WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Enkeboll Co. dba Enkeboll Designs v. Domains Ventures
Case No. D2007-1002
1. The Parties
The Complainant is The Enkeboll Co. dba Enkeboll Designs, Carson, California, United States of America, represented by Stetina Brunda Garred & Brucker, United States of America.
The Respondent is Domains Ventures, Xiamen, Fujian, China.
2. The Domain Name and Registrar
The disputed domain name <enkebol.com> is registered with Moniker Online Services, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 9, 2007. On July 12 2007, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the domain name at issue. On July 19, 2007, Moniker Online Services, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. 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 July 20, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was August 9, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 14, 2007.
The Center appointed Jon Lang as the sole panelist in this matter on August 31, 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 is a Californian corporation doing business as Enkeboll Designs and has been in the wood carving business since 1963. It has no affiliation with the Respondent and has not authorized it in any way.
It is the owner of the following trademarks – ENKEBOLL.COM, US Registration No. 2,642,160 registered in October 2002 and ENKEBOLLDESIGNS.COM, US Registration No. 2,496,836, registered in October 2001. The trademarks are used in connection with the provision of information in the field of architectural wood carvings and moldings on the Internet. The Complainant is also the owner of the ENKEBOLL.COM and ENKEBOLLDESIGNS.COM. The “enkeboll.com” website promotes the sale of architectural wood carvings under the EKEBOLL trademarks.
The Domain Name in dispute, <enkebol.com>, which was registered in August 2003, resolves to a website offering similar goods and services to that associated with the Complainant’s marks and in particular provides links to companies that offer for sale woodcarving products.
The Respondent’s domain name is visually and phonetically very similar to the Complainant’s marks. The only difference (ignoring the ‘.com’ suffix, is that the ‘ENKEBOL’ in the domain name in dispute has only one ‘l’ at the end of the word whereas the Complainant’s ENKEBOLL has two.
The Complainant notified the previous owner of the Domain Name in dispute of its interest but received no response. It appears ownership has now moved to the Respondent.
5. Parties’ Contentions
The Complainant contends that the Domain Name is confusingly similar to its ENKEBOLL trademarks and domain name. It also contends that the Respondent has not been using the domain name in connection with a bona fide offering of goods or services, is not commonly known by the domain name and is not making legitimate non-commercial or fair use of it. It further contends that the Respondent eventually intends to mislead or divert the Complainant’s customers or otherwise tarnish its trademarks.
Moreover the Complainant contends that the Respondent has no rights or legitimate interest in the domain name. It is suggested that the website “www.enkebol.com” receives monetary payment for providing links to third party sites offering for sale goods related to architectural wood carving products. In support of this, it is alleged that when certain names on the website are ‘clicked’, including that of the Complainant, a list of sponsored links appears.
The Complainant contends that the Respondent intends to divert the Complainant’s consumers for commercial gain – the Respondent has registered a domain name which Internet users, looking for the Complainant’s site, might mistakenly enter and has also designed a website which directs Internet users to companies offering similar goods to that of the Complainant.
Finally, the Complainant contends that the domain name was registered and is being used in bad faith. It is said that by using the domain in dispute, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s site by creating a likelihood of confusion with the Complainant’s registered marks as to the source sponsorship and endorsement of the Respondent’s site. It is suggested that the Respondent had no reason to register the domain name in dispute, other than for this purpose, given that the domain name is not its business name. Moreover, given the similarity between the domain name in dispute and the Complainant’s marks, it is suggested that the Respondent registered the domain name primarily for the purposes of disrupting the business of the Complainant – once inter users are diverted to the Respondent’s site, they are provided with numerous links to third parties offering for sale goods similar to the goods of the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires a complainant to prove that a respondent has registered a domain name which is
(i) identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) that the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
A complainant must prove each of these three elements.
A. Identical or Confusingly Similar
The domain name in issue is clearly very similar to the trademarks of the Complainant. Except for a missing second ‘l’ at the end, it is identical to the ENKEBOLL.COM mark. In the mind of the Internet user there may well arise a possibility, if not likelihood, that the owner of the domain name is in fact the owner of the mark or marks to which it is similar, or that there is some form of association between the Respondent and the Complainant. Thus the domain name in dispute is likely to be confusing to the public (as it suggests either a business of the Complainant or one associated with or endorsed or authorized by it).
Before leaving the discussion on ‘confusion’, it is worth mentioning typosquating. In the decision of Amazon.com, Inc. v. Steven Newman a/k/a Jill Wasserstein a/k/a Pluto Newman, WIPO Case No. D2006-0517, it was said that:
“The disputed domain names differ from the Complainant’s mark only by the change of a single letter in the domain name <amazoh.com> – the substitution of the letter ‘h’ for the letter ‘n’ – and the change of the same letter twice in the domain names <qmqzon.com> and <smszon.com> – the substitution the letter ‘q’ and ‘s’, respectively, for the letter ‘a’. Significantly, all of the substituted letters are proximately located to the original letters on a standard ‘qwerty’ keyboard, and the domain names are predictable mistypings of the Complainant’s mark. The Respondent’s registration of domain names that constitute common mistypings of the Complainant’s mark appears to be deliberate – a practice known as ‘typosquatting’. Given the foregoing, the Panel finds that the disputed domain names and the Complainant’s mark, when directly compared, are confusingly similar. See Wachovia Corporation v. American Consumers, First, WIPO Case No. D2004-0150 (<qachovia.com>, <wachpvia.com>, and <wscpovia.com> confusingly similar to WACHOVIA due to common mistyping on standard ‘qwerty’ keyboard).”
The domain name in issue is phonetically identical and almost identical visually to the Complainant’s marks and name. One can assume that the Complainant’s name is often misspelt without the second ‘l’. Even if the domain name was not phonetically identical, or visually so close in appearance, the fact that it would be so easy to mistype the Complaint’s name and arrive at the website to which the Respondent’s domain name resolves, leads to the conclusion that the domain is confusingly similar the mark ENKEBOLL
This element of paragraph 4 of the Policy has been established.
B. Rights or Legitimate Interests
A respondent can show it has rights to or legitimate interests in a domain name in various ways. For instance, it can show that it has been commonly known by the domain name or that it is making a legitimate noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers. However, the Respondent is not known by the domain name in issue and there is no evidence advanced by the Respondent of legitimate noncommercial or fair use. In the absence of contrary evidence, this Panel can only assume that the Respondent derives some commercial benefit from the website to which the domain name in dispute resolves, given the links to commercial third party sites that one finds there.
A respondent can also show, so as to establish rights or legitimate interests, that it was using a domain name in connection with a bona fide offering of goods or services. But promoting competing goods or services using a domain name confusingly similar to a complainant’s mark, is not a bona fide offering of goods or services. There is ample support for this proposition. For instance, in Philip Morris USA Inc. v. n/a, WIPO Case No. D2004-0462, it was said:
“To offer competing brands for sale using a domain name confusingly similar to the Complainant’s trademark is not a bona fide offering of goods within the meaning of paragraph 4(c)(i) of the Policy: See Pfizer Inc v. The Magic Islands, WIPO Case No. D2003-0870 (December 31, 2003); Nikon, Inc. and Nikon Corporation v. Technilab, Inc., WIPO Case No. D2000-1774 (February 26, 2001).”
In UDRP decision, Nikon, Inc. and Nikon Corporation v. Technilab, Inc., WIPO Case No. D2000-1774, (referred to above and in which transfers were ordered), it was said:
“On the facts of this case, it is clear that, under either approach, Respondent lacks a legitimate interest. That is because Respondent appears to have used at least the <nikoncamera.com> domain name to sell both Nikon products and goods of other manufacturers who compete directly against Nikon. See Mariah Boats, Inc., supra (finding no legitimate interest in the use of a mark in a domain name that “sells competitive products of other manufacturers”); Antera S.p.A v. Antera, Inc., WIPO Case No. D2000-0689 (September 28, 2000) (when a respondent’s proposed activities threaten a complainant with the possibility of competing against a confusing site, the respondent has not met its burden of showing a legitimate use). Even under the minority view, this use of a trademark owner’s mark to promote and sell competitive goods does not constitute a legitimate use.”
The Respondent in this case is not licensed in any way by the Complainant. There is no affiliation at all, and the Complainant has satisfied a prima facie case that the Respondent lacks rights or legitimate interests in the domain name in issue. The Respondent now therefore carries the burden of demonstrating such rights or legitimate interests, but has failed to do so. The Complainant has therefore also satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances that evidence registration and use of a domain name in bad faith. For instance, if there are circumstances indicating that a respondent has registered a domain name primarily for the purposes of disrupting the business of a competitor, that might be evidence of the registration and use of the domain name in bad faith. So too might there be such evidence where a respondent, in using the domain name, intentionally attempts to attract, for commercial gain, Internet users to its 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 website or of a product or service on the website.
In UDRP decision Mobile Communication Service Inc v. WebReg, RN, WIPO Case No. D2005-1304 it was said:
“Using a domain name “to redirect Internet users to websites that host links to external websites, including websites of Complainant’s competitors,” is evidence of bad faith. Royal Bank of Canada v. Chan, WIPO Case No. D2003-0031 (March 5, 2003).”
This appears to be the position in this Complaint.
In UDRP decision, Credit Suisse Group v. Freddy Iseli, WIPO Case No. D2002-0794, it was said:
“It has been held that actual or constructive knowledge of the Complainant’s rights in the trademarks is a factor supporting a finding of bad faith (see Trip.com v. Daniel Deamone, WIPO Case No. D2001-1066; Expedia, Inc. v. European Travel Network, WIPO Case No. D2000-0137). It is obvious from the facts in issue that the Respondent had actual knowledge of such rights.
Previous cases have also established that the deliberate choice and registration of a famous mark as domain names suggests, in the absence of an explanation from the Respondent, that the registrations were made in bad faith.”
Given the finding of confusion and in the circumstances of this Complaint, this Panel finds that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, which contains links to websites of competitors, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or of services available via the website. Accordingly this Panel finds, for the purposes of the Policy, that the domain name in issue was registered and is being used in bad faith.
One final point to mention here is that both bad faith registration and bad faith use must be established. However, the Respondent is not the original registrant of the domain name. But one does not need to consider the circumstances of the initial registration or the registration immediately prior to the Respondent taking ownership, because the transfer of a domain name to a third party amounts to a new registration. In MC Enterprises v. Mark Segal (Namegiant.com), WIPO Case No. D2005-1270, it was said that:
“The Respondent is not the original registrant of the subject domain name, but for the purposes of the Policy, his acquisition of the subject domain name constitutes registration.”
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, <enkebol.com> be transferred to the Complainant.
Dated: September 18, 2007