WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
VoiceStream Wireless Corporation v. Click5 a/k/a Mike Torres, a/k/a Dallas Internet Services, a/k/a Global Medical Products, a/k/a American Medical.
Case No. D2002-0190
1. The Parties
Complainant is VoiceStream Wireless Corporation, a Delaware corporation with its principal offices located at 12920 SE 38th Street, Bellevue, Washington, 98006, USA.
Respondent is Click 5, 145 Park Avenue, New York, NY 10010, USA (although, for reasons discussed below, "Click5" and the other names given appear to be several aliases of an individual named Mike Torres).
2. The Domain Name and Registrar
The domain name at issue is (the "Domain Name").
The Domain Name was registered on or about November 19, 2000.
The registrar is Tucows, Inc., 96 Mowat Avenue, Toronto, ON M6K 3M1, Canada (the "Registrar").
3. Procedural History
(1)This action was brought in accordance with the ICANN Uniform Domain Name Dispute Resolution Policy, dated October 24, 1999, ("the Policy") and the ICANN Rules for Uniform Domain Name Dispute Resolution Policy, dated October 24, 1999 ("the Rules").
(2)The Complaint was submitted on February 26, 2002, in electronic form, and an original was filed in hardcopy on February 28, 2002. On March 6, 2002, the Registrar confirmed registration of the Domain Name at issue to the Respondent. Respondent failed to submit a Response to the Complaint, and was notified of default by the WIPO Arbitration and Mediation Center (the "Center") on April 5, 2002.
(3)On April 15, 2002, the Center appointed Dan Hunter as Sole Panelist.
(4)The WIPO Arbitration and Mediation Center has found that:
-The Complaint was filed in accordance with the requirements of the Rules and Supplemental Rules for the Uniform Domain Name Dispute Resolution Policy;
-Payment for filing was properly made;
-The Complaint complies with the formal requirements;
-The Complaint was properly notified in accordance with the Rules, paragraph 2(a);
-No Response was filed;
-The Respondent was appropriately notified of default;
-The Administrative Panel was properly constituted.
As Panelist, I accept these findings.
(5)As Panelist, I submitted a Statement of Acceptance and Declaration of Impartiality and Independence.
(6)There have been neither further submissions nor communications from the Complainant and Respondent, or their representatives, after the appointment of the Panel.
(7)No extensions have been granted or orders issued in advance of this decision.
(8)The language of the proceeding is English.
4. Factual Background
A. The Complainant and its marks
Complainant is a provider of wireless voice and data communication services in the United States and 70 other countries worldwide. Complainant has used the "VOICESTREAM" mark since February of 1996 both to identify its goods and service and as the name of the company.
Complainant filed an Intent to Use application with the United States Patent and Trademark Office ("USPTO") for the mark "VOICESTREAM" on October 10, 1995. Complainant first used "VOICESTREAM" in commerce on February 1, 1996, and the mark was registered with the USPTO on March 11, 1997. It has used the mark extensively since then, in conjunction with a vast advertising campaign.
B. The Respondents
The Respondents have not filed a Response. According to the Registrar�s WHOIS database, the Respondent in this administrative proceeding is as provided above, of the above address. Reasons for concluding additional information about the other Respondents is provided in the following section.
C. The Domain Name
On November 19, 2000, Respondent registered the Domain Name with the Registrar. The publicly accessible WHOIS registration information associated with the domain name has been altered at least three times, as follows. Between February 2, 2001, and October 16, 2001, the WHOIS record indicated that the domain name was held by Global Medical Products, 1500 Broadway, New York, NY 10010. Between October 16, 2001 and January 28, 2002, the WHOIS record indicated that the domain name was held by American Medical, 400 Madison Avenue, New York, NY 10010. Between January 28, 2002 and February 6, 2002, the WHOIS record indicated that the domain name was held by Click 5, 145 Park Ave, New York, NY 10010. These appear to be fictitious entities and addresses.
The domain name has, at various times, resolved to various commercial web sites. For example, on January 28, 2002 the domain name resolved to a Web page posted at . Although the content posted at that URL stated that the site was "Under Construction", it was, in fact, an active commercial Web site operated by one of the Respondents, Mike Torres, under the name National Promotions, Inc. A previous WIPO arbitration found that "National Promotions, Inc." is an alias of Mike Torres, see Chanel, Inc. v. Mike Torres d/b/a National Promotions, Inc., WIPO Case No. D2000-1833, February 22, 2001. Respondent's Web page featured numerous links to commercial Web sites that were unaffiliated with VoiceStream, such as the Web sites for Dell Computer, Omaha Steaks, TigerD, GoTo.com, a pop-up credit card advertisement, and others.
Complainant sent a cease and desist letter to Respondent via first class mail, certified mail, and e-mail, to its "American Medical" addresses set forth in WHOIS information. The letter that was sent via first class mail was subsequently returned as nondeliverable.
Following Complainant's issuance of a cease and desist letter, on January 28, 2002, publicly available registration information for the domain name was altered to reflect ownership by "Click5". In addition, the domain server information was altered in order to redirect the domain name to access a new commercial Web site at , which features numerous advertisements and commercial links to providers of a wide variety of products and services, such as travel and hotel services, auto insurance, beauty supplies and other items, none of which are affiliated with VoiceStream or similar to VoiceStream's products and services.
Following Respondent's alteration of the publicly accessible WHOIS information, Complainant issued a second cease and desist letter via e-mail to Respondent's e-mail address as set forth in the revised WHOIS information. Respondent neither responded to nor complied with the demands set forth in the cease and desist letter.
5. Parties� Contentions
A. The Complainants� assertions
Complainant asserts that Respondent's domain name is identical or confusingly similar to the Complainant�s mark. Complainant asserts:
(1)Confusing similarity turns on use, similarity of the marks and terms in question, similarity of products and services, similarity of users and similarity of channels of distribution. See Yahoo! Inc. v. Eitan Zviely, et al., WIPO Case No. D2000-0273, June 14, 2000. Here, Respondent's registered domain name incorporates almost entirely the VoiceStream Mark, but for the omission of the letter "I"."When a domain name incorporates, in its entirety, a distinctive mark, that creates a sufficient similarity between the mark and the domain name to render it confusingly similar." EAuto, L.L.C. v. Triple S Auto Parts, WIPO Case No. D2000-0047, March 24, 2000.
(2)Here, the domain name is confusingly similar to the VoiceStream Mark because it omits only a single letter. As a result, consumers seeking but who mistype or misspell the domain name by dropping the "I" will be misdirected to Respondent's site. In an arbitration proceeding with nearly identical facts, the panelist found that the marks were similar based on the omission of only a single letter, which "does not alter the obvious confusing similarity between the domain name and the Complainant's marks." Williams-Sonoma, Inc. v. Polanski, WIPO Case No. D2001-0236, April 5, 2001. Moreover, in three previous arbitrations involving the Respondent, each of the respective arbitration panels found that Respondent's registration and/or use of domain names incorporating simple misspellings of registered trademarks constituted confusing similarity between the domain names and the complainant's marks. See Chanel, Inc. v. Mike Torres d/b/a National Promotions, Inc., WIPO Case No. D2000-1833, February 22, 2001; Bally Total Fitness v. Mike Torres a/k/a Dallas Internet Service, a/k/a Global Media Consulting, WIPO Case No. D2001-0546, June 28, 2001; Guinness UDV North America, Inc. v. Dallas Internet Service, WIPO Case No. D2001-1055, December 12, 2001. In an arbitration involving Respondent on substantially similar facts, the panel stated: "The [] Domain Name consists of Complainant's world-famous SMIRNOFF Mark minus the final 'F'. This mutilation of a famous mark or 'typo-piracy' has been held on many occasions to remove none of the confusing similarity such a misspelling gives rise to." See Guinness UDV North America, Inc. v. Dallas Internet Service, WIPO Case No. D2001-1055, December 12, 2001. Moreover, another panel found that "[t]he disputed domain name, , differs by only one letter, the common suffix 's', from Bally's mark . The dominant portion of both the domain name and Bally's mark�is the same strong, arbitrary, and distinctive mark 'Bally'�In short, the result is likely to be confusion as to source, origin, sponsorship, or affiliation." See Bally Total Fitness v. Mike Torres a/k/a Dallas Internet Service, a/k/a Global Media Consulting, WIPO Case No. D2001-0546, June 28, 2001.
Complainant asserts that Respondent has no legitimate interest or rights in the domain names. Complainant asserts:
(1) VoiceStream's rights in the VoiceStream Mark predate the registration of the domain name by many years. The domain name was not registered with the Registrar until November 19, 2000, whereas Complainant first used the VoiceStream Mark in commerce on February 15, 1996, applied for ITU registration of the mark on October 10, 1995, and received its first registration of the VoiceStream Mark with the United States Patent and Trademark Office ("USPTO") on March 11, 1997. Such registration of a mark constitutes constructive notice of the registrant's claim of ownership thereof. See 15 U.S.C. � 1072; The Step2 Company v. Softastic Corp., WIPO Case No. D2000-0393, June 26, 2000. In addition, Complainant first used the domain name in commerce in 1996.
(2)VoiceStream revenues for the year 2000 exceeded $1.9 billion. The site generates approximately 351,800 "hits" per week, 54% by VoiceStream customers accessing wireless messaging services through VoiceStream's related Web site and service, and, during 2001, has generated an average of 2,261 handset sales per month. "The evidence of widespread use of a mark worldwide allows the inference that Respondent had actual or at least constructive notice as a competitor of the prior use of the mark and the name." Sunglass Hut Corporation v. AAANET, INC., NAF, FA94370, May 11, 2000). Respondent registered the domain name well after VoiceStream's business, the genuine domain name, and VoiceStream Mark had become famous in the telecommunications world. Respondent should be charged with constructive notice of Complainant's prior use of the VoiceStream Mark.
(3)Before registering the domain name, Respondent was not commonly known, as an individual, business or other organization, by the domain name . See Policy 4(c)(ii). Rather, Respondent has linked the domain name to a Web page operated by Respondent at , which featured numerous commercial and advertising links, and presently to an unrelated and unaffiliated commercial Web site . Because of the chosen domain name's similarity to the well-known domain name and the famous VoiceStream Mark, the Web sites appear to be part of VoiceStream's business.
(4)It is particularly clear that Respondent has no legitimate interest in the domain name. There have been and are no specific goods or services incorporating the "Vocestream" name associated with either the or Web sites. In a recent arbitration decision, under very similar facts and in assessing the respondent's rights and legitimate interests in respect of the domain name, the panelist found that the fact that the domain name resolved to a site offering separate commercial services unrelated to the domain name served as clear evidence that "the Respondent is seeking to gain advertising or other revenues from mis-typed domain name," conduct which justified transferring the domain names to Complainant in both instances. Williams-Sonoma, Inc. v. Polanski, WIPO Case No. D2001-0236, April 5, 2001; see also Inter-IKEA v. Polanski, WIPO Case No. D2000-1614, January 22, 2001.
Complainant asserts that Respondent registered the domain names and is using them in bad faith. Complainant asserts:
(1) Pursuant to paragraph 4(b)(iv), bad faith registration and use of a domain name is demonstrated when the Panel finds that by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [respondent's] 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 [respondent's] web site or location or of a product or service on [respondent's] web site or location.
(2)Respondent's bad faith is evident from the fact that Respondent has used a misspelling of a famous mark to "attract, for commercial gain, Internet users to [the Respondent's] web site or other on-line location, by creating a likelihood of confusion of the Complainant's mark as to the source, sponsorship, affiliation or endorsement of [Respondent's] web site or location." Policy 4(b)(iv). On nearly identical facts, a panelist found bad faith on the basis that "[t]he Respondent exploits mis-typings of the Complainant's trade mark." Williams-Sonoma, Inc. v. Polanski, WIPO Case No. D2001-0236, April 5, 2001; see also Inter-IKEA v. Polanski, WIPO Case No. D2000-1614, January 22, 2001. Indeed, Respondent has received advertising or other revenues by misdirecting Internet consumers to his Web site, and is now receiving affiliate revenues for misdirecting consumers to the Web site.
(3)In at least three other arbitration panel decisions issued under the Policy, Respondent has been found to have exhibited bad faith from registering misspellings of famous or popular trademarks as domain names. See Chanel, Inc. v. Mike Torres d/b/a National Promotions, Inc., WIPO Case No. D2000-1833, February 22, 2001; Bally Total Fitness v. Mike Torres a/k/a Dallas Internet Service, a/k/a Global Media Consulting, WIPO Case No. D2001-0546, June 28, 2001; Guinness UDV North America, Inc. v. Dallas Internet Service, WIPO Case No. D2001-1055, December 12, 2001. First, Respondent has attempted to elude detection by registering the domain name under the "Dallas Internet Services" alias, and then changing the publicly accessible WHOIS registration information at least three times to reflect ownership under fictitious business names at nonexistent and misleading addresses. A previous panel noted that "[Respondent] has a history of attempting to elude the owner of a famous trademark by falsifying its contact information on a domain name registration" and that such behavior evidences bad faith. See Guinness UDV North America, Inc. v. Dallas Internet Service, WIPO Case No. D2001-1055, December 12, 2001. Second, Respondent has engaged in precisely the same form of typosquatting � i.e. incorporating trademarks with minor typographical errors into a domain name � on numerous occasions, thus giving rise to at least three WIPO arbitration proceedings. "[R]espondent has registered many other domain names which are variations on well-known marks � a pattern manifesting classical cybersquatting." See Bally Total Fitness v. Mike Torres a/k/a Dallas Internet Service, a/k/a Global Media Consulting, WIPO Case No. D2001-0546, June 28, 2001. Finally, Respondent has used the domain name to offer goods and services that are unaffiliated with Complainant, which the Bally Total Fitness arbitration panel stated "evidences respondent's bad faith." See Bally Total Fitness v. Mike Torres a/k/a Dallas Internet Service, a/k/a Global Media Consulting, WIPO Case No. D2001-0546 June 28, 2001.
Accordingly Complainant requests that the Panel order that the domain names be transferred to the Complainant.
B. The Respondent�s assertions
The Respondent has not filed a Response.
6. Discussion and Findings
Paragraph 4.a. of the UDRP requires the Complainant to make out three elements:
A. The Complainant has rights in a trade or service mark, with which Respondent�s domain name is identical or confusingly similar (Paragraph 4.a.(i)); and
B. The Respondent has no rights or legitimate interests in respect of the domain name (Paragraph 4.a.(ii)); and
C. The Respondent registered and is using the domain name in bad faith (Paragraph 4.a.(iii)).
A. The Complainant has rights in a trade or service mark, with which Respondent�s domain name is identical or confusingly similar.
There are two requirements that a Complainant must establish under this paragraph; that it has rights in a trade or service mark, and that the domain name is identical or confusingly similar to the marks.
The Complainant has provided the registration documents for its VOICESTREAM mark. I conclude that the Complainant � as registered proprietor of the mark � has established the first requirement of this paragraph.
The second requirement is that the domain name be identical or confusingly similar to the marks. Here the Complainant asserts only that the domain name is confusing similar to its marks. The domain name is not identical, but it is extremely similar; the only difference being the removal of the letter "i". As I have concluded in other circumstances, the omission of this single letter does not alter the obvious confusing similarity between the domain name and the Complainant's marks. See Williams-Sonoma, Inc. v. Polanski, WIPO Case No. D2001-0236. Other decisions (noted in section 5, supra) have found that the deletion of a single letter does not alter the confusing similarity between domain names and instances of clear typosquatting. I am happy to endorse this position. Many users will unwittingly neglect to include the letter "i" in typing the Complainant�s mark as a domain name, and will consequently be directed to the Respondent�s site. Confusion on the part of users is extremely likely. I conclude therefore that the domain name is confusingly similar to the Complainant�s marks.
The Complainant has shown that it has rights in trade marks, and that the domain name is confusingly similar to these marks. I conclude therefore that the Complainant has satisfied the requirements of paragraph 4.a.(i) of the UDRP.
B. The Respondent has no rights or legitimate interest in respect of the domain name.
The Complainant asserts that the Respondent has no rights or legitimate interest in the domain name, as required under paragraph 4.a.(ii) of the UDRP. It makes a number of specific arguments on this point, as provided above in section 5.
Many of the Complainant�s assertions go to the requirements under Paragraph 4.c of the UDRP. This is appropriate, since, in the absence of a Response, I consider it necessary to analyze whether any of the defenses provided in Paragraph 4.c. might apply. Paragraph 4.c. of the UDRP provides the following examples to the Respondent:
"(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."
There is absolutely no evidence that any of the scenarios of Paragraph 4.c apply here. In fact, there is significant evidence that specifically refutes any assumption of legitimate use by the Respondent. The domain name has regularly resolved to commercial sites which offer commercial services that are typical of typosquatters. Further it appears that Mike Torres, the actual Respondent in this case, has consistently engaged in this sort of behavior (See Chanel, Inc. v. Mike Torres d/b/a National Promotions, Inc., WIPO Case No. D2000-1833; Bally Total Fitness v. Mike Torres a/k/a Dallas Internet Service, a/k/a Global Media Consulting, WIPO Case No. D2001-0546; Guinness UDV North America, Inc. v. Dallas Internet Service, WIPO Case No. D2001-1055). Clearly the Respondent makes his living from seeking to gain advertising or other revenues from mis-typed domain names. This evidence, together with the absence of a Response or any other evidence in the Respondent�s favor, removes any need to consider more closely whether the Respondent has any rights or legitimate interest in the name.
As a result I conclude that, even having considered the possible application of Paragraph 4.c., the Respondent has no rights or legitimate interest in the domain name. I conclude that the Complainant has satisfied the requirements of paragraph 4.a.(ii) of the UDRP.
C. The Respondent registered and is using the domain name in bad faith.
The final issue is that of bad faith registration and use by the Respondent. For paragraph 4.a.(iii) to apply, the Complainant must demonstrate the conjunctive requirements that the Respondent registered the domain name in bad faith and continues to use it in bad faith.
Paragraph 4.b. of the UDRP provides exemplar scenarios which will be sufficient to establish the requirements of Paragraph 4.a.(iii). Pursuant to paragraph 4.b.(iv) where the Respondent has used the domain name in an attempt "to attract, for commercial gain, Internet users to [the Respondent�s] web site or other on-line location, by creating a likelihood of confusion of the complainant�s mark as to the source, sponsorship, affiliation or endorsement of [respondent�s] web site or location", bad faith will be established. As explained in the previous section, this has occurred here. The Respondent is a typosquatter who exploits the users� mis-typings of the Complainant�s trade mark. This activity falls clearly into the exemplar of Paragraph 4.b.(iv), and no further analysis is necessary.
I therefore conclude that the Complainant has satisfied paragraph 4.a.(iii) of the UDRP.
7. Decision
Complainant has made out all of the elements of paragraph 4.a. of the Uniform Domain Name Dispute Resolution Policy.
Pursuant to Paragraph 4.i. of the Uniform Domain Name Dispute Resolution Policy and Rule 15 of the Rules for the Uniform Domain Name Dispute Resolution Policy, the requested remedy is granted.
I hereby order that the domain name be transferred forthwith to the Complainant.
Dan Hunter
Sole Panelist
Dated: May 7, 2002
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