WIPO Arbitration and Mediation Center

1. The Parties

The Complainant is Wachovia Corporation of Charlotte, North Carolina, United States of America, represented by Kennedy Covington Lobdell & Hickman, LLP of Charlotte, North Carolina, United States of America.

The Respondent is American Consumers First of Salt Lake City, Utah, United States of America.

2. The Domain Names and Registrar

The disputed domain names <qachovia.com>, <wachevia.com>, <wachovaa.com>, <wachovea.com>, <wachovii.com>, <wachovio.com>, <wachoviu.com>, <wachovua.com>, <wachpvia.com>, <wachuvia.com>, <wechovia.com>, <wschovia.com>, <wuchovia.com> are registered with Wild West Domains, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the“Center”) on February 25, 2004. On February 26, 2004, the Center transmitted by email to Wild West Domains, Inc. a request for registrar verification in connection with the domain names at issue. On February 26, 2004, Wild West Domains, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the details for the administrative, billing, and technical contact. At the request of the Center, further clarification was provided on March 5, 2004. 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 March 8, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was March28,2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 7, 2004.

The Center appointed Justin Hughes as the sole panelist in this matter on May 13, 2004. Finding that it was properly constituted, the Panel submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

On June 10, 2004, the Panel issued a Decision (“June 10 Decision”) ordering that ten (10) of the disputed domain names be transferred to the Complainant. These domain names were <qachovia.com>; <wachevia.com>; <wachovea.com>; <wachovio.com>; <wachovua.com>; <wachpvia.com>; <wachuvia.com>; <wechovia.com>; <wschovia.com>; and <wuchovia.com>. Pursuant to paragraph 4(b) of the Policy and paragraph 3(b) of the Rules, the June 10 Decision further invited the Complainant to substantiate why the three domain names <wachovaa.com>, <wachovii.com>, and <wachoviu.com> are confusingly similar to the Complainant’s trademarks. In the June10 Decision the Panel requested that the registrar in this case maintain a registrar lock on the domain names <wachovaa.com>, <wachovii.com>, and <wachoviu.com> until it received notice that this proceeding has been concluded.

The June 10 Decision provided that the Complainant should submit its additional statement no later than June 24, 2004, and gave the Respondent until July 1, 2004, to submit a response, commenting on the Complainant’s submission. The Complainant provided a timely “Response to Provisional Order” (“Complainant’s Response”) to the Panel. The Respondent did not reply to the Complainant’s Response.

4. Factual Background

The relevant aspects of the factual background of this dispute are described in the June 10 Decision.

5. Parties’ Contentions

A. Complainant

In response to the Panel’s invitation to elaborate on how the domain names <wachovaa.com>, <wachovii.com>, and <wachoviu.com> are confusingly similar to the Complainant’s trademark(s), the Complainant submits that the “confusingly similar” element under the Policy should properly be analyzed with: (1) the same analysis used by prior panelists adjudicating “typosquatter” disputes; (2) the analysis in U.S. case law under the Anticybersquatting Consumer Protection Act as to when a domain name at issue is “identical or confusingly similar” to a plaintiff’s trademark; or (3) reasonable inferences from Respondent’s conduct, particularly Respondent’s past history of typosquatting and default in the present case. [Complainant’s Response at 2]

B. Respondent

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

6. Discussion and Findings

To prevail in a UDRP action, paragraph 4(a) of the Policy requires that the Complainant must establish each of the following:

(i) The domain name at issue is identical or confusingly similar to the 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.

Because of the posture of these proceedings, the Panel will address the three requirements in reverse order as they concern the <wachovaa.com>, <wachovii.com>, and <wachoviu.com> domain names.

A. Registered and Used in Bad Faith

Pursuant to its June 10 Decision and the reasons given therein, the Panel has concluded that the Respondent registered and has used the <wachovaa.com>, <wachovii.com>, and <wachoviu.com> domain names in bad faith. Since June 10, 2004, these three domain names continue to resolve to “www.picklerelish.com”, a web site that offers among its popular searches a variety of options which compete with the financial services offered by the Complainant.

B. Rights or Legitimate Interests

Pursuant to its June 10 Decision and the reasons given therein, the Panel has concluded that the Respondent has no rights or legitimate interests in concern the <wachovaa.com>, <wachovii.com>, and <wachoviu.com> domain names.

C. Identical or Confusingly Similar

In its June 10 Decision, the Panel concluded that Complainant had not provided sufficient evidence or reasoning as to why the three domain names <wachovaa.com>, <wachovii.com>, and <wachoviu.com> are confusingly similar to the WACHOVIA trademark. As the June 10 Decision noted, it would not be inappropriate to adopt a per se rule that any one or two letter variation in a trademark automatically produces a confusingly similar domain name. In the case of an eight letter trademark like WACHOVIA such a per se rule would automatically render over 400 possible domain names “confusingly similar.”

In Complainant’s Response, the Complainant submits that the “confusingly similar” element under the Policy should properly be analyzed with: (1) the same analysis used by prior panelists adjudicating “typosquatter” disputes; (2) the analysis in U.S. case law under the Anticybersquatting Consumer Protection Act as to when a domain name at issue is “identical or confusingly similar” to a plaintiff’s trademark; or (3) reasonable inferences from Respondent’s conduct, particularly Respondent’s past history of typosquatting and default in the present case. [Complainant’s Response at 2]

1. Confusing Similarity through Mistyping <wachovaa.com> and <wachovii.com>

Not every one or two letter change from an established trademark is a minimal typographical error from that trademark. [June 10 Decision at 4]. The June 10 Decision reasoned that “doubling” errors are a kind of typographical “mistake that may be considerably less common than hitting an adjacent, wrong key or failing to hit a key with sufficient force” [Id. at 4]. On that basis, the June 10 Decision did not order the transfer of these domain names pending further briefing from the Complainant.

The Complainant’s Response now provides evidence that “doubling” of letters is a common typographical error. For example, attachment 1 to Complainant’s Response is an excerpt of a University of Copenhagen report detailing how “doubling: insertion of a letter X next to another X” is a common typographical error. Final Report of the Testbed Study of Evaluation Methodologies: Authoring Aids, 1997, available at “www.cst.dk/temaa/D16/d16exp-3.html”. Doubling of letters is apparently recognized as a common mistake in spell check software. See As-U-Type software website, available at “www.asutype.com/features.html”. See also “Keyboard errors,” NewScientist.com, available at “www.newscientist.com/lastword/article.jsp?id=lw249” (discussing prevalence of and explanations for “pre-empting of double letters”).

On this basis, the Panel accepts that the domain names < wachovaa.com> and <wachovii.com> are confusingly similar to the WACHOVIA trademark.

2. Confusing similarity through misspelling <wachoviu.com>

The remaining domain name in this dispute, <wachoviu.com> provides the most difficulty vis--vis the confusing similarity standard.

Complainant’s Response reasons that “wachoviu” can be a misspelling that occurs when a person unfamiliar with WACHOVIA types a “u” for the “uh” sound as in “up” and “ugly” [Complainant’s Response at 2]. The Complainant reasons that “[a] consumer hearing Complainant’s WACHOVIA mark could easily think that it is spelled with a final ‘u’ rather than a final ‘a’.” [Complainant’s Response at 3]

Complainant suggests that the standard for an “identical or confusingly similar” mark under the U.S. Anticybersquatting Consumer Protection Act (“ACPA”) can help inform what constitutes a “confusingly similar” domain name in the present dispute. [Complainant’s Response at 5]. The Panel agrees that, pursuant to paragraph 15(a) of the Rules, in a proceeding between two parties domiciled in the same country, it is appropriate to refer to that country’s national trademark law to establish suitable legal standards.

By the standards elaborated in American cases and treatises, the similarity between <wachoviu.com> and WACHOVIA is sufficiently strong to make the domain name “confusingly similar” to the Complainant’s trademark. See J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition (2004), 25.78 at 25:265-267 and 23.21 at 23:75-76 (concluding that appearance, pronunciation, and “overall impression” are elements in determining similarity); Restatement, Torts 729 (1938) (same); Restatement (Third) of Unfair Competition 21(a) (1995) (same); Shields v. Zuccarini, 254 F.3d 476, 483 (3d Cir. 2001) (a “strong similarity” between trademark and domain names persuaded appellate court that the domain names were “confusingly similar”).

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 names <wachovaa.com>, <wachovii.com>, and <wachoviu.com> be transferred to the Complainant.

Justin Hughes
Sole Panelist

Dated: July 7, 2004