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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

TracFone Wireless, Inc. v. PIPHY Productions

Case No. D2006-1459

 

1. The Parties

The Complainant is TracFone Wireless, Inc., Miami, Florida, United States of America, represented by Carlton Fields, P.A., United States of America.

The Respondent is PIPHY Productions, Douglasville, Georgia, United States of America, and Sioux Falls, South Dakota, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name <tracfoneusa.com> is registered with TierraNet d/b/a DomainDiscover.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 14, 2006. On November 15, 2006, the Center transmitted by email to TierraNet d/b/a DomainDiscover a request for registrar verification in connection with the domain name at issue. On November 15, 2006, TierraNet d/b/a DomainDiscover transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant cured the deficiency on November 22, 2006. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 November 24, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was December 4, 006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 15, 2006.

The Center appointed John R. Keys, Jr. as the sole panelist in this matter on January 4, 2007. 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 sells wireless telephones and prepaid wireless telephone services in the United States of America.

The Complainant owns the following trademarks, registered by the United States Patent and Trademark Office:

TRACFONE, Registration No. 2,114,692, issued November 18, 1997, used in connection with “electronic communications equipment, namely, cellular telephones, prepaid airtime cellular telephones and cellular telephone accessories, namely, prepaid airtime debit cards, battery chargers, stands, antennae, voice amplifiers and microphones; computer programs for use in controlling and monitoring prepaid airtime cellular telephone service,” in International Class 9; “cellular telephone services and providing monitoring and control services for use in conjunction with prepaid airtime cellular phones and debit cards,” in International Class 38; and “wholesale distributorship featuring of cellular telephones, prepaid airtime cellular telephones and prepaid airtime debit cards, and software for controlling and monitoring prepaid airtime cellular service,” in International Class 42.

TRACFONE and Design, Registration No. 2,761,017, issued September 9, 2003, for used in connection with “electronic communications equipment, namely, cellular telephones; prepaid air time cellular telephones; cellular telephone accessories, namely, battery chargers, stands, antennae, headset kits comprised of hands free electronic earpiece with microphone and holster, hands free headsets, cases with flaps, power adapters, batteries, carry sleeves, face plates, belt clips, holsters, mounting attachments,” in international category 9; for “on-line retail store services featuring cellular telephones, pre-paid wireless air time cards, cellular telephone accessories and wireless services,” in international class 35; and for “providing cellular telephone services and providing monitoring and control services for use in conjunction with prepaid air time cellular phones and debit cards,” in international class 38.

The Complainant has used these marks continuously since 1996 and 2000, respectively.

The Complainant has advertised, marketed, and promoted its services using the mark TRACFONE, including on its website “www.tracfone.com”, since at least 1999. The Complainant has actively used its domain name <tracfone.com> in combination with its registered marks and distinctive green color since at least 2000. The Complainant is the largest provider of prepaid wireless telephone services in the United States, with more than seven million active subscribers.

The Complainant’s customers purchase the Complainant’s wireless phones from major retailers in the United States and then load airtime into those phones using PIN numbers found on airtime cards sold by the Complainant. The customers use the Complainant’s website “www.tracfone.com” to purchase aircards and other products, activate phones, participate in promotions, obtain technical support, and otherwise communicate with the Complainant.

 

5. Parties’ Contentions

A. Complainant

(a) Respondent’s domain name is confusingly similar to Complainant’s mark

The Complainant contends that the disputed domain name <tracfoneusa.com> is identical to the Complainant’s mark TRACFONE, excluding the last three geographically descriptive letters.

The Respondent’s use of the domain name creates initial interest confusion among the Complainant’s customers who are likely to assume mistakenly that when they enter the domain name they will be directed to the Complainant’s website for its U.S.-based operations. Once on the Respondent’s site, the Complainant’s customers are likely to be further confused, because the Respondent also:

[i.] uses Complainant’s mark repeatedly throughout Respondent’s site,

[ii.] uses the same distinctive green color Complainant has used on its site since at least 2000,

[iii.] links directly to pages within Complainant’s website,

[iv.] reproduces images of Complainant’s copyrighted phone cards, and

[v.] reproduces screenshots of Complainant’s copyrighted html pages from Complainant’s own website.

Although the Respondent provides small disclaimers that it is not associated with the Complainant, the disclaimers are ineffective because they are inapplicable to any initial interest confusion created by Respondent’s use of Complainant’s mark in Respondent’s domain name and substantially smaller and much less prominent than the Respondent’s use of the Complainant’s registered marks and copyrighted materials.

The effect of the Respondent’s use of the domain name <tracfoneusa.com> is that many of the Complainant’s customers are likely to be directed to the Respondent’s site when attempting to reach the Complainant’s site, and then are likely to be confused and tricked into believing that they are using a site operated either by the Complainant or by a legitimate affiliate of the Complainant.

(b) Respondent has no rights or legitimate interests in respect of the domain name

The Complainant contends that the Respondent does not use the domain name for any bona fide commercial purpose related to the mark TRACFONE. The Respondent is not now, and never has been, affiliated with Complainant in any manner that would permit a legitimate use of Complainant’s marks. The Respondent has no express or implied rights in, or permission to use, the Complainant’s marks or copyrighted works. Nor has the Complainant ever granted the Respondent permission to deep-link to pages within the Complainant’s site.

The Respondent’s use of the domain name does not evidence an assertion of legitimate rights in the mark TRACFONE. Instead, the Respondent uses the domain name to intentionally divert customers from the Complainant’s domain name <tracfone.com> to the Respondent’s domain name <tracfoneusa.com>. Once on its site, the Respondent then attempts to sell the Complainant’s customers unauthorized PIN numbers and instructions on how to obtain free minutes on the Complainant’s prepaid wireless service, both in violation of the services agreement that both the Respondent and the customers have accepted.

The Complainant alleges that the Respondent’s scheme works as follows:

[i.] The Complainant offers a “Refer-a-Friend” promotion designed to reward its legitimate customers for referring new customers. An existing customer registers for the program on the Complainant’s website and enters the email address of the friend the customer has referred. When that friend activates his or her phone and enters the email address given, both the friend and the referring customer receive PIN codes which can be used to activate free minutes on their respective TracFone phones.

[ii.] On information and belief, the Respondent purchases Complainant’s phones in large numbers from retailers and then resells those phones to others who illegally erase the software from the phones and then resell them for use on other wireless networks, mainly outside the United States.

[iii.] When a customer contacts the Respondent through its website, the Respondent collects $9.95 from the customer and then provides an email address for the customer to enter into the promotion. On information and belief, once the customer has entered the email address on the Complainant’s site, the Respondent activates one of the phones it has purchased in bulk using that email address, which results in the Respondent and the customer automatically receiving PINs for free airtime from the Complainant.

[iv.] In the process of activating a phone, the Respondent must agree to terms and conditions of Complainant’s Service Agreement. When the customer activates his or her phone, he or she similarly accepts the same agreement.

[v.] The Respondent also uses its site to sell unauthorized PINs to still other customers of the Complainant for $20. On information and belief, these PINs are the same PINs it receives as a result of the above-described Refer-a-Friend scheme.

(c) The domain names were registered and are being used in bad faith

Complainant further contends that prior to registering the domain name in dispute, the Respondent had knowledge of the Complainant, the Complainant’s domain name <tracfone.com>, the Complainant’s products and services, and the Complainant’s mark used in association with those products and services. The Respondent’s knowledge is evidenced by the Respondent’s choice of a domain name, the Respondent’s repeated use of the Complainant’s marks on its site, the Respondent’s links to pages within the Complainant’s site, and the Respondent’s use of the Complainant’s site in perpetration of its scheme.

Furthermore, the Respondent’s constructive knowledge of the Complainant’s marks during all times relevant to this Complaint is conclusively established by the Complainant’s registration of those marks on November 18, 1997, and September 9, 2003. The Respondent registered the disputed domain name on

December 14, 2005, nearly eight years after Complainant’s first registration of its mark.

The Complainant contends that the following describes the Respondent’s use of the domain as of September 21, 2006:

[i.] The Respondent uses the website maintained at “www.tracfoneusa.com” for the purpose of selling promotional PIN codes obtained in violation of the rules of the Complainant’s promotion and in violation of the Complainant’s Service Agreement.

[ii.] The Respondent uses its website to sell instructions to the Complainant’s legitimate customers describing how to obtain free minutes by violating the rules of the Complainant’s promotional program.

[iii.] The Respondent uses the Complainant’s registered marks and other intellectual property on the Respondent’s site without permission. The Respondent uses the Complainant’s famous, registered mark TRACFONE more than ten times on its homepage and more than twenty times on its Promotional Minutes page. The Respondent also displays copies of the Complainant’s copyrighted phone cards on its home page and displays copies of portions of two of the Complainant’s copyrighted web pages on its Promotional Minutes page. The effect of these strategies is to confuse the Complainant’s customers and trick them into believing the Respondent is affiliated in some way with the Complainant, to lure those customers into participating in Respondent’s scheme, thereby inducing them to violate the Complainant’s service agreement, and to capitalize on the Complainant’s good will.

Although the Respondent provides small disclaimers on its pages stating that it is not affiliated with the Complainant, the disclaimers can have no effect on the initial interest confusion created by the similarity of the domain names, and are dwarfed in both size and number by the Respondent’s unauthorized use of Complainant’s marks and copyrighted works. Respondent’s use of the same distinctive green color that Complainant uses on its website further contributes to the illusion that the customer is dealing with an affiliate of the Complainant. The result is a strong likelihood that the Complainant’s legitimate customers will be confused and will conclude that the Respondent is an authorized reseller of the Complainant’s products and services or otherwise affiliated with the Complainant.

Finally, the Complainant contends that the Respondent’s use of the disputed domain name and website induces the Complainant’s customers to violate the terms of the Complainant’s usage agreement. That agreement states in part that each customer “agree[s] not to tamper with or alter [his or her] TRACFONE or its software, enter unauthorized PIN numbers, or engage in any other unauthorized or illegal use of [his or her] TRACFONE or the Service.” By selling unauthorized PIN numbers and instructing the Complainant’s customers in how to cheat under the rules of the Complainant’s promotions, the Respondent is inducing those customers to violate their agreement with the Complainant.

The Respondent’s use of the disputed domain name and website also requires the Respondent to violate regularly the terms of the same usage agreement. Each time the Respondent activates one of the phones it purchased in order to obtain free minutes in violation of the rules of the Complainant’s promotion, the Respondent agrees to the terms of the usage agreement. The Complainant then violates that agreement by using the phone and service in an unauthorized manner and selling unauthorized PIN numbers.

B. Respondent

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

 

6. Discussion and Findings

Because the Respondent did not respond to the Complaint, the Panel first addresses the question of whether the Respondent has been given adequate notice of the proceeding. The evidence of record supports that the Center sent the Complaint by courier service to the South Dakota box address shown in the registration data, as required, and to a Georgia street address provided by the Complainant in the Complaint and that the package was in fact ultimately delivered in both instances to the Georgia address. The evidence also shows that the Center sent the Complaint in electronic form to the e-mail addresses required under paragraph 2(a)(ii) of the Rules but that this address proved invalid. The Panel thus concludes that the Center discharged its responsibility under the Rules to notify Respondent of the Complaint and the administrative proceeding.

Where the respondent does not respond to the complaint, the panel must decide the dispute based upon the complaint. Rules, paragraphs 5(e) and 14(a). The panel is to decide the complaint on the basis of the statements and documents submitted, in accordance with the Policy, the Rules and any principles of law the panel deems applicable. Rules, paragraph 15(a). Under paragraph 14(b) of the Rules, Respondent’s failure to answer entitles the panel to “draw such inferences therefrom as it considers appropriate.”

Under paragraph 4(a) of the Policy, Complainant must prove each of the following three elements of its case in order to obtain the requested relief:

(i) Respondent’s Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) Respondent’s Domain Name has been registered and is being used in bad faith.

The Panel considers each element in order.

A. Identical or Confusingly Similar

The Complainant has established that it has rights in the trademark TRACFONE. The Complainant obtained registrations of the mark in 1997 and 2003, and the evidence supports continuing use of the mark since 1996.

The domain name at issue is not identical to the Complainant’s mark, but it is confusingly similar. The Respondent’s domain name incorporates the Complainant’s trademark in its entirety, with the same spelling, then adds the geographically descriptive letters “usa”, which in fact describe the principal location of the Complainant’s business. “The intentional registration of a domain name knowing that the second level domain is another company’s valuable trademark weighs in favor of likelihood of confusion.” Brookfield Communications, Inc. v. West Coast Entertainment Corp., 174 F.3d 1036, 1059 (9^th Cir. 1999).

The addition of the geographic descriptor to the Complainant’s registered trademark does not negate the confusing similarity of the domain name and the Complainant’s mark. “Generally, a user of a mark 'may not avoid likely confusion by appropriating another's entire mark and adding descriptive or non-distinctive matter to it.” 3 J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition § 23:50 (4th ed. 1998). See General Electric Company v. CPIC NET and Hussain Syed, WIPO Case No. D2001-0087 (May 2, 2001).

The similarity of the domain name and the Complainant’s trademark are sufficient to create at the least initial interest confusion.

The Complainant has established the first element of its case.

B. Rights or Legitimate Interests

The Panel accepts Complainant’s supported contentions that Respondent has no affiliation with the Complainant and that the Complainant has not granted Respondent any license or consent, express or implied, to use the TRACFONE marks in a domain name or in any other manner. There is no evidence that Respondent has ever been known by the domain name. See, Marriott Int’l, Inc. v. Thomas, Burstein & Miller, WIPO Case No. D2000-0610 (September 14, 2000).

The Respondent has not answered the Complaint and thus has done nothing to establish that it has rights or legitimate interests in the name “Tracfone” or the disputed domain name. See Policy, paragraph 4(a)(ii). While the Panel might infer a lack of rights or legitimate interests from Respondent’s failure to come forward with a justification, there is also sufficient record evidence to establish that Respondent in all probability has none. See Wal-Mart Stores, Inc. v. Henry Chan, WIPO Case No. D2004-0056 (May 27, 2004).

There is evidence that Respondent is not in fact using the domain name in connection with a bona fide offering of goods or services. See Policy paragraph 4(c)(i). As described by the Complainant, and not contradicted by the Respondent, the Respondent is using the domain name in connection with a website through which it is offering the Complainant’s telephones for resale, without authorization, and obtaining minutes for those phones in apparent contravention of the Complainant’s standard service and user agreements. In the Panel’s view, the record is sufficient to show that the Respondent is not using the domain name in connection with a bona fide offering of goods or services.

The Panel concludes that Respondent has no rights or legitimate interests in the domain name at issue. The Complainant has established the second element of its case.

C. Registered and Used in Bad Faith

Under paragraph 4(b)(iv) of the Policy, there is evidence of registration and use of a domain name in bad faith where the Respondent has “intentionally attempted to attract, for commercial gain, Internet users to [its] website by creating a likelihood of confusion with complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [Respondent’s] website or location or of a product or service offered on [Respondent’s] website or location.”

As discussed above, there is confusing similarity between Complainant’s registered trademark and Respondent’s domain name. It is clear that Respondent in all likelihood intentionally created that confusion. Complainant used and registered its TRACFONE trademark some eight years before Respondent registered the domain name at issue. Respondent is thus on constructive notice of Complainant’s registered mark, see Microsoft Corporation v. Cupcake City, WIPO Case No. D2000-0818 (October 22, 2000).

The record evidence of Respondent’s intent is much more compelling than mere constructive notice. Complainant’s TRACFONE mark is an invented mark that has a strong recognition and reputation. There exists no relationship between Respondent and Complainant. Registration of a domain name that is confusingly similar to a famous trademark by any entity that has no relationship to that mark is itself sufficient evidence of bad faith registration and use. See Sporty’s Farm LLC. v. Sportsman’s Market. Inc., 202 F. 3d 489, 497-98 (2d. Cir. 2000); AT&T Corp. v. John Zuccarini d/b/a Music Wave and RaveClub Berlin, WIPO Case No. D2002-0440 (August 28, 2002); Veuve Clicquot Ponsardin. Maison Fondйe en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163 (May 1, 2000) (use of a name connected with such a well-known product by someone with no connection with the product suggests opportunistic bad faith). In addition, however, Respondent has reproduced and used on its website Complainant’s TRACFONE mark, its trade color and images of copyrighted phone cards and website material. Respondent has also created links to the Complainant’s website without permission from the Complainant. All of this exacerbates the potential for confusion even after the initial interest confusion and diversion and is further evidence of bad faith use of the domain name.

As for the element of commercial gain, there is a clear offer at Respondent’s site to sell TracFone products and telephone service. The Respondent is clearly trying to profit from whatever confusion it has created by using the Complainant’s trademark.

Thus, based on the evidence, the only reasonable inference to be drawn is that Respondent was fully aware of the Complainant’s TRACFONE trademark and intended to make use of it to attract Internet users to its own website, for commercial gain, by creating a likelihood of confusion with Complainant’s mark as to the source of the Tracfone products and service. See America Online, Inc. v. Anson Chan, WIPO Case No. D2001-0004 (February 22, 2001); State Fair of Texas v. Granbury.com, NAF Case No. FA0095288. Veuve Clicquot Ponsardin, Maison Fondйe en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163 (May 1, 2000).

The Panel concludes that Respondent both registered and is using the disputed domain name in bad faith within the meaning of paragraphs 4(a)(iii) and 4(b)(iv) of the Policy and that Complainant, therefore, has established the third and final necessary element of its case.

The Panel finds it unnecessary to its conclusion to consider further the Complainant’s final contention that the Respondent’s scheme evidences bad faith because it causes customers to violate terms of Complainant’s standard service and user agreements.

 

7. Decision

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

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John R. Keys, Jr.
Sole Panelist

Dated: January 18, 2007