domain name incorporating the trade mark;

3. There is no indication whatsoever that the Respondent is commonly known by the disputed domain name and/or is using the domain name in connection with a bona fide offering of goods or services;

4. The Complainant and its EDMUND’S mark as well as its domain names <edmunds.com> and <edmund.com> which incorporate in their entirety the Complainant’s trade mark enjoy a widespread reputation with regard to the automobile information business both online and offline. Consequently, in the absence of contrary evidence from the Respondent, the EDMUND’S mark is not one that traders could legitimately adopt other than for the purpose of creating an impression of an association with the Complainant.+

According to paragraph 4(c) of the Policy, a respondent may establish its rights or legitimate interests in the domain name, among other circumstances, by showing any of the following elements:

“(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trade mark or service mark rights; or

(iii) you [Respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.”

The Respondent has chosen not to respond and the Panel does not have before it any evidence of the circumstances of the type specified in paragraph 4(c) of the Policy, or of any other circumstances which might reasonably be said to give to the Respondent a right to or legitimate interest in the domain name.

The Panel finds for the Complainant on the second part of the test.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the domain name in bad faith, namely:

(i) circumstances indicating that the Respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trade mark or service mark or to a competitor of the complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) the Respondent has registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or

(iii) the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website 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 Respondent’s website or location or of a product.

The above circumstances are indicative of registration and use of the domain name in bad faith but they are by no means exhaustive. Evidence of other circumstances adduced before the Panel can also constitute registration and use of the domain name in bad faith by the Respondent in the appropriate cases.

One important consideration in the Panel’s assessment of whether the Respondent has registered and used the domain name in bad faith is prior knowledge on the part of the Respondent of the Complainant’s rights in the trade mark concerned. In this day and age of the Internet and advancement in information technology, the reputation of brands and trade marks transcend national borders. Therefore, the Panel finds that it is highly unlikely that the Respondent would not have had actual notice of the Complainant’s trade mark rights at the time of the registration of the domain name. In the present case, the argument that the Respondent must have actual notice of the Complainant’s trade mark rights is further buttressed by the evidence adduced before the Panel that the Complainant has established for itself a widespread reputation in the business of an automobile information provider both offline and online, since 1966 and 1995 respectively. A quick search over the Internet would reveal domain names or websites which are identical or similar to the Respondent’s choice of domain name. Consequently, it would have been pertinent for the Respondent to provide an explanation of its choice in the disputed domain name, failing which the Panel draws the conclusion that the disputed domain name was registered in bad faith with intent to create an impression of an association with the Complainant and its products.

The Respondent’s bad faith in the registration and use of the disputed domain name is further evidenced by the following:

(a) that the disputed domain name has not been used by the Respondent since registration for any genuine purposes such as the bona fide offering of goods or services;

(b) that the Respondent has a history of registering and using domain names which are identical or similar to trade marks in which trade mark owners have rights;

(c) that the Respondent has engaged in frequent changes of Domain Name Servers and registrant names and addresses; and

(d) that the widespread reputation of the Complainant’s mark EDMUND’S both offline and online coupled with the fact that the Respondent has failed to respond to the Complainant’s allegations, leads the Panel to conclude that the Respondent may have registered the disputed domain name for less than honorable intentions and that the primary purpose for the Respondent’s registration and use of the disputed domain name is that of free riding on the fame of the Complainant’s mark so as to divert Internet traffic to its website for advertisement revenues, whether through initial interest confusion or typo mistakes made by the Internet users when keying in the Complainant’s mark or domain names in search engines.

For the reasons cited above, the Panel finds for the Complainant on the third part of the test.

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 <wwedmund.com>, be transferred to the Complainant.


Susanna H.S. Leong
Sole Panelist

Dated: May 9, 2007

 

Источник информации: https://internet-law.ru/intlaw/udrp/2007/d2007-0339.html

 

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