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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Edmunds.com, Inc v. Triple E Holdings Limited

Case No. D2006-1095

 

1. The Parties

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

The Respondent is Triple E Holdings Limited, Richfield, Minnesota, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name <edmmunds.com> is registered with BulkRegister.com.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 25, 2006. On August 28, 2006, the Center transmitted by email to BulkRegister.com a request for registrar verification in connection with the domain name at issue. On August 28, 2006, BulkRegister.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 August 30, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was September 19, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 20, 2006.

The Center appointed Richard Allan Horning as the Sole Panelist in this matter on October 3, 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, Edmunds.com, Inc. is a source of and intermediary for automotive information. Edmunds.com, Inc. was founded in 1966, for the purpose of publishing new and used automobile pricing guides to assist automobile buyers. In 1994 Edmunds began posting information on the Internet through a “gopher site”, and in early 1995 launched “www.edmunds.com”.

The word mark EDMUND’S was filed for registration with United States Patent Trademark Office on July 12, 1996. Following its publication for opposition, the mark was registered on October 21, 1997 in international class 16, magazine and series of non-fiction books featuring vehicle pricing information, and in international class 36, information services, namely, providing vehicle pricing information by telephone and by means of an online communications network. The application to register claims a first use in commerce in 1966.

The evidence of record shows that the EDMUND’S mark is widely promoted on the Internet, and elsewhere, in connection with automotive pricing services. The Wall Street Journal has characterized the EDMUND’S mark as “a brand name car buyers trust”.

Respondent, Triple E Holdings Limited, operates a search engine using the name OMEGAFIND. It claims to be a “bid-for-placement” search engine. The disputed domain name <emmunds.com> was registered by Respondent on May 3, 2002.

 

5. Parties’ Contentions

A. Complainant

The Complaint can be summarized as follows:

(a) Identical or Confusingly Similar – The domain name <emmunds.com> is virtually identical to the Complainant’s mark, EDMUNDS, differing only by the addition of a second “M”. The repeated consonant does not meaningfully change the appearance or pronunciation of the domain name. There is no difference in meaning between EDMUNDS and “edmmunds”.

(b) Rights or Legitimate Interests – The Respondent has no rights or legitimate interest in respect of the domain name <emmunds.com>. The Complainant’s use of its EDMMUNDS trademark predates the Respondent’s registration of <emmunds.com> by many years. The Complainant has not authorized the Respondent to use or register the Complainant’s mark. The Respondent uses the domain name in connection with a “bid-for-placement” search portal.

(c) Registered and Used in Bad Faith – The Respondent’s domain name was registered and is being used in bad faith because: (i) it is an unauthorized use of Complainant’s mark in connection with a “bid-for-placement” search engine site; (ii) disrupting the business of Complainant; (iii) and constitutes a classic case of “typosquatting”.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

 

6. Discussion and Finding

According to paragraph 4(a) of the Policy, in order to succeed, the Complainant must establish each of the following elements:

(i) The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

(ii) The 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

The first issue in this matter is whether the domain name <emmunds.com> is confusingly similar to the Complainant’s mark.

It is readily that the domain name <emmunds.com> differs from the mark EDMUNDS merely by the addition of the letter “M” in the domain name. This repeated consonant does not significantly affect the appearance or pronunciation of the domain name. This conduct is commonly referred to as “typosquatting” and creates a virtually identical and/or confusingly similar mark to the Complainant’s trademark.

Typosquatting has been universally condemned in numerous URDP decisions. See e.g., Humana Inc. v. Cayman Trademark Trust, WIPO Case No. D2006-0073; Wachovia Corporation v. Peter Carrington, WIPO Case No. D2002-0775). Ample authority exists to support the conclusion that this virtual identity is sufficient to establish confusing similarity (see, e.g., Humana, Inc., op. cit. supra; Disney Enterprises, Inc. v. John Zuccarini, Cupcake City and Cupcake Patrol, WIPO Case No. D2001-0489; United Feature Syndicate, Inc. v. Mr. John Zuccarini, WIPO Case No. D2000-1449.

The Panelist therefore finds that the Complainant has satisfied the first requirement of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the domain name <emmunds.com> by establishing that its EDMUNDS trademark predates the Respondent’s registration of its domain name. The record indicates that there is no relationship between the Complainant and Respondent giving rise to any license, permission or authorization of the disputed domain name. Because the Respondent failed to respond to the Complaint, the Panelist therefore finds that Complainant has satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

This is the prototypical case of “typosquatting”. The disputed domain name is virtually identical and confusingly similar to the Complainant’s trademark. A likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from the Complainant’s site to the Respondent’s site. In this regard, prior WIPO decisions have established that attracting Internet traffic by using a domain name identical or confusingly similar is evidence of bad faith under paragraph 4(b)(iv) of the Policy. Humana Inc., op. cit. supra; Edmunds.com v. Ultimate Search, Inc., WIPO Case No. D2001-1319.

“Typosquatting, also called URL hijacking, is a form of cybersquatting which relies on mistakes such as typographical errors made by Internet users when inputting a website address into a web browser. Should a user accidentally enter an incorrect website address, they may be led to an alternative address owned by a cybersquatter.

“Generally, the victim site of typosquatting will be a frequently visited website. The typosquatter’s URL will usually be one of four kinds, all similar to the victim site address:

(In the following, the intended website is “example.com”)

“A common misspelling of the intended site: exemple.com

A misspelling based on typing errors: example.com or exxample.com

A differently phrased domain name: examples.com

A different top-level domain: example.co.uk

“Once in the typosquatter’s site, the user may also be tricked into thinking that they are in fact in the real site; through the use of copied or similar logos, website layouts or content. Sometimes competitors of the victim site will do this.

“Alternatively, the user will be forwarded to a site of a completely different nature to what they intended. This tactic was infamously used by John Zuccarini, who redirected domains targeting children to pornographic websites. Sometimes, the typosquatters will use the false addresses to distribute viruses, adware, spyware or other malware. Some are also shock sites. More common are benign domain parking sites, selling advertising to firms based on keywords similar to the misspelled word in the domain.” (Wikipedia Definition (en.wikipedia.org, visited October 17, 2006)).

The registration of a virtually identical and phonetically similar domain name to the Complainant’s trademark, with the deliberate misspelling of that mark, seeks to take advantage of the Complainant’s reputation by capturing traffic from Internet users looking for the Complainant, but misspelling its name. This form of “typosquatting” has long been held bad faith (See, e.g., Sanofi-aventis v. Elizabeth Riegel and Andrew Riegal, WIPO Case No. D2005-1045; Estйe Lauder Inc. v. estelauder.com, WIPO Case No. D2000-0869).

The record suggests that the Respondent is profiting from this confusion through the operation of a “bid-for-placement” search engine, thus receiving revenue from the confusion.

The Complainant has brought to the attention of the Panelist the decisions in America On-Line, Inc. v. Triple E Holdings Limited, NAF Case No. FA0405000281584, and Wal-Mart Stores, Inc v. Triple E Holdings Limited, WIPO Case No. D2005-0711. The Respondent’s “typosquatting” was held in bad faith in these cases. Respondent’s involvement in UDRP proceedings, where identical practices were found to be in bad faith, supports the finding of bad faith in this case.

Thus, for all the above-mentioned reasons, the Panel finds that the Complainant has met the requirement of paragraph 4(a)(iii) of the Policy.

 

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 <edmmunds.com> be transferred to the Complainant.

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Richard Allan Horning
Sole Panelist

Dated: October 17, 2006