Letstalk.com, Inc. v. Domain Management SPM c/o Domain Management
Claim Number: FA1002001310252
Complainant is Letstalk.com, Inc. (“Complainant”), represented by CitizenHawk,
Inc.,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <etstalk.com>, <lerstalk.com>, <letatalk.com>,
<letdtalk.com>, <letsralk.com>, <letstalj.com>, <letstalkl.com>,
<letstslk.com>, <letsyalk.com>, <leystalk.com>, <lrtstalk.com>,
and <lwtstalk.com>,
registered with Wild West Domains, Inc.
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.
Terry F. Peppard 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 Febrary 25, 2010, Wild West Domains, Inc. confirmed by e-mail to the National Arbitration Forum that the <etstalk.com>, <lerstalk.com>, <letatalk.com>, <letdtalk.com>, <letsralk.com>, <letstalj.com>, <letstalkl.com>, <letstslk.com>, <letsyalk.com>, <leystalk.com>, <lrtstalk.com>, and <lwtstalk.com> domain names are registered with Wild West Domains, Inc. and that Respondent is the current registrant of the names. Wild West Domains, Inc. has verified that Respondent is bound by the Wild West Domains, Inc. 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 February 26, 2010, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 18, 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@etstalk.com, postmaster@lerstalk.com, postmaster@letatalk.com, postmaster@letdtalk.com, postmaster@letsralk.com, postmaster@letstalj.com, postmaster@letstalkl.com, postmaster@letstslk.com, postmaster@letsyalk.com, postmaster@leystalk.com, postmaster@lrtstalk.com, and postmaster@lwtstalk.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 29, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
Complainant provides wireless
products and services for consumers and businesses.
Complainant was founded in
1999, and began developing business partnerships with Fortune 1000 companies in
2000.
Complainant is a leader in
wireless services and has been featured in media sources such as USA Today, Smart Money and Oprah.com.
Complainant registered its
Letstalk.com domain name on October 17, 1995, and has since used the domain
name to advertise its business and provide online retail services.
Complainant has spent
hundreds of thousands of dollars in promoting its LETSTALK.COM mark
Complainant has common law rights in the LETSTALK.COM
mark.
Complainant had a previous
trademark registration with the United States Patent and Trademark Office
(“USPTO”) for the LETSTALK.COM mark which 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 October 6, 2008, registered January 12, 2010).
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 registered the
<etstalk.com> domain name on
April 15, 2003; the <letatalk.com>
domain name on October 8, 2003; the <lerstalk.com>,
<letdtalk.com>, <letsralk.com>, <letstalj.com>, <letstslk.com>, <letsyalk.com>, <leystalk.com>, <lrtstalk.com>, and <lwtstalk.com> domain names on
October 22, 2003; and the <letstalkl.com>
domain name on January 27, 2004.
All of Respondent’s domain
names resolve to websites saying the requested URL was “Not Found.”
Respondent is a serial cybersquatter who has been a respondent in at least four other UDRP proceedings in which domain names were transferred to various complainants.
Respondent’s <etstalk.com>, <lerstalk.com>, <letatalk.com>, <letdtalk.com>, <letsralk.com>, <letstalj.com>, <letstalkl.com>, <letstslk.com>, <letsyalk.com>, <leystalk.com>, <lrtstalk.com>, and <lwtstalk.com> domain names are confusingly similar to Complainant’s LETSTALK.COM mark.
Respondent is not commonly known
by any of the disputed domain names.
Respondent
is not sponsored by or affiliated with Complainant in any way, and Complainant
has not given Respondent permission to use the LETSTALK.COM mark in a domain name.
In forming the disputed domain names, Respondent is using
the common typographical errors in creating variations on Complainant’s mark to
capitalize on the mistakes made by Internet users when entering Complainant’s
mark in a search engine.
Respondent does not have any rights to or legitimate interests in the <etstalk.com>, <lerstalk.com>, <letatalk.com>, <letdtalk.com>, <letsralk.com>, <letstalj.com>, <letstalkl.com>, <letstslk.com>, <letsyalk.com>, <leystalk.com>, <lrtstalk.com>, and <lwtstalk.com> domain names.
Respondent registered and uses the <etstalk.com>, <lerstalk.com>, <letatalk.com>, <letdtalk.com>, <letsralk.com>, <letstalj.com>, <letstalkl.com>, <letstslk.com>, <letsyalk.com>, <leystalk.com>, <lrtstalk.com>, and <lwtstalk.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain names registered by Respondent are confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of any of the domain names; and
(3) Each of the same domain names was registered and is being used by Respondent in bad faith.
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 a 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. 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.
Complainant’s current trademark registration with the USPTO establishes its rights in the LETSTALK.COM mark for purposes of Policy ¶ 4(a)(i) dating from the filing date of October 6, 2008. See AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006) (finding that where a complainant submitted evidence of the registration of its mark 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 a complainant’s trademark rights date back to the application’s filing date). Complainant also contends that it has common law rights in the LETSTALK.COM mark. Registration of a trademark is not necessary to establish Complainant’s rights in a 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 has shown that it is a well-known provider of wireless products and services. The LETSTALK.COM mark has been extensively publicized in media outlets. Complainant has spent significant financial resources in the promotion of its mark. In addition, Complainant’s trademark registration filing indicates a first use in commerce date of February 1996. Complainant’s evidence is sufficient to establish that its mark has acquired secondary meaning and that it therefore has the claimed common law rights in its mark. See Enfinger Dev., Inc. v. Montgomery, FA 370918 (Nat. Arb. Forum Feb. 16, 2005) (finding that a complainant had common law rights in the McMULLEN COVE mark where that complainant provided evidence that the mark had acquired secondary meaning); see also Bob Jones Univ. v. Kane, FA 324692 (Nat. Arb. Forum Oct. 21, 2004) (finding that a complainant’s listing of first use of the BOB JONES UNIVERSITY mark on its USPTO registration information established that that 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’s rights in the LETSTALK.COM mark, under both the common law and its USPTO trademark registration, are sufficient even where Respondent resides in a different country. See KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter, for purposes of paragraph 4(a)(i) of the Policy, whether a complainant’s mark is registered in a country other than that of a respondent’s place of business).
Complainant asserts that Respondent’s domain names are
confusingly similar to Complainant’s LETSTALK.COM mark. Each of the disputed domain names varies from
Complainant’s mark in one of the following ways: 1) the domain name deletes a letter from
Complainant’s mark; 2) the domain adds a letter to Complainant’s mark; or 3)
the domain name exchanges one letter in Complainant’s mark for a different
letter. Domain names that differ from
Complainant’s mark, whether because of deletion, addition, or exchange of s
single letter, as described, fail to avoid confusing similarity with the
competing mark under Policy ¶ 4(a)(i). See Microsoft Corp. v. Domain Registration
The mere addition of a single letter to the
complainant’s mark does not remove the respondent’s domain names from the realm
of confusing similarity in relation to the complainant’s mark pursuant to
Policy ¶ 4(a)(i).
See also Belkin Components v. Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001) (finding the <belken.com> domain name confusingly similar to a complainant's BELKIN mark because the name merely replaced the letter “i” in the mark with the letter “e”).
Moreover, the addition of a gTLD to a mark in forming a contested domain name does not distinguish the resulting disputed domain name from the mark. See Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003):
The
addition of a top-level domain is irrelevant when establishing whether or not a
mark is identical or confusingly similar, because top-level domains are a
required element of every domain name.
Therefore, the Panel finds that each of Respondent’s domain names is confusingly similar to Complainant’s LETSTALK.COM mark under Policy ¶ 4(a)(i).
Policy ¶ 4(a)(ii) requires Complainant to establish a prima facie case that Respondent has no rights to or legitimate interests in the contested domain names before the burden shifts to Respondent to demonstrate its rights or legitimate interests in the disputed domains. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that:
complainant must first make a prima facie
case that [the] respondent lacks rights and legitimate interests in the
disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to
[the] respondent to show it does have rights or legitimate interests.
Complainant’s presentation of a prima facie case in these proceedings and Respondent’s failure to respond to the allegations of the Complaint are sufficient for us to conclude that Complainant’s allegations are true and that Respondent lacks rights to or legitimate interests in the disputed domain names. 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.”
We elect, nonetheless, to consider
the evidence of record, in light of the criteria set out in Policy ¶ 4(c), to
determine whether there is in it any basis for concluding that Respondent has
rights to or legitimate interests in the disputed domain names which are
cognizable under the Policy.
We begin by observing that Complainant contends, and Respondent does not deny, that Respondent is not commonly known by the disputed domain names. Consistent with this, the WHOIS information for each of the disputed domain names lists the registrant only as “Domain Management SPM,” which does not resemble the competing mark. LETSTALK.COM. Further, Complainant contends, without objection from Respondent, that Respondent is not sponsored by or affiliated with Complainant in any way, and that Complainant has not given Respondent permission to use the LETSTALK.COM mark in a domain name. On this record, we are constrained to conclude that Respondent is not commonly known by any of the disputed domain names so as to have rights or legitimate interests in those domains under Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that a respondent was not commonly known by disputed domain names where the relevant WHOIS information, as well as other information in the record, gave no indication that that respondent was commonly known by the disputed domains, and where a complainant had not authorized that respondent to register a domain name containing its mark); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding that a respondent had no rights or legitimate interests in a disputed domain where there was no evidence in the record indicating that that respondent was commonly known by the disputed domain).
We also note that there is no dispute as to Complainant’s
contention that Respondent’s domain names resolve to web pages displaying a
“Not Found” heading.
This evidence demonstrates that Respondent is not making active use of
the domain names in connection with a bona
fide offering of goods or services or a legitimate noncommercial or fair
use as provided in Policy ¶¶ 4(c)(i) and 4(c)(iii). See George Weston Bakeries
Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that a respondent had
no rights to or legitimate interests in a domain name under either Policy ¶
4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the
domain); see also Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007) (finding
that a respondent’s non-use of the <abc7chicago.mobi> domain name since
its registration filings provided evidence that that respondent lacked rights to
or legitimate interests in the disputed domain name).
Complainant further asserts that,
in forming the disputed domain names, Respondent is using the common typographical
errors in creating variations on Complainant’s mark to capitalize on the
mistakes made by Internet users when entering Complainant’s mark in a search
engine. Respondent does not dispute this
assertion. We conclude that this
practice constitutes typo-squatting, which further demonstrates that Respondent
lacks rights to or legitimate interests in the disputed domain names under Policy
¶ 4(a)(ii). See IndyMac
Bank F.S.B. v. Ebeyer, FA 175292 (Nat. Arb. Forum Sept.
19, 2003) (finding that a respondent lacked rights to and legitimate interests
in disputed domain names because it “engaged in the practice of
typosquatting by taking advantage of Internet users who attempt to access
Complainant's <indymac.com> website but mistakenly misspell Complainant's
mark by typing the letter ‘x’ instead of the letter ‘c’”); see also Microsoft
Corp. v. Domain Registration
The Panel thus finds
that Policy ¶ 4(a)(ii) has been satisfied.
Twelve disputed domain names registered by Respondent are
involved in this proceeding. Respondent
has also been the respondent in at least four other UDRP proceedings in which disputed
domain names appropriating a complainant’s mark were in issue. See, e.g., Cricket
Communications, Inc. v. Banks a/k/a Domain Mgmt. SPM, FA 1273896 (Nat. Arb. Forum Aug. 25, 2009); drugstore.com, inc. v.Domain Mgmt. SPM, FA 1279180 (Nat. Arb. Forum
Sept. 28, 2009); Gaiam, Inc. v. Domain
Mgmt. SPM, FA 1237207 (Nat. Arb. Forum Jan. 19, 2009). Repeatedly registering domain names
confusingly similar to the mark of another demonstrates that Respondent has shown
a pattern of behavior in this regard. This
behavior pattern is evidence of bad faith registration and use of the subject
domain names pursuant to Policy ¶ 4(b)(ii). See Nat’l Abortion Fed’n v. Dom 4 Sale,
Inc., FA 170643 (Nat. Arb. Forum
Sept. 9, 2003) (finding bad faith pursuant to Policy ¶ 4(b)(ii) where a domain
name prevented a complainant from reflecting its mark in a domain name, and where
a respondent had several adverse decisions against it in previous UDRP
proceedings, which established a pattern of cyber-squatting).
All of Respondent’s domain names resolve to non-functioning websites displaying no substantive content. Respondent is not making active use of any of these domain names. Such a failure to make active use of the disputed domains supports the conclusion that Respondent registered and is using the domains in bad faith within the meaning of Policy ¶ 4(a)(iii). See Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007) (concluding that a respondent’s failure to make active use of its domain name in the three months after its registration indicated that that respondent registered the domain name in bad faith); see also DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that a respondent’s [failure to make an active use] of a contested domain name satisfies the bad faith provisions of ¶ 4(a)(iii) of the Policy).
We have already concluded that Respondent is engaged in the practice of typo-squatting through the use of domain names which are confusingly similar to Complainant’s mark. This typo-squatting is evidence of bad faith registration and use of each of the subject domains under Policy ¶ 4(a)(iii). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that a respondent engaged in typo-squatting, which is evidence of bad faith registration and use of a domain name under Policy ¶ 4(a)(iii)); 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…] mark.
For all of these reasons, the Panel finds Policy that ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <etstalk.com>, <lerstalk.com>, <letatalk.com>, <letdtalk.com>, <letsralk.com>, <letstalj.com>, <letstalkl.com>, <letstslk.com>, <letsyalk.com>, <leystalk.com>, <lrtstalk.com>, and <lwtstalk.com> domain names be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: April 12, 2010
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National
Arbitration Forum