Zoosk, Inc. v. James Lee
Claim Number: FA1505001618565
Complainant is Zoosk, Inc. (“Complainant”), represented by Patchen M. Haggerty of Perkins Coie LLP, Washington, USA. Respondent is James Lee (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <zooskdating.net> and <zoosk-dating.net>, registered with GoDaddy.com, LLC.
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.
Hon. Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 8, 2015; the Forum received payment on May 11, 2015.
On May 11, 2015, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <zooskdating.net> and <zoosk-dating.net> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 May 13, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 2, 2015 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@zooskdating.net, postmaster@zoosk-dating.net. Also on May 13, 2015, 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 Forum transmitted to the parties a Notification of Respondent Default.
On June 5, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (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" 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 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 names be transferred from Respondent to Complainant.
Complainant
Complainant owns the ZOOSK mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,476,277, registered July 29, 2008). Complainant uses the ZOOSK mark in connection with its online social networking services. The <zooskdating.net> and <zoosk-dating.net> domain names are confusingly similar to Complainant’s ZOOSK mark. The <zooskdating.net> domain name incorporates Complainant’s mark in full, adds the generic term “dating,” and adds the generic top-level domain (“gTLD”) “.net.” The <zoosk-dating.net> domain name incorporates Complainant’s mark in full, inserts a hyphen, adds the generic term “dating,” and adds the gTLD “.net.”
Respondent has no rights or legitimate interests in the disputed domain names. Respondent is not commonly known by the disputed domain names. The WHOIS record for the disputed domain names does not reflect that Respondent is commonly known by the disputed domain names. Complainant has neither authorized nor licensed Respondent to use its ZOOSK mark. Respondent lacks rights or legitimate interests in the <zooskdating.net> and <zoosk-dating.net> domain names, as evidenced by Respondent’s failure to use the disputed domain names in connection with a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. Respondent’s disputed domain names resolve to websites that offer competing services. The <zoosk-dating.net> domain name currently features third-party hyperlinks.
Respondent has engaged in bad faith registration and use of the <zooskdating.net> and <zoosk-dating.net> domain names. Respondent is a serial domain name opportunist and has a prior UDRP decision that resulted in a finding of bad faith and transfer. Respondent’s use of the disputed domain names disrupts Complainant’s business by diverting Internet customers seeking Complainant’s website to its own website which offers competing services. Further, for commercial gain, Respondent intentionally attracts Internet users to its websites by creating a likelihood of confusion with Complainant’s mark. Respondent registered the disputed domain names with knowledge of Complainant’s rights in the ZOOSK mark, which is additional evidence of bad faith under Policy ¶ 4(a)(iii).
Respondent
Respondent did not submit a Response in this proceeding.
For the reasons set forth below, the Panel finds Complainant is entitled to the relief requested.
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 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.”).
Complainant states that it owns the ZOOSK mark through its registration with the USPTO (e.g., Reg. No. 3,476,277, registered July 29, 2008). Complainant asserts that it uses the ZOOSK mark in connection with its online social networking services. Panels have concluded that registration of a mark with a trademark authority is sufficient to establish rights in the mark pursuant to Policy ¶ 4(a)(i). See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.”). Therefore, the Panel finds that Complainant’s USPTO registration is sufficient to establish its rights in the ZOOSK mark under Policy ¶ 4(a)(i).
Complainant claims that the <zooskdating.net> and <zoosk-dating.net> domain names are confusingly similar to Complainant’s ZOOSK mark. The <zooskdating.net> domain name incorporates Complainant’s mark in full, adds the generic term “dating,” and adds the gTLD “.net.” The <zoosk-dating.net> domain name incorporates Complainant’s mark in full, inserts a hyphen, adds the generic term “dating,” and adds the gTLD “.net.” Panels have found that the addition of a generic word and the incorporation of a gTLD are not sufficient to distinguish a disputed domain name from a complainant’s mark under Policy ¶ 4(a)(i). See Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark); see also Katadyn N. Am. v. Black Mountain Stores, FA 520677 (Nat. Arb. Forum Sept. 7, 2005) (“[T]he addition of the generic top-level domain (gTLD) “.net” is irrelevant for purposes of determining whether a domain name is identical to a mark.”). Panels have also held that the addition of a hyphen does not serve to adequately distinguish a disputed domain name from a registered mark. See Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”). Therefore, the Panel finds that the disputed domain names are confusingly similar to Complainant’s ZOOSK mark pursuant to Policy ¶ 4(a)(i).
Complainant has proved this element.
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 alleges that Respondent has no rights or legitimate interests in the disputed domain names. Complainant claims that Respondent is not commonly known by the disputed domain names, as the WHOIS record for the disputed domain names does not reflect that Respondent is commonly known by the disputed domain names. The WHOIS information for the disputed domain names lists “James Lee” as the registrant of record. Complainant further states that it has neither authorized nor licensed Respondent to use its ZOOSK mark. As there is no evidence from Respondent to refute Complainant’s claims, the Panel finds that these contentions are sufficient to establish Respondent’s lack of rights in the disputed domain names 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 argues that Respondent lacks rights or legitimate interests in the <zooskdating.net> and <zoosk-dating.net> domain names, as evidenced by Respondent’s failure to use the disputed domain names in connection with a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. Complainant states that Respondent’s disputed domain names resolve to websites that offer competing services. Panels have found that disputed domain names that offer services that compete with a complainant are not being used for a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Alcon, Inc. v. ARanked, FA 1306493 (Nat. Arb. Forum Mar. 18, 2010) (“The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). Complainant reports that Respondent currently uses the <zoosk-dating.net> domain name to feature various third-party hyperlinks. Panels have routinely held that the use of a disputed domain name to feature competing hyperlinks is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use. See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (holding that the respondent had not demonstrated a bona fide offering of goods or services or a legitimate noncommercial or fair use when “the website resolving from the disputed domain name displays links to travel products and services, which directly compete with Complainant’s business”). The Panel concludes that Respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i), and that, as Respondent here presumably attempts to financially benefit through consumer confusion, there can logically be no “noncommercial or fair use” pursuant to Policy ¶ 4(c)(iii).
Complainant has proved this element.
Complainant alleges that Respondent is a serial domain name opportunist and has a prior UDRP decision that resulted in a finding of bad faith or transfer under Policy ¶ 4(b)(ii). Complainant has provided evidence of the UDRP decision against Respondent in its exhibits. See Plentyoffish Media Inc. v. James Lee, FA 1583748 (Nat. Arb. Forum Nov. 20, 2014). Panels have found a pattern of bad faith registration where a Respondent has a prior adverse UDRP decision against it. See Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants). Although Complainant has only provided evidence of one such adverse decision, the instant proceeding involves two domain names registered by Respondent. Past panels have found sufficient evidence of a pattern of bad faith registration where there was more than one disputed domain name in the current proceeding. See YAHOO! INC v. Syrynx, Inc., D2000-1675 (WIPO Jan. 30, 2001) (finding a bad faith pattern pursuant to Policy ¶ 4(b)(ii) in the respondent's registration of two domain names incorporating the complainant's YAHOO! mark). Therefore, the Panel finds that Respondent has engaged in bad faith registration pursuant to Policy ¶ 4(b)(ii).
Complainant claims that Respondent’s use of the disputed domain names disrupts Complainant’s business by diverting Internet customers seeking Complainant’s website. Complainant argues that Respondent’s offering of competing services through the disputed domain names disrupts Complainant’s business. Past panels have found that offering competing services through a confusingly similar domain name amounts to a disruption in violation of Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”). The Panel concludes that Respondent has engaged in bad faith registration and use under Policy ¶ 4(b)(iii).
Complainant claims that, for commercial gain, Respondent intentionally attracts Internet users to its websites by creating a likelihood of confusion with Complainant’s mark. Complainant states that Respondent is using the disputed domain names to offer competing services for financial gain. Complainant states that the <zoosk-dating.net> domain name features competing hyperlinks, whereby Respondent presumably generates click-through fees. Panels have found that such uses of a disputed domain name constitute bad faith pursuant to Policy ¶ 4(b)(iv). See MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark); see also AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and took advantage of Internet user mistakes). Thus, the Panel finds that Respondent has engaged in bad faith use under Policy ¶ 4(b)(iv).
Complainant argues that Respondent registered the disputed domain names with knowledge of Complainant’s rights in the ZOOSK mark, which is additional evidence of bad faith under Policy ¶ 4(a)(iii). Complainant argues that Respondent must have known of Complainant’s existence, in light of the fame and notoriety of the ZOOSK mark. Although panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, the Panel finds that Respondent had actual knowledge of Complainant's mark and rights and therefore determines that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
Complainant has proved this element.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <zooskdating.net> and <zoosk-dating.net> domain name be TRANSFERRED from Respondent to Complainant.
__________________________________________________________________
Hon. Karl V. Fink (Ret.), Panelist
Dated: June 8, 2015
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