WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Texts From Last Night, Inc. v. WhoIs Privacy Services Pty Ltd / Wang Shaopeng
Case No. D2011-1266
1. The Parties
The Complainant is Texts From Last Night, Inc. of Birmingham, Michigan, United States of America, represented by Focal PLLC, United States of America.
The Respondent is WhoIs Privacy Services Pty Ltd / Wang Shaopeng, of Fortitude Valley, Queensland, Australia and Shenzhen, China, respectively.
2. The Domain Name and Registrar
The disputed domain name <textfromlastnight.com> is registered with Fabulous.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 22, 2011. On July 25, 2011, the Center transmitted by email to Fabulous.com a request for registrar verification in connection with the disputed domain name. On July 26, 2011, Fabulous.com transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 28, 2011 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on July 30, 2011.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 August 2, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was August 22, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 23, 2011.
The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on August 30, 2011. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The Complainant is the owner and operator of an interactive website at “www.textsfromlastnight.com” which publishes SMS messages submitted by users with the identifying information except for area code redacted. The Complainant’s website was launched on April 16, 2009, receiving one million hits within a week of its debut, and now attracts over one million visitors monthly. The Complainant displays the mark TEXTS FROM LAST NIGHT prominently on its website. In response to the increasing notoriety of its website, the Complainant published a book entitled “Texts From Last Night” in January 2010. This book is in its sixth printing and has sold 60,000 copies. The Complainant’s website has been featured or mentioned in articles published on websites such as the New York Post, CNN, and Reuters. The Complainant operates an online store selling T-shirts from the Complainant’s website. The Complainant is currently developing a television show based on its website, the rights for which have been acquired by Fox.
The disputed domain name was registered on April 24, 2009. The website associated with the disputed domain name originally contained a similar design approach to that of the Complainant’s website however the Respondent’s website overlaid this design with an invitation to complete a survey and supply personal details.
5. Parties’ Contentions
In the Complaint, the Complainant contends as follows:
The disputed domain name is confusingly similar to a trademark in which the Complainant owns rights; the Respondent has no rights or legitimate interests in the disputed domain name; and the disputed domain name was registered and is being used in bad faith.
By virtue of the Complainant’s extensive use of the unregistered trademark TEXTS FROM LAST NIGHT in connection with the Complainant’s website and related goods and services, the Complainant has clearly established common law trademark rights therein (commencing April 16, 2009; prior to the registration of the disputed domain name by the Respondent). Previous UDRP panels have decided that the Policy affords protection not only to those parties having rights in registered trademarks, but also to those having common law rights in their trade or service marks.
The Complainant’s trademark has become a distinctive identifier of its website and services. The trademark has attained secondary meaning among the Complainant’s target consumers, who identify it solely with the Complainant. This is demonstrated by, among other things, (1) unsolicited media attention of the Complainant and its business, (2) search engine results for the Complainant’s trademark, (3) statistical data of the popularity of and traffic to the Complainant’s website provided by Internet information service companies, and (4) the number of followers of the Complainant’s social media offerings, such as Facebook and Twitter. Past UDRP panels considering the issue of secondary meaning have found that even a limited association to be sufficient evidence of secondary meaning.
The disputed domain name was registered subsequent to the Complainant launching its website and is confusingly similar to the Complainant’s trademark because it wholly incorporates the trademark, merely omitting the letter “s” after “text.” Past UDRP panels have found domain names which merely omitted a single letter from or added a single letter to the mark at issue to be confusingly similar to that mark. Based on the Respondent’s use of the disputed domain name, there is every indication that the Respondent intentionally selected it because of its confusing similarity to the Complainant’s trademark, in order to exploit the common spelling error for its own commercial purposes.
The Complainant has never granted a licence to the Respondent to use the Complainant's trademark, or otherwise authorized the Respondent to incorporate the Complainant's trademark into a domain name. There is no evidence that, prior to the Respondent’s notification of this dispute, the Respondent used or was preparing to use the disputed domain name in connection with a bona fide offering of goods or services. Similarly, there is no evidence indicating that the Respondent has ever been commonly known by the disputed domain name or any similar name.
The Respondent is not making a legitimate or noncommercial fair use of the disputed domain name. The Respondent redirects the disputed domain name to a number of websites which all identically recreate the look of the Complainant’s website as the background for those websites, and which “mousetrap” confused Internet users into survey pop-ups with the promise of a “thank you” reward. If the Internet user answers the survey questions, the user is shown another pop-up which indicates that the user can select a number of prizes, such as USD1,000.00 gift cards or an Apple iPad. Once the user “chooses a prize,” the user is redirected yet again, and is instructed to supply the user’s email address in order to claim the “prize.” However, by examining the “fine print” and the various terms and conditions, a user discovers that they are being required to enter into a program whereby the user must, among other things, provide further contact information, answer another survey, complete ten “sponsor offers,” and consent to receiving various promotional emails. The Respondent appears to be engaged in a deceptive “phishing” scheme. “Phishing” is a form of Internet fraud that aims to steal valuable information such as credit cards, social security numbers, user IDs, passwords, etc. A fake website is created that is similar to that of a legitimate organization, and the information is deceptively acquired and used for identity theft and other nefarious activities.
The Respondent’s use of the disputed domain name is clearly intended to divert consumers for commercial gain. At the time the Respondent registered the disputed domain name, the Complainant’s website was receiving a tremendous number of visitors from around the world and was the subject of widespread media attention, both online and in the traditional press. There is sufficient evidence to find that at the time the Respondent registered the disputed domain name, the Respondent was aware of the Complainant's website and use of the Complainant’s trademark. Indeed, there is compelling evidence that the Respondent purposefully chose to register the disputed domain name in order to capitalize off the immense popularity of the Complainant’s website.
The disputed domain name is so confusingly similar to the Complainant's trademark that Internet users are very likely to believe that they are visiting a site operated by the Complainant due to the initial confusion created by the Respondent's use of the disputed domain name. The Respondent’s use of background images on the websites to which users are redirected, which images are identical to the appearance of the Complainant’s website, clearly evidences the Respondent’s intent to target the Complainant. Indeed, the fact that the Respondent reproduces the content made available via the Complainant’s website leaves little room for doubt. The Respondent is using the disputed domain name to misleadingly divert the Complainant’s users, and by creating a false impression of association with the Complainant’s business and website, fraudulently obtain their personal information for the Respondent’s own commercial benefit. Associating the Complainant with this type of deceptive activity tarnishes the Complainant’s valuable trademark. Past UDRP cases involving the issue of tarnishment have usually involved pornography. However, even where the goods or services simply do not relate to the Complainant’s business, panels have found such activity to be in bad faith because of its connection with the underlying deceptive practice.
The Respondent’s use of “mousetrapping” is further evidence of bad faith as demonstrated by various previous cases under the Policy.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant does not rely on rights in a registered trademark but seeks to demonstrate that it has rights in the unregistered or common law trademark TEXTS FROM LAST NIGHT. According to WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), the consensus view of panels under section 1.7 (entitled “What needs to be shown for the complainant to successfully assert common law or unregistered trademark rights?”) states as follows:
“The complainant must show that the name has become a distinctive identifier associated with the complainant or its goods or services. Relevant evidence of such ‘secondary meaning’ includes length and amount of sales under the trademark, the nature and extent of advertising, consumer surveys and media recognition. The fact that the secondary meaning may only exist in a small geographical area does not limit the complainant's rights in a common law trademark. For a number of reasons, including the nature of the Internet, the availability of trademark-like protection under passing-off laws, and considerations of parity, unregistered rights can arise for the purposes of the UDRP even when the complainant is based in a civil law jurisdiction. However, a conclusory allegation of common law or unregistered rights (even if undisputed) would not normally suffice; specific assertions of relevant use of the claimed mark supported by evidence as appropriate would be required. Some panels have also noted that in cases involving claimed common law or unregistered trademarks that are comprised of descriptive or dictionary words, and therefore not inherently distinctive, there may be a greater onus on the complainant to present compelling evidence of secondary meaning or distinctiveness. Some panels have noted that the more obvious the viability of a complainant's claim to common law or unregistered trademark rights, the less onus there tends to be on that complainant to present the panel with extensive supporting evidence. However, unless such status is objectively clear, panels will be unlikely to take bald claims of trademark fame for granted.”
The Panel respectfully adopts the consensus view. In the present case, the Complainant has produced multiple and varied sources of evidence, including media coverage relating to the Complainant’s website, book and forthcoming television activity; details of an industry award; press releases; online search results; traffic rankings; and social media exposure. The cumulative weight of this evidence is entirely supportive of the Complainant’s contention that the phrase “Texts From Last Night” has become a distinctive identifier of the Complainant’s goods and services among its typical target marketplace. Indeed, one of the media articles describes the website as an “international phenomenon”.
Such distinctiveness is objectively clear to the Panel, notwithstanding the fact that the Complainant’s mark is comprised of dictionary words, based upon the history of the Complainant’s commercial website from launch to date. The evidence shows that the website attained rapid notoriety among young adult Internet users as an “Internet phenomenon” soon after its initial publication, a circumstance sometimes described as “going viral”. This, in the Panel’s opinion, is more than capable in the right circumstances of giving rise to a secondary meaning or distinctive identifier in the name of a website in relatively short order due to the sudden surge in online popularity.
As the Complainant notes, the disputed domain name differs from its unregistered trademark by the single letter “S” which is not present in the disputed domain name (the generic top level domain name “.com” being disregarded for the purposes of comparison as is customary in cases under the Policy). In the Panel’s opinion, the omission of that letter is insufficient to distinguish the disputed domain name from the Complainant’s trademark.
Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s unregistered trademark TEXTS FROM LAST NIGHT and that the requirements of paragraph 4(a)(i) of the Policy have been satisfied.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists several ways in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue”.
The consensus of previous decisions under the Policy is that a complainant may establish this element by making out a prima facie case not rebutted by the respondent.
In the present case, the Complainant submits that it has not licensed or authorised the Respondent to incorporate the Complainant’s trademark into the disputed domain name, that there is no evidence that the Respondent has used or was preparing to use the disputed domain name in connection with a bona fide offering of goods or services, and that there is no evidence indicating that the Respondent has ever been commonly known by the disputed domain name or any similar name. The Complainant also asserts that the Respondent is not making a legitimate or noncommercial fair use of the disputed domain name. Finally, the Complainant has also asserted that the disputed domain name has been used in a deceptive “phishing” scheme.
The Panel is satisfied that the Complainant’s submissions make out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has not filed any response which might have rebutted the Complainant’s prima facie case, for example by providing a reasonable explanation of the Respondent’s conduct with supporting evidence relating to its registration of the disputed domain name. In these circumstances, the Panel finds that the Complainant has proved that the Respondent has no rights or legitimate interests in the disputed domain name and that the requirements of paragraph 4(a)(ii) of the Policy have been satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location”.
On this topic, and as noted above, the Complainant’s primary submission is an allegation that the Respondent has used the disputed domain name for a “phishing” scheme targeting individuals who may believe that the disputed domain name originates from or is connected with the Complainant. In support of this assertion, the Complainant has produced a series of screenshots which demonstrate that the Respondent’s website has adopted a very similar design approach to that of the Complainant’s site. The screenshots also illustrate the process by which a confused Internet user might be induced to provide personal information via the Respondent’s website, believing it to be the Complainant’s site. The similarity of design approach taken by the Respondent coupled with its selection of a confusingly similar domain name to the Complainant’s trademark, which is also a close typographical variant of the Complainant’s domain name for its popular website, is in the Panel’s opinion highly indicative of bad faith intent on the part of the Respondent. For its part, the Respondent has not replied to the Complaint and as such has not provided any alternative explanation of its conduct.
Having reviewed all of the Complainant’s evidence, the Panel is satisfied that on the balance of probabilities the activities of the Respondent constitute an intentional attempt to attract Internet users to the Respondent’s website for commercial gain, by creating a likelihood of confusion with the Complainant’s mark as to the affiliation of the Respondent’s website. In these circumstances the Panel finds that the Respondent has registered and used the disputed domain name in bad faith and thus that the requirements of paragraph 4(a)(iii) of the Policy have been satisfied.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <textfromlastnight.com>, be transferred to the Complainant.
Andrew D. S. Lothian
Dated: September 9, 2011