WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Demand Media, Inc. v. Global Publications Ltd
Case No. D2007-1677
1. The Parties
The Complainant is Demand Media, Inc., of United States of America, represented by Kirkpatrick & Lockhart Preston Gates Ellis LLP, United States of America.
The Respondent is Global Publications Ltd., of United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <enoncentral.com> is registered with Tucows, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 14, 2007. On November 16, 2007, the Center transmitted by email to Tucows, Inc. a request for registrar verification in connection with the domain name at issue. On November 16, 2007, 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. 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 November 27, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was December 17, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 24, 2007.
The Center appointed John Swinson as the sole panelist in this matter on January 8, 2008. 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.
On January 8, 2008, in response to the Notification of Panel Appointment, the Respondent sent an email to the Centre stating that it had not received any prior communication from the Center regarding the disputed domain name or these proceedings. On January 14, 2008, the Panel issued a Procedural Order allowing the Respondent until January 21, 2008 to file a response, in accordance with paragraph 12 of the Rules. The Respondent did not submit any response within this time.
4. Factual Background
eNom, Inc was founded in 1997 and became a leading online provider of domain name registrations and other online services. On May 1, 2006 it was announced that the Complainant (Demand Media, Inc.) had acquired eNom, Inc.
The Complainant still carries on the business under the name of “eNom”, from websites located at <www.enomcentral.com> and <www.enom.com>.
Through its websites, the Complainant offers domain registration services and domain name reseller services, as well as personalised email, web hosting and online design services. The Complainant claims to have over 10 million domain names on the eNom reseller platform.
The disputed domain name was registered by the Respondent on October 27, 2006.
5. Parties’ Contentions
The Complainant makes the following contentions:
The Complainant owns common law rights in the ENOM trademark and service mark. The Complainant holds a registered trade mark over ENOM (US registration no. 2,728,146) which has a first use date of December 5, 2002. The Complainant has used the mark continuously since that date.
The Complainant uses its ENOM mark worldwide as a second level domain in the <www.enom.com> and <www.enomcentral.com> websites which it operates. The services offered to consumers from these websites include domain names registration, website creation, personalised email accounts, security services and web hosting. The public has come to associate ENOM with the products and services offered by the Complainant on these websites.
The <www.enom.com> website averages over 300,000 visits per month (with 2.5 million pages viewed), while the <www.enoncentral.com> website averages over 80,000 visits per month (with 560,000 pages viewed).
The Complainant’s ENOM trade mark is entitled to broad protection as it would be considered an arbitrary or fanciful mark on the spectrum of distinctiveness. It would be considered such because “enom” has no English language meaning, and does not describe any goods or services offered by the Complainant.
The disputed domain name is virtually identical to the Complainant’s <enomcentral.com> domain name, in that it merely substitutes an “n” for the “m”. This is a common typographical error made by users, due to proximity of “n” and “m” on many keyboards (known as “typo squatting”). The disputed domain name is also visually and phonetically similar to the Complainant’s <enomcentral.com> domain name, which further increases the likelihood of confusion.
The disputed domain name also substantially incorporates the Complainant’s ENOM trade mark and is confusingly similar to the Complainant’s <enom.com> domain name, as the Respondent only substitutes an “n” for “m” and adds the generic term “central”. The term “central” does not eliminate the confusion because it is a common word suggesting a place where products or services may be conveniently found.
There is no evidence that the Respondent is or has been known by “enoncentral”. Neither the registrant, administrative contact or technical contact on WHOIS is described as “enoncentral”.
The Complainant has not licensed or permitted the Respondent to use its ENOM mark, or to use a domain name which incorporating the Complainant’s mark.
The Respondent’s use of the disputed domain name is an attempt to gain commercial benefit, from advertising products sold by the Complainant’s competitors. The Respondent’s use is not a bona fide offering of goods or services, or a legitimate non-commercial or fair use.
The Respondent has not made legitimate use of, or demonstrable preparations to legitimately use, the disputed domain name in connection with a bona fide offering of goods and services. Instead, the Respondent is using the disputed domain name to host a commercial domain registration service which directly competes with the Complainant’s goods and services provided under the ENOM trademark. As such, the Respondent is using the disputed domain name to divert Internet users from the Complainant’s websites because it attracts users looking for the Complainant’s services, and then offers them the services of a direct competitor.
The Respondent registered the disputed domain name two months after the Complainant registered its <enomcentral.com> domain name, nine years after Complainant registered its <enom.com> domain, and four years after the Complainant first used the ENOM trade mark in commerce. The fact that the Respondent uses a typo squatting domain to offer competing domain services is a strong indication that the Respondent was aware of Complainant’s services. Typo squatting itself is evidence of bad faith. There is also bad faith because the Respondent has registered a domain name with knowledge of another party’s rights in trade marks incorporated into that domain name.
The Respondent is using the disputed domain name to capitalize on the Internet traffic associated with the Complainant’s websites and ENOM trade mark. Consumers may become confused as to the source, sponsorship, affiliation or endorsement of the domain registration services advertised at the disputed domain name.
The Respondent did not reply to the Complainant’s contentions by way of a filed response. However, the Respondent sent an email to the Center on January 8, 2008, which stated that when the Respondent purchases domain names it looks for trademarks, and the Respondent was certain that there were no trademarks surrounding the dispute domain name.
The Respondent also stated that the name “enon” is a term used in many ways, and pointed to a Google search for “enon” which contains various results. In the email, the Respondent said that it makes sure when setting up a website that any content or information provided cannot be deemed to be anyone else’s content or information. For this reason the Respondent disputes that the disputed domain name was pointing to anything misleading.
6. Discussion and Findings
In order to succeed on its claim, the Complainant must show that all the elements set out in paragraph 4(a) of the Policy have been satisfied. The burden of proof is on the Complainant to show:
(i) the disputed domain names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in the disputed domain names; and
(iii) the disputed domain names have been registered and used by the Respondent in bad faith.
A. Identical or Confusingly Similar
To prove this element the Complainant must have trade or service mark rights, and the disputed domain names must be identical or confusingly similar to the Complainant’s trade or service mark.
The Complainant has registered service mark rights in ENOM (see US registration no. 2728146, registered on June 17, 2003).
The disputed domain name consists of the term “enoncentral”. The Panel finds that the “enon” component of the disputed domain name is confusingly similar to the Complainant’s ENOM trademark.
Slight changes in a word may be purposeful misspellings, “designed to take advantage of mistakes that consumers are likely to make when intending to enter Complaint’s website address” (see Info Space.com, Inc. v. Registrar Administrator Lew Blanck, WIPO Case No. D2000-0069; Nicole Kidman v. John Zuccarini, d/b/a Cupcake Party, WIPO Case No. D2000-1415). As the “n” and “m” appear next to each other on many keyboards it is likely that consumers will accidentally type “enon” instead of “enom”. The likelihood of confusion is even greater, because “enon” and “enom” look and sound almost identical (see Expedia, Inc. v Alvaro Collazo, WIPO Case No. D2003-0716).
However, the disputed domain name also contains the term “central”. This component of the disputed domain name is a generic word which can mean (amongst other things), a place which is centrally located and easy to reach. The following comments regarding the addition of the word “central” to a domain name (from Microsoft Corporation v Source One Management Services, Inc., WIPO Case No. D2005-0508) are equally applicable to this case:
“Used in combination with Complainant’s mark, it suggests in the disputed domain name a place where Complainant’s products (or services relating to them) may be conveniently found. The combination term … is not sufficiently distinguished from [the trademark] to avoid a finding of confusing similarity because an Internet user would be likely to associate the combination term with the trademark.”
The addition of “central” therefore does not eliminate the prima facie confusing similarity between the disputed domain name and the Complainant’s mark (see Leo Quinones, Jr. v. William Chambers, WIPO Case No. D2003-0252).
Further, as “enom” is not an English word with any particular meaning, and “central” is a common and descriptive word, the Panel finds that the most dominant part of the disputed domain name is “enon”, and this is the part that is confusingly similar to the Complainant’s trade mark.
The disputed domain name is also confusingly similar to the Complainant’s <enomcentral.com> domain name, as there is only one letter different, and both names are visually and aurally similar. It is possible that the Complainant has unregistered common law trade mark rights in “enomcentral”, and the disputed domain name would certainly be confusingly similar to that mark, however it is unnecessary to explore this point further as the Panel considers the disputed domain name to be confusingly similar to the Complainant’s registered mark.
Accordingly, the Panel finds that this element has been satisfied.
B. Rights or Legitimate Interests
In order to meet this element, the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the disputed domain names. Paragraph 4(c) of the Policy sets out three, non-exhaustive examples of rights or legitimate interests:
(i) prior to receiving notice of the dispute, the Respondent has used, or made demonstrable preparations to use, the disputed domain names in connection with a bona fide offering of goods or services;
(ii) the Respondent is commonly known by the disputed domain names, even if there are no trade mark or service mark rights;
(iii) the Respondent is making a legitimate non-commercial or fair use of the disputed domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
The Complainant is only required to raise a prima facie case under this element. Once the Complainant does so, the Respondent then has an evidential burden to rebut the prima facie case.
The Respondent does not appear to be known by the term “enon” or “enoncentral”. The Complainant, who is well known by the name “eNom”, has not licensed or permitted the Respondent to use its ENOM mark.
The website at the disputed domain name is not operational at the date of this decision. The Respondent is therefore not making a legitimate use of the dispute domain name. Nor has the Respondent provided evidence of any demonstrable preparations to legitimately use the disputed domain name in connection with a bona fide offering of goods and services.
In the complaint, the Complainant states that the Respondent was using the disputed domain name to host a commercial domain registration service called 123-reg. Annex I to the complaint contains a print out of the disputed domain name on October 19, 2007 and shows that the Respondent was offering domain names, web hosting, email and other services at that time.
The services previously offered by the Respondent from the disputed domain name clearly compete with the Complainant’s services. Accordingly, the Panel infers that the Respondent chose a typo squatting domain to redirect Internet users to its own website. Such use cannot constitute a bona fide offering of goods of services, or a non-commercial or fair use. It is therefore not a legitimate use under the Policy (see The Coryn Group, Inc., Apply Vacations West, Inc. v. V.S. International, WIPO Case No. D2003-0664).
The Complainant has presented a prima facie case indicating that the Respondent does not have any rights or legitimate interests in the disputed domain names. The Respondent has not filed any response in this proceeding, and has therefore failed to rebut the Complainant’s prima facie case.
Accordingly, the Panel finds that the second element is satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy enumerates four, non-inclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. Subparagraph (iv) includes circumstances where the Respondent, by using the disputed domain name, has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.
The Complainant is one of the world’s leading domain name wholesalers and has a significant reputation in the domain name industry. As the Respondent offered similar services from the disputed domain name, it can be inferred that the Respondent had knowledge of the domain name industry, and knew of the Complainant and its reputation. The Panel therefore infers that the Respondent had knowledge of the Complainant’s ENOM service mark and its <www.enom.com> and <www.enomcentral.com> websites.
The disputed domain name is almost identical to the Complainant’s domain name and it is very likely that consumers would believe the two websites are operated by the same entity. As the Respondent provided competing services to the Complainant when the disputed domain name was operational, the Panel infers that the Respondent registered the disputed domain name to intentionally divert Internet users from the Complainant’s website, for commercial gain.
The Panel determines that the Respondent registered and used the disputed domain names in bad faith. Accordingly, the third element has been satisfied.
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, <enoncentral.com> be transferred to the Complainant.
Dated: February 5, 2008