InPhonic, Inc. v. Jason Geer
Claim
Number: FA0504000452534
Complainant is InPhonic, Inc. (“Complainant”), represented
by Paul C. Jorgensen, of Patton Boggs LLP,
2550 M Street, N.W., Washington, DC 20037.
Respondent is Jason Geer (“Respondent”),
4128 Mendez St., #108, Long Beach, CA 90815.
REGISTRAR
AND DISPUTED DOMAIN NAMES
The
domain names at issue are <iinphonic.com>, <wwirefly.com>,
and <wireflyy.com> registered with Blue Razor 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.
James
A. Carmody, Esq., as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on April
7, 2005; the National Arbitration Forum received a hard copy of the Complaint
on April 11, 2005.
On
April 8, 2005, Blue Razor Domains, Inc confirmed by e-mail to the National
Arbitration Forum that the domain names <iinphonic.com>,
<wwirefly.com>, and <wireflyy.com> are registered with Blue
Razor Domains, Inc and that Respondent is the current registrant of the
names. Blue Razor Domains, Inc has
verified that Respondent is bound by the Blue Razor 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
April 13, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
May 3, 2005 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@iinphonic.com, postmaster@wwirefly.com, and
postmaster@wireflyy.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
May 6, 2005, pursuant to Complainant's request to have the dispute decided by a
single-member Panel, the National Arbitration Forum appointed James A. Carmody,
Esq., 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <iinphonic.com>,
<wwirefly.com>, and <wireflyy.com> domain names are
confusingly similar to Complainant’s INPHONIC and WIREFLY marks.
2. Respondent does not have any rights or
legitimate interests in the <iinphonic.com>,
<wwirefly.com>, and <wireflyy.com> domain names.
3. Respondent registered and used the <iinphonic.com>,
<wwirefly.com>, and <wireflyy.com> domain names in bad
faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant is
an online seller of wireless services and products. Complainant provides telecommunications goods and services
through its website located at the <inphonic.com> domain name. In 2004, Complainant was selected as the
fastest growing privately held U.S. company by Inc. Magazine. Complainant completed its Initial Public
Offering on November 16, 2004.
Complainant also
compares leading mobile phone and wireless plans at its website located at the
<wirefly.com> domain name.
Customers use the <wirefly.com> domain name to find and purchase
wireless phones and calling plans or to analyze their current plan and find
alternative plans with lower monthly rates and/or better features. In 2004, the <wirefly.com> domain name
was awarded “Best of the Web” by Forbes Magazine.
Approximately
seven million unique visitors accessed Complainant’s <inphonic.com> and
<wirefly.com> domain names on a monthly basis in 2004. Complainant’s reported revenues in 2004
amounted to $204.2 million.
Complainant
registered the INPHONIC mark with the U.S. Patent and Trademark Office
(“USPTO”) on October 8, 2002 in connection with “advertising services, namely,
creating corporate and brand identity for others by facilitating private label
branding of wireless communication devices and services.” See USPTO Reg. No. 2,630,092. The INPHONIC mark has been used in commerce,
according to the USPTO printout, since November 1999.
Complainant also
registered the WIREFLY mark with the USPTO on September 23, 2003 in connection
with “computer services, namely creating, designing, managing, maintaining,
updating and hosting web sites for others.”
See USPTO Reg. No. 2,768,131.
The WIREFLY mark has been used in commerce, according to the USPTO
printout, since March 2003.
Respondent
registered the <iinphonic.com>, <wwirefly.com>, and <wireflyy.com>
domain names on January 29, 2005. Each
of these domain names resolves to a website located at the
<accessoriesusa.com> domain name, where wireless phones, plans, and
accessories are sold. There are links
located at the <accessoriesusa.com> domain name entitled “phones” and
“services.” These links direct Internet
users to another website located at the <letstalk.com> domain name, which
also sells wireless phones, service plans and accessories.
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.
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 has
established a presumption of valid trademark rights in the INPHONIC and WIREFLY
marks as the result of its federal registrations of the marks. Respondent has not challenged that
presumption. Therefore, Complainant has
established rights in the INPHONIC and WIREFLY marks under Policy ¶
4(a)(i). See Janus Int’l Holding Co. v. Rademacher,
D2002-0201 (WIPO Mar. 5, 2002) (finding that the registration of a mark is prima facie evidence of validity, which
creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this
assumption); see also Am.
Online, Inc. v. Thomas P. Culver Enters., D2001-0564 (WIPO June 18, 2001) (finding that successful
trademark registration with the United States Patent and Trademark Office
creates a presumption of rights in a mark).
A domain name
that incorporates a third-party’s mark and merely adds an additional letter has
consistently been held to be confusingly similar to the third-party mark under
the Policy. See EBAY, Inc. v. MEOdesigns, D2000-1368 (WIPO Dec. 15, 2000)
(finding that Respondent’s domain name <eebay.com> is confusingly similar
to Complainant’s registered EBAY trademark); see also Nat’l Geographic Soc. v. Stoneybrook Inv.,
FA 96263 (Nat. Arb. Forum Jan. 11, 2001) (finding that the domain name
<nationalgeographics.com> was confusingly similar to Complainant’s
“National Geographic” mark).
In the instant
case, the <iinphonic.com> and <wireflyy.com> domain
names each incorporate Complainant’s INPHONIC and WIREFLY marks in their
entireties, but simply contain an extra “i” in the first instance, and an extra
“y” in the second instance. Consistent
with prior decisions under the Policy, the Panel finds these domain names
confusingly similar to Complainant’s marks under Policy ¶ 4(a)(i). Similarly, the <wwirefly.com> domain
name incorporates a confusingly similar version of Complainant’s WIREFLY mark
because the domain name has simply added an extra “w” at the front-end of the
mark. See Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18,
2000) (finding that, by misspelling words and adding letters to words, a
Respondent does not create a distinct mark but nevertheless renders the domain
name confusingly similar to Complainant’s marks); see also Bama Rags, Inc. v. Zuccarini, FA 94380
(Nat. Arb. Forum May 8, 2000) (finding that the domain names,
<davemathewsband.com> and <davemattewsband.com> are common
misspellings and therefore confusingly similar).
Furthermore, the
attempt by a respondent to capitalize on common typographical errors made by
Internet users is evidence of typosquatting.
Typosquatting takes various forms, but it most frequently occurs through
the addition or removal of certain letters within a domain name that
incorporates a frequently searched third-party mark. In the instant case, Respondent has not merely registered one
domain name, which by happenstance is similar to a third-party mark. Rather, Respondent registered three separate
domain names on January 29, 2005, each of which contain minor misspellings of
not only one of Complainant’s mark, but two.
Thus, the Panel finds that Respondent is engaged in the practice of
typosquatting. See Marriott Int'l, Inc. v. Seocho, FA 149187 (Nat. Arb. Forum
Apr. 28, 2003) (finding that Respondent's
<marrriott.com> domain name was confusingly similar to Complainant's
MARRIOTT mark because "Respondent's typosquatting, by its definition, renders the
domain name confusingly similar to Complainant's mark."); see also Neiman
Marcus Group, Inc. v. Party Night, Inc.,
FA 114546 (Nat. Arb. Forum July 23, 2002) (defining typosquatting as “the
process of registering a common misspelled version of a famous mark in a domain
name…It has been consistently held that typosquatting renders the domain
name confusingly similar to the altered famous mark.”).
Complainant has
established Policy ¶ 4(a)(i).
Complainant has
asserted that Respondent lacks rights and legitimate interests in the disputed
domain names. Respondent has failed to
respond to the Complaint. Thus, the
Panel construes such a failure as an implicit admission that Respondent lacks
rights and legitimate interests in the domain name. See Pavillion Agency, Inc. v. Greenhouse Agency
Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to
respond can be construed as an admission that they have no legitimate interest
in the domain names); see also Am.
Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no
rights or legitimate interests where Respondent fails to respond).
There is nothing
persuasive in the record, including the WHOIS registration information, to
indicate that Respondent is commonly known by the disputed domain names
pursuant to Policy ¶ 4(c)(ii). See Charles Jourdan Holding AG v. AAIM,
D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the Panel to draw
adverse inferences from Respondent’s failure to reply to the Complaint); see
also Vert. Solutions Mgmt., Inc. v. Webnet-marketing, Inc., FA 95095 (Nat.
Arb. Forum July 31, 2000) (holding that Respondent’s failure to respond allows
all reasonable inferences of fact in the allegations of Complainant to be
deemed true); see also Tercent Inc. v. Yi, FA 139720
(Nat. Arb. Forum Feb. 10, 2003) (finding that the WHOIS information, and its
failure to imply that Respondent is commonly known by the disputed domain name,
is a factor in determining that Policy ¶ 4(c)(ii) does not apply).
The disputed
domain names each resolve to a website that markets wireless phones, plans, and
accessories. Complainant’s INPHONIC
mark is used in connection with “wireless communication devices and
services.” Complainant’s WIREFLY mark
is used in connection with Complainant’s <wirefly.com> domain name, which
allows Internet users to find and purchase wireless phones and calling plans,
among other things. Therefore, the
Panel finds that since Respondent is marketing goods and services in
competition with those offered by Complainant under its marks. This use is neither a bona fide
offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate
noncommercial or fair use under Policy ¶ 4(c)(iii). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat.
Arb. Forum June 23, 2003) (holding that Respondent’s appropriation of
Complainant’s mark to market products that compete with Complainant’s goods
does not constitute a bona fide offering of goods or services); see also
Clear Channel Communications, Inc. v. Beaty Enters., FA 135008 (Nat. Arb.
Forum Jan. 2, 2003) (finding that Respondent, as a competitor of Complainant,
had no rights or legitimate interests in a domain name that utilized
Complainant’s mark for its competing website); see also Chip Merch., Inc. v. Blue Star Elec.,
D2000-0474 (WIPO Aug. 21, 2000) (finding that the disputed domain names were
confusingly similar to Complainant’s mark and that Respondent’s use of the domain
names to sell competing goods was illegitimate and not a bona fide offering of
goods).
Likewise, as
previously stated, Respondent is engaged in the practice of typosquatting. Typosquatting also does
not qualify as a bona fide offering of goods or services pursuant to
Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy
¶ 4(c)(iii). Thus, the Panel finds that
Respondent lacks rights and legitimate interests in the disputed domain name. See Nat’l Ass’n of
Prof’l Baseball Leagues v. Zuccarini,
D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting as a means of redirecting
consumers against their will to another site, does not qualify as a bona fide
offering of goods or services, whatever may be the goods or services offered at
that site.”); see also IndyMac Bank F.S.B. v. Ebeyer, FA 175292 (WIPO Sept. 19, 2003) (finding that
Respondent lacked rights and legitimate interests in the 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.'").
Complainant
has established Policy ¶ 4(a)(ii).
As stated above,
Respondent is engaged in the practice of typosquatting. Typosquatting is prima facie evidence of bad
faith registration and use under Policy ¶ 4(a)(iii). See Nat’l Ass’n of Prof’l Baseball
Leagues v. Zuccarini, D2002-1011 (WIPO
Jan. 21, 2003) (“Typosquatting is the intentional misspelling of words with
intent to intercept and siphon off traffic from its intended destination, by
preying on Internauts who make common typing errors. Typosquatting is inherently parasitic and of itself evidence of
bad faith.”); see also Zone Labs, Inc. v. Zuccarini, FA 190613 (Nat. Arb. Forum Oct. 15, 2003) (finding
that Respondent registered and used the
<zonelarm.com> domain name in bad faith pursuant to Policy
¶ 4(a)(iii) because the name was merely a typosquatted version of
Complainant's ZONEALARM mark. "Typosquatting, itself
is evidence of bad faith registration and use pursuant to Policy ¶
4(a)(iii)."); see also Dermalogica, Inc. v. Domains
to Develop, FA 175201 (Nat. Arb. Forum Sept.
22, 2003) (finding that the <dermatalogica.com> domain name was a
typosquatted version of Complainant's DERMALOGICA mark and
stating, "[t]yposquatting itself is evidence of bad faith
registration and use pursuant to Policy 4(a)(iii).").
Moreover,
under Policy ¶ 4(b)(iv), bad faith registration and use of a domain name is
established when a respondent intentionally attempts to attract, for commercial
gain, Internet users to its website by creating a likelihood of confusion with
a complainant’s mark. In the instant
case, Respondent registered three domain names that are confusingly similar to
Complainant’s marks. Respondent is
using those domain names to market goods and services that directly compete
with those offered by Complainant under its marks. Consistent with prior decisions under the Policy, Respondent’s
actions evidence bad faith registration and use pursuant to Policy ¶
4(b)(iv). See Perot Sys. Corp. v.
Perot.net, FA 95312
(Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in
question is obviously connected with Complainant’s well-known marks, thus
creating a likelihood of confusion strictly for commercial gain); see also Am. Online, Inc. v. Fu, D2000-1374 (WIPO
Dec. 11, 2000) (finding that Respondent intentionally attempted to attract
Internet users to his website for commercial gain by creating a likelihood of
confusion with Complainant’s mark and offering the same services as Complainant
via his website); see also Scholastic
Inc. v. Applied Software Solutions, Inc., D2000-1629 (WIPO Mar. 15, 2001)
(finding bad faith under Policy ¶ 4(b)(iv) where Respondent initially used the
domain name at issue to resolve to a website offering similar services as
Complainant into the same market).
Complainant has
established Policy ¶ 4(a)(iii).
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <iinphonic.com>, <wwirefly.com>,
and <wireflyy.com> domain names be TRANSFERRED from
Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated:
May 16, 2005
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