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Kelley Blue Book Company, Inc. v. Nikolay Golovin aka Buy-movie.net [2005] GENDND 1801 (7 October 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Kelley Blue Book Company, Inc. v. Nikolay Golovin aka Buy-movie.net

Case No. D2005-0837

1. The Parties

The Complainant is Kelley Blue Book Company, Inc., Irvine, California, United States of America, represented by Latham & Watkins, Costa Mesa, California, United States of America.

The Respondent is Nikolay Golovin aka Buy-movie.net, Moscow, Russian Federation.

2. The Domain Name and Registrar

The disputed domain name <kelly-blue-book.org> is registered with eNom.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 4, 2005 by email, and on August 5, 2005 in hardcopy. On August 4, 2005, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On the same day eNom transmitted by email to the Center a partial verification response confirming that the language of the proceedings is English and that the domain name would remain under Registrar Lock throughout the proceeding. In addition to eNom’s partial response, the Center made a WHOIS printout, which showed that the disputed Domain Name was registered with eNom, and that Respondent Nikolay Golovin aka Buy-movie.net, was the current registrant of the disputed Domain Name. 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 19, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was September 8, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 16, 2005.

On September 30, 2005, the Center appointed Roberto Américo Bianchi as the sole panelist in this matter. 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 Kelley Blue Book Co. Inc. has published the Blue Book Guide to used car prices in the United States of America continuously since 1926. Complainant owns, inter alia, the following trademark registrations with the United States Patent and Trademark Office:

Mark	Reg. No	Reg. Date	Class	Goods / Services	First Use
KELLEY BLUE BOOK	1142514	December 9, 1980	16	Booklets w/price lists for new and used car pricing information	November 1, 1954
KELLEY BLUE BOOK	1904124	July 11, 1995	9, 16, 35	Computer programs recorded on diskettes for providing new and used car information Booklets with price lists for new and used cars Computerized on-line information related to pricing for new and used cars	December 1986, November 1933, December 1984
KELLEY BLUE BOOK	2679776	January 28, 2003	9, 16, 35	Computer programs recorded on diskettes for providing new and used car information Booklets with price lists for new and used cars Computerized on-line information related to pricing for new and used cars	December 1, 1986 August 5, 1995 August 5, 1995

On June 10, 2005 Complainant also registered the KELLEY BLUE BOOK mark in Canada, covering computer programs recorded on diskettes for providing new and used car pricing information, and computerized on-line information relating to buying, selling and servicing new and used cars. Complainant also owns the “www.kelleybluebook.com” web site, whose domain name was registered on February 21, 1998.

On April 15, 2005, the disputed domain name was registered with e-Nom in the name of Buy-movie.net (Nikolay Golovin) as Registrant.

5. Parties’ Contentions

A. Complainant

Complainant contends the following:

The disputed domain name is confusingly similar to the KELLEY BLUE BOOK marks in which Complainant has rights. Respondent has engaged in cyberpiracy by registering a domain name that consists of a common misspelling of Complainant’s mark, and which merely adds a hyphen within Complainant’s mark.

Respondent has no right or legitimate interest in the domain name. Respondent’s use of the domain name to promote new and used car values and other automotive information –the very products and services with which consumers have long associated Complainant’s famous marks- provides evidence that Respondent has no right or legitimate interest in the domain name.

The only plausible explanation for Respondent’s registration of the domain name is that it was a bad faith attempt to disrupt Complainant’s business by attracting Internet users to Respondent’s web site, which offers competing products and services. Respondent’s domain name is also being used in bad faith. The domain name is intended to deceive consumers into thinking that Respondent’s web site is affiliated with the Complainant, a fact that is reinforced by the automotive content of the Respondent’s site. Even the content of Respondent’s web site has been copied from Complainant’s own web site, thus creating a likelihood of confusion, by intending to imply sponsorship, affiliation or endorsement of Respondent’s web site by the Complainant.

B. Respondent

The Respondent did not reply to the Complainant’s contentions, and is in default.

6. Discussion and Findings

A. Identical or Confusingly Similar

Complainant has rights in the KELLEY BLUE BOOK marks since its first use (as early as 1933). Complainant’s trademark registrations with the U.S.P.T.O. pre-date the registration of Respondent’s domain name. “Kelly” is phonetically identical to “Kelley”, and is an obvious misspelling of the mark. In the present case, this misspelling is equal to typosquatting.

In a similar WIPO case, where the domain name <wwwkellybluebook.com> was found to be similar to the KELLEY BLUE BOOK mark, the panel said: “[T]he omission of the second “e” in “kelley” does not serve to distinguish the phonetic pronunciation of the Domain Name from the Registered Mark nor does it make them readily distinct in a visual sense”. See Kelley Blue Book Company, Inc. v. Michailov A.S., WIPO Case No. D2002-0328 (June 13, 2002). See also Autosales Incorporated dba Summit Racing Equipment v. John Zuccarini dba Cupcake Patrol, WIPO Case No. D2001-0230 (March 30, 2001). (<Sumittracing.com> was found confusingly similar to SUMMIT RACING EQUIPMENT mark, and respondent was found to be engaging in “typosquatting”; domain names of this type have been found to be confusingly similar to the marks that they mimic).

In the disputed domain name, the words “kelly”, “blue” and “book” are separated by hyphens, and the gTLD “.org” was added, but this does not suffice to distinguish the domain name from the mark. See Owens Corning Fiberglas Technology, Inc v. Hammerstone, WIPO Case No. D2003-0903 (December 29, 2003) (finding that domain name <cultured-stone.com> is confusingly similar to mark CULTURED STONE, as the addition of a hyphen and the top-level domain designation “.com” are not sufficient to avoid the conclusion that the domain name and mark are confusingly similar, also citing Rolls Royce PLC v. Hallofpain, WIPO Case No. D2000-1709, (February 19, 2001) and Busy Body, Inc. v. Fitness Outlet Inc., WIPO Case No. D2000-0127 (April 22, 2000)).

The Panel concludes that the disputed domain name is confusingly similar to Complainant’s marks.

B. Rights or Legitimate Interests

Complainant contends that it never licensed or permitted Respondent to use its trademarks or register any domain names, and that there is no relationship whatsoever between the parties.

As Complainant made a prima facie showing that Respondent lacks rights in the domain name, it is up to Respondent to show that he has rights to or legitimate interests in the domain name. See Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455 (August 21, 2003). (“Complainant must make at least a prima facie showing that Respondent has no rights or legitimate interests in the mark. After Complainant has met its initial burden of proof, if Respondent fails to submit a response Complainant will be deemed to have satisfied Paragraph 4 (a) ii of the Policy”).

In the present case, Respondent –being in default- failed to allege or to evidence any circumstance in his favor. By registering an obvious misspelling of Complainant’s famous mark as a domain name, and by using it in a web site with content inspired from Complainant’s web site, and where a “Kelly Blue Book” is substituted for the famous Kelley Blue Book, Respondent is illegitimately exploiting Complainant’s renown and goodwill. Thus, Respondent cannot be said to have rights or legitimate interests in the domain name.

The Panel finds that Complainant has proved the second element of the Policy.

C. Registered and Used in Bad Faith

Complainant alleged and proved with several printouts of Respondent’s web site and of Complainant’s own “www.kbb.com” official web site that Respondent took its version of the history of the “Kelly” Blue Book and business from Complainant’s “www.kbb.com”. Respondent has even changed the name of Mr. Les Kelley, the founder and creator of the Kelley Blue Book in 1926, into “Les Kelly”.

The Panel admits without effort Complainant’s contention that its KELLEY BLUE BOOK mark is famous in the market of new and used car pricing services. Furthermore, the content posted on Respondent’s web site suggests that before the registration of the domain name, he knew perfectly well Complainant’s mark, products and services, including on-line services. In addition to other circumstances of this case, this is evidence of bad faith registration.

Even if the Panel is not convinced that the texts posted on Respondent’s web site directly infringe on Complainant’s copyrighted web content, it is satisfied that such content leads Internet users into confusion. Because the disputed domain name is almost identical to Complainant’s mark, users searching for Complainant’s web site and inadvertently misspelling “Kelley” may connect to Respondent’s web site, and after seeing its content, they may believe that it is Complainant’s web site. The resulting confusion provides a ground for a finding of bad faith use.

It is a consensus view of WIPO UDRP panelists that a panel may visit the Internet site linked to the disputed domain name in order to obtain more information about the respondent and the use of the domain name. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions available at http://arbiter.wipo.int/domains/search/overview/index.html#45. One example of the consensus view in this respect is Société des Produits Nestlé SA v. Telmex Management Services, WIPO Case No. D2002-0070 (April 2, 2002) (“Pursuant to Paragraph 10(a) of the Rules, the Panel considers itself competent to independently visit the Internet in order to obtain additional light in a default proceeding (see WIPO Case Nos. D2000-0076 and D2000-0141)”). On October 1, 2005, the Panel connected its browser to the “www.kelly-blue-book.org” web site. The resulting web page under the title “kelly-blue-book.org” (Panel’s emphasis) features a text stating: “Here are some related websites for kelly-blue-book.org” (Panel’s emphasis). Three sponsored links also appear: “RV Information” –“www.finditonline.ws”-, “Classic Cars” –“www.classic-car.50webs.com”-, and “Motorhomes” –“www.AllMotorhomes.org”. The last one of these web sites contains offers for sale or offers to rent cars and motor homes, that is the kind of automotive information that Complainant is publishing in its Kelley Blue Book. Although there is no evidence that these web sites are owned by Respondent, they seem to have commercial purposes, as they provide pricing and other information on new and used cars. In short, they appear to be competitors of Complainant.

This leads the Panel to conclude that Respondent registered the disputed domain name “primarily for the purpose of disrupting the business of a competitor”, a circumstance of bad faith registration pursuant to Policy, paragraph 4(b)(iii).

Even if Respondent were strictly not a competitor of Complainant, the Panel is satisfied that by using the domain name as described above, Respondent intentionally attempted to attract, for commercial gain, Internet users to his web site, creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of his web site or of a product or service on his web site. This is a circumstance of bad faith use under Policy, paragraph 4(b)(iv).

In sum, the Panel finds that Respondent registered and is using the domain name 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 the domain name <kelly-blue-book.org> be transferred to the Complainant.

Roberto Bianchi
Sole Panelist

Date: October 7, 2005