Matchnet PLC v. Donald Hobbs
Claim Number: FA0305000159455
Complainant is
Matchnet PLC, Beverly Hills, CA (“Complainant”) represented by Victor T.
Fu, of Richardson & Patel LLP.
Respondent is Donald Hobbs, Deerfield Beach, FL (“Respondent”).
REGISTRAR AND DISPUTED
DOMAIN NAME
The domain name at issue
is <americansinglesgalore.com>, registered with Innerwise, Inc.
d/b/a Itsyourdomain.Com.
The undersigned
certifies that he or she has acted independently and impartially and to the
best of his or her knowledge has no known conflict in serving as Panelist in
this proceeding.
Honorable Paul A. Dorf
(Ret.) as Panelist.
Complainant submitted a
Complaint to the National Arbitration Forum (the "Forum")
electronically on May 28, 2003; the Forum received a hard copy of the Complaint
on May 30, 2003.
On May 28, 2003, Innerwise,
Inc. d/b/a Itsyourdomain.Com confirmed by e-mail to the Forum that the domain
name <americansinglesgalore.com> is registered with Innerwise,
Inc. d/b/a Itsyourdomain.Com and that Respondent is the current registrant of
the name. Innerwise, Inc. d/b/a Itsyourdomain.Com has verified that Respondent
is bound by the Innerwise, Inc. d/b/a Itsyourdomain.Com registration agreement
and has thereby agreed to resolve domain-name disputes brought by third parties
in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the
"Policy").
On June 2, 2003, a
Notification of Complaint and Commencement of Administrative Proceeding (the
"Commencement Notification"), setting a deadline of June 23, 2003 by
which Respondent could file a Response to the Complaint, was transmitted to
Respondent via e-mail, post and fax, to all entities and persons listed on
Respondent's registration as technical, administrative and billing contacts,
and to postmaster@americansinglesgalore.com by e-mail.
Having received no
Response from Respondent, using the same contact details and methods as were
used for the Commencement Notification, the Forum transmitted to the parties a
Notification of Respondent Default.
On June 30, 2002,
pursuant to Complainant's request to have the dispute decided by a
single-member Panel, the Forum appointed Honorable Paul A. Dorf (Ret.) as
Panelist.
Having reviewed the
communications records, the Administrative Panel (the "Panel") finds
that the 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." Therefore, the
Panel may issue its decision based on the documents submitted and in accordance
with the ICANN Policy, ICANN Rules, the 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 <americansinglesgalore.com>
domain name is confusingly similar to Complainant’s AMERICAN SINGLES mark.
2. Respondent does not have
any rights or legitimate interests in the <americansinglesgalore.com>
domain name.
3. Respondent registered
and used the <americansinglesgalore.com> domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Since June 1999,
Complainant has used the AMERICAN SINGLES mark in commerce. Complainant filed the mark with the U.S.
Patent and Trademark Office on August 26, 1999 and it was registered on August
20, 2002 (Reg. No. 2,608,475).
Complainant’s mark is used in connection with providing dating services
through an interactive website.
Complainant registered
the domain name <americansingles.com> on September 11, 2002. The domain name provides information and
access to the Complainant’s goods and services provided under the AMERICAN
SINGLES mark to current and potential customers. Complainant provides dating services at the
<americansingles.com> domain name, an interactive website.
Respondent registered
the disputed domain name on September 2, 2002.
Respondent is using the disputed domain name to redirect Internet users
to a website offering the online dating services of the “DatingTech Network.” The DatingTech Network operates an online
dating service that competes with Complainant.
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.
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 has
established that it has rights in the AMERICAN SINGLES mark through evidence of
Complainant’s registration of the mark with the U.S. Patent and Trademark
Office (Reg. No. 2,608,475 – registered Aug. 20, 2002). Complainant’s rights in the AMERICAN SINGLES
mark date back to the filing date with the U.S. Patent and Trademark Office,
i.e. August 26, 1999. See FDNY
Fire Safety Educ. Fund, Inc. v. Roger Miller, FA 145235 (Nat. Arb. Forum
March 26, 2003) (finding that Complainant’s rights in the FDNY mark relate back
to the date that its successful trademark registration was filed with the U.S.
Patent and Trademark Office); see also J.C. Hall Co. v. Hallmark
Cards, Inc., 340 F.2d 960, 144 U.S.P.Q. 435 (C.C.P.A. 1965) (registration
on the Principal Register is prima facie proof of continual use of the mark,
dating back to the filing date of the application for registration).
Respondent’s <americansinglesgalore.com>
domain name is confusingly similar to Complainant’s mark because it merely adds
the generic/descriptive word “galore” to the end of the AMERICAN SINGLES
mark. Furthermore, the fact that Complainant
and Respondent are competitors, weighs in favor of concluding that the disputed
domain name is confusingly similar to Complainant’s mark. See Arthur Guinness Son & Co.
(Dublin) Ltd. v. Healy/BOSTH,
D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain
name in dispute contains the identical mark of the Complainant combined with a
generic word or term); see also Vivid Video, Inc. v. Tennaro a/k/a Vivid
Revolution, FA 126646 (Nat. Arb. Forum Nov. 14, 2002) (finding that any
distinctiveness resulting from Respondent’s addition of a generic word to
Complainant’s mark in a domain name is less significant because Respondent and
Complainant operate in the same industry).
The Panel finds that
Policy ¶ 4(a)(i) has been satisfied.
Complainant urges that
Respondent has no rights to or legitimate interests in the disputed domain
name. Respondent did not provide the
Panel with a Response in this proceeding.
Thus, the Panel may accept all reasonable allegations and inferences in
the Complaint as true. See
Bayerische Motoren Werke AG v Bavarian AG, FA 110830 (Nat. Arb. Forum June
17, 2002) (finding that in the absence of a Response the Panel is free to make
inferences from the very failure to respond and assign greater weight to
certain circumstances than it might otherwise do); see also Desotec N.V. v.
Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to
respond allows a presumption that Complainant’s allegations are true unless
clearly contradicted by the evidence).
Moreover, due to
Respondent’s failure to dispute the allegations in the Complaint, the Panel may
presume that Respondent lacks any rights to or legitimate interests in the disputed
domain name pursuant to Policy ¶ 4(a)(ii).
See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221
(WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be
construed as an admission that they have no legitimate interest in the domain
names); see also Canadian Imperial Bank of Commerce v. D3M Virtual
Reality Inc., AF-0336 (eResolution Sept. 23, 2000) (finding no rights or
legitimate interests where no such right or interest was immediately apparent
to the Panel and Respondent did not come forward to suggest any right or
interest it may have possessed).
Furthermore, Respondent
is using the <americansinglesgalore.com> domain name to redirect
Internet traffic to a website offering online dating services provided by the
“DatingTech Network,” which markets services similar to Complainant’s
services. The use of a domain name that
is confusingly similar to Complainant’s mark in order to divert Internet users
interested in Complainant’s services to a competing website is not a use in
connection with a bona fide offering of goods or services pursuant to Policy ¶
4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶
4(c)(iii). See N. Coast Med., Inc.
v. Allegro Med., FA 95541 (Nat. Arb. Forum Oct. 2, 2000) (finding no bona
fide use where Respondent used the domain name to divert Internet users to its
competing website); see also Ticketmaster Corp. v. DiscoverNet, Inc.,
D2001-0252 (WIPO Apr. 9, 2001) (finding no rights or legitimate interests where
Respondent generated commercial gain by intentionally and misleadingly
diverting users away from Complainant's site to a competing website).
Finally, Respondent is
not affiliated with Complainant and the evidence fails to establish that
Respondent is authorized or licensed to register or use domain names or marks
containing the AMERICAN SINGLES mark.
The WHOIS information for the <americansinglesgalore.com>
domain name indicates Respondent, Donald Hobbs, as the registrant; however, it
fails to establish Respondent as an “individual, business, or other
organization” commonly known by the <americansinglesgalore.com> domain
name. Therefore, Respondent has no
rights or legitimate interests in the domain name pursuant to Policy ¶
4(c)(ii). See Compagnie de Saint
Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no
rights or legitimate interest where Respondent was not commonly known by the
mark and never applied for a license or permission from Complainant to use the
trademarked name); see also MRA Holding, LLC v. Costnet, FA
140454 (Nat. Arb. Forum Feb. 20, 2003) (noting that “the disputed domain name does not even correctly spell a cognizable phrase” in finding that
Respondent was not “commonly known by” the name GIRLS GON WILD or <girlsgonwild.com>).
Accordingly, the Panel
finds that Policy ¶ 4(a)(ii) has been established.
The fact that the domain
name redirects to a website that competes with Complainant is evidence of
Respondent’s knowledge of Complainant’s mark.
Registration of a domain name, despite knowledge of Complainant’s
rights, is evidence of a bad faith registration pursuant to Policy ¶ 4(a)(iii). See Entrepreneur Media, Inc. v.
Smith, 279 F.3d 1135, 1148 (9th Cir. Feb.
11, 2002) (finding that "[w]here an alleged infringer chooses a mark he
knows to be similar to another, one can infer an intent to confuse"); see
also Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum
Apr. 17, 2000) (finding that evidence of bad faith includes actual or
constructive knowledge of a commonly known mark at the time of registration).
In addition, Respondent
has registered a domain name primarily for the purpose of disrupting the
business of their competitor, i.e. Complainant. Both parties provide dating services via the Internet. Respondent’s <americansinglesgalore.com>
domain name includes the AMERICAN SINGLES mark in order to divert current and
potential MatchNet PLC, customers to Respondent’s website. The use of a competitor’s mark within a
domain name, with the purpose of diverting customers to competing websites,
constitutes disruption of a competitor’s business. This practice has been recognized as bad faith pursuant to Policy
¶ 4(b)(iii). See Surface Protection
Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that,
given the competitive relationship between Complainant and Respondent,
Respondent likely registered the contested domain name with the intent to
disrupt Complainant's business and create user confusion); see also Lubbock
Radio Paging v. Venture Tele-Messaging, FA 96102 (Nat. Arb. Forum Dec. 23,
2000) (concluding that domain names were registered and used in bad faith where
Respondent and Complainant were in the same line of business in the same market
area).
Furthermore, Respondent
has attempted to capitalize on the goodwill surrounding Complainant’s AMERICAN
SINGLES mark by using the mark within Respondent’s domain name. Through this practice, Respondent has
attempted to attract, for commercial gain, Complainant’s customers by creating
a likelihood of confusion with Complainant’s mark and diverting them to
Respondent’s website. This practice has
been recognized as an act of bad faith under the UDRP pursuant to Policy ¶
4(b)(iv). See Kmart v. Kahn, FA
127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if Respondent profits from
its diversionary use of Complainant's mark when the domain name resolves to
commercial websites and Respondent fails to contest the Complaint, it may be
concluded that Respondent is using the domain name in bad faith pursuant to
Policy ¶ 4(b)(iv)); see also Drs. Foster & Smith, Inc. v. Lalli,
FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where Respondent
directed Internet users seeking Complainant’s site to its own website for
commercial gain).
The Panel finds the
Policy ¶ 4(a)(iii) has been satisfied.
Having established all
three elements required under ICANN Policy, the Panel concludes that relief
shall be GRANTED.
Accordingly, it is
Ordered that the <americansinglesgalore.com> domain name be TRANSFERRED
from Respondent to Complainant.
Honorable Paul A. Dorf
(Ret.) Panelist
Dated: July 14, 2003
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