WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Voicestream Wireless Corporation v. Phayze 1 Phayze 2; Phayze Inc.
Case No. D2002-0636
1. The Parties
The Complainant is VoiceStream Wireless Corporation, located at 12920 SE 38th Street, Bellevue, Washington 98006, United States of America.
The Respondent is Phayze 1 Phayze 2, Phayze Inc., 11, 13 rue de l'escaut, Paris 75019 France.
2. The Domain Names and Registrar
The domain names at issue are <myviocestream.com>, <myvoicesteam.com>, <myvoicestrem.com>, <voicestrea.com>, <voicesrteam.com>, <voicestram.com>, and <voicestraem.com> (hereinafter referred to as the Domain Names).
The Registrar for the Domain Names is Computer Services Langenbach GmBH d/b/a Joker.com (hereinafter referred to as the "Registrar").
3. Procedural History
On July 9, 2002, Complainant filed a Complaint, drafted in the English language, with the World Intellectual Property Organization (hereinafter referred to as the "WIPO") Arbitration and Mediation Center (hereinafter referred to as the "Center"). The Complaint was received via e-mail on July 9, 2002. The hardcopy was received on July 12, 2002.
On July 11, 2002, the Acknowledgement of Receipt of Complaint was sent to the Complainant. On the same date, the Center sent the Request for Registrar Verification.
On July 12, 2002, the Registrar provided the Center with the full contact details available in its WHOIS database for the Domain Names registrant and further confirmed that:
- a copy of the Complaint was sent to it by the Complainant;
- it is the current Registrar of the Domain Names registration;
- the Respondent is the current registrant of the Domain Names registration;
- the Uniform Domain Name Dispute Resolution Policy (hereinafter referred to as the ICANN Policy) applies to the Domain Names;
- the languages of the Registration Agreement are English and German;
- the jurisdiction at the location of the principal office of the Registrar for court adjudication of disputes concerning or arising from the use of the domain names (Rules, Paragraph 1);
Complainant then communicated to the Center that it had received the notification stating that its e-mail transmission of the Complaint to the Respondent was not delivered because the recipient's name was not recognized. The Center informed the Complainant that this would be mentioned to the Panel when duly appointed.
The Center proceeded to verify that the Complaint satisfied the formal requirements of the Rules for Uniform Domain Name Dispute Resolution Policy (hereinafter referred to as the "ICANN Rules") and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (hereinafter referred to as the "WIPO Supplemental Rules"), including the payment of the requisite fees. The verification of compliance with the formal requirements was completed in the affirmative on July 16, 2002.
The Panel has reviewed the documentary evidence provided by the parties and agrees with the Centerís assessment that the Complaint complies with the formal requirements of the ICANN Rules and the WIPO Supplemental Rules.
On July 16, 2002, the Center informed the Respondent of the commencement of the proceedings as of July 16, 2002, and of the necessity of responding to the Complaint within 20 calendar days, the last day for sending a Response to the Center being August 5, 2002.
In a letter dated August 8, 2002, the Center informed the Respondent that it was in default pursuant to the ICANN Rules and the WIPO Supplemental Rules and that an Administrative Panel would be appointed based on the number of panelists designated by the Complainant.
On August 19, 2002, the Center issued a Notification of the Appointment of Administrative Panel and of the projected decision date to the parties and transmitted the Case File.
The Panel is satisfied that it was constituted in compliance with the ICANN Rules and the WIPO Supplemental Rules and has issued a Statement of Acceptance and Declaration of Impartiality and Independence.
The Panel has received no further submissions from either party since its formation.
The Panel is obliged to issue a decision on or prior to September 3, 2002, in the English language.
4. Factual Background
The following uncontradicted and unchallenged facts appear from the Complaint or the documents submitted in support thereof:
The VoiceStream® Mark is the subject of fifteen (15) trademark registrations issued by the United States Patent and Trademark Office with an additional seven (7) applications pending in the United States, two (2) registrations in Mexico and one (1) CTM registration.
The MyVoiceStream.com® Mark is the subject of three (3) trademark registrations issued by the United States Patent and Trademark Office.
The Complainant has become one of the largest and fastest growing providers of wireless voice and data communication in the United States today.
The internationally-known actress Jamie Lee Curtis has been the Complainant's spokesperson, appearing in the company's print, television and radio ads, introducing customers to Complainant's services.
The Complainant uses and operates the Global System for Mobile (GSM) communications technology platform, which is the established standard in most countries outside of the United States is adopted by 158 countries, and which accounts for approximately 70 percent of the total digital wireless market.
The Complainant has international roaming agreements with more than 187 of the major operators worldwide providing service in over 84 countries including: Australia, China, Chile, France, Germany, Greece, Hong Kong, India, Italy, the Netherlands, Russia, Saudi Arabia, Spain, Switzerland, and the United Kingdom.
5. Partiesí Contentions
Over and above the uncontested and unchallenged factual background as noted above, which is hereby incorporated herein by reference, it has been contended by:
- It is currently one of America's six largest nationwide wireless telecommunications companies, operating in 37 states and serving approximately 7.5 million subscribers.
- It's achievements have generated tremendous attention in the media.
- It advertises its products and services via numerous media formats, including television and radio, newspapers, and in-store print advertising.
- It's distinctive VoiceStream® Mark and MyVoiceStream.com® Mark instantly identify to millions of consumers its highly successful wireless telecommunications services.
- From its inception in 1996, it has used the VoiceStream® Mark both to identify its goods and services and as the name of the company.
- On May 5, 2000, it began using the MyVoiceStream.com® Mark to identify its goods and services via a Web site accessible at that URL. VoiceStream continues to operate a Web site accessible via the <myvoicestream.com> domain name in order to offer customers a myriad of VoiceStream products and services.
- It owns over 415 Personal Communications Services licenses in the United States covering a population of 265 million people.
- The Domain Names in dispute have (presumably) been configured by the Respondent to resolve to a commercial pornographic Web site A print out of the <amaturvideos.nl> "home" page to which all of the Disputed Domain Names commonly linked is attached as Annex 8(a). This site has since been configured to automatically forward Internet traffic to a Web site at <hanky-panky-college.com>. The content posted at See Annex 8(b). Moreover, the current configuration leads to several "pop-up" sites and advertisements, including (1) <yes-yes-yes.com> (a site offering numerous commercial links), see Annex 9 and (2) <rivernilecasinos.com> (a gambling site), see Annex 10.
- Respondent's registration of the Disputed Domain Names creates the impression among consumers that the products and services on the Web sites accessible through the Disputed Domain Names are affiliated with Complainant.
- Because the Disputed Domain Names are confusingly similar to the VoiceStream® Mark and/or the MyVoiceStream.com® Mark, consumers seeking the genuine <voicestream.com> and/or <myvoicestream.com> sites, but who make simple typographical errors when entering the domain names into their Web browsers, will be misdirected to pornographic, gambling and other commercial Web sites. See Annexes 8(a), 8(b), 9 and 10.
- Respondent registered the Disputed Domain Names for the purpose of capitalizing on the goodwill generated by the VoiceStream® Mark and the MyVoiceStream.com® Mark. Respondent should not be allowed to retain this unearned benefit. The Disputed Domain Names should therefore be transferred to Complainant.
The Respondent has either chosen to abstain or has failed to file a timely Response with the Center.
6. Discussion and Findings
Pursuant to the ICANN Policy, the Complainant must convince the Panel of three elements if it wishes to have the Domain Names transferred. It is incumbent upon the Complainant to cumulatively show:
(i) that the Domain Names are identical or confusingly similar to a trademark in which it holds rights; and
(ii) that the Respondent has no rights or legitimate interests in the Domain Names; and
(iii) that the Domain Names were registered and used in bad faith.
These three elements are considered below.
(i) Identity or Confusing Similarity between the Domain Names and Complainantís Trademarks
The Panel finds Complainant has rights in the VoiceStream® and the MyVoiceStream.com® marks having used them in connection with various wireless voice and data communication services.
While the Domain Names are not identical to Complainantís marks, the Panel finds that they are confusingly similar. The test of confusion in comparing the words or marks at issue is from the stand point of the average unwary consumer, looking at the marks in their totality, having an imperfect recollection of the former.
In a recent WIPO case on substantially identical facts involving Complainant, the panel concluded that the respondent's registration of the domain names <voicesream.com> and <voicetream.com> were confusingly similar to the VoiceStream® Mark by virtue of the omission of the letters T and S, respectively. VoiceStream Wireless Corporation v. John Zuccarini d/b/a RaveClub Berlin, WIPO Case No. D2002-0146 (May 16, 2002). Moreover, other panels have twice held that the omission of a single letter from Complainant's VoiceStream® Mark to be confusingly similar to such mark. See VoiceStream Wireless Corporation v. Dotsan, WIPO Case No. D2001-1412 (March 25, 2002) (omission of R from <voicesteam.com> held confusingly similar to VoiceStream® Mark); VoiceStream Wireless Corporation v. Polanski, WIPO Case No. D2001-1413 (March 25, 2002) (omission of A from <voicestrem.com> held confusingly similar to VoiceStream® Mark).
Moreover, transposing adjacent letters renders the domain name confusingly similar to the underlying mark. See Sierra Trading Post, Inc. v. John Zuccarini, WIPO Case No. D2002-0263 (May 24, 2002) (transposition of letters I and E in <seirratradingpost.com> held confusingly similar to various SIERRA TRADING POST marks).
Pursuant to the above mentioned reasons, the Panel is therefore of the opinion that the Complainant has satisfactorily met its burden of proof as required by paragraph 4(a)(i) of the ICANN Policy.
(ii) Rights or Legitimate Interests in the Domain Names by Respondent
The Panel finds the Respondent has no rights or legitimate interests in the Domain Names given there exists no relationship between Complainant and Respondent that would give rise to any license, permission or authorization by which Respondent could own or use the Domain Names. There is no evidence of any commercial relationship between the Complainant and the Respondent which would entitle the Respondent to the mark.
Additionally, the Respondent is not making a legitimate non-commercial or fair use of the domain names. According to the evidence submitted by the Complainant and not rebutted by the Respondent, the Respondent has its domain names linked to pornographic and gambling web sites that do not incorporate any of the domain names. Assuming this to be so, then the domain names would lead to a site that offers commercial services unrelated to the domain names which is then evidence that "the Respondent is seeking to gain advertising or other revenues from mis-typed domain name". See Williams-Sonoma, Inc. v. Polanski, WIPO Case No. D2001-0236 (April 5, 2001).
Moreover, Respondent has not even attempted to explain or rebut the indications that it has not made any commercial use of the Domain Names, by which it could have established that it has rights or legitimate interest in the Domain Names. The Panel adopts the finding in World Wrestling Foundation Entertainment, Inc. v. Matthew Bessette, WIPO Case No. D2000-0256, where no legitimate interests were found because the domain names were used in connection with porn sites. Respondentís use of the Domain Names to link to pornographic websites cannot be considered legitimate or bona fide.
For these reasons, the Panel concludes that, on a balance of probabilities, the Complainant has discharged its burden to show that the Respondent has no rights or legitimate interests in the Domain Names especially since there has been no explanation or evidence offered by the Respondent to establish the contrary.
(iii) Bad faith in Registration and Use of the Domain Names by the Respondent
It is most of the time quite difficult, if not impossible to actually show bad faith with concrete evidence. While bad faith cannot be presumed, once Complainant has presented some evidence pointing in that direction, it is then incumbent upon Respondent to either respond or explain why its conduct should not be assimilated to bad faith. Panelís understanding of the Policy is that although the initial burden to prove Respondentís bad faith in the registration or the use of the disputed Domain Name relies squarely on the shoulders of Complainant, such obligation is only to make out a prima facie case, and once it has done so, as it did in the present case, it is then incumbent upon the Respondent to either justify or explain its business conduct (if not to demonstrate the contrary). Failure to do so will, in some circumstances, enable the Panel to draw a negative inference. In the case at hand, the Respondent has elected (or failed) not to put forward any justification for its acquisition of the Domain Names and, in the circumstances, the Panel does draw a negative inference out of such omission. See Hebdomag Inc. v. Illuminaty Marketing, WIPO Case No. D2001-0206 and InterTrade Systems Corporation v. Donna Lawhorn, FA0204000112488 Nat. Arb. Forum (July 15, 2002).
This is particularly so, given that Internet users are likely to be induced to believe that the Domain Names connect to websites associated with or sponsored by Complainant given Complainantís use of the VoiceStream® and the MyVoiceStream.com® marks. Further, by using Complainantís mark in its Domain Names without any appearance of interest, Respondent is attempting to ride on the fame of Complainantís mark and use that fame to divert consumers to its websites for commercial advantage.
For the foregoing reasons, the Panel finds that:
- The Domain Names registered by the Respondent are confusingly similar to the trademark to which the Complainant has rights; and
- The Respondent has no rights or legitimate interests in respect of the Domain Names; and
- The Domain Names have been registered and are being used by the Respondent in bad faith.
Accordingly, pursuant to Paragraphs 4(i) of the ICANN Policy and 15 of the ICANN Rules, the Panel orders that the registration of each of the Domain Names <myviocestream.com>, <myvoicesteam.com>, <myvoicestrem.com>, <voicestrea.com>, <voicesrteam.com>, <voicestram.com>, and <voicestraem.com> be transferred to the Complainant and directs the Registrar, Computer Services Langenbach GmBH d/b/a Joker.com, to do so forthwith.
Jacques A. Léger, Q.C.
Dated: September 3, 2002