WIPO

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Edmunds.com, Inc v. Domain Administrator

Case No. D2006-1195

 

1. The Parties

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

The Respondent is Domain Administrator, Cayman Islands, United Kingdom of Great Britain and Northern Island.

 

2. The Domain Name and Registrar

The disputed domain name <edmands.com> is registered with Parava Networks, Inc. dba RegistrateYa.com & nAAme.com.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 16, 2006. On September 19, 2006, the Center transmitted by email to Parava Networks, Inc. dba RegistrateYa.com & nAAme.com a request for registrar verification in connection with the domain name at issue. On September 25, 2006, Parava Networks, Inc. dba RegistrateYa.com & nAAme.com 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 September 26, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was October 16, 2006. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 18, 2006.

The Center appointed Roberto Bianchi as the sole panelist in this matter on November 2, 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

Complainant has alleged and evidenced the following facts and circumstances without any opposition by Respondent:

- Edmunds.com, Inc. (“Edmunds”) is a leading company in the automotive information industry since it first published its Edmunds car-buying guides in 1966. In 1995 Edmunds launched “www.edmunds.com”, an automotive website featuring information on vehicle pricing, 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 “www.edmunds.com” website has been widely recognized in both the industry and mainstream press.

- Edmunds owns a U. S. federal trademark registration for the mark EDMUND’S, covering “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” (Registration No. 2,106,713). The trademark application was filed on July 12, 1996, and the mark was registered on October 21, 1997.

- The disputed domain name was created on June 9, 2006. Domain Administrator is the current registrant of the domain name.

 

5. Parties’ Contentions

A. Complainant

In short, Complainant contends the following:

- The disputed domain name is confusingly similar to Complainant’s <edmunds.com> domain name, as well as its business name and famous mark EDMUNDS.

- Respondent does not have any trademark, intellectual property rights or any other legitimate interest in the domain name. There is no indication that Respondent uses this variation as its legal or business name, or that Respondent ever used the domain name and/or a name closely corresponding to Complainant’ mark EDMUND’S prior to Complainant’s launch of its “www.edmunds.com” website in 1995. The sole purpose of Respondent’s selection of the disputed domain name is to improperly capitalize on the reputation and goodwill established by Edmunds over its long history. Under these circumstances, Respondent’s registration and use of the disputed domain name cannot constitute a “fair use.”

- Respondent has registered and used the contested domain name in bad faith. Respondent’s selection of a domain name that is virtually identical (except for the replacement of a “u” with an “a”) to the heavily promoted and well-recognized trademark of Complainant clearly indicates bad faith intent. Respondent’s decision was part of a scheme to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Edmunds’ domain name <edmunds.com> and mark EDMUND’S.

B. Respondent

Respondent did not reply to Complainant’s contentions.

 

6. Discussion and Findings

According to Policy paragraph 4(a), in order to obtain transfer of a disputed domain name a complainant must prove each of the following:

(i) the domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights; and,

(ii) 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.

A. Identical or Confusingly Similar

As seen at section 4 above, Complainant owns trademark rights in the EDMUND’S mark. Its registration pre-dates the registration of the disputed domain name. A side-by-side comparison of both identifiers shows that the only differences with the EDMUND’S mark is the substitution of the letter “a” for the letter “u”, and the deletion of the apostrophe in the domain name. This leads the Panel to believe that the disputed domain name is confusingly similar to the Complainant’s mark. See Edmunds.com, Inc. v. Yingkun Guo, dba This domain name is 4 sale, WIPO Case No. D2006-0694 (finding that the deleted letters and deleted apostrophe in <edmnds.com> and <edunds.com> do not significantly affect the appearance or pronunciation of the domain name, that this conduct is commonly referred to as “typosquatting”, and that it creates virtually identical and/or confusingly similar marks to the Complainant’s EDMUND’S trademark). See also Edmunds.com, Inc. v. The Registrant of <edmounds.com>, Free Domains Parking, Andrey Vasiliev, WIPO Case No. D2006-0741 (finding that the <edmounds.com> domain name is a predictable misspelling of the <edmunds.com> domain name, and that neither the omission of the apostrophe nor the additional vowel significantly affects the appearance or pronunciation of it, a conduct commonly referred to as “typosquatting”, and creating a virtually identical and/or confusingly similar mark to the Complainant’s trademark).

The first requirement of the Policy is thus met.

B. Rights or Legitimate Interests

There is no evidence that Respondent has ever used or prepared 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 that Respondent has been commonly known by the domain name, pursuant to Policy paragraphs 4.c.i and 4.c.ii.

Further, as evidenced by Complainant with a printout annexed to the Complaint, Respondent’s website under the disputed domain name consists of a single web page with the title “edmands.com”, followed by a text stating “Here are some related websites for “edmands.com””, and a list of links to the websites of various companies.

It is a consensus view of WIPO panels that a panel may visit the Internet site linked to the disputed domain name in order to obtain more information about the respondent and the use of the domain name. A panel may also undertake limited factual research into matters of public record if it feels that it needs that assistance in reaching a decision. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions at 4.1 available at http://www.wipo.int/amc/en/domains/search/overview/index.html. The Panel’s research indicates that most of the “sponsored links” listed on the printout, such as “www.drivetime.com”, “www.mbusa.com”, “www.secretautoprice.com”, “www.newcarinsider.com”, “www.tradetrackerusa.com”, “www.pricequotes.com”, “www.autoextra.com”, and “www.livedeal.com”, provide car-related information, thus competing with Complainant’s automotive information services covered by the EDMUND’S mark, as well as other services related to car-pricing. As all these links have commercial nature, Respondent cannot be said to be “making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue”, pursuant to Policy paragraph 4(c)(iii)

Failing any submission in Respondent’s favor, the Panel concludes that Complainant has made out its case that Respondent lacks rights or legitimate interests in the domain name.

C. Registered and Used in Bad Faith

Complainant contends that Respondent’s selection of a domain name virtually identical to the promoted and well-recognized trademark of Complainant clearly indicates bad faith intent, and that Respondent’s decision was part of a scheme to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with the mark EDMUND’S.

As noticed by the Panel on November 13, 2006 during his visit to the website at “www.edmands.com”, Respondent appears to be using the disputed domain name to generate income through its website by gathering search data from Oingo.com, a pay-per-click search engine apparently affiliated with the Google AdSense Domain Program, and providing links to several companies in competition with Complainant. This conduct clearly fits within the description of Policy paragraph 4(b)(iv) (“by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location”). See RX America, LLC. v. Matthew Smith, WIPO Case No. D2005-0540 (finding that respondent’s use of the domain name to generate income through Respondent’s website by gathering search data from “Oingo.com”, and providing links to various companies in competition with complainant meets the elements of Policy paragraph 4(b)(iv)). See also Corbis Corporation v. RegisterFly.com/Whois Protection Service/surf advertising company/ Joseph, Graham, WIPO Case No. D2006-0546 (finding that respondent’s use of domain names to divert Internet users to links of Complainant’s competitors for obtaining “click-through” revenues was a use in bad faith, as it free rides on Complainant’s mark and goodwill).

Additionally, Respondent appears to have furnished false or misleading contact details when it registered the disputed domain name.1 This circumstance is suggestive of bad faith. See Consitex S.A. v. Mr. Hugo Bazzo, WIPO Case No. D2003-0520 (providing false contact details regarded as an indication of a registration and use in bad faith).

The Panel concludes that Respondent has registered and used the domain name in bad faith.

 

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 <edmands.com> be transferred to the Complainant.


Roberto Bianchi
Sole Panelist

Dated: November 16, 2006


1 At the time of registration, Respondent stated its address as “P.O. Box 533 WB, West Bay, KY 000000, US”. “KY” and “US” can stand for the State of Kentucky and the United States of America, respectively. ”. However, “West Bay” is a district of the Grand Cayman Island, and “KY” is also the country code or ISO 3166-1-alpha-2 code element corresponding to the Cayman Islands (United Kingdom of Great Britain and Northern Island) within the ISO 3166-1 standard. See “English country names and code elements” at http://www.iso.org/iso/en/prods-services/iso3166ma/02iso-3166-code-lists/list-en1.html. Furthermore, the telephone number indicated by Respondent is “+1. 3459251600”, thus pointing at a phone number in Cayman Islands. The initial “1” is the assigned country code (calling code) for Cayman Islands according to the List of ITU-T Recommendation E.164 (position on January 1, 2006) available at http://www.itu.int/dms_pub/itu-t/opb/sp/T-SP-E.164A-2006-PDF-E.pdf. The area code of Cayman Islands is 345. See http://www.nanpa.com/nas/public/npa_query_step2.do; nanpaid=Fc11YcLYptJ3kPdWG3V2HH53QdtNQyNfLvSLhXQpyp9JszCM0T11!1566246902?method=displayNpa on the North American Numbering Plan Administration’s website. Instead, Kentucky’s area codes are 270, 502, 606 and 859. See http://www.nanpa.com/area_code_maps/display.html?ky. Accordingly, the country of Respondent at section 1 of this decision is shown as “the Cayman Islands (United Kingdom of Great Britain and Northern Island