WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
A.V.M. Software, Inc. d/b/a Paltalk v. Papete.com and Igal Lichtman a/k/a Mrs. Jello LLC a/k/a Exoticdomains.net a/k/a domainsspa.com
Case No. D2005-0917
1. The Parties
The Complainant is A.V.M. Software, Inc., d/b/a Paltalk, New York, New York, United States of America.
The Respondents are Papete.com, Panama City, Panama and Igal Lichtman a/k/a Mrs. Jello LLC a/k/a Exoticdomains.net a/k/a domainsspa.com, DNS Manager, Livingston, New Jersey, United States of America.
2. The Domain Name and Registrar
The disputed domain name <mypaltalk.com> is registered with eNom.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 26, 2005. On August 26, 2005, the Center transmitted by email to eNom.com a request for registrar verification in connection with the domain name(s) at issue. On August 31, 2005, eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 12, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was October 2, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 4, 2005.
The Center appointed Edward C. Chiasson, Q.C. as the Sole Panelist in this matter on October 25, 2005. He submitted a Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. The Panel finds that it was properly constituted.
4. Factual Background
The following information derives from the Complaint.
The Complainant is a New York based, privately held company that produces software enabling voice conferencing (VOIP), video conferencing, multimedia chat and instant messaging over the Internet. Founded in June of 1998, it was the first company to launch video and voice combined with an online “buddy list” in one package.
The Complainant is the owner of the PALTALK and MYPALTALK marks. Since 1998, the PALTALK name and mark have been used continuously to identify “www.paltalk.com”, an industry leader for Internet “video conferencing” and instant messaging. The Complainant continuously has owned and used the Internet domain name <paltalk.com> for its active website.
The Complainant’s PALTALK website has been visited by millions of people around the world who have downloaded the acclaimed PALTALK video conferencing and related software. CNET’s Download.com lists PALTALK as the top site on the Internet for “video conferencing.” Download.com tracks website and software downloads and shows that as of July 7, 2005, the latest version of the Paltalk Messenger application launched in early 2005 has been downloaded more than 6 million times. PALTALK was downloaded more than 12,000 times during the week ending July 16, 2005. Between June 5, 2005 and July 20, 2005 PALTALK was downloaded more than 881,000 times.
The Complainant’s website is regularly listed in the “Pulver100” top private companies in the IP Communications Industry.
The Complainant’s website consistently ranks in the top 5 for the average time a visitor spends at the website as shown by the a Nielson/Net Ratings from the New York Times for January, February, March and May 2004. In addition, the Complainant’s website ranked number 10 in May 2005 for Instant Messenger services as recorded by Media Metrix, an independent Internet research company that measures website audience and reports details of online media usage, demographics and online buying. The Complainant’s website also consistently receives a five star rating for web traffic with more than a million hits per day as recorded by Alexa, another independent Internet research company that measures website traffic.
The Complainant is the owner of United States federal trademark Registration No. 2,270,756 for the mark PALTALK. This registration, which issued on August 17, 1999, is valid, subsisting and in full force and effect, and is incontestable under the Lanham Act.
The Complainant, through its affiliated company Paltalk Holdings, Inc., also owns Community Trademark Registration No. 2,720,399 and Canadian Registration No. TMA605347 for PALTALK.
The Complainant currently has an estimated 32 million total registered users in more than 200 countries.
The Complainant provides its users with an account managing system under the mark MYPALTALK. Through the system, a user can manage information relating to Internet groups, PALTALK subscriptions, account information and user profiles. Subscribers also can download software to customize PALTALK accounts through MYPALTALK.
The Complainant has used the PALTALK and MYPALTALK marks in connection with online dating, chat rooms, instant messaging, and related goods and services.
The Complainant has spent more than $1.6 million advertising and promoting its products and services since 2002.
The Complainant and its products and services have been featured and praised in a number of online publications including Forbes, Wall Street & Technology Online, and ZD Net. The Complainant has also been promoted on the nationally syndicated radio talk show “The Howard Stern Show”.
Through the Complainant’s labors and of those acting under its supervision, as well as the Complainant’s uninterrupted, exclusive and extensive use of the PALTALK and MYPALTALK marks, it has developed enormous goodwill in the marks. They have become famous and are recognized immediately and associated with the Complainant by consumers.
There is no relationship between the Complainant and the Respondents giving rise to any license, permission, or other right by which the Respondents could own or use any domain name incorporating the Complainant’s PALTALK or MYPALTALK marks. The subject domain name is not a name or nickname of the Respondents and is not in any other way identified with or related to any rights or legitimate interests of the Respondents.
The Respondents derive a financial benefit from web traffic that is diverted through the website to which the subject domain name resolves. The website functions as a link facilitator to sponsored links apparently provided by “http://infosonar.mygeek.com”. Revenue is generated from “click-throughs” to the sponsored links.
By clicking on any one of the section headings, a user is brought to sponsored websites unrelated to the Complainant for, inter alia, dating, gift ideas, business, insurance, parenting, book stores, publishers, cooking, personal ads, real estate, tax preparation and other topics.
The Administrative contact for this domain name is DomainSpa, LLC with the same postal address as that of the Respondents Mrs. Jello LLC and exoticdomains.net
The subject domain name originally was registered by Mrs. Jello LLC on November 14, 2004.
There was a change of the contact information for the subject domain name almost immediately after the Complainant’s counsel served a February 28, 2005 demand letter electronically. Papete.com (the new Respondent name) is an alias used by the Respondent Igal Lichtman, to register domain names in addition to such names as Mrs. Jello LLC, Exoticdomains.net, and Domainspa.com.
The Respondent Lichtman has registered over 6,000 domain names using one or more aliases, including Mrs. Jello LLC, Exoticdomains.net and Domainspa.com. All aliases have the same postal address, telephone and facsimile numbers.
The Respondent papete.com has been found guilty of knowingly diverting, for its own commercial gain, traffic intended for the trademark owner, thereby depriving the trademark owner of its right to use the domain name: Eurochannel, Inc. (f/k/a Multithematiques, Inc.) v. Papete.com, WIPO Case No. D2005-0318.
In addition, 10 domain names that originally were registered to the Respondent Mrs. Jello LLC were transferred recently to the Respondent papete.com. These names all still are managed under the same account as the Respondent Mrs. Jello LLC.
The Respondents did not participate in this proceeding.
5. Parties’ Contentions
The Complainant relies on its registration and use of PALTALK and MYPALTALK and contends that the subject domain name, “…is confusingly similar to Complainant’s PALTALK mark. It incorporates the Complainant’s entire PALTALK mark, and is identical to Complainant’s MYPALTALK mark as used on its PALTALK.COM website”.
The Complainant asserts that the Respondent does not have a legitimate interest in the subject domain name noting that it is not known by that name, is not authorized by the Complainant to use it or the Complainant’s marks and is benefiting commercially from the use of the subject domain name.
Bad faith is said to be established by the notoriety of the Complainant’s marks, the evasive conduct of the Respondents when contacted by the Complainant, the Respondents’ history of abusing the domain name system and the Respondents’ use of the subject domain name to benefit commercially while confusing Internet users.
The Respondents did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires the Complainant to prove that:
(i) the domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the domain names; and
(iii) the domain names have been registered and are being used in bad faith.
Paragraph 4(b) provides for the implication of evidence of bad faith in a number of circumstances:
(i) circumstances that indicate that the Respondent has registered or has acquired the domain names primarily for the purpose of selling, renting, or otherwise transferring the domain names registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the domain names;
(ii) registration of the domain names in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct;
(iii) registration of the domain names primarily for the purpose of disrupting the business of a competitor;
(iv) by using the domain names, intentionally attempting to attract, for commercial gain, Internet users to the Respondent’s website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location.
These are illustrative and do not represent the only circumstances from which may arise evidence of bad faith.
A. Identical or Confusingly Similar
The Complainant clearly has rights to PALTALK and MYPALTALK, which are registered marks. The subject domain name is identical to the latter, save for the addition of “.com”, which is of no consequence. The subject domain incorporates the Complainant’s mark PALTALK.
The Administrative Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Respondents are not known by “PALTALK” or “MYPALTALK” and are not authorized by the Complainant to use those words. The words are constructs, not ordinary words. The use of these marks to divert Internet users to the Respondents’ sites is not appropriate in the circumstances of this case.
Also relevant is the diversionary conduct of the Respondents when contacted by the Complainant and the Respondents’ history of abusing the domain name system. Although not conclusive, this information standing un-rebutted raises an inference that the Respondents do not have a legitimate interest in the subject domain name.
The Administrative Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
A finding that a respondent does not have a legitimate interest in a domain name that is identical to the mark of a complainant does not lead automatically to a conclusion of bad faith, but the facts that support the finding may be relevant to the bad faith inquiry.
A respondent is not obliged to participate in a domain name dispute, but if it were to fail to do so, it would be subject to inferences that flow naturally from the not unreasonable assertions of a complainant.
In this case, Internet users clearly knew the Complainant’s marks. They are not words in common use, but are constructs. The subject domain name embraces them.
The devious conduct of the Respondents when contacted by the Complainant tells against them, as does their history of abusing the domain name system.
The collection of information provided by the Complainant builds a solid edifice against the Respondents and they have done nothing to shake it.
The Administrative Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(iii) of the Policy.
Based on the information provided to it and on its finding of facts, the Administrative Panel concludes that the Complainant has established its case.
The Complainant asks that the subject domain name, <mypaltalk.com>be transferred to it. The Administrative Panel so orders.
Edward C. Chiasson, Q.C.
Dated: November 6, 2005