WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
TracFone Wireless, Inc. v. Contact Privacy Inc. Customer 1247211370 / Peter Sbrelia
Case No. D2020-1358
1. The Parties
The Complainant is TracFone Wireless, Inc., United States of America (“United States”), represented by Greenberg Traurig, LLP, United States.
The Respondent is Contact Privacy Inc. Customer 1247211370, Canada / Peter Sbrelia, United States.
2. The Domain Name and Registrar
The disputed domain name <trackf0ne.com> (the “Disputed Domain Name”) is registered with Google LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 28, 2020. On May 29, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On May 30, 2020, the Registrar 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 June 2, 2020 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 June 3, 2020.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 8, 2020. In accordance with the Rules, paragraph 5, the due date for Response was June 28, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 29, 2020.
The Center appointed Lynda M. Braun as the sole panelist in this matter on June 30, 2020. 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 prepaid cellular telephone service provider in the United States with over 20 million subscribers and products sold in over 90,000 retail locations throughout the continental United States, Hawaii, Alaska, and Puerto Rico. Through these retail locations, the Complainant offers a wide variety of cellular phone services and consumer products, including cellular phones and cellular phone accessories.
The Complainant owns a number of registered trademarks, registered through the United States Patent and Trademark Office (“USPTO”). Among others are the following: TRACFONE, United States Registration No. 2114692, registered on November 18, 1997 in international classes 9, 38 and 42; TRACFONE, United States Registration No. 4881978, registered on January 5, 2016 in international class 35; TRACFONE, United States Registration No. 4881977, registered on January 5, 2016 in international class 16; TRACFONE, United States Registration No. 4881976, registered on January 5, 2016 in international class 38; and TRACFONE, United States Registration No. 4881975, registered on January 5, 2016 in international class 9 (collectively, the “TRACFONE Mark”).
The Complainant owns and maintains several domain names that incorporate the TRACFONE Mark, including <tracfone.com>. <tracfonewirelessinc.com>, and <shop.tracfone.com>. The Complainant’s <tracfone.com> domain name resolves to its website at “www.tracfone.com”, through which it operates its online retail stores and provides product information.
The Respondent registered the Disputed Domain Name on May 13, 2020, decades after the Complainant first registered its TRACFONE Mark. The Disputed Domain Name resolves to an inactive website that states: “This site can’t be reached.”
5. Parties’ Contentions
The following are the Complainant’s contentions:
- the Disputed Domain Name is confusingly similar to the Complainant’s TRACFONE Mark;
- the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name;
- the Disputed Domain Name was registered and is being used in bad faith; and
- the Disputed Domain Name has been set up with a mail exchange (“MX”) record which specifies the mail server responsible for accepting email messages on behalf of the Disputed Domain Name. The Respondent likely uses or intends to use email addresses hosted by the <trackf0ne.com> Disputed Domain Name taking the general form name [....@trackf0ne.com], to cause Internet users to believe that they are dealing with the Complainant or someone associated or affiliated with the Complainant.
The Complainant seeks the transfer of the Disputed Domain Name from the Respondent to the Complainant in accordance with paragraph 4(i) of the Policy.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In order for the Complainant to prevail and have the Disputed Domain Name transferred to the Complainant, the Complainant must prove the following (Policy, paragraphs 4(a)(i-iii)):
(i) the Disputed Domain Name is 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 Disputed Domain Name; and
(iii) the Disputed Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
This element consists of two parts: first, does the Complainant have rights in a relevant trademark and, second, is the Disputed Domain Name identical or confusingly similar to that trademark. The Panel concludes that the Disputed Domain Name is confusingly similar to the TRACFONE Mark.
It is uncontroverted that the Complainant has established rights in the TRACFONE Mark based on its registered trademarks in the USPTO for the TRACFONE Mark. The general rule is that “registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive”. See CWI, Inc. v. Domain Administrator c/o Dynadot, WIPO Case No. D2015-1734. The Respondent has not rebutted this presumption, and therefore the Panel finds that the Complainant has rights in the TRACFONE Mark.
The Disputed Domain Name consists of a misspelling of the TRACFONE Mark followed by the generic Top-Level Domain (“gTLD”) “.com”. Here, the addition of the letter “k” and the replacement of the letter “o” with the number “0” in the Disputed Domain Name does not prevent a finding of confusing similarity between the TRACFONE Mark and the Disputed Domain Name. Such a modification to a trademark is commonly referred to as “typosquatting” or “typo-piracy,” as such conduct seeks to wrongfully take advantage of errors by a user in typing a domain name into the web browser. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), at section 1.9; see also Express Scripts, Inc. v. Whois Privacy Protection Service, Inc. / Domaindeals, Domain Administrator, WIPO Case No. D2008-1302; Singapore Press Holdings Limited v. Leong Meng Yew, WIPO Case No. D2009-1080.
Furthermore, the addition of a gTLD such as “.com” in a domain name is technically required. Thus, it is well established that such element may typically be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark. See Proactiva Medio Ambiente, S.A. v. Proactiva, WIPO Case No. D2012-0182.
Accordingly, the first element of paragraph 4(a) of the Policy has been met by the Complainant.
B. Rights or Legitimate Interests
Under the Policy, a complainant has to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the respondent carries the burden of production of evidence that demonstrates rights or legitimate interests in the disputed domain name. If the respondent fails to do so, the complainant may be deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview 3.0, section 2.1.
In this case, the Panel finds that the Complainant has made out a prima facie case. The Respondent has not submitted any arguments or evidence to rebut the Complainant’s prima facie case. Further, the Complainant has not authorized, licensed or otherwise permitted the Respondent to use its TRACFONE Mark. The name of the Respondent has no apparent connection to the Disputed Domain Name that would suggest that it is related to a trademark or trade name in which the Respondent has rights. Nor does the Complainant have any type of business relationship with the Respondent. Based on the use made of the Disputed Domain Name to resolve to an inactive web page, the Panel finds that the Respondent is not making a bona fide offering of goods or services nor making a legitimate noncommercial or fair use of the Disputed Domain Name.
Accordingly, the second element of paragraph 4(a) of the Policy has been met by the Complainant.
C. Registered and Used in Bad Faith
This Panel finds that, based on the record, the Complainant has demonstrated the existence of the Respondent’s bad faith pursuant to paragraph 4(b) of the Policy as set forth below.
First, the Panel concludes that the Respondent knew about the Complainant’s rights in the TRACFONE Mark when it registered the Disputed Domain Name, since it added the letter ‘k” to “trac” and replaced the letter “o” with the number “0” in “fone” to misdirect users from the Complainant’s website to the Respondent’s website by capitalizing on typing mistakes made by users. See Nutricia International BV v. Eric Starling, WIPO Case No. D2015-0773. In addition, if it is true that the Respondent uses or intends to use email addresses hosted by the <trackf0ne.com> Disputed Domain Name, that is additional evidence of bad faith registration and use.
Moreover, inactive or passive holding of the Disputed Domain Name by the Respondent is indicative of bad faith use. See Advance Magazine Publishers Inc. and Les Publications Condé Nast S.A. v. ChinaVogue.com, WIPO Case No. D2005-0615; Société pour l’Oeuvre et la Mémoire d’Antoine de Saint Exupéry – Succession Saint Exupéry – D’Agay v. Perlegos Properties, WIPO Case No. D2005-1085. It has long been held in UDRP decisions that the passive holding of a domain name that incorporates a well-known trademark without a legitimate purpose may indicate that the disputed domain name is being used in bad faith under paragraph 4(a)(iii) of the Policy. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Jupiters Limited v. Aaron Hall, WIPO Case No. D2000-0574.
Accordingly, the third element of paragraph 4(a) of the Policy has been met by the Complainant.
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 <trackf0ne.com> be transferred to the Complainant.
Lynda M. Braun
Date: July 8, 2020