National Arbitration Forum

 

DECISION

 

Letstalk.com, Inc. v. Inofirma, Ltd c/o Domain Administrator

Claim Number: FA1002001310279

 

PARTIES

Complainant is Letstalk.com, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA.  Respondent is Inofirma, Ltd c/o Domain Administrator (“Respondent”), Russia.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <letztalk.com>, registered with Fiducia Llc, Latvijas Parstavnieciba.

 

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

 

David E. Sorkin as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on February 25, 2010; the National Arbitration Forum received a hard copy of the Complaint on February 26, 2010.

 

On March 4, 2010, Fiducia Llc, Latvijas Parstavnieciba confirmed by e-mail to the National Arbitration Forum that the <letztalk.com> domain name is registered with Fiducia Llc, Latvijas Parstavnieciba and that the Respondent is the current registrant of the name.  Fiducia Llc, Latvijas Parstavnieciba has verified that Respondent is bound by the Fiducia Llc, Latvijas Parstavnieciba registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On March 9, 2010, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of March 29, 2010 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@letztalk.com by e-mail.

 

A hard copy of the Response was not received prior to the Response deadline and, therefore, the Forum considers the Response to be deficient under Supplemental Rule 5(a).  The Panel has nonetheless decided to consider the Response.

 

Each party also submitted an Additional Submission.  The payment required by the Forum for Complainant’s Additional Submission, however, was not received until after the deadline provided by Supplemental Rule 7.

 

On April 7, 2010, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David E. Sorkin as Panelist.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

A. Complainant

Complainant markets wireless communications products and services in the United States.  Complainant holds a registration on the Principal Register of the U.S. Patent and Trademark Office (registration number 3,735,535) for its LETSTALK.COM mark.  Complainant has used this mark in commerce since February 1996, and the corresponding domain name <letstalk.com> was registered on October 17, 1995.

 

Respondent registered the disputed domain name <letztalk.com> on or after December 12, 2003, long after Complainant registered the corresponding domain name <letstalk.com> and commenced using its LETSTALK.COM mark.[1]

 

Complainant contends that the disputed domain name is confusingly similar to Complainant’s mark, differing only by a single character; Complainant characterizes the disputed domain name as a classic example of “typosquatting.”  Complainant asserts that Respondent has no rights or legitimate interests in respect of the disputed domain name, on the grounds (among others) that Respondent has not been commonly known by the name, has not been authorized to use Complainant’s mark, and has failed to make active use of the name.  (As of January 2010, according to an exhibit furnished by Complainant, the disputed domain name resolved to a webpage that offered the domain name for sale.)  Complainant contends Respondent should be considered to have registered and used the domain name in bad faith, based largely upon the allegation of “typosquatting” and Respondent’s failure to make active use of the name.

 

B. Respondent

Respondent denies that the disputed domain name is confusingly similar to Complainant’s mark.  To the contrary, Respondent asserts that the letter “z” “serves as a graphical alteration of the whole grammar particle ‘us’,” rather than merely as one letter substituted for another, and argues that the difference is small but substantial.

 

Respondent further claims that it has rights and legitimate interests in respect of the disputed domain name, as it intends to capitalize on the generic meaning of “Let’s talk.”  Respondent asserts that it operates a public discussion forum at a subdomain of the disputed domain name, <forum.letztalk.com>, and that the disputed domain name has been used in connection with this and other social networking and communication services for more than six years.  Respondent states that it also intends to lease the rights to other subdomains of the disputed domain name, in order to create an integrated cluster of discussion forums.

 

Respondent also denies Complainant’s accusations of bad faith.  Respondent notes that bad faith registration requires that the Respondent have actual rather than merely constructive knowledge of Complainant’s mark.  Furthermore, the disputed domain name was registered in 2003, while Complainant’s mark was not registered until 2010, rendering it impossible for the domain name to have been registered in bad faith.  Respondent emphasizes that its intentions relate to the generic meaning of “Let’s talk” rather than any connection to Complainant or its mark, and denies having ever offered the disputed domain name for sale.

 

Finally, Respondent accuses Complainant of reverse domain name hijacking for having waited six years to challenge Respondent’s registration and use of the disputed domain name, and for bringing an unfounded Complaint under the Policy.

 

C. Additional Submissions

Having carefully reviewed Complainant’s initial submission, the Panel believes that it was prepared by some sort of automatic process with little or no human review.  For example, the Complaint refers throughout to “Complainant’s Mark(s)” and “Disputed Domain Name(s),” even though there is only one relevant mark and one domain name in dispute.  The Complaint includes an obviously false contention regarding the timing of the registration of the disputed domain name, and includes other extraneous boilerplate material (for example, argument and authorities for the proposition that a top-level domain is irrelevant to the question of identicality or confusing similarity—clearly inapplicable in this case, where the trademark includes “.com”).

 

Given the lack of care devoted to the preparation of the Complaint, the Panel is not inclined to exercise its discretion to consider an Additional Submission from Complainant.  The Panel has reviewed the parties’ initial and additional submissions, and finds no compelling reason to consider any additional material in this proceeding.  See, e.g., Am. Online, Inc. v. Thricovil, FA 638077 (Nat. Arb. Forum Mar. 22, 2006) (“Additional submissions should be admitted only in exceptional circumstances, such as where they reflect newly discovered evidence not reasonably available to the submitting party at the time of its original submission or to rebut arguments by the opposing party that the submitting party could not reasonably have anticipated.”).  As Respondent’s Additional Submission merely serves to respond to Complainant’s Additional Submission, the Panel has decided not to consider the substance of either Additional Submission.

 

FINDINGS

The Panel finds that Complainant has failed to prove that the disputed domain name was registered and has been used in bad faith.

 

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

 

Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

 

(1)   the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2)   the Respondent has no rights or legitimate interests in respect of the domain name; and

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

 

Paragraph 15(e) of the Rules further provides for a finding of bad faith by the Complainant in appropriate cases:

 

If after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.

 

Because the Panel’s conclusion as to the third element set forth in Paragraph 4(a) is dispositive of the present matter, the Panel declines to enter findings as to the other elements, and proceeds directly to the bad faith questions.

 

Registration and Use in Bad Faith

 

Complainant is a United States company, and it does not appear that its mark is used outside the United States (aside from the fact that Internet users worldwide presumably can view Complainant’s website).  Respondent is a Russian company with no apparent connection to the United States nor to Complainant or Complainant’s industry.  Other than the close similarity between the disputed domain name and Complainant’s mark, there is no indication that Respondent was aware of Complainant or its mark at any time prior to the current dispute.  Even if Respondent registered the disputed domain name for the purpose of selling it at a profit, it seems at least as likely to this Panel that its primary value derived from its generic meaning (notwithstanding the misspelling) than from the similarity to Complainant’s mark. 

 

The bad faith required by Paragraph 4(a)(iii) of the Policy must be directed at the Complainant or its mark, and as Respondent correctly notes, mere constructive knowledge of Complainant’s mark at the time of the domain name registration is insufficient.  See, e.g., Deutsche Lufthansa AG v. Future Media Architects, Inc., FA 1153492 (Nat. Arb. Forum Apr. 17, 2008) (Sorkin, dissenting), and authorities cited therein.  The Panel therefore concludes that Complainant has failed to meet its burden of proving that the disputed domain name was registered and has been used in bad faith.

 

Complainant Brought in Bad Faith

 

Mere lack of success of the Complaint is not itself sufficient to demonstrate that it was brought in bad faith.  See e.g., Proto Software, Inc. v. Vertical Axis, Inc/PROTO.COM, D2006-0905 (WIPO Oct. 10, 2006).  Such a finding may be appropriate where the disputed domain name predates the Complainant’s trademark, see id., but in this case Complainant had made active use of its later-registered mark for several years prior to Respondent’s registration of the similar domain name.  Nor does the passage of time between the domain name registration and the initiation of this proceeding lend substantial support to Respondent’s claim of bad faith.  As noted above (in the discussion of the parties’ Additional Submissions) the Panel is quite troubled by the apparent carelessness with which the Complaint in this proceeding was prepared.  Nonetheless, the Panel is not of the view that a finding of bad faith or reverse domain name hijacking is appropriate in this case.

 

DECISION

Having considered the elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

 

 

David E. Sorkin, Panelist
Dated:  April 21, 2010

 

 

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