PlentyOfFish Media, Inc. v. Schramm / Ern Schramm
Claim Number: FA1108001402585
Complainant is PlentyOfFish Media, Inc. (“Complainant”), represented by Kevin Costanza of Seed Intellectual Property Law Group PLLC, Washington, USA. Respondent is Schramm / Ern Schramm (“Respondent”), Washington, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <plentyofhornyfish.com>, registered with ENOM, INC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 10, 2011; the National Arbitration Forum received payment on August 11, 2011.
On August 10, 2011, ENOM, INC. confirmed by e-mail to the National Arbitration Forum that the <plentyofhornyfish.com> domain name is registered with ENOM, INC. and that Respondent is the current registrant of the name. ENOM, INC. has verified that Respondent is bound by the ENOM, INC. registration agreement and has thereby agreed to resolve domain disputes brought by third-parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On August 15, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 6, 2011 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@plentyofhornyfish.com. Also on August 15, 2011, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 9, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <plentyofhornyfish.com> domain name is confusingly similar to Complainant’s PLENTYOFFISH mark.
2. Respondent does not have any rights or legitimate interests in the <plentyofhornyfish.com> domain name.
3. Respondent registered and used the <plentyofhornyfish.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, PlentyOfFish Media, Inc., provides online dating and social networking services under its PLENTYOFFISH mark. Complainant has registered its PLENTYOFFISH mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,251,639 registered June 12, 2007).
Respondent, Schramm / Ern Schramm, registered the <plentyofhornyfish.com> domain name on June 17, 2011. The disputed domain name resolves to a website containing adult-oriented content.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) 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.
Complainant provides evidence of its trademark registrations with the USPTO for its PLENTYOFFISH mark (e.g., Reg. No. 3,251,639 registered June 12, 2007). Past panels have found that a USPTO trademark registration is sufficient to demonstrate rights for the purpose of Policy ¶ 4(a)(i). See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”); see also Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO). In accordance with this precedent, the Panel determines that Complainant has established rights in its PLENTYOFFISH mark pursuant to Policy ¶ 4(a)(i).
Complainant claims that Respondent’s <plentyofhornyfish.com> domain name is confusingly similar to Complainant’s PLENTYOFFISH mark. The only difference between the two is Respondent’s addition of the generic term “horny” and the generic top-level domain (“gTLD”) “.com.” Previous panels have held that the addition of a generic term or a gTLD does not sufficiently distinguish a disputed domain name from a complainant’s mark under Policy ¶ 4(a)(i). See Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the subject domain name incorporates the VIAGRA mark in its entirety, and deviates only by the addition of the word “bomb,” the domain name is rendered confusingly similar to the complainant’s mark); see also Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been established that the addition of a generic top-level domain is irrelevant when considering whether a domain name is identical or confusingly similar under the Policy.”). Consequently, the Panel concludes that Respondent’s <plentyofhornyfish.com> domain name is confusingly similar to Complainant’s PLENTYOFFISH mark according to Policy ¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Complainant contends that Respondent “should be considered as having no rights or legitimate interests in respect of the domain name that is subject to the present complaint.” Previous panels have held that the burden shifts to the respondent to prove it does have rights or legitimate interests when the complainant makes a prima facie case in support of its allegations under Policy ¶ 4(a)(ii). See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”). The Panel finds Complainant made a sufficient prima facie case. Past panels have also held that a respondent’s failure to respond to the Complaint allows the Panel to infer that a respondent does not have rights or legitimate interests in a disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence). However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).
Complainant contends that Respondent is not commonly known by the <plentyofhornyfish.com> domain name. Complainant asserts that Complainant has not licensed or permitted Respondent to use Complainant’s PLENTYOFFISH mark. The WHOIS information identifies the domain name registrant as “Schramm / Ern Schramm,” which the Panel finds is not similar to the <plentyofhornyfish.com> domain name. Respondent has not contradicted any of Complainant’s arguments and, by failing to respond, has not presented any affirmative evidence that it is commonly known by the disputed domain name. Prior panels have found that a respondent is not commonly known by a disputed domain name if the complainant has not authorized the use of the complainant’s mark, the WHOIS information is not similar to the disputed domain name, and the respondent has failed to present any supporting evidence in the record. See Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Nat. Arb. Forum Apr. 18, 2007) (concluding that the respondent was not commonly known by the <thirteen.com> domain name based on all evidence in the record, and the respondent did not counter this argument in its response); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name). Based on this precedent, the Panel holds that Respondent is not commonly known by the <plentyofhornyfish.com> domain name pursuant to Policy ¶ 4(c)(ii).
Complainant alleges that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the <plentyofhornyfish.com> domain name. According to Complainant and the screen shots of the resolving website that Complainant provides, the <plentyofhornyfish.com> domain name resolves to a website that features adult-oriented content. Past panels have determined that such a use is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Isleworth Land Co. v. Lost In Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (finding that the respondent’s use of its domain name to link unsuspecting Internet traffic to an adult orientated website, containing images of scantily clad women in provocative poses, did not constitute a connection with a bona fide offering of goods or services or a noncommercial or fair use); see also Paws, Inc. v. Zuccarini, FA 125368 (Nat. Arb. Forum Nov. 15, 2002) (holding that the use of a domain name that is confusingly similar to an established mark to divert Internet users to an adult-oriented website “tarnishes Complainant’s mark and does not evidence noncommercial or fair use of the domain name by a respondent”). This Panel agrees with the decisions of the past panels and concludes that Respondent is not making a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the <plentyofhornyfish.com> domain name under Policy ¶ 4(c)(iii).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
As noted above, Respondent registered and uses the <plentyofhornyfish.com> domain name to operate an adult-oriented website. Complainant claims, and the Panel presumes, that Respondent is financially benefiting from the its use of the disputed domain name. Complainant argues that Internet users searching for Complainant’s online dating and social networking services may become confused as to Complainant’s affiliation with Respondent and the disputed domain name. Prior panels have found that a respondent’s attempt to profit by creating confusion as to a complainant’s affiliation with a disputed domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); see also DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”). Thus, the Panel finds that Respondent’s registration and use of the <plentyofhornyfish.com> domain name was, and is, in bad faith under Policy ¶ 4(b)(iv).
While Complainant does not make a general argument under Policy ¶ 4(a)(iii), past panels have maintained that a respondent’s registration and use of a confusingly similar disputed domain for the purpose of providing adult-oriented content is evidence of bad faith by itself under Policy ¶ 4(a)(iii). See Wells Fargo & Co. v. Party Night Inc., FA 144647 (Nat. Arb. Forum Mar. 18, 2003) (finding that the respondent’s tarnishing use of the disputed domain names to redirect Internet users to adult-oriented websites was evidence that the domain names were being used in bad faith); see also Six Continents Hotels, Inc. v. Nowak, D2003-0022 (WIPO Mar. 4, 2003) (finding that the respondent registered the <holidayinnakron.com> domain name and linked it to an adult-oriented website. The panel stated, “[W]hatever the motivation of Respondent, the diversion of the domain names to [an adult-oriented] site is itself certainly consistent with the finding that the Domain Name was registered and is being used in bad faith”). Therefore, the Panel holds that Respondent registered and uses the <plentyofhornyfish.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii).
The Panel finds Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <plentyofhornyfish.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: September 12, 2011
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