WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

TracFone Wireless, Inc. v. Online Resource / Online Resource Management Ltd.

Case No. D2015-2151

1. The Parties

The Complainant is TracFone Wireless, Inc. of Miami, Florida, United States of America, represented by Greenberg Traurig, LLP, United States of America.

The Respondent is Online Resource / Online Resource Management Ltd., of Grand Cayman, Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and the Northern Ireland.

2. The Domain Name and Registrar

The disputed domain name <tracfonwireless.com> is registered with GoDaddy.com, LLC (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 25, 2015. On November 26, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 30, 2015, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that the 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 3, 2015. In accordance with the Rules, paragraph 5, the due date for Response was December 23, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 28, 2015.

The Center appointed Marcin Krajewski as the sole panelist in this matter on January 6, 2016. 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 a cellular telephone service provider based in the United States of America. It has over 25 million subscribers and sells its products in over 80,000 retail locations throughout the United States. In addition to common law trademark rights, the Complainant is the registered owner of trademarks consisting of or including both the words "tracfone" and "wireless" or the first of the two words. In particular, the Complainant holds the following United States trademark registrations:

- no. 3,220,091 for the figurative trademark including the words "tracfone" and "wireless", registered on March 20, 2007;

- no. 3,828,140 for the figurative trademark consisting of the words "tracfone" and "wireless", registered on March 8, 2007;

- no. 3,664,479 for the figurative trademark including the word "tracfone", registered on April 8, 2009;

- no. 3,661,667 for the figurative trademark including the word "tracfone", registered on July 28, 2009;

- no. 3,558,126 for the nominative trademark including the word "tracfone", registered on June 1, 2009;

- no. 3,558,125 for the nominative trademark including the word "tracfone", registered on June 1, 2009;

- no. 3,558,112 for the nominative trademark including the word "tracfone", registered on June 1, 2009;

- no. 3,558,111 for the nominative trademark including the word "tracfone", registered on June 1, 2009;

- no. 3,558,126 for the figurative trademark including the word "tracfone", registered on July 28, 2009;

- no. 2,114,692 for the nominative trademark consisting of the word "tracfone", registered on November 18, 1997.

The Complainant operates an online retail store available at "www.tracfone.com" and "www.tracfonewireless.com". It also owns and maintains numerous others domain names that include its trademarks.

The Respondent registered the disputed domain name using a privacy shield in October, 2015. It resolves to a website containing sponsored links to websites of third parties and an offer of sale of the disputed domain name. According to WhoIs records and the Registrar's website the currently offered price is USD 7,499.00.

On October 26, 2015 the Complainant sent a cease and desist letter to the Respondent, which remained unanswered.

5. Parties' Contentions

A. Complainant

The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are present in this case. In particular the Complainant claims that:

(i) The disputed domain name is confusingly similar to the trademarks in which the Complainant has rights

The Complainant claims that the only difference between the disputed domain name and Complainant's trademarks which include both the words "tracfone" and "wireless" is the omission of the letter "e" and addition of the generic Top-Level Domain ("gTLD") ".com". According to the Complainant the addition of the gTLD should be considered irrelevant for the assessment of confusing similarity between the Complainant's trademarks and the disputed domain name. The omission of a single letter is also insufficient to avoid a finding of confusing similarity.

The Complainant contends that the disputed domain name incorporates the Complainant's famous mark in its entirety and there is likelihood that an average Internet user could wrongly assume that the Respondent is affiliated, sponsored by, or otherwise related to the Complainant.

(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name

The Complainant contends that the mere registration of a domain name does not establish rights or legitimate interests in that domain name. The Respondent bears the burden of proving that it has rights or legitimate interests in the disputed domain name. It cannot overcome this burden because it has no rights in the Complainant' s trademarks and is not making a legitimate noncommercial or fair use of the disputed domain name.

According to the Complainant, the Respondent does not have any rights in any trademark consisting of the term "tracfone". No license or permission of any kind has been given by the Complainant to the Respondent to use or register the Complainant's trademarks as part of a domain name or otherwise. The Respondent is not affiliated with or in any other way related to the Complainant.

The Complainant claims that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. The disputed domain name is used to identify a website showing sponsored links to the Complainant's competitors' sites which means that the Respondent intentionally capitalizes of the fame of the Complainant's trademarks.

(iii) The disputed domain name was registered and used in bad faith

In support of this view, the Complainant contends that the Respondent registered the disputed domain name primarily for the purpose of selling or otherwise transferring it to the Complainant for valuable consideration in excess of out-of-pocket costs in the meaning of paragraph 4(b)(i) of the Policy. Moreover, it claims that the fact of using the disputed domain name in order to operate a website that offers products or services in direct competition with those of the Complainant constitutes a disruption of the Complainant's business in the meaning of paragraph 4(b)(iii) of the Policy. According to the Complainant when using the disputed domain name the Respondent attempts to attract Internet users to its website, for commercial gain, by creating a confusion with the Complainant's trademarks which violates paragraph 4(b)(iv) of the Policy.

The Complainant contends that the Respondent certainly had knowledge of the Complainant's trademarks before registration of the disputed domain name. Moreover, the finding of bad faith is supported by the use of a privacy shield.

B. Respondent

The Respondent did not reply to the Complainant's contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that the following facts must be established in order to grant the Complainant the remedy requested:

(i) that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) that the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel agrees with the prevailing opinion from past UDRP panels that a domain name which contains common or obvious misspelling should be found confusingly similar to a trademark. Therefore, the Panel agrees with the Complainant that the omission of the letter "e" in the disputed domain name does not prevent finding of confusing similarity between the disputed domain name and the Complainant's trademarks including both the words "tracfone" and "wireless".

For the purpose of assessing whether a domain name is identical or confusingly similar to a trademark or service mark, the suffix ".com" is typically disregarded as being simply a necessary component of a domain name.

Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a non-exhaustive list of circumstances which may establish a respondent's rights or legitimate interests in a domain name. However, it seems that none of the mentioned circumstances are present in this case. In particular, there is no evidence that the Respondent has used or made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Internet users who type the disputed domain name in their browsers are directed to the website, which, as evidenced by copies of the respective pages, contains links to various websites of the Complainant's competitors. Such use of the disputed domain name cannot be considered to be a bona fide offering of goods or services.

The Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has chosen not to respond to the Complaint, and thus has failed to provide any evidence of rights or legitimate interests in the disputed domain name.

Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Noting the links on the page at the disputed domain name, the Panel finds it obvious that the Respondent knew of the existence of the Complainant's trademarks and had these trademarks in mind at the time of registration of the disputed domain name. The Panel finds that the disputed domain name was registered in bad faith.

It is equally clear that the disputed domain name is also being used in bad faith. In particular, paragraph 4(b) of the Policy gives non-exhaustive illustrations of bad faith registration and use, including the following:

"(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location."

The Panel finds that the Respondent is intentionally diverting Internet users to its website by exploiting the confusing similarity between the disputed domain name and the Complainant's marks. Further, the Panel finds that the Respondent is engaging in this conduct in order to reap commercial gain. The Respondent's illegitimate use of the Complainant's marks in order to make profit on links to websites of the Complainant's competitors is an additional indication of bad faith.

Moreover, in the opinion of the Panel the Respondent's failure to answer the Complainant's cease and desist letter can be taken into account in the finding of bad faith.

Only incidentally may it be noted that the Panel does not fully agree with the Complainant's assertions that the Respondent registered the disputed domain name primarily for the purpose of selling or otherwise transferring it to the Complainant. In the opinion of the Panel it is more likely that the Respondent intended to sell the disputed domain name to the Complainant or a competitor or any other entity which also constitutes an evidence of bad faith in the meaning of paragraph 4(b)(i) of the Policy.

Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(iii) of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <tracfonwireless.com> be transferred to the Complainant.

Marcin Krajewski
Sole Panelist
Date: January 19, 2016