Romantic Tours, Inc. v. Alex Borisov
Claim Number: FA1308001517279
Complainant is Romantic Tours, Inc. (“Complainant”), represented by Joseph J. Weissman of Johnson, Pope, Bokor, Ruppel & Burns, LLP, Florida, USA. Respondent is Alex Borisov (“Respondent”), Argentina.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <1russianhotbrides.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.
Ho Hyun Nahm as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 29, 2013; the National Arbitration Forum received payment on August 29, 2013.
On September 3, 2013, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <1russianhotbrides.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 September 10, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 30, 2013 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@1russianhotbrides.com. Also on September 10, 2013, 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 October 2, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Ho Hyun Nahm 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 issues 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
1. Complainant Romantic Tours, Inc. is a Florida corporation whose business purpose is introducing men to women from countries of the former Soviet Union for dating and possible marriage.
2. Complainant uses the HOT RUSSIAN BRIDES trademark to promote its business, and operates its business at the <hotrussianbrides.com> website. Complainant works with over 150 Russian and Ukrainian placement agencies to facilitate matchmaking, and has served over 165,000 customers since May of 2004.
3. Complainant registered its domain name on August 25, 2003, and has a trademark registration for the HOT RUSSIAN BRIDES mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,159,522 registered October 17, 2006). See Complainant’s Exhibit, Tab 1.
4. Respondent registered the <1russianhotbrides.com> domain name on December 17, 2012; nine years after Complainant first began using the HOT RUSSIAN BRIDES mark.
5. Respondent uses the domain name to compete directly with Complainant by seeking to introduce men to women from countries of the former Soviet Union, and a link titled “Hot Russian Brides” appears at the website resolving from the disputed domain name.
6. The <1russianhotbrides.com> domain name is confusingly similar to Complainant’s HOT RUSSIAN BRIDES mark, as the domain name interpolates the words in Complainant’s mark, and adds the numeral “1.”
7. Respondent has no rights or legitimate interests in the <1russianhotbrides.com> domain name, and has never been licensed by Complainant to use the mark.
8. The domain name redirects users away from their intended web destination, which does not constitute a bona fide offering of goods or services or a legitimate use. Respondent registered and maintains the <1russianhotbrides.com> domain name in bad faith from improper commercial gain, by offering services that compete directly with those of Complainant, and providing links to additional competing services. Respondent likely receives click-through fees for each visitor that clicks on a competitor’s link listed on the website. Respondent was clearly aware of Complainant when Respondent registered the subject domain name, as the website specifically mentions Complainant’s own domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding. Respondent registered the <1russianhotbrides.com> domain name on December 17, 2012.
Complainant established that it had rights in the mark contained in the disputed domain name.
Respondent has no rights to or legitimate interests in the disputed domain name.
The disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent registered and used the disputed domain name in bad faith.
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."
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.
In view of Respondent's failure to submit a response, the Panel decides 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.”).
Complainant claims that its rights in the HOT RUSSIAN BRIDES mark are valid as a result of its United States trademark registration with the USPTO (Reg. No. 3,159,522 registered October 17, 2006). Previous panels have maintained that a USPTO registration secures a complainant’s rights in a claimed mark under the Policy. See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive [or] have acquired secondary meaning.”). The Panel likewise finds that Complainant’s rights in the HOT RUSSIAN BRIDES mark are established for the purposes of Policy ¶ 4(a)(i). The Panel observes that Respondent appears to reside in Argentina; however, based on findings from previous UDRP decisions, the Panel concludes that Complainant’s rights in the HOT RUSSIAN BRIDES mark due to its USPTO registration transcends national borders. See KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of Policy ¶ 4(a)(i) whether the complainant’s mark is registered in a country other than that of the respondent’s place of business).
Complainant alleges that the <1russianhotbrides.com> domain name is confusingly similar to Complainant’s HOT RUSSIAN BRIDES mark, arguing that the domain name consists of Complainant’s mark with the words “hot” and “Russian” interpolated. The Panel finds that inverting the words of a mark within a domain name nonetheless results in confusing similarity between the mark and the domain. See Playboy Enters. v. Movie Name Co., D2001-1201 (WIPO Feb. 26, 2002) (finding the domain name <channelplayboy.com> confusingly similar to the mark THE PLAYBOY CHANNEL). Complainant further contends that Respondent adds the numeral “1,” claiming that the addition has no significance to the domain name. The Panel also concludes that adding a number to a mark does not defeat a finding of confusing similarity. See Am. Online, Inc. v. garybush co uk, FA 360612 (Nat. Arb. Forum Dec. 22, 2004) (“Respondent’s domain name is confusingly similar to Complainant’s AOL mark because the disputed domain name incorporates the mark with the mere addition of the non-distinctive number ‘0.’ The addition of the number ‘0’ is insufficient to distinguish the domain name from Complainant’s mark.”). The Panel observes that the domain name omits the spaces within the mark, and includes the generic top-level domain (“gTLD”) “.com,” which the Panel finds does not add any distinguishing characteristics to the domain name for the purposes of Policy ¶ 4(a)(1). See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)). The Panel finds that for the foregoing reasons, the <1russianhotbrides.com> domain name is confusingly similar to Complainant’s HOT RUSSIAN BRIDES mark under Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant argues that Respondent owns no intellectual property rights in any mark resembling the <1russianhotbrides.com> domain name, and has not been licensed by Complainant to use the mark. The Panel takes note that the WHOIS information associated with the disputed domain name indicates that “Alex Borisov” is the registrant, which the Panel finds does not indicate a relationship with the disputed domain name. The Panel thus concludes that, as a result of the WHOIS information and Complainant’s claim that Respondent lacks authority to register a domain name incorporating the HOT RUSSIAN BRIDES mark, Respondent cannot be considered commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Complainant contends that Respondent diverts users to a website dedicated to offering services that compete with those of Complainant. Complainant argues that such use constitutes abuse and infringement upon the HOT RUSSIAN BRIDES trademark and is indicative of Respondent’s illegitimate interests. Complainant also contends that Respondent hosts hyperlinks that divert Internet users to other competing websites. The Panel determines that Respondent’s activity undermines any claim by Respondent that it uses the <1russianhotbrides.com> domain name to make a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name under Policy ¶¶ 4(c)(i) or 4(c)(iii). See United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007) (“The disputed domain name, <usaa-insurance.net>, currently resolves to a website displaying Complainant’s marks and contains links to Complainant’s competitors. The Panel finds this to be neither a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii).”); see also Ultimate Elecs., Inc. v. Nichols, FA 195683 (Nat. Arb. Forum Oct. 27, 2003) (finding that the respondent's “use of the domain name (and Complainant’s mark) to sell products in competition with Complainant demonstrates neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the name”).
Complainant argues that Respondent registered the <1russianhotbrides.com> domain name in bad faith for improper commercial gain. Complainant specifies that the resolving website displays text under the heading “About Our Services,” stating “over 200 single Russian women register with us every week,” and Respondent claims that its “international online dating portal offers up exceptional value for the single guy looking to connect with Russian and Ukrainian girls.” Complainant further alleges that Respondent is likely to collect click-through fees for each time a visitor clicks on a competitor’s link at the resolving website. The panel in Dell Inc. v. Innervision Web Solutions, FA 445601 (Nat. Arb. Forum May 23, 2005), held that the respondent used the disputed domain name in bad faith by diverting Internet users to its own website and offering competing products. Similarly, in Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006), the panel concluded that the responded engaged in bad faith registration and use by using a domain name confusingly similar to the complainant’s mark to offer links to third-party websites tendering similar services as those offered by the complainant. The Panel likewise concludes that Respondent’s bad faith registration and use under Policy ¶ 4(b)(iv) is shown by its use of the disputed domain name to offer consumers both competing services, and hyperlinks to entities offering competing services at the resolving website.
Finally, Complainant argues that Respondent was clearly aware of Complainant at the time Respondent registered the subject domain name in December of 2012. Complainant supports its contention by evidence of its trademark registration and domain name registration. The Panel finds that Complainant’s registrations serve as constructive notice to Respondent of Complainant’s rights in the HOT RUSSIAN BRIDES mark; however, the Panel notes that constructive notice does not satisfy the Policy for a finding of bad faith. See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Nat. Arb. Forum Apr. 8, 2008) ("There is no place for constructive notice under the Policy."). The Panel finds that Respondent’s awareness is demonstrated by its specific mention of Complainant’s own domain name at Respondent’s site, and thus concludes that Respondent registered the <1russianhotbrides.com> domain name in bad faith under Policy ¶ 4(a)(iii). See Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between the complainant's mark and the content advertised on the respondent's website was obvious, the respondent "must have known about the Complainant's mark when it registered the subject domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief is GRANTED.
Accordingly, it is Ordered that the <1russianhotbrides.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Panelist
Dated: October 6, 2013
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