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MapQuest.com Inc. v. Earl Hudsucker and webgophers a/k/a Jeremy Turner [2001] GENDND 1007 (23 May 2001)

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

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.

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.

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.

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.

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.

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.

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.

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.

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