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Kelley Blue Book Company, Inc. v. Network Solutions Inc. [2004] GENDND 1129 (16 August 2004)

1. The Parties

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

The Respondent is Network Solutions Inc., Paphos, Cyprus.

2. The Domain Names and Registrar

The disputed domain names are <kellybluebook.ws>, <blue-book.ws> and <kelly-blue-book.net> and each is registered with Intercosmos Media Group, Inc., d/b/a directNIC.com, of New Orleans, Louisiana, United States of America.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 28, 2004. On June 28, 2004, the Center transmitted by email to Intercosmos Media Group d/b/a directNIC.com, a request for register verification in connection with each of the domain names at issue.

On June 28, 2004, Intercosmos Media Group d/b/a directNIC.com transmitted by email to the Center its verification response confirming that that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact for each of the domain names in issue.

In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on June 30, 2004. The Center verified that the Complaint together with the amendment to 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 1, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was July 21, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 22, 2004.

The Center appointed James G. Fogo as the sole panelist in this matter on August 2, 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.

The language of the proceeding is English.

4. Factual Background

A. The Complainants and their marks

The Complainant asserts the following facts, which have not been disputed by the Respondent. The Panel finds that these facts are proved:

KELLEY BLUE BOOK Trademark

The Complainant is the current owner of the trademark KELLEY BLUE BOOK. In 1980, the United States Trademark Office first registered this trademark, in a design form, applied to wares defined as “Booklets in the Nature of Price Lists for Used Cars, New Cars, Mobile Homes and Motorcycles”. A date of first use of 1954, was claimed. The Registration, No. 1,142,514, was renewed on December 9, 2000.

A second registration of the same trademark, with extended wares and services, was registered at the United States Trademark Office on July 11, 1995, under Reg. No. 1,904,124.

Most recently the Complainant secured registration in the United States Trademark Office of the mark KELLEY BLUE BOOK in typeset, granted on January 28, 2003. (See Exhibit A)

Applications filed to register KELLEY BLUE BOOK in Canada and the European Union are pending.

BLUE BOOK Trademark

The Complainant also owns the trademark BLUE BOOK registered on May 6, 2004, by the Canadian Intellectual Property Office, Reg. No. TMA609,653 and covering wares and services as defined in the certificate of registration. (See Exhibit B) The application was filed in Canada on November 9, 2001, asserting that this mark was used in Canada since at least as early as 1996, on wares and services.

The Complainant’s ownership of the common law trademark “BLUE BOOK” as used in the context of automotive price guides dates back in the United States, to 1926. Continuously from that date consumers have associated “Blue Book”, “Blue Book price” and “Blue Book value” with Kelly in the context of automotive price guides and new and used car prices.

In May of 2001, the Complainant commissioned several surveys directed to auto consumers and deemed to assess the public recognition of the mark BLUE BOOK. The results disclosed relatively high recognition. Similar results were observed in a United States nationwide telephone survey, which revealed a percentage in the 70% range indicating the significant recognition of BLUE BOOK auto valuation guides and used car guides. The Panel took into consideration this material which was tendered by the Complainant.

The Complainant submits that its websites were the most visited automotive information choices on the Internet.

Claimed uncontroverted facts were:

According to Nielsen Net Ratings, the Complainant’s websites were, by a substantial margin, the most popular automotive information websites. (See Exhibit D).

Kelley’s websites attract over five million unique visitors each month to its website. Attracting by far the greatest number of in-market new and used car shoppers.(See Exhibit D).

Kelley’s websites generate over thirty million pricing reports on new and used vehicles every month. (See Exhibit E).

Kelley’s websites are the most visited website by consumers who go on online to research new and used cars for purchase. (See Exhibit F).

Attempted Contact:

The Complainant sought to contact the Respondent. All information known to the Complainant as to how one could contact the Respondent was drawn from the “Whois” database of the registrar for these domain names.

On March 26, 2004, the Complainant sent a letter via Express Mail to Respondent’s address, as identified in the directNIC.com “Whois” database. The letter was later returned as non-deliverable. On the same date the Complainant also sent the letter as a .pdf attachment to an e-mail addressed to Respondent at the e-mail address in the directNIC.com “Whois” database. No response was received. The Complainant also unsuccessfully attempted to send the letter to Respondent via facsimile to the number listed for Respondent in the directNIC.com “Whois” database. The facsimile number refused to accept a delivery. The Complainant sent a final demand by e-mail on June 22, 2004, and received no response. (See Exhibit I)

On March 31, 2004, the Complainant complained by mail and e-mail to Internet Solutions Inc., the British Virgin Islands-based entity that owns and operates “www.coolwebsearch.com” the website to which all traffic from Respondent’s websites rolls over. On April 5, 2000, the Complainant was copied on an e-mail from Alex S. Hatkinson at “www.coolwebsearch.com” to the Respondent. That e-mail stated “Please read this message we have got [from Kelley]. We ask that you move your site to another domain. Please note that you have 12 hours to fix this problem otherwise we shall have to block your account.” Respondent had taken no action as of the date of filing of this Complaint.

Each of the three disputed domain names was registered on May 10, 2003.

B. The Respondent

The Respondent did not reply to the Complainant’s contentions

5. Parties’ Contentions

A. Complainant

The Complainant contends that each of the three registered domain names <kellybluebook.ws>, <blue-book.ws> and <kelly-blue-book.net> is confusingly similar to the Complaint’s trademarks and its common law rights to BLUE BOOK by reason of extensive use for many years in an automotive context.

The Complainant contends that the Respondent has no right or legitimate interest in respect of any of the three domain names.

The Complainant contends that the Respondent has acted in a manner, which constituted bad faith in view of its deliberate attempt to attract Internet users seeking the Complainant’s services.

The Complainant seeks the transfer of each of the three domain names from the Respondent to the Complainant in accordance with paragraph 4(b)(i) of the Policy.

B. Respondent

The Respondent failed to file a Response to the Complaint.

6. Discussion and Findings

Under paragraph 5(e) of the Rules, it is provided that if a Respondent does not submit a Response, in the absence of exceptional circumstances, the Panel shall decide the dispute based on the Complaint. No exceptional circumstances have been brought to the Panel’s attention, and it will proceed to make the findings below based upon the material contained in the Complaint

In order for the Panel to decide to grant the remedy requested by the Complainant under the Policy, it is necessary that the Complainant prove, as required by paragraph 4(a) of the policy, that:

(i) each of the contested domain names 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 and;

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

A. Identical or Confusingly Similar

The Panel finds that the Complainant’s rights on the marks KELLEY BLUE BOOK and BLUE BOOK are established. The Panel finds that both trademarks are distinctive and relatively famous. The first of these marks was registered in 1980 in the United States and claimed use from at least 1954. The second mark, having common law rights, has been used in respect of automotive price guides published continuously by the Complainant and its predecessors since 1926.

From an early date in the UDRP proceedings, it has been held that a domain name registrant cannot escape a finding of similarity by a misspelling of a trademark. See: Encyclopaedia Britannica, Inc v. John Zuccarini, WIPO Case No. D2000-0330. Further, it has been held that differences in the graphics in adding punctuation, such as a hyphen, will not affect a finding of confusing similarity. See Chernow Communications, Inc. v. Jonathan D. Kimball. See WIPO Case No. D2000-0119.

In the present case, the domain name <blue-book.ws> has inserted a hyphen, which does not influence the consideration of identity or confusing similarity. The letters .ws may be the country code TLD for Western Samoa. By December 2002, the WIPO Center was acting as dispute resolution service provider for a number of ccTLDs including Western Samoa. This is plausible. The Complainant suggests that the letters ws are widely promoted as an acronym for the expression “website” and provides a copy of a home page of directNIC.com, the Registrar for the Respondent in this case. In the top right hand quadrant of the screen states “.WS (Website) Domain Names for only $15.00/ year. (See Exhibit H) Whether “ws” was intended to be the ccTLD or a reference to promote the expression of the word, or both, neither would effect a finding of confusing similarity.

The second domain name <kelly-blue-book.net> has omitted the letter “e” from the word “kelley”. Phonetically there is no difference in the two words. Neither are they readily distinct in a visual sense.

The third domain <kellybluebook.ws> also omits the letter “e” from the word “kelley”.

The Panel concludes that the Complainant has proven that each of the three domain names in dispute is identical or confusingly similar to the Complainant’s trademarks, and common law rights.

B. Rights or Legitimate Interests

The Respondent has failed to file a Response and thereby has not asserted any rights

or legitimate interests. However, the Complainant must establish that the Registrant has no right or legitimate interest in the three domain names pursuant to paragraph 4(c) of the Policy.

Under paragraph 4(c) of the Policy, any of the following circumstances, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate a registrant’s rights to an legitimate interest in the domain name:

(i) demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services prior to the dispute; or

(ii) an indication that the registrant has been commonly known by the domain name even if it has acquired no trademark rights; or

(iii) legitimate noncommercial of fair use of the domain name without intent to divert consumers or to tarnish the trademark.

None of these circumstances are proven based on the evidence presented.

The Complainant has never licensed nor otherwise authorized or permitted the Respondent to use any of the three domain names in issue.

Instead of making a legitimate non-commercial or fair use of any of the three domain names, there is evidence that the Respondent has sought to use each of the three domain names to attract, deceive and divert Internet visitors looking for the Complainant’s website. The Respondent is using the three domain names not bona fide offering of goods and services but for commercial gain. Therefore the Complainant has successfully met its second burden, under Policy paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Rules set out four non-exclusive criteria which shall be evidence of a domain name in bad faith including 4(b)(iv). By using each of the three domain names the Respondent sought to attract, for commercial gain, suggestions that the Respondent’s source, affiliation, sponsorship or endorsement were those of the Complainant.

The registration of the Respondent’s three domain names was obtained on May 10, 2003, long after the Complainant’s first use and continuous extensive use relating to automotive price guides. The Respondent simply imitated the marks of the Complainant, which were famous in this field. There was no reason for the Respondent to use any of the three domain names for its auto-related websites, other than to deceive and attract persons on the Internet looking for the Complainant’s websites but who, mistakenly, typed one of the domain names of the Respondent.

Additionally, the Respondent’s registration of more than one domain name that is confusingly similar to Complainant’s marks further supports the inference that the Respondent knew of the Complainant’s marks and therefore registered the three domain names in bad faith. See Royal Bank of Canada v. Henry Chan, WIPO Case No. D2003-0031.

In view of the above, the Panel believes that the Complainant has discharged its burden under Policy Paragraph 4(b)(iv), and finds that the Respondent has registered and used each of the three domain names in bad faith.

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 each of the domain names <kellybluebook.ws>, <blue-book.ws> and <kelly-blue-book.net> be transferred to the Complainant.

James G. Fogo
Sole Panelist

Dated: August 16, 2004