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Kelley Blue Book Company, Inc. v. South EastEnterprise, Inc. [2004] GENDND 1115 (23 August 2004)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

Kelley Blue Book Company, Inc. v. South EastEnterprise, Inc.

Case No. D2004-0499

1. The Parties

The Complainant is Kelley Blue Book Company, Inc., Irvine, California, United States of America, represented by Kaye Scholer, LLP, United States of America.

The Respondent is South EastEnterprise, Inc., Los Angeles, California, United States of America.

2. The Domain Name and Registrar

The disputed domain name <kbbcom.com> is registered with Network Solutions, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 7, 2004. On July 9, 2004, the Center transmitted by email to Network Solutions, LLC, a request for registrar verification in connection with the domain name at issue. On July 9, 2004, Network Solutions, LLC, 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 July 12, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was August 1, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 5, 2004.

The Center appointed Jeffrey M. Samuels as the Sole Panelist in this matter on August 12, 2004. 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

Since 1926, Complainant Kelley Blue Book Company, Inc., has published the “Blue Book” guide to used car prices in the U.S. In 1995, Kelley made its “Blue Book” available online at “www.kbb.com.” Kelley’s site receives over five million unique visitors per month and generates over 30 million new and used car pricing reports each month. Kelley owns U.S. Trademark Registration No. 2,719,795 for the mark KBB.COM. The registration was issued on May 27, 2003. See Exhibit A to Complaint.

On June 11, 2004, Kelley sent a letter via Express Mail to Respondent’s address, as identified in the “Whois” database. The letter was returned as non-deliverable. On June 11, 2004, and again on June 16 and July 1, 2004, Kelley sent the letter as an attachment to an email addressed to Respondent at the email address identified in the “Whois” database. No response was received.

Respondent’s site at “www.kbbcom.com” has no home page. Rather, it immediately rolls over to “www.bestsrs.com,” which, in turn, offers numerous sponsored links, including links to automotive-related sites which compete with Kelley’s “www.kbb.com” site.

5. Parties’ Contentions

A. Complainant

Kelley argues that the disputed domain name is confusingly similar to its trademark. It notes that Respondent has merely added the suffix “com” to the main part of Kelley’s domain name.

Kelley further maintains that Respondent does not have rights or legitimate interests in the disputed domain name. While Kelley has no information about Respondent, Kelley states that Respondent’s name suggests no rights or legitimate interests in the domain name <kbbcom.com> or any variant spelling. Moreover, according to Kelley, the use of Respondent’s site as a rollover conduit to numerous other sponsored sites, including those of Kelley’s competitors, “provides additional circumstantial evidence that Respondent has no right or legitimate interest in the domain name[].”

With respect to the “bad faith” registration and use requirement, Kelley contends that Respondent registered and uses the domain name to intentionally attract internet users to its site for commercial gain by creating a likelihood of confusion with Kelley’s mark as to the source, sponsorship, affiliation, or endorsement of the site or of the products and/or services offered at such site.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

The disputed domain name <kbbcom.com> clearly is confusingly similar to the mark KBB.COM. As found by the panel in PHE, Inc. v. Bill McCall, WIPO Case No. D2003-0516:

“Respondent’s domain name <adamevecom.com> is virtually identical to Complainant’s mark [ADAMEVE.COM] but for the repetition of the top-level domain name `com.’ This is classic `typo-squatting,’ capitalizing on user error when seeking a well-known site. This type of cybersquatting has been declared confusingly similar many times in previous National Arbitration Forum cases, as well as previous WIPO cases.”

Of similar effect are the decisions in Microsoft Corporation v. Charilaos Chrisochoou, WIPO Case No. D2004-0186 (<microsoft-com.com>); Barnes & Noble College Bookstores, Inc. v. Language Direct, WIPO Case No. D2003-0142 (<barnesandnoblecom.com>); Bank of America Corp. v. McCall, NAF Case No. FA02-11000135012 (<bankofamericacom.com>); and Microsoft Corporation v. Global Net 2000, Inc., WIPO Case No. D2000-0554 (<hotmailcom.com>).

The Panel further determines that, by virtue of its use and registration of the trademark KBB.COM, Kelley has rights in the mark.

B. Rights or Legitimate Interests

Based on the undisputed facts, the Panel finds that Complainant has established that Respondent has no rights or legitimate interests in the disputed domain name. There is no evidence of any bona fide use of the domain name, that Respondent is commonly known by the domain name, or that Respondent is using the domain name non-commercially or fairly. As the panel stated in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, picking a domain name that is almost an exact duplicate of a famous and distinctive trademark is “not one traders would legitimately choose unless seeking to create an impression of an association with the Complainant.”

C. Registered and Used in Bad Faith

The Panel agrees with Complainant that Respondent registered and uses the domain name to intentionally attract internet users to its site for commercial gain by creating a likelihood of confusion with Kelley’s mark as to the source, sponsorship, affiliation, or endorsement of the site or of the products and/or services offered at such site. As noted above, visitors to Respondent’s site at “www.kbbcom.com” are taken to other sponsored sites, including those of Kelley’s competitors. Given the similarity in Kelley’s mark and the domain name and the similarity in the services offered at the parties’ respective websites, Internet users are likely to be confused with respect to the source or sponsorship of Respondent’s site and of the services offered upon accessing such site. Such a determination supports a finding of “bad faith” registration and use under the applicable 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 <kbbcom.com> be transferred to the Complainant.

Jeffrey M. Samuels
Sole Panelist

Dated: August 23, 2004