WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
TracFone Wireless, Inc. v. Registration Private, Domains By Proxy, LLC / Jesse Anderson, straighttalkfill.com
Case No. D2020-2738
1. The Parties
Complainant is TracFone Wireless, Inc., United States of America (the “United States”), represented by Greenberg Traurig, LLP, United States.
Respondent is Registration Private, Domains By Proxy, LLC, United States / Jesse Anderson, straighttalkfill.com, United States.
2. The Domain Name and Registrar
The disputed domain name <straighttalkfill.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 October 19, 2020. On October 20, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 21, 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 Complainant on October 21, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on October 24, 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 Respondent of the Complaint, and the proceedings commenced on October 28, 2020. In accordance with the Rules, paragraph 5, the due date for Response was November 17, 2020. Respondent sent an email communication on October 22, 2020, but did not submit any formal response. The Center notified the Commencement of Panel Appointment Process on November 18, 2020.
The Center appointed Lorelei Ritchie as the sole panelist in this matter on November 24, 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
Undisputed facts include the following. Founded in 1996, Complainant is one of the leading provider of pre-paid cellular telephone service in the United States. Since 2009, Complainant has offered related products and services under the STRAIGHT TALK mark. Complainant owns several registrations for its STRAIGHT TALK mark in the United States, where Respondent lists an address of record. These include, among others, United States Registration Nos. 3788435 and 3788436 (both, registered May 11, 2010).
The disputed domain name <straighttalkfill.com> was registered on February 11, 2019. Respondent has no affiliation with Complainant. Respondent has used the URL associated with the disputed domain name to resolve to a website that appears to mimic an official website of Complainant. The website advertises STRAIGHT TALK products and services, and invites users to click on links, to provide further information. Complainant has not authorized any activities by Respondent, nor any use of its trademarks thereby.
5. Parties’ Contentions
Complainant contends that the (i) disputed domain name <straighttalkfill.com> is identical or confusingly similar to Complainant’s trademarks; (ii) Respondent has no rights or legitimate interests in the disputed domain name; and (iii) Respondent registered and is using the disputed domain name in bad faith.
In particular, Complainant contends that it owns the “famous and distinctive” STRAIGHT TALK mark, which it uses in connection with cellular telephone communication services. Complainant contends that the disputed domain name consists of Complainant’s registered mark, in its entirety, and merely adds the descriptive term “fill”, which consumers would understand to refer to a website where they can get a “refill” on Complainant’s official STRAIGHT TALK cards. In this regard, the website associated with the disputed domain name advertises for sale “STRAIGHT TALK REFILL”. Complainant further contends that Respondent has no rights or legitimate interests in the disputed domain name registration or use of the disputed domain name. Rather, Complainant contends that Respondent has acted in bad faith in registering and using the disputed domain name, when Respondent clearly knew of Complainant’s rights, likely in an attempt to illicitly lure consumers in a phishing scheme.
Respondent did not file a formal reply to Complainant’s contentions in this proceeding. Respondent submitted an informal email on October 22, 2020 providing his contact details.
6. Discussion and Findings
A. Identical or Confusingly Similar
This Panel must first determine whether the disputed domain name <straighttalkfill.com> is identical or confusingly similar to a trademark or service mark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy. The Panel finds that it is. The disputed domain name directly incorporates Complainant’s registered trademark STRAIGHT TALK, with only the addition of the descriptive term “fill”, which is likely to be understood by consumers as a potential feature of Complainant’s online products and services.
Numerous UDRP panels have agreed that supplementing or modifying a trademark with descriptive words does not make a domain name any less “identical or confusingly similar” for purposes of satisfying this first prong of paragraph (4)(a)(i) of the Policy. See, for example, Microsoft Corporation v. Step Web, WIPO Case No. D2000-1500; Wal-Mart Stores, Inc. v. Horoshiy, Inc., WIPO Case No. D2004-0620; General Electric Company v. Recruiters, WIPO Case No. D2007-0584.
The Panel finds that the disputed domain name is identical or confusingly similar to a trademark in which Complainant has rights in accordance with paragraph (4)(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Policy provides some guidance to respondents on how to demonstrate rights or legitimate interests in the dispute domain name. For example, paragraph 4(c) of the Policy gives examples that might show rights or legitimate interests in a domain name. These examples include: (i) use of the domain name “in connection with a bona fide offering of goods or services”; (ii) demonstration that Respondent has been “commonly known by the domain name”; or (iii) “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”.
Respondent did not submit a reply to the Complaint, however. Rather, as mentioned in Section 4 of this Panel’s decision, Respondent has used the disputed domain name to divert Internet users to a website that appears to mimic Complainant’s website but which is unaffiliated with Complainant or Complainant’s products and services. Accordingly, the Panel finds that Complainant has made a prima facie showing of Respondent’s lack of rights or legitimate interests in the disputed domain name, which Respondent has not rebutted.
C. Registered and Used in Bad Faith
There are several ways that a complainant can demonstrate that a domain name was registered and used in bad faith. For example, paragraph 4(b)(iv) of the Policy states that bad faith can be shown where “by using the domain name [respondent has] intentionally attempted to attract, for commercial gain, Internet users to [respondent’s] web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [respondent’s] website or location or of a product or service on [the] web site or location”. As noted in Section 4 of this Panel’s decision, Respondent has set up a URL associated with the disputed domain name to resolve to a website that appears to mimic an official website of Complainant, and which attempts to confuse consumers by advertising STRAIGHT TALK products and services, and invites users to click on links, to provide further information.
Respondent is thus trading on the goodwill of Complainant’s trademarks to attract Internet users, presumably for Respondent’s own commercial gain. Given the nature of the site content and the disputed domain name which incorporates Complainant’s STRAIGHT TALK mark, and which advertises Complainant’s STRAIGHT TALK products and services, the Panel finds sufficient evidence that Respondent registered and used the disputed domain name with knowledge of Complainant’s prior rights.
The Panel finds that for purposes of the UDRP, Complainant has shown sufficient evidence that Respondent registered and used the disputed domain name in bad faith in accordance with paragraph 4(a)(iii) of the Policy.
For all 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 <straighttalkfill.com> be transferred.
Dated: December 2, 2020