MapQuest.com, Inc. v. webgophers

WIPO Arbitration

and Mediation Center

ADMINISTRATIVE

PANEL DECISION

MapQuest.com,

Inc. v. Earl Hudsucker and webgophers a/k/a Jeremy Turner

Case No.

D2001-0269

1. The Parties

The Complainant is

MapQuest.com, Inc., a Pennsylvania corporation whose principal place of

business is at 3710 Hempland Road, Mountville, Pennsylvania 17554, USA.

The Complainant is represented by James R. Davis, II of Arent Fox Kintner

Plotkin & Kahn, with a mailing address of 1050 Connecticut Avenue, NW,

Washington, DC 20036, USA.

The Respondents ("Respondent")are

Earl Hudsucker and webgophers a/k/a Jeremy Turner, whose full address

is P.O. Box 109, Pasadena, California 91102, USA.

2. The Domain Name

and Registrar

The Domain Name subject

to this Complaint is <mapqwest.com>. The Registrar of the Domain Name

is Register.com of 5785 8th Avenue, 11th floor, New York, New York 10018,

USA.

3. Procedural History

The complaint was filed

with the WIPO Arbitration and Mediation Center on February 20, 2001

and assigned the case number D2001-0269.

On March 15, 2001,

the Complainant was notified of a deficiency in its complaint in that according

to information the Center had received from the Registrar, the registrant

of record for the disputed domain name <mapqwest.com> is not the person/entity

specified in the Complaint as the Respondent, in accordance with Paragraph

3(b)(xiii) of the Rules for Uniform Domain Name Dispute Resolution Policy

("Rules"). The deficiency in the complaint was corrected by the

Complainant by notice dated March 20, 2001.

WIPO verified that

the amended complaint satisfied the formal requirements of the Policy, Rules,

and Supplemental Rules, in accordance with paragraph 4(a) of the Rules,

and paragraph 5 of the Supplemental Rules for Uniform Domain Name Dispute

Resolution Policy ("Supplemental Rules"). The Administrative Panelist

("Panel") is satisfied that the complaint satisfied the Rules

and Supplemental Rules.

Notification of the

complaint and commencement of the administrative proceedings were given

to the Respondent by notice dated March 28, 2001. The notification of complaint

and commencement of administrative proceeding were sent by email to the

Respondent at the email address noted above. The hard copy of the document

was also transmitted by courier and the Panelist has seen the courier receipt.

The Panelist is satisfied that the complaint satisfied the Rules and the

Supplemental Rules with regard to notification. No response was received

by the expiry of the twenty-day deadline on April 16, 2001. Notification

of the Respondent’s default was given on April 23, 2001 by email at the

address given in the complaint. The Panel is therefore satisfied that the

notification of the Respondent’s default was effectively given.

The Panel was properly

constituted. The undersigned Panelist submitted a Statement of Acceptance

and Declaration of Impartiality and Independence.

The Panel has not received

any requests from Complainant or Respondent regarding further submissions,

waivers, or extensions of deadlines. The Panel has not found it necessary

to request any further information from the parties, as a consequence of

which the date scheduled for the issuance of the Panel’s decision is May

23, 2001.

4. Factual Background

A. Complainant

The Complainant is

MapQuest.com, Inc. ("MapQuest"). The Complainant is the owner

of a federal trademark registration and several applications for the mark

MAPQUEST, including Reg. No. 2,129,378, which was registered on January

13, 1998 (evidence of U.S. trademark registration/applications included

under Annex B).

The mark is used in

connection with "on-line information services providing interactive

access to geographic information, map images, and downloadable software

programs, namely, consumer oriented travel, business, education and entertainment

applications." (See Annex B). MapQuest provides various map, travel,

and similar products and services. (See Annex G).

MapQuest uses the mark

MAPQUEST.COM as a domain name for its portal website. MapQuest owns federal

trademark application Ser. No. 75-671,705 for its MAPQUEST.COM mark.

5. Parties’ Contentions

The Complainant contends:

(i) The Domain

name <mapqwest.com> registered by Respondent is identical in connotation

and sound, and nearly identical in appearance, to the MAPQUEST and MAPQUEST.COM

marks. Complainant contends that consumer confusion is likely because

Respondent is using "mapqwest" in connection with websites that

provide products and services that are identical to those offered by MapQuest

under its famous and distinctive MAPQUEST and MAPQUEST.COM marks. (See

Annex D). Complainant states that because of this, consumers are likely

to believe falsely that MapQuest is affiliated with or endorses the other

map services offered under <mapqwest.com>.

(ii) There is

no evidence that the Respondent has any rights or legitimate interest

in the domain name. On July 8, 1999, Respondent registered the domain

name <mapqwest.com> and began using it in connection with at least

two different map-related commercial online services, "Maps.com"

and "MapBlast!," as shown in Annex D. Respondent does not mention

the name or word "Mapqwest" at either of the sites promoted

at <mapqwest.com>.

(iii) The Complainant

contends that Respondent’s bad faith registration of <mapqwest.com>is

evidenced by the fact that it registered the <mapqwest.com> domain

name many years after MapQuest adopted and first used its MAPQUEST and

MAPQUEST.COM marks and long after the MAPQUEST mark was registered in

the United States. Complainant states that Respondent registered and uses

the domain name with bad faith intent to capitalize on its famous marks,

and profit from the goodwill MapQuest has built up in its famous marks.

In the absence of a

response from the Respondent, there are, of course, no submissions to counter

the Complainant’s submissions. The Panel, therefore, has no alternative

but to determine the case on the basis of the Complainant’s submissions

only and to determine whether the Complainant has established its complaint.

6. Discussion and

Findings

(i) The domain

names registered by the Respondents are identical or confusingly similar

to a mark owned by the Complainants.

The domain name in

dispute is <mapqwest.com>. The domain name is identical in sound

and almost identical in appearance to the MAPQUEST and MAPQUEST.COM marks.

The information and services provided by the websites promoted at <mapqwest.com>

are identical to those provided by MapQuest as shown in Annex G to the

Complaint. The Respondent may be taking advantage of Mapquest’s customer

goodwill through use of this website and customers may be confused by

Respondent’s use of the disputed domain name.

The Panel dismisses

Complainant’s contention that the MAPQUEST and MAPQUEST.COM names are

famous marks, and its implied assertion that Respondent’s use of the <mapqwest.com>

domain name dilutes the marks. No evidence, other than Complainant’s statements,

evidences a finding that the marks are famous or diluted. On their face,

neither mark has been in use long enough to have obtained famous status.

Nevertheless, the

Panel finds for the Complainant on the first element, that Respondent’s

domain name is identical or confusingly similar to the service marks in

which the Complainant has rights.

(ii) The Respondents

have no right or legitimate interest in the domain names.

Respondent has no

rights or legitimate interests in respect to the domain name <mapqwest.com>.

Although Respondent operates a website associated with the domain name

<mapqwest.com> that offers map-related services, and has done so

since 1999, Respondent uses the trade names "Maps.com" and "MapBlast!"

for such services and on such website, and does not appear to use the

domain name <mapqwest.com> as a tradename or as a trademark in any

other manner. Based on Complainant’s assertions, and Respondent’s default,

the Panel has no choice but to agree with Complainant that Respondent

did not register or use the domain name to promote a service by the name

of Mapqwest.

The Panel therefore

concludes that the Respondent has no right or legitimate interest in the

domain name. Mere registration alone cannot constitute such rights. The

Complainant therefore succeeds in proving the second element.

(iii) The domain

names have been registered and are being used in bad faith.

The Panel finds that

the Respondent registered and used the disputed domain name in bad faith.

Again, in the absence of any contrary evidence by Respondent, the Panel

finds that the slight difference in spelling between <mapqwest.com>

and Complainant’s marks demonstrates Respondent’s attempt to capture consumers

that misspell or mistype the MapQuest name when intending to visit the

<mapquest.com> website.

Based on the correspondence

sent by MapQuest’s counsel to Respondent (See Annex E to the Complaint),

and MapQuest’s trademark registrations/applications for the marks MAPQUEST

and MAPQUEST.COM, it doesn’t appear as though Respondent has made a legitimate

noncommercial or fair use of the marks that are confusingly similar to

the domain name <mapqwest.com>.

The Panel therefore

concludes that the Complainant has succeeded in proving that the domain

name was registered and is being used in bad faith.

It follows that the

Complainant has proved its three submissions in accordance with paragraph

4(a) of the Rules, and that accordingly, the Complainant has succeeded

in its complaint.

7. Decision

In light of the foregoing,

the Administrative Panel decides that the domain name registered by Respondent

is confusingly similar to the trademarks of Complainant, that the Respondent

has no right or legitimate interest in respect of the domain name, and that

the Respondent’s domain name has been registered and is being used in bad

faith.

Accordingly, pursuant

to paragraph 4(i) of the Uniform Domain Name Dispute Resolution Policy,

the Administrative Panel requires that registration of the domain name <mapqwest.com>

be transferred to Complainant.

Timothy

D. Casey

Sole Panelist

Dated: May

23, 2001

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