Letstalk.com, Inc. v. Secure Hosts c/o Domains Administrator
Claim Number: FA1002001310253
Complainant is Letstalk.com, Inc. (“Complainant”), represented by CitizenHawk,
Inc.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <wwwletstalk.com>, registered with Dotster.
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.
Honorable Karl V. Fink (Ret.) as Panelist.
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 February 25, 2010, Dotster confirmed by e-mail to the National Arbitration Forum that the <wwwletstalk.com> domain name is registered with Dotster and that Respondent is the current registrant of the name. Dotster has verified that Respondent is bound by the Dotster 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 1, 2010, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 22, 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@wwwletstalk.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 30, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <wwwletstalk.com> domain name is confusingly similar to Complainant’s LETSTALK.COM mark.
2. Respondent does not have any rights or legitimate interests in the <wwwletstalk.com> domain name.
3. Respondent registered and used the <wwwletstalk.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Letstalk.com,
Inc., is a successful provider of wireless products and services for consumers
and commercial entities. Complainant was
founded in 1999 and began developing partnerships with businesses and Fortune
1000 companies in 2000. Complainant is
acknolwedged in the industry as a leader in wireless services and has been
featured in media sources such as The
Wall Street Journal Small Business, USA
Today, Smart Money, Real Simple, and Oprah.com. Complainant
registered its domain name, <Letstalk.com>, on October 17, 1995 and has
used the domain name in advertising Complainant’s business and providing online
retail services. Complainant had a
previous trademark registration with the United States Patent and Trademark
Office (“USPTO”) for the LETSTALK.COM mark that was cancelled on March 8, 2008
(Reg. No. 2,456,757 issued June 5, 2001).
Complainant owns a current trademark registration with the USPTO for the
LETSTALK.COM mark (Reg. No. 3,735,535 filed on October 6, 2008). Both the previous trademark registration and
the current trademark registration for the LETSTALK.COM mark note a first use
in commerce date of February 1996.
Respondent, Secure Hosts c/o Domains Administrator, registered the <wwwletstalk.com> domain name on April 2, 2002. The disputed domain name redirects Internet users to Complainant’s own website through use of Complainant’s affiliate program.
Paragraph 15(a) of 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."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires that 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) 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.
Complainant previously held a USPTO trademark registration for the LETSTALK.COM mark (Reg. No. 2,456,757 issued on June 5, 2001) that was cancelled on March 8, 2008 and currently holds a new USPTO trademark registration for the LETSTALK.COM mark (Reg. No. 3,735,535 filed on October 6, 2008). The Panel finds that Complainant’s current trademark registration with the USPTO (Reg. No. 3,735,535 filed on October 6, 2008) establishes Complainant’s rights in the LETSTALK.COM dating back to the filing date of October 6, 2008. See AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006) (finding that where the complainant had submitted evidence of its registration with the USPTO, “such evidence establishes complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”); see also Planetary Soc’y v. Rosillo, D2001-1228 (WIPO Feb. 12, 2002) (holding that the effective date of Complainant’s trademark rights date back to the application’s filing date). Complainant also contends it has common law rights in the LETSTALK.COM mark. Registration of a trademark is not necessary to establish Complainant’s rights in the mark when Complainant can demonstrate evidence of common law rights in the mark. See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark).
Complainant is a well-known provider of wireless products and services. Complainant has been using the LETSTALK.COM mark in connection with its business since July 1999. Complainant’s LETSTALK.COM mark, as representative of Complainant’s business, has been extensively publicized and reviewed in media outlets like The Wall Street Journal Small Business, USA Today, Smart Money, Real Simple, and Oprah.com. Complainant has spent significant financial resources in the marketing and promotion of its mark through its website at the <letstalk.com> domain name. In addition, both of Complainant’s trademark registrations—the previous trademark that has since been cancelled and the current trademark—indicate a first use in commerce date of February 1996. The Panel finds that Complainant’s evidence of continuous use and secondary meaning of the LETSTALK.COM, supported by the first use date listed on both trademark registrations, is sufficient to establish common law rights in the LETSTALK.COM mark in connection with its business as a provider of wireless services and products dating back to 1996. See Enfinger Dev., Inc. v. Montgomery, FA 370918 (Nat. Arb. Forum Feb. 16, 2005) (finding that the complainant had common law rights in the McMULLEN COVE mark because the complainant provided sufficient evidence that the mark had acquired secondary meaning, including development plans, correspondence with government officials, and newspaper articles featuring the mark); see also Bob Jones Univ. v. Kane, FA 324692 (Nat. Arb. Forum Oct. 21, 2004) (finding that the complainant’s listing of first use of the BOB JONES UNIVERSITY mark on its USPTO registration information establishes that the complainant had used the mark continuously and extensively since the time of first use, thereby establishing rights in the mark pursuant to Policy ¶ 4(a)(i)).
Complainant asserts that Respondent’s <wwwletstalk.com> disputed domain
name is confusingly similar to Complainant’s LETSTALK.COM mark. The single difference between Complainant’s
mark and Respondent’s disputed domain name is the addition of “www” to the
beginning of Complainant’s mark. The
Panel finds that this minor difference fails to prevent confusing similarity
between Complainant’s mark and Respondent’s disputed domain name as it is just
the result of a typographical error eliminating the period between the “www”
prefix and Complainant’s mark. See Bank of Am. Corp. v.
InterMos, FA 95092 (Nat. Arb. Forum Aug. 1, 2000) (finding that the
respondent’s domain name <wwwbankofamerica.com> is confusingly similar to
the complainant’s registered trademark BANK OF
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Policy ¶ 4(a)(ii) requires
Complainant to first establish a prima
facie case against Respondent before shifting the burden to Respondent to
demonstrate its rights and legitimate interests in the disputed domain
name. Complainant’s presentation of a prima facie case in these proceedings
and Respondent’s subsequent failure to respond are sufficient for the Panel to
conclude that Complainant’s allegations are true and Respondent lacks rights and
legitimate interests in the disputed domain name. See Do the Hustle, LLC v. Tropic Web,
D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to
[contest complainant’s allegations] is tantamount to admitting the truth of
complainant’s assertions in this regard.”); see
also Bank of Am. Corp. v.
McCall, FA 135012 (Nat. Arb. Forum Dec.
31, 2002) (“Respondent's failure to respond not only results in its failure to
meet its burden, but also will be viewed as evidence itself that Respondent
lacks rights and legitimate interests in the disputed domain name.”). The Panel elects, however, to consider the
evidence in record to determine whether Complainant has any rights and
legitimate interests in the disputed domain name.
Complainant contends that
Respondent is not commonly known by the disputed domain name because the WHOIS
information does not reflect that Respondent is commonly known by the disputed
domain name. The Panel finds that this
failure of the WHOIS information to link Respondent with the disputed domain
name is evidence both that Respondent is not commonly known by the disputed
domain name and that Respondent lacks rights and legitimate interests in the
disputed domain name pursuant to Policy
¶ 4(c)(ii). See Braun
Corp. v. Loney, FA 699652 (Nat. Arb.
Forum July 7, 2006) (concluding that the respondent was not commonly known by
the disputed domain names where the WHOIS information, as well as all other
information in the record, gave no indication that the respondent was commonly
known by the disputed domain names, and the complainant had not authorized the
respondent to register a domain name containing its registered mark); see also
Respondent’s disputed domain name redirects Internet users
to Complainant’s own website, in violation of the affiliate agreement between
Respondent and Complainant. The Panel
finds that Respondent has no rights and legitimate interests in the disputed
domain name as this use of the disputed domain name is not a bona fide offering of goods or services
or a legitimate noncommercial or fair use in accordance with Policy ¶¶ 4(c)(i)
and 4(c)(iii). See Deluxe Corp.
v.
Complainant asserts that
Respondent is using the minor typographical error in Complainant’s mark to
capitalize on a common mistake made when entering Complainant’s mark. The Panel finds this practice constitutes
typosquatting, which shows that Respondent lacks rights and legitimate
interests in the disputed domain name according to Policy ¶ 4(a)(ii). See Diners Club Int’l Ltd. v.
Domain Admin******It's all in the name******, FA 156839 (Nat. Arb. Forum
June 23, 2003) (holding that the respondent’s <wwwdinersclub.com> domain
name, a typosquatted version of the complainant’s DINERS CLUB mark, was
evidence in and of itself that the respondent lacks rights or legitimate interests
in the disputed domain name vis á vis the complainant); see also Black &
Decker Corp. v. Khan, FA 137223 (Nat. Arb. Forum Feb. 3,
2003) (finding no rights or legitimate interests where the respondent used the
typosquatted <wwwdewalt.com> domain name to divert Internet users to a
search engine webpage, and failed to respond to the complaint).
The Panel finds
Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s disputed domain name redirects Internet users
to Complainant’s own website through the use of Complainant’s affiliate
program. Respondent is using the minor
variation on Complainant’s mark in order to attract Complainant’s customers for
Respondent’s own commercial gain as Respondent receives affiliate fees from
Complainant when the Internet users reach Complainant’s site by way of
Respondent’s typosquatted disputed domain name instead of arriving at
Complainant’s site directly. The Panel
finds these efforts to attract Complainant’s customers for Respondent’s
financial benefit in violation of Complainant’s affiliate program reveal bad
faith registration and use pursuant to Policy ¶ 4(b)(iv). See See
Sports
The Panel has previously concluded that Respondent is engaged in the practice of typosquatting through the use of the confusingly similar disputed domain name. The Panel finds this typosquatting is evidence sufficient to find bad faith registration and use under Policy ¶ 4(a)(iii). See Black & Decker Corp. v. Khan, FA 137223 (Nat. Arb. Forum Feb. 3, 2003) (finding the <wwwdewalt.com> domain name was registered to “ensnare those individuals who forget to type the period after the ‘www’ portion of [a] web-address,” which was evidence that the domain name was registered and used in bad faith); see also Internet Movie Database, Inc. v. Temme, FA 449837 (Nat. Arb. Forum May 24, 2005) (“Respondent's registration of the domain names in dispute constitutes bad faith because the domain names are merely typosquatted versions of the [complainant’s] IMDB mark.).
The Panel finds Policy ¶ 4(a)(iii)
has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <wwwletstalk.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: April 13, 2010
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