Edmunds.com, Inc. v. Azra Khan (EDMUMDS-COM-DOM)

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Edmunds.com Inc. v. Azra Khan

Case No. D2002-0281

1. The Parties

The Complainant in this administrative proceeding is Edmunds.com, Inc.,

a New York corporation with a principal place of business at 2401 Colorado Avenue,

Suite 250, Santa Monica, California 90404-3551, United States

of America.

The Respondent is Azra Khan, having an address at P.O. Box 382,

Rawalpindi, 46000, Pakistan.

2. The Domain Name and Registrar

The domain name in dispute is <edmumds.com>.

The Registrar with which said domain name is registered is iHoldings.com, Inc.

d/b/a DotRegistrar.com.

3. Procedural History

On March 23, 2002, the Complaint was received by the WIPO Arbitration and

Mediation Center ("the Center") by e-mail and in hard copy on March 25, 2002.

On March 28, 2002, the Center sent a Request for Registrar Verification

to the Registrar. On April 17, 2002, the Registrar responded stating

that it had not received a copy of the Complaint, confirming that it is

the registrar of said domain name and that the Respondent is the current

registrant, Administrative Contact, Technical Contact and Zone Contact for

said registration. The Registrar furthermore confirmed that the Uniform

Domain Name Dispute Resolution Policy hereinafter ("the Policy")

applies to said registration, that the current status of the registration

is on "Registrar- HOLD", that the language of the registration

agreement is English, and that in his registration agreement the registrant

had submitted to the jurisdiction at the location of the principal office

of the Registrar for court adjudication of disputes concerning or arising

from the use of said domain name.

In accordance with Paragraph 4(a) of the Rules for Uniform Domain Name

Dispute Resolution Policy ("the Rules") and paragraph 5 of the WIPO Supplemental

Rules for Uniform Domain Name Dispute Resolution Policy ("the Supplemental

Rules") the Center reviewed the Complaint to ascertain whether it satisfied

the formal requirements of the Policy, the Rules and the Supplemental Rules

and that payment in the required amount had been made by the Complainant.

On April 18, 2002, the Center sent a Notification of Complaint and Commencement

of Administrative Proceeding to the Respondent. Said Notification was sent

to the Respondent by Post/Courier (with enclosures) and by e-mail (Complaint

without attachments). A copy of said Notification was sent to the authorized

representative of the Complainant by e-mail. Further copies of said Notification

were sent to the Internet Corporation for Assigned Names and Numbers ("ICANN")

and to the Registrar.

Said Notification of Complaint and Commencement of Administrative Proceeding

inter alia advised the Respondent that this Administrative Proceeding

had commenced on April 18, 2002, and that the Respondent was required

to submit a Response to the Center on or before May 8, 2002.

No Response was received by the Center and on May 10, 2002, the

Center sent a Notification of Respondent Default to the Respondent by e-mail.

A copy of said Notification of Respondent Default was on the same date sent

to the authorized representative of the Complainant by e-mail.

On May 15, 2002, after having received a Statement of Acceptance and Declaration

of Impartiality from him in accordance with paragraph 7 of the Rules, the

Center proceeded to appoint James Bridgeman as Administrative Panel. On

the same day the case file was transmitted to the Administrative Panel.

In the view of this Administrative Panel, proper procedures were followed

and this Administrative Panel was properly constituted.

4. Factual Background

The Complainant corporation was formerly known as and continues to do business

in the State of California as Edmund Publications Corp. The Complainant

was founded in 1966 for the purpose of publishing printed guides to assist

automotive buyers in making informed decisions respecting the purchase of

new and used vehicles. From the inception of the company, these printed

guides and books have continuously been published under the mark EDMUND’S.

The Complainant is the owner of a United States Trademark Registration

No. 2,106,713 EDMUND’S, for the following goods and services: "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".

In 1994, the Complainant took advantage of the development of the Internet

and posted the vehicle data from its printed guides in a gopher site. The

following year, the Complainant became the first company to establish a

www site on the World Wide Web on which consumers could obtain vehicle information

at no cost. This site was established at the www address <edmunds.com>.

The information on the Complainant’s www site includes vehicle pricing data,

technical and performance specifications, automotive reviews, user discussion

forums, automotive-related news, warranty data, and other material and information

relevant to car buyers and enthusiasts.

In the absence of a Response there is no information relating to the Respondent

save the contact details filed with the Registrar and set out in the Complaint.

5. Parties’ Contentions

A. Complainant

The Complainant submits that its www site at <edmunds.com> is a central

focus of its business today -- the www site averages 2.8 million visitors

per month, with each visit lasting an average of twenty minutes. The Complainant

submits that it has therefore established itself as one of the leading Internet-based

sources of consumer automotive information and that its reputation as a

premier provider of such information has been widely recognized in both

the industry and mainstream press. In support of this claim the Complainant

has submitted copies of articles from numerous publications such as Time

Out New York, Smart Computing, Mature Outlook Magazine, Boston Globe, TIME’s

On Monthly, Southwest Airlines Spirit.

The Complainant further submits that its www site established at the <edmunds.com>

address tops numerous industry surveys of www sites and has submitted evidence

of such surveys in support of this claim also. Furthermore the Complainant

has submitted a copy of the home page from its www site as an annex to the

Complaint.

The Complainant submits that it has used the <EDMUND’S> trademark

and service mark in connection with its business since the company was founded

in 1966 and submits that this mark has become a famous mark in the industry

and has been described in the Wall Street Journal as "a brand

name car buyers trust".

The Complainant submits that the Respondent is engaged in a classic case

of typo-piracy. The domain name <edmumds.com> registered by the Respondent

is confusingly similar to the Complainants corporate name and its famous

EDMUND’S trade mark. The Complainant submits that the confusing similarity

between the contested domain name and the Complainant’s name and mark is

apparent from a simple comparison of the domain name with the letter string

EDMUNDS. The Respondent’s domain name differs from the Complainant’s mark

and domain name by one letter (i.e., substitution of the letter "m"

for the letter "n"). Notably, these letters are located next to

each other on the standard computer keyboard or typewriter.

The Complainant submits that the courts in the United States have consistently

held that there is a confusing similarity between marks where a word mark

is spelt with only slight difference to a well-established mark. The Complainant

cites as an example, John Walker & Sons, Ltd. v. Bethea, 305

F. Supp. 1302 (D.S.C. 1969), where the court held that there was trademark

infringement. The Plaintiff’s trademark was JOHNNIE WALKER and the

Defendant used the mark JOHNNY WALKER. The Complainant submits that the

court held that the difference in spelling was inconsequential and the two

marks were for all practical purposes identical.

The Complainant further referred to Dreamwerks Production Group, Inc.

v. SKG Studio, 142 F.3d 1127, 1131 (9th Cir. 1998). The

marks in dispute were DreamWorks and Dreamwerks. The court held: "Neither

literally means anything . . . . leaving only the slight difference in spelling.

Spelling is a lost art… Moreover, a perceptive consumer who does notice

the ‘e’ and lower-case ‘w’ in Dreamwerks might shrug off the differences

as an intentional modification identifying an ancillary division of the

same company."

The Complainant submits that likewise, administrative panels applying the Policy

have repeatedly held domain names that vary slightly in spelling from established

marks to be confusingly similar to those marks. The Complainant cites the administrative

panel decisions in Neuberger Berman Inc. v. Alfred Jacobsen, WIPO

Case No.D2000-0323, (June 12, 2000) where the complainant took

issue with the respondent’s registration of the domain name <newbergerberman.com>;

Dow Jones & Company, Inc. v. John Zuccarini, WIPO

Case No. D2000-0578 (August 28, 2000), where the administrative

panel held that the domain names <wallstreetjounal.com> and <wallstreetjournel.com>

were confusingly similar to THE WALL STREET JOURNAL; and Reuters Limited

v. Global Net 2000, Inc., WIPO Case No.

D2000-0441, (July 13, 2000) where the administrative panel held

that the domain names <wwwreuters.com>, <reters.com>, <ruters.com>,

<reuers.com> and <reutersnews.com> were confusingly similar to the

complainant’s trademark REUTERS.

The Complainant submits that in the present Administrative Proceeding there

can be no doubt but that the contested domain name <edmumds.com> is

confusingly similar to the Complainant’s famous name and mark EDMUND’S.

As to whether the Respondent has any rights or legitimate interest in said

domain name, the Complainant submits that the Respondent does not have any

trademark or intellectual property rights or legitimate interest in the

domain name <edmumds.com>.

Firstly, the Complainant states that it has never licensed or permitted

the Respondent to use any "EDMUND" mark, or to register any domain

name including this mark.

Secondly, there is no indication that the Respondent uses <edmumds.com>

as its legal or business name, or is commonly known by the name <edmumds.com>.

Thirdly, this domain name does not resolve to a www site that features

the word "edmumds" or any similar word. The Complainant submits

that, on the contrary, the domain name <edmumds.com> resolves to a

www site at www.gotoo.com/treasure/auto.html . This address resolves in

turn to a www site at www.car-prices-usa.com/ivd.html, that features automotive

information and services in direct competition with the Complainant’s services.

The Complainant has submitted a copy of a printout from this www site dated

March 21, 2002, as an annex to the Complaint.

Thirdly, the Complainant argues that the Complainant has not located any

business name or trademark registration for the Respondent that includes

the term "edmumds."

The Complainant submits that administrative panels have routinely considered

similar factors in concluding that a domain name registrant lacked a legitimate

interest in a particular domain name. In this regard the Complainant cites a

number of administrative panel decisions viz. Compagnie de Saint Gobain

v. Com-Union Corp., WIPO Case No. D2000-0020

(March 14, 2000) in which the administrative panel decided that the

respondent had no legitimate interest where the registrant had not been licensed

by the complainant, had not registered or used domain name as a trademark, and

had not been known by domain name; Ronson Plc v. Unimetal Sanayi ve Tic.A.S.,

WIPO Case No. D2000-0011, (March 11, 2000)

where the administrative panel decided that there was no legitimate interest

where registrant had not registered or used domain name as trademark; Scholastic

Inc. v. Applied Software Solutions, Inc. WIPO

Case No. D2000-1629, (March 15, 2001) where the administrative

panel stated that there can be no rights or legitimate interests in respect

of the domain name where someone in the same or similar field as the complainant

would not have chosen the domain name unless seeking to create the impression

that there was some association with the complainant.

The Complainant submits that under these circumstances, the Respondent’s

registration and use of the subject domain name cannot constitute a "fair

use" in the context of sub-paragraph (iii) of paragraph 4(c) of the

Policy.

The Complainant further submits that in Microsoft Corp. v. Global Net 2000,

Inc., WIPO Case No. D2000-0554 (July 25, 2000)

the administrative panel rejected just such a "fair use" argument.

The Complainant submits that in that case the respondent had registered several

domain names that were similar to marks owned by Microsoft, including <hotmaill.com>,

<homail.com>, <hotmai.com> <otmail.com>, <hotmailcom.com>.

In directing that the domain names in dispute be transferred to Microsoft, the

administrative panel stated Respondent’s registration of intentionally misspelled

domain names "is manifestly not a ‘legitimate’ or ‘fair’ use and it is

with intent for commercial gain to misleadingly divert consumers. The Panel

has no hesitation in finding that the Respondent has no rights or legitimate

interests in the Domain Names."

The Complainant further submits that the Respondent has registered and

is using the domain name in bad faith. The Complainant argues that courts

have recognized that consumers expect to find a company on the Internet

at a domain name address comprised of the company’s name or mark. In this

regard the Complainant refers to the decision in Panavision Int’l, L.P.

v. Toeppen, 141 F.3d 1316, 1327 (9th Cir. 1998) where the court stated

that "[a] customer who is unsure about a company’s domain name will

often guess that the domain name is also the company’s name" and further

went on to assert that " [a] domain name mirroring a corporate name

may be a valuable corporate asset, as it facilitates communication with

a customer base."

The Complainant submits that the Respondent’s registration of a confusingly

similar domain name could only have been intended to serve one end viz.

to "capture" consumers looking for the Complainant’s www site

who, through inadvertence or ignorance, misspell or mistype the intended

domain name.

The Complainant further argues that the fact that the Respondent acted

in bad faith is confirmed by several undeniable facts. Firstly, the Respondent

is making no use of and has no rights in the domain name at issue. Registration

of a domain name unrelated to the marks used in connection with the registrant’s

business is evidence that the domain name has been registered for an improper

purpose. Secondly, the Respondent does not maintain a www site at the subject

domain name; instead the domain name resolves to www.gotoo.com/treasure/auto.html,

which in turn resolves to another www site that competes directly with the

Complainants business as promoted on the Complainant’s www site at the <edmunds.com>

address.

The Complainant submits that this amounts to a deliberate theft of customers

looking for the Complainant’s www site and the Respondent’s effort to misdirect

such users to a competing www site is both conclusive evidence of bad faith

and highly probative of Respondent’s familiarity with the competing www

site maintained by the Complainant.

In support of this argument the Complainant refers to the decisions of the

administrative panels in NetWizards, Inc. v. Spectrum Enters., WIPO

Case No. D2000-1768 (April 4, 2001) in which the administrative

panel stated that "[p]anels have found that registration and use of a domain

name to re-direct Internet users to web sites of competing organizations constituted

bad faith use and registration." and Scholastic Inc. v. Applied Software

Solutions, Inc. WIPO Case No. D2000-1629,

(March 15, 2001) where the administrative panel stated that offering

educational services to the same market as that served by the Complainant amounted

to evidence of bad faith registration and use under paragraph 4(b)(iv) of the

Policy.

The Complainant submits that its EDMUND’S name and mark are highly distinctive.

They have no inherent meaning with respect to the automotive industry, and

are therefore entitled to the strongest protection.

The Complainant submits that registration of a domain name that is similar

to a highly distinctive mark is strong evidence of bad faith, as the distinctive

nature of the mark reduces or eliminates any claim that the registrant’s infringement

was "innocent." In support of this argument the Complainant refers

to the decision of the administrative panel in Reuters Limited v. Global

Net 2000, Inc., WIPO Case No. D2000-0441,

(July 13, 2000) supra. In that case the administrative panel

stated: "[t]he trademark REUTERS is not descriptive of anything, and is

thus highly distinctive of the Complainant’s business. A domain name which differs

by only one letter from a trademark has a greater tendency to be confusingly

similar to the trademark where the trademark is highly distinctive."

The Complainant argues that it is not surprising that administrative panels

have consistently found bad faith registration and use in situations similar

to that presented in the present Administrative Proceeding.

In Yahoo! Inc., et al. v. Data Art Corp., et al., WIPO

Case No. D2000-0587, (August 10, 2000) the administrative panel

stated:

"Respondent is obviously engaging in "typosquatting," a practice

that has been condemned and been found to be confusingly similar to the marks

which they mimic. See, e.g., American Media Operations Inc. v. Erik Simons,

ICANN Case No. AF-0134; AOL v. Asian On-Line This Domain For Sale, ICANN

Case No. FA 00040000094636; Yahoo! Inc. v. Zviely, et al, WIPO

Case No. D2000-0273…

Respondent is trading on the value established by Complainant in its marks

to attract users who misspell or mistype Complainant’s mark when entering

the URL, which includes Complainant’s domain name. Clearly, Respondent is

deriving economic benefit from this practice, either by attracting users

to Respondent’s web site, where goods and services are offered, or by the

receipt of compensation from the owners of other web sites for delivering

users to those sites. This constitutes bad faith registration and use as

defined by [paragraph] 4(b)(iv) of the Policy . . . .

While a user who arrives at the site may promptly conclude that it is not what

he or she was originally looking for, Respondent has already succeeded in its

purpose of using the service mark to attract the user with a view to commercial

gain. National Football League Properties, Inc. and Chargers Football Company

v. One Sex Entertainment Co., a/k/a chargergirls.net, WIPO

Case No. D2000-0118."

In conclusion the Complainant refers to the administrative panel decision in

Neuberger Berman Inc. v. Alfred Jacobsen, WIPO

Case No. D2000-0323, (June 12, 2000) where the administrative

panel stated: "[c]omplainant has produced convincing evidence regarding

the practice of "typo-piracy" whereby bad faith operators deliberately

misspell a famous domain name trademark in hopes of luring search engines to

their site in conjunction with searches for the famous name website.

This conduct is further evidence of the bad faith this Panel is empowered

to find in addition to the specifically enumerated instances in the Policy

4(b)."

B. Respondent

There was no Response filed by the Respondent.

6. Discussion and Findings

In accordance with paragraph 4(a) of the Policy, the Complainant must prove

that:

(i) the domain name registered by the Respondent is identical or

confusingly similar to a trademark or service mark in which the Complainant

has rights; and

(ii) the Respondent has no rights or legitimate interests in respect

of the domain name in question; and

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

faith.

Identical or Confusingly Similar

The Complainant has satisfied this Administrative Panel that it is the

owner of a registered trademark EDMUND’S, details of which are set out above.

Furthermore this Administrative Panel is satisfied that the Complainant

has long established common law rights in the use of the word EDMUND’S as

a trademark in the publishing business and latterly on the www.

As there is only one letter and an apostrophe in the difference between

the Complainant’s trademark EDMUND’S and the domain name <edmumds.com>

registered by the Respondent. In the view of this Administrative Panel the

absence of the apostrophe is not significant. Furthermore considering the

domain name and the trademark side by side this Administrative Panel is

satisfied that said domain name is confusingly similar to the Complainant’s

trademark both visually and aurally.

The Complainant has therefore satisfied the first element in the test set

out in paragraph 4(a) of the Policy.

Rights or Legitimate Interest

In an excellently presented , well argued and well referenced Complaint,

the Complainant has argued that there is no connection between the Respondent

and the Complainant and that the Respondent has never been given authority

to use the Complainant’s trademark or any similar mark.

It is clear from the Complainant’s submissions that it has a long established

reputation in the use of the trademark and service mark EDMUND’S in the

provision of information about automobiles. It is also clear that the Respondent

was aware of this reputation. In reaching this conclusion this Administrative

Panel is conscious that the Respondent has an address in Pakistan and that

the Complainant’s registered trademark and focus of business is in the United

States, nonetheless it is clear that the Respondent was aware of the Complainant’s

reputation as he has caused the domain name to resolve to a www site that

directly competes with the Complainant’s www site in providing information

about automobiles.

It should be said that there is no evidence that the Respondent has any

association with the proprietor of the www sites at www.gotoo.com/treasure/auto.html

or www.car-prices-usa.com/ivd.html and this Administrative Panel does not

infer any such association or connection.

This Administrative Panel accepts the Complainant’s submission that someone

in the same or similar field of business as the Complainant would not have

chosen the domain name unless seeking to create the impression that there

was some association with the Complainant.

Furthermore given the well established reputation of the Complainant in

the United States, the fact that said domain name is confusingly similar

to the Respondent’s United States trademark and the fact that the Respondent

has linked the domain name to a www site offering directly competing services

relating to automobiles in the United States market, this Administrative

Panel accepts that the Respondent could not have any rights or legitimate

interest in the said domain name.

The Complainant has therefore established the second element of the test

in paragraph 4(a) of the Policy.

Bad Faith

Paragraph 4(b) of the ICANN Policy sets out a non-exhaustive list of circumstances

that will be considered by an Administrative Panel to be evidence of the

bad faith registration and use of a domain name:

(i) Circumstances indicating that the domain name was registered or

acquired primarily for the purpose of selling, renting, or otherwise transferring

the domain name registration to the complainant who is the owner of the

trademark or service mark or to a competitor of that complainant, for

valuable consideration in excess of the domain name registrant’s out-of-pocket

costs directly related to the domain name; or

(ii) The domain name was registered in order to prevent the owner

of the trademark or service mark from reflecting the mark in a corresponding

domain name, provided that the domain name registrant has engaged in a

pattern of such conduct; or

(iii) The domain name was registered primarily for the purpose of

disrupting the business of a competitor; or

(iv) By using the domain name, the domain name registrant intentionally

attempted to attract for financial gain, Internet users to the registrant’s

web site 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 registrant’s web site or location or of a product

or service on the registrant’s web site or location.

It is obvious to this Administrative Panel that the Respondent is engaged

in "typo-piracy" by using the domain name to attract users who

misspell or mistype the Complainant’s <edmunds.com> domain name.

The Complainant has set out a compelling argument that the Respondent’s

registration of this confusingly similar domain name could only have been

intended to serve one end viz. to "capture" consumers looking

for the Complainant’s www site who, through inadvertence or ignorance, misspell

or mistype the intended domain name.

Furthermore this Administrative Panel accepts the comments of the administrative

panel in NetWizards, Inc. v. Spectrum Enters., WIPO

Case No. D2000-1768, (April 4, 2001) that "[p]anels have

found that registration and use of a domain name to re-direct Internet users

to web sites of competing organizations constituted bad faith use and registration".

In the circumstances this Administrative Panel is satisfied that the Complainant

should succeed in its application as it has also established the third and

final element of the test in paragraph 4(a) of the Policy.

7. Decision

With specific reference to paragraph 4 of the Policy and paragraph 15 of

the Rules it is the decision of this Administrative Panel that the Complainant

has established that said domain name <edmumds.com> is confusingly

similar to the trademark and service mark in which the Complainant has rights,

that the Respondent has no rights or legitimate interest in said domain

name and that the Respondent has registered and is using said domain name

in bad faith.

This Administrative Panel therefore directs that said domain name <edmumds.com>

shall be transferred to the Complainant.

James Bridgeman

Sole Panelist

Dated: May 29, 2002

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