The Complainant is A.V.M. Software, Inc. d/b/a P of New York, United States of America represented by Fross Zelnick Lehrman & Zissu, PC, United States of America.
The Respondent is Simon Guo of Beijing, China. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with GoD, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 21, 2012. On June 22, 2012, the Center transmitted by email to GoD, LLC. a request for registrar verification in connection with the disputed domain name. On June 22, 2012, GoD, LLC 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 28, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was July 18, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 19, 2012.
The Center appointed Tee Jim Tan, S.C. as the sole panelist in this matter on August 1, 2012. 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.V.M. Software, Inc. d/b/a P, a corporation whose corporate headquarters is located at One Penn Plaza, Suite 3401, New York 10119, United States. The Complainant is the owner of the trademark PALTALK. The Complainant commenced use of its PALTALK mark in 1999. Currently, the Complainant’s PALTALK mark is protected in more than 30 countries and the Complainant owns over 31 trademark registrations for the PALTALK mark around the world, including two registrations in the United States.
The Complainant also owns the domain name
since 1998 and operates an online video chatroom at its website “www.p”. The Complainant’s Paltalk software has been downloaded at least 13 million times since April 2012 alone and more than 70 million times since it was first released in 1999. The Complainant and its Paltalk goods and services have also received extensive press coverage and numerous awards.
The Complainant also operates a related online chat community under the trademark CAMFROG at “” since 2003. Through extensive promotion and use, the CAMFROG mark has become exclusively associated with the Complainant’s goods and services. The Complainant owns a federal trademark registration for the CAMFROG mark and has also owned the domain name since 2006.
The Respondent is the registrant of the Domain Name at which the website “www.” is located (the “Website”). The Website suggests that it is a Chinese language version of the Complainant’s “” website and redirects users to the website “AsiaFriendF”. The Domain Name was registered on September 24, 2011. The Respondent has also registered three additional domain names: , and . 5. Parties’ Contentions A. Complainant
The Complainant contends as follows:
5.1 It has very strong rights in the PALTALK mark based on:
(a) its use since 1999, including in connection with its “www.p” website and its downloadable software for Windows, Mac, Android and iOS operating systems. The software has been downloaded and used by customers worldwide; and
(b) the numerous international trademark registrations for the PALTALK mark (including U.S. Trademark Reg. Nos. 2,270,756 and 3,310,732). The mark is a construct and not an ordinary word.
5.2 The Domain Name is identical or confusingly similar to the PALTALK mark.
5.2.1 The Domain Name incorporates in its entirety the Complainant’s registered PALTALK trademark. This is sufficient to establish that the Domain Name is identical or confusingly similar for purposes of the Policy.
5.2.2 Given the reputation and renown of the Complainant’s PALTALK mark, most Internet users who see the Domain Name are likely to immediately recognize the Complainant’s mark and assume that the Domain Name is owned, controlled or approved by the Complainant. In addition, consumers and other third parties who search the Internet for legitimate information about the Complainant and its PALTALK products may be directed to the Internet address incorporating the Domain Name, creating a probability of confusion.
5.2.3 There is nothing more to the Domain Name other than the “.CO” suffix to distinguish the Domain Name from the Complainant’s PALTALK mark. However, the generic top level domain (the “gTLD”) indicator “.CO” cannot be taken into consideration when determining confusing similarity.
5.3 The Respondent has no rights or legitimate interests in respect of the Domain Name for the following reasons:
5.3.1 There is no evidence that the Respondent has rights or legitimate interests in the Domain Name. The Respondent registered the Domain Name after the Complainant had made extensive use of the PALTALK mark and after the Complainant had obtained registrations for its PALTALK mark in countries around the world.
5.3.2 At no time did the Complainant ever authorize or permit the Respondent’s registration of the Domain Name, and there is no relationship between the Complainant and the Respondent that would give rise to any license, permission or authorization for the Respondent to use or register the Domain Name.
5.3.3 The Complainant believes that the Respondent’s only use of the Domain Name is in connection with the Chinese language Website which is a virtual and unauthorized copy of the Complainant’s “” website and also to redirect visitors to an unrelated dating website.
5.3.4 There is nothing in the English or Chinese language portions of the Website that advise consumers that the Website is not sponsored by or affiliated with the Complainant.
5.3.5 There is no evidence to suggest that the Respondent has been or is commonly known by the Domain Name.
5.4 The Domain Name was registered and being used in bad faith for the following reasons:
5.4.1 Given that the Respondent has never been authorized by the Complainant to use the PALTALK mark, the very fact that the Respondent registered the Domain Name establishes use and registration of the Domain Name in bad faith. As the Complainant’s PALTALK mark enjoys wide recognition, it is inconceivable that the Respondent was unaware of the Complainant’s PALTALK mark when it registered the Domain Name. By using and registering the Domain Name, the Respondent is banking on the established goodwill and consumer recognition of the PALTALK mark to drive traffic to the Website.
5.4.2 The Respondent has demonstrated a pattern of conduct by registering a set of four domain names incorporating the Complainant’s PALTALK and CAMFROG marks, each of which are associated with websites that mimic and misleadingly redirect visitors to unrelated third-party websites.
5.4.3 The Respondent is conducting a typosquatting practice i.e. by taking advantage of common spelling mistakes made by Internet users who are looking for a particular website of a particular provider of goods or services in order to obtain some benefit therefrom. Typosquatting has been held under the Policy to be evidence of registration of a domain name in bad faith.
5.4.4 The Respondent’s registration and use of the Domain Name is to intentionally attempt to attract Internet users to his website for commercial gain by creating a likelihood of confusion with the Complainant’s mark in relation to the source, sponsorship, affiliation or endorsement of the Website or of a product or service on the Website. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements in order to succeed:
(1) The Domain Name is identical with or confusingly similar to a trademark in which the Complainant has rights;
(2) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(3) The Domain Name has been registered and is being used in bad faith.
In accordance with paragraph 14(a) of the Rules, if the Respondent does not submit a Response, the Panel shall, in absence of exceptional circumstances, decide the dispute based on the Complaint. A. Identical or Confusingly Similar
The Complainant has provided evidence of its trademark registrations for the PALTALK mark in several countries and in the United States. The Complainant has also provided evidence of recognition of the PALTALK mark as well as the goodwill and reputation the mark enjoys. Further, there is also a UDRP decision which indicates that the PALTALK mark is a construct and not an ordinary word, to which the Complainant has clear rights. On the basis of the evidence, the Panel is satisfied that the PALTALK mark is distinctive of the Complainant’s goods and services and that the Complainant has rights in the PALTALK mark.
The Domain Name incorporates the PALTALK mark in its entirety such that it is likely to mislead the public and Internet users to believe, and to act on the belief, that the Domain Name belongs to the Complainant or is in some way associated with the Complainant.
The Panel also notes that the likelihood of confusion is unlikely to be dispelled by the use of the “.CO” suffix. As held in the decision of Foundation Le Corbusier v. Mercado M.,WIPO Case No. D2004-0723, at 6A (November 11, 2004), the country code top level domain (the “ccTLD”) indicator “.CO” cannot be taken into consideration when judging whether the Domain Name is confusingly similar to the Complainant’s PALTALK mark. Hence, the Panel finds that the Domain Name is confusingly similar to the Complainant’s PALTALK mark and the Complainant’s domain name
. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out, without limitation, circumstances which, if proved, establish a registrant’s rights or legitimate interests to a disputed domain name. Accordingly, the Respondent may demonstrate any of the following:
(1) the Respondent’s 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 before any notice to the Respondent of the dispute; or
(2) the Respondent has been commonly known by the Domain Name, even if the Respondent has acquired no trademark or service mark rights; or
(3) the Respondent is making a legitimate, non-commercial 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.
As the Respondent has not filed a Response, the Panel does not have before it any evidence of the circumstances specified in paragraph 4(c) of the Policy, or of any other circumstances which might reasonably be said to give the Respondent a right to or a legitimate interest in the Domain Name.
Numerous cases under the Policy have adopted the approach that if a respondent fails to respond and dispute the complainant’s claims, it may be inferred that the claims are true and that the respondent knows that its website bearing the offending domain name is misleading: see, e.g., Reuters Limited v. Global Net 2000, Inc.,WIPO Case No. D2000-0441. In Pomellato S.p.A v. Richard Tonetti, WIPO Case No. D2000-0493, the panel inferred the lack of response as “indicative of a lack of interest inconsistent with an attitude of ownership and a belief in the lawfulness of one’s own rights”.
In the present case, the Panel would make the same inferences.
There is also no evidence that the Respondent is known by the Domain Name prior to its registration or that it has any registered trademarks that are identical with or similar to the Domain Name. On the contrary, the Panel accepts that the PALTALK mark is a well-known mark such that the Respondent must have known that the Complainant owns the rights to the PALTALK mark when it registered the Domain Name. The Complainant has also stated that it has never consented to the use of the PALTALK mark in the Domain Name. It is apparent that the Domain Name is used to misleadingly divert Internet Users to the Website for the Respondent’s commercial gain by creating a likelihood of confusion with the Complainant’s mark.
For the above reasons, the Panel finds that the Respondent does not have any rights or legitimate interests in the Domain Name and finds for the Complainant in respect of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
In accordance with paragraph 4(a)(iii) of the Policy, the Complainant must prove that the Domain Name has been registered and is being used in bad faith. Paragraph 4(b) sets out four circumstances which, without limitation, shall be evidence of the registration and use of the Domain Name in bad faith, namely:
(1) Circumstances indicating that the Respondent has registered or has 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 the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the Domain Name; or
(2) Circumstances showing that the Respondent has 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 the Respondent has engaged in a pattern of such conduct; or
(3) Circumstances showing that the Respondent has registered the Domain Name primarily for the purposes of disrupting the business of a competitor; or
(4) The Respondent has, by using the Domain Name, intentionally attempted to attract, for commercial gain, Internet users to its website 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 the Respondent’s website or location or of a product or service on the Respondent’s website or location.
By failing to file a Response, the Respondent did not take the opportunity to invoke any circumstances which could demonstrate that it did not register and use the Domain Name in bad faith and to assist the Panel in this regard. This itself suggests that the Domain Name was registered and is being used in bad faith by the Respondent. If the Respondent legitimately registered and/or is using the Domain Name in good faith, there is no reason for it to fail to submit a response and challenge the Complainant’s contentions.
Numerous cases decided under the Policy indicate that a finding of bad faith may be made where the respondent “knew or should have known” of the registration and use of the trademark prior to registering the domain name: see i.e. Turkcell Iletisim Hizmetleri A.S. v. Ozgur Karadag,WIPO Case No. D2011-2038.
In the present case, the Complainant has registrations of the PALTALK mark in United States and in several countries which pre-date the Respondent’s registration of the Domain Name on September 24, 2011. The Complainant has also provided documentary evidence and extracts from its website “www.p” showing its use of the PALTALK mark for several years for purposes of an online chatroom. Hence, it is implausible that the Respondent was unaware of the Complainant’s mark prior to September 24, 2011. Further, the fact that the Respondent registered a set of four domain names incorporating the Complainant’s PALTALK and CAMFROG marks indicates a pattern of bad faith conduct by the Respondent.
In these circumstances, it can be inferred from the Respondent’s choice of the Domain Name that the intent was or must have been to create a false impression of an association with the Complainant and/or its website as well as its products and services. This inference is enhanced by the Respondent’s website which mimics the Complainant’s and subsequently redirects Internet users to the website “AsiaFriendF”.
On the whole, the Panel is satisfied that the Domain Name was registered and is being used in bad faith. It therefore finds for the Complainant in relation to 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 Domain Name be transferred to the Complainant.
Tee Jim Tan, S.C.
Sole Panelist
Date: August 10, 2012
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