8th Jan 2010
WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
eDreams, Inc. v. CK Ventures Inc.
Case No. D2009-1508
1. The Parties
The Complainant is eDreams, Inc. of Delaware, United States of America, represented by UBILIBET, Spain.
The Respondent is CK Ventures Inc. of Christ Church, Barbados, represented by ESQwire.com Law Firm, United States of America.
2. The Domain Name and Registrar
The disputed domain name <edrams.com> (the “Domain Name”) is registered with Nameview Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 6, 2009, naming EDRAMS.COM as the respondent, the identity of the registrant of the Domain Name being protected by a privacy shield.
The Center transmitted its request for registrar verification to the Registrar on November 10, 2009. The Registrar replied on November 12, 2009, confirming that it had received a copy of the Complaint; that the Domain Name was registered with it, was subject to the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), would expire on March 24, 2010, and would remain on Registrar lock during this proceeding; and that the registration agreement was in English. However, the Registrar stated that the respondent named in the Complaint was not the registrant. The Registrar identified the registrant as CK Ventures Inc. and provided the contact details held in its WhoIs database in respect of the Domain Name.
The Center forwarded the registrant and contact information disclosed by the Registrar to the Complainant on November 13, 2009, and invited it to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on November 16, 2009, substituting CK Ventures Inc. as the Respondent in the place of EDRAMS.COM.
The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the UDRP, 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 17, 2009. In accordance with paragraph 5(a) of the Rules, the due date for Response was December 7, 2009. The Respondent submitted its Response, in which it requested a 3-member Panel, on December 7, 2009.
The Center appointed Jonathan Turner, Prof. Dr. José Carlos Erdozain and the Hon. Neil Anthony Brown QC as panelists in this matter on December 23, 2009. Each member of the Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with paragraph 7 of the Rules.
Having reviewed the file, the Panel is satisfied that the Complaint together with the amendment to the Complaint complied with applicable formal requirements, was duly notified to the Respondent and has been submitted to a properly constituted Panel in accordance with the UDRP, the Rules and the Supplemental Rules.
4. Factual Background
The Complainant is an e-commerce travel company which operates through websites located at “www.edreams.es”, “www.edreams.com”, “www.edreams.fr”, “www.edreams.it” and “www.edreams.pt”. The Complainant began offering its services in 2000.
The Complainant and its Spanish affiliate have registered EDREAMS and mis-spellings thereof, such as EDRAMS, as trademarks in various jurisdictions, including the European Union (“EU”) through the Office for Harmonisation in the Internal Market (“OHIM”). The Complainant's group has also registered a considerable number of domain names containing the term “edreams” or variations in the spelling thereof.
The Respondent registered the Domain Name on March 25, 2003, and has parked it with a service whereby it displays automatically generated pay-per-click (“PPC”) links to other websites.
5. Parties' Contentions
In addition to the facts set out above, the Complainant states that it is the leading on-line travel agency by market share in Southern Europe, that over six million customers have purchased travel services through it since its inception, and that it invoiced over 607 million Euros in the last financial year. It notes that entering “edreams” into the Google search engine produces thousands of results referring to its websites and draws attention to reports about its activities in on-line newspapers.
The Complainant submits that the Domain Name is confusingly similar to its EDREAMS trademark, alleging that the Domain Name is an obvious and purposeful mis-spelling of this mark.
The Complainant further submits that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Complainant notes that the Respondent has not registered any similar trademark in the Spanish Patent and Trademark Office or OHIM; that the Respondent has not been licensed or authorised by the Complainant to use its mark; and that the Domain Name does not reflect the Respondent's corporate name.
The Complainant points out that the Domain Name is still directed to a “parking” website, more than six years after it was registered by the Respondent. The Complainant infers that the main aim of the Respondent in registering the Domain Name was to earn money by displaying relevant advertisements and, in the future, by selling it to the Complainant.
The Complainant exhibits a copy of the web page which appeared on typing the Domain Name into a web browser. The printout is dated November 2, 2009, and displays links relating primarily to travel services. It also displays a link under the main heading with the words “To purchase this domain name, click here”.
Finally, the Complainant alleges that the Domain Name was registered and is being used in bad faith. Reiterating that the Domain Name is an obvious and purposeful mis-spelling of its EDREAMS mark, the Complainant contends that the Respondent must have been aware, when it registered the Domain Name, of the Complainant's existence as one of Europe's biggest on-line travel agencies.
According to the Complainant, the registration of the Domain Name is an example of typo-squatting, carried out to divert Internet users who mistype the Complainant's mark to a parking website, to prevent the Complainant from registering the Domain Name and to speculate on selling the Domain Name in the future. The Complainant complains that the Domain Name obstructs its access to the Internet under its trademark and corporate name and leads its current or potential customers to suppose that it does not have a properly working website. The Complainant also relies on the Respondent's failure to use the Domain Name as further evidence of bad faith.
The Complainant requests a decision that the Domain Name be transferred to it.
The Respondent states that it did not register the Domain Name with the Complainant in mind. It points out that EDRAM is widely used to refer to “enhanced dynamic random access memory” and that it registered the Domain Name when a previous registrant failed to renew it. According to the Respondent, links relating to computer memory have been displayed on its website at the Domain Name, and links relating to the Complainant's trademark have not been so displayed.
The Respondent contends that the Complainant is only entitled to rely on trademarks registered prior to the registration of the Domain Name, namely those for EDREAMS registered in Slovakia, Norway and the Czech Republic. It argues that the Domain Name is not confusingly similar to this mark, pointing out that this mark has a descriptive connotation (as in “dream holiday”) and conveys a very different meaning to that conveyed by the Domain Name (namely computer memory).
The Respondent further submits that it has a legitimate interest in the Domain Name as a result of its descriptive use. It states that the Domain Name has been hosted on the Hitfarm.com parking platform and has displayed PPC links automatically generated by a feed from Yahoo! which are intended to relate to its contextual meaning. It maintains that it has at no time placed links relating to the Complainant's goods or services, namely travel, on its website at the Domain Name, and that the links appearing on the website have been related either to computer data storage or memory or to dreams.
The Respondent exhibits copies of the web page at the Domain Name as recorded by “www.archive.org” in January and May 2005. These display a wide variety of links and give no prominence to a single link under the name “Travel”. The Respondent also notes that “presently” all the links on the web page relate to dreams.
The Respondent points to the fact that it has registered a number of other domain names containing RAM as corroborating its statement that it registered the Domain Name on account of its descriptive nature and not because of the Complainant's mark.
The Respondent avers that it registered the Domain Name in good faith, noting that at the time the Complainant's trademark was only registered in Slovakia, Norway and the Czech Republic. The Respondent emphasises that it did not register the Domain Name with intent to sell it to the Complainant, or to disrupt the Complainant's business, or to confuse consumers, or to prevent the Complainant from owning a domain name corresponding to its trademark.
The Respondent also relies on the Complainant's failure to take any action in relation to the Domain Name for over six years as evidence that the Complainant did not regard it as abusive.
The Respondent's principal factual contentions are verified by a signed declaration of a manager.
The Respondent therefore submits that the Complaint should be denied.
6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding, the Complainant must prove (i) that the Domain Name is identical or confusingly similar to a mark in which it has rights; (ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) that the Domain Name has been registered and is being used in bad faith.
These requirements are discussed in turn below.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has registered and unregistered rights in the mark EDREAMS and registered rights in the mark EDRAMS. As has been held in many cases, a complainant can rely on a trademark for the purpose of the first requirement of the UDRP even if it was registered after the disputed domain: see paragraph 1.4 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions (posted on the Internet at http://www.wipo.int/amc/en/domains/search/overview/index.html#14).
The extent or otherwise of registrations of the Complainant's trademark at the date of registration of the Domain Name is relevant to the second and third requirements of the UDRP but does not preclude the first.
The Panel finds that the Domain Name is identical for the purpose of the UDRP to the mark EDRAMS and a majority of the Panel further finds that it is confusingly similar to the mark EDREAMS.
As to the former, it is well established that the generic top level domain suffix should be discounted when making the comparison for the purpose of the first requirement.
As to the latter, the Panel agrees with the Respondent that there is a conceptual difference between the Domain Name and the EDREAMS mark, in that the former indicates a form of computer memory to many Internet users, while the latter is likely to be understood as referring to dreams. Nevertheless, a majority of the Panel considers that there is a real risk that Internet users seeking the Complainant's website may be confused and diverted to the web page located by the Domain Name through mistyping the Complainant's primary mark.
The Panel therefore finds that the first requirement of the UDRP is satisfied, unanimously in relation to the EDRAMS mark and by a majority in relation to the EDREAMS mark.
B. Rights or Legitimate Interests
A majority of the Panel considers that the Respondent's use of the Domain Name by causing it to be hosted on a parking platform whereby it displays automatically generated links does not constitute a use of the Domain Name in connection with a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the UDRP. On this point, the majority of the Panel respectfully adopts the analysis set out in Trade Me Limited v. Vertical Axis Inc., WIPO Case No. D2009-0093.
It is clear that the Respondent is not commonly known by the Domain Name and that the Respondent cannot (and, indeed, does not) rely on paragraph 4(c)(ii) of the UDRP.
A majority of the Panel further considers that the Respondent is not making a legitimate noncommercial or fair use of the Domain Name within the meaning of paragraph 4(c)(iii) of the UDRP; again the majority of the Panel follows Trade Me Limited v. Vertical Axis Inc., WIPO Case No. D2009-0093, on this point.
A majority of the Panel further finds that the Respondent does not have rights or legitimate interests independently of paragraph 4(c) of the UDRP. On this point, the majority of the Panel does not agree with the view expressed in Trade Me Limited v. Vertical Axis Inc., WIPO Case No. D2009-0093, that mere use of a descriptive domain name to display automatically generated links relating to its descriptive nature suffices to confer a legitimate interest in it on the registrant.
Furthermore, in this case the Respondent has not specifically addressed the Complainant's evidence that immediately prior to the Complaint, the Domain Name was being used for a website primarily displaying links relating to travel services. The Respondent is required by paragraph 5(b)(i) of the Rules to respond specifically to the statements and allegations contained in the Complaint. Where the Respondent has failed to do so, the Panel is entitled to prefer a specific allegation in the Complaint to a generalised denial in the Response, in accordance with paragraph 14(b) of the Rules.
In this case, a majority of the Panel finds on the balance of probabilities that immediately prior to the Complaint, the Domain Name located a web page primarily containing links to travel services. The majority of the Panel considers that this was unfair and such as misleadingly to divert consumers to websites of the Complainant's competitors.
In all the circumstances, the majority of the Panel finds on the balance of probabilities that the Respondent does not have rights or legitimate interests in respect of the Domain Name. The second requirement of the UDRP is therefore satisfied.
C. Registered and Used in Bad Faith
It is clear from the terms of the UDRP and confirmed by many decisions under it, that the two aspects of its third requirement are cumulative conditions: the Complainant must show both that the Domain Name was registered in bad faith and that it is being used in bad faith.
Where a person registers a domain name which reflects a widely used mark and directs it to a parking platform whereby it displays automatically generated links, there is a serious risk that the links so generated will relate to the field in which the mark is used and will divert Internet users to competitors of the owner of the mark, unless precautions are taken to exclude this possibility. This risk arises precisely because the software is designed to generate links which will maximise the PPC revenue, subject to any restriction applied by the operator.
The majority of the Panel accordingly considers that where a person registers such a domain name with the intention of directing it to such a platform with a reckless disregard of the possibility that he may profit from such links, the registration may be considered to be in bad faith for the purposes of this requirement of the UDRP, even if the registrant did not have actual knowledge of the mark: see Grisoft, s.r.o. v. Original Web Ventures Inc., WIPO Case No. D2006-1381.
The risk of generating such links is greater, and the inference of recklessness amounting to bad faith more readily drawn, where the domain name is identical to a distinctive mark which does not have obvious descriptive uses. Conversely, the risk is lower and the inference less likely to be appropriate, if the domain name is only similar to the mark and also has a clear descriptive use.
In any case, this inference can only be drawn where it is shown that the mark was widely used when the Domain Name was registered: see Bright Horizons Family Solutions Inc., Allmont Limited, Bright Horizons Limited Partnership and Bright Horizons Family Solutions Ltd. v. Vertical Axis, Inc., WIPO Case No. D2007-0795. Where the mark was not widely used at the date of the registration, it cannot be inferred that the registrant's intended use of a corresponding domain name would give rise to a serious risk of confusion or diversion of Internet users through such links, and hence that the registration was effected with a reckless disregard for this risk.
In this case, there is no suggestion that the Complainant has used EDRAMS as a mark and there is no evidence that the Complainant's EDREAMS mark was sufficiently widely used when the Domain Name was registered in 2003, so that automatically generated links would relate to the field in which this mark was used and would divert Internet users to the Complainant's competitors.
The EDREAMS mark would need to have a strong reputation at that date to outweigh the fact that the Domain Name is not identical to this mark and is identical to a term which is widely used to refer to a completely different product. Such evidence as there is, namely the web pages recorded in 2005 and exhibited by the Respondent, supports the view that the reputation of the Complainant's mark was not strong enough to result in automatically generated links to the Complainant's competitors when the Domain Name was registered.
The Panel further finds that the Complainant has failed to prove bad faith registration on any other basis. The evidence does not show that the Complainant's mark was sufficiently widely used when the Domain Name was registered, that the Respondent must have been aware of it or that the Respondent closed its eyes to the obvious.
In all the circumstances, the Panel concludes that the Complainant has not shown on the balance of probabilities that the Domain Name was registered in bad faith. The third requirement of the UDRP has not been satisfied and the Complaint must therefore be rejected.
For all the foregoing reasons, the Complaint is denied.
José Carlos Erdozain
The Honourable Neil Anthony Brown QC
Dated: January 8, 2010
Separate Opinion Concurring in Part and Dissenting in Part
The Panel has reached a consensus that the Complainant has not shown that the disputed domain name was registered in bad faith and accordingly the Complaint will not succeed. But in view of the effort that the parties have put into the other issues and their importance, it is appropriate to say also that this panellist respectfully holds a different view on those issues.
The majority of the Panel has found that the domain name is identical to the EDRAMS mark and confusingly similar to the EDREAMS mark. I respectfully disagree with the latter of those two findings. The majority has also found that the Respondent has no right or legitimate interest in the domain name. I respectfully disagree with that conclusion.
The reasons why I have come to those conclusions are as follows.
A. Identical or Confusingly Similar
The Complainant seems to be making two submissions. On a literal reading of the Complaint, it is submitting both that the disputed domain name is identical to the Complainant's registered trademark EDRAMS and that it is confusingly similar to the Complainant's registered trademark EDREAMS. Although it does not actually say so, it may also be claiming that the domain name is confusingly similar to an unregistered or common law trademark in EDREAMS.
This panellist respectfully agrees with the view of the majority that the disputed domain name is identical to the Complainant's registered trademark EDRAMS.
That is so because, as the majority in effect say, the prevailing view is that so long as a trademark is in existence at the time of the Complaint, it does not matter for the purposes of this issue whether it was registered before or after the disputed domain name.
But it should be said here that this finding cannot assist the Complainant in the final outcome of this proceeding, for the trademark was not registered until July 26, 2006, by which time the disputed domain name had been registered by the Respondent for more than 3 years and it had apparently been registered by another party even prior to that. That lack of activity is apparent, despite the Complainant's assertion that it is “especially sensitive to the protection of its names and trademarks.”
However, virtually the entirety of the Complainant's case is that it is relying principally on its registered EDREAMS trademark and that for the purposes of this element its case is that the domain name is confusingly similar to the EDREAMS trademark. Accordingly, more consideration must be given to the Complainant's submissions in this regard.
The Complainant's case is that the domain name is similar to the trademark, for it omits only one letter and is confusingly so for that reason and also because it can be assumed that the misspelling was done “purposefully”.
That reasoning may have some merit, but its problems are twofold. First, it cannot be said that a domain name is confusingly similar simply because the spelling is similar; the plain words of the Policy require that the domain name must also be confusing and it is a well established principle of interpretation that words included in a document such as the Policy are there for some reason and in this case the reason is to add the requirement of confusion in addition to the requirement of similarity. Secondly, it is equally well established that in making the comparison, extraneous matters such as the intention of the registrant in registering the domain name are to be disregarded; thus it is said that a straight comparison must be made between the domain name and the trademark.
When that is done in the present case, by the panellist placing himself in the position of the objective bystander, which is the only way the task can be performed, it cannot be said on the balance of probabilities that the domain name is confusingly similar to the trademark. The matter is not entirely free from doubt, but there are several factors that tilt the scales in favour of the Respondent.
First, as the majority has said, the domain name invokes a reference of some sort to computer memory, whereas the trademark invokes a reference to dreams and there is thus an initial separation of the two concepts which makes it unlikely that the objective bystander would assume the domain name and the trademark were referring to the same thing.
Secondly, even without the knowledge that “edrams” describes a specific computer function known to the Internet cognoscenti, it at least has the appearance that it means something and that, whatever it is, it does not seem to have any association with dreams. Perhaps a clue to what most people would think the word “edrams” meant is to be found in the fact that in 2005 and 2006, as appears from “www.archive.org”, the Pay-per Click service was generating a link to “dram”.
But thirdly and more importantly, the Complainant has chosen for its trademark a descriptive expression that clearly invokes the notion of dreams that are connected to or dealt with in some way on the Internet. As has been noted in cases such as Tire Discounters Inc. v. Tirediscounter.com, NAF Claim No.679485 (June 14, 2006) cited by the Respondent, there may be only the difference of one letter between, for example, the trademark TIREDISCOUNTERS and the domain name <tirediscounter.com>, but the latter need not necessarily be confusingly similar to the former, for, as the three person panel said in that case: “In the Internet context, consumers are aware that domain names for different websites are often quite similar and that small differences matter.” As this panellist also suggested in Streetprices.com, Inc. v. Nett Corp., NAF Claim No. 1280020 (November 10, 2009) even if there is a small spelling difference, the test still remains whether the goods or services invoked by the domain name are probably the same as those invoked by the trademark.
Applying that test in the present case, there is nothing at all to suggest that the “edrams” of the domain name would probably be construed by anyone as the “edreams” of the trademark.
The domain name is therefore not confusingly similar to the trademark.
B. Rights or Legitimate interests
The decision relied on by the majority, Trade Me Limited v. Vertical Axis Inc, WIPO Case No. D2009-0093 certainly contains some interesting and wide ranging propositions. Without subscribing to all of the views expressed there, most of which do not seem to have been intended to be directly referable to the decision, it seems to this panelist that on one essential aspect of this case the panel in the Trade Me case was restating well established practice in UDRP proceedings, i.e. that a right or legitimate interest may come from the fact that the domain name consists of a common or “dictionary” word. That practice was expressed in the following way:
“It nevertheless remains to be decided whether the Respondent has shown independently of paragraph 4(c) that it has rights or legitimate interests in respect of the disputed domain name. A number of panels have concluded that a respondent may have a right to register and use a domain name to attract Internet traffic based on the appeal of a commonly used descriptive phrase, even where the domain name is identical or confusingly similar to the trademark of a complainant, provided it has not been registered with the complainant's trademark in mind. See, e.g., Bradley D Mittman MD dba FRONTRUNNERS® v. Brendhan Hight, MDNH Inc, WIPO Case No. D2008-1946, National Trust for Historic Preservation v. Barry Preston, WIPO Case No. D2005-0424; Private Media Group, Inc., Cinecraft Ltd. v. DHL Virtual Networks Inc., WIPO Case No. D2004-0843; T. Rowe Price Associates, Inc. v. J A Rich, WIPO Case No. D2001-1044; Sweeps Vacuum & Repair Center, Inc. v. Nett Corp., WIPO Case No. D2001-0031; EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047.
Thus, where a respondent registers a domain name consisting of a “dictionary” term because the respondent has a good faith belief that the domain name's value derives from its generic or descriptive qualities rather than its specific trademark value, the use of the domain name consistent with such good faith belief may establish a legitimate interest. See Mobile Communication Service Inc. v. WebReg, RN, WIPO Case No. D2005-1304. See also Media General Communications, Inc. v. Rarenames, WebReg, WIPO Case No. D2006-0964 (domain name must have been registered because of, and any use consistent with, its attraction as a dictionary word or descriptive term, and not because of its value as a trademark).”
That opinion expresses the Respondent's ground for saying that it has a right or legitimate interest in the domain name at issue in the present case and it has cited several other decisions to the same effect as those referred to in the Trade Me decision. The principle is therefore generally accepted and it remains to be seen if it can be applied to the facts of the present case.
Although the word “edrams” is probably not a word in daily use in most households, the only evidence on the subject is that it is a word, that the word is to be found in some dictionaries and that it is in wide use among those who have occasion to use it. Moreover, there is nothing by way of evidence or inference to conclude that the Respondent registered the domain name with the Complainant's trademark in mind or that it used it substantially to promote goods or services in the Complainant's field of business.
Indeed, its evidence by way of a Declaration is to the contrary and until some reason is shown as to why it should be rejected, it should be accepted. The evidence shows that the advertising links posted on the Respondent's website were related primarily to the word “edrams” in its manifestation as a word relating to computers and as an anagram of the word “dreams”, rather than travel, the business of the Complainant. It is true that shortly prior to the Complaint being issued, the domain name resolved to a website carrying links to travel services. However, to put this in perspective, those links were described as “related searches” as were other links on the same website, namely Dating, Dallas Semiconductor, Microcontroller and Obsolete semiconductor, all of which have nothing to do with travel and everything to do with computers. Moreover, having examined the limited record available through “www.archive.org”, it is plain that several years before this matter became the subject of a dispute, the domain name was used to promote computer related items, numerous subjects related to dreams such as “visions”, many of the usual blandishments and, as only one item among many, “travel”. The substance of what record there is, seems at most to be one reflecting travel in part only and certainly not one where the principle objective was for the Respondent to copy the Complainant, trade on its reputation or pretend that the Respondent was in the travel business.
Accordingly, the Respondent's activities were legitimate. At the least, it cannot be said that the Complainant has shown on the balance of probabilities that the Respondent has no right or legitimate interest in the domain name.
Accordingly, the Complainant would also fail on this element.
The Honourable Neil Anthony Brown QC
Dated: January 8, 2010