Spark Networks PLC v. Sean Houlihan
Claim Number: FA0603000653476
PARTIES
Complainant is Spark Networks PLC (“Complainant”), represented by Victor T. Fu of Richardson & Patel LLP, 10900 Wilshire Boulevard, Suite 500, Los Angeles, CA, 90024. Respondent is Sean Houlihan (“Respondent”), represented by Mark C. Del Bianco, 3929 Washington St., Kensington, MD, 20895.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hotamericansingles.com>,
registered with Go Daddy Software, Inc.
PANEL
The undersigned certifies that she has acted independently and
impartially and that to the best of her knowledge she has no known conflict in
serving as Panelist in this proceeding.
Hon. Carolyn Marks Johnson sits as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically March 6, 2006; the National Arbitration Forum received a hard
copy of the Complaint March 6, 2006.
On March 6, 2006, Go Daddy Software, Inc. confirmed by e-mail to the
National Arbitration Forum that the <hotamericansingles.com>
domain name is registered with Go Daddy Software, Inc. and that the Respondent
is the current registrant of the name. Go
Daddy Software, Inc. verified that Respondent is bound by the Go Daddy
Software, Inc. registration agreement and thereby has agreed to resolve
domain-name disputes brought by third parties in accordance with ICANN’s
Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On March 9, 2006, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of March 29, 2006, 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@hotamericansingles.com by e-mail.
A timely Response was received and determined to be complete March 29,
2006.
A timely Additional Submission was received and determined to be
complete March 31, 2006.
On April 4, 2006, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Hon. Carolyn Marks Johnson as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant makes the following allegations
in this proceeding:
1.
Respondent
knowingly registered a domain name that is identical to or confusingly similar
to a mark in which Complainant has protected rights.
2.
Respondent has
no rights or legitimate interests with respect to the domain name.
3.
Respondent
acted in bad faith in knowingly registering and using a domain name that is confusingly
similar or identical to Complainant’s protected mark.
B. Respondent makes the following contentions in
response:
1.
The mark in
issue is “a generic term” and describes the target customer in the online
dating business.
2.
Respondent does
have rights to and legitimate interests in the disputed domain name.
3.
Respondent
registered and is using the domain name in good faith.
C. Complainant makes the following reply in its
Additional Submission:
1.
Contrary to
Respondent’s assertions, Complainant established its legal rights in the
AMERICAN SINGLES mark and its multi-million dollar business operation under
that mark.
2.
Respondent has
not shown legitimate rights.
3.
Respondent is
using the disputed domain name to redirect Internet users seeking Complainant’s
services to Respondent’s sites and this constitutes bad faith.
FINDINGS
Complainant, a London-based
international company, established rights in the AMERICAN SINGLES mark by
registering the mark with the United States Patent and Trademark Office
(“USPTO”) (Reg. No. 2,608,475 issued
August 20, 2002). Complainant engages
in the commercial operation of online dating services throughout the world.
Complainant has operated under the protected mark AMERICAN SINGLES in the
commercial area of online dating since June of 1999 in England, the United
States, Germany and Israel. Although
previously known as MatchNetplc, Complainant made a formal name change January
10, 2005. Complainant has spent several
millions of dollars in promoting its mark.
AMERICAN SINGLES is one of the top three dating services, according to
comScore Media Metrix.
Respondent registered the <hotAmericanSingles.com” domain name June
30, 2004. Respondent concedes that it’s
“legitimate use of the disputed domain name” started in 2004, two years after
Complainant acquired rights in the combined phrase AMERICAN SINGLES as a mark.
Respondent’s home page mimics Complainant’s home page.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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 Complainant to 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 the Respondent is identical or confusingly similar to a trademark
or service mark in which the Complainant has rights;
(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 established with
extrinsic proof in this proceeding that it has legal rights in the AMERICAN
SINGLES mark by registering the mark with the United States Patent and
Trademark Office (“USPTO”) (Reg. No.
2,608,475 issued August 20, 2002) in association with its online dating
services. See Vivendi
Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11,
2003) (“Complainant's federal trademark registrations establish Complainant's
rights in the BLIZZARD mark.”); see also Innomed
Techs., Inc. v. DRP Servs., FA 221171
(Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the
USPTO establishes Complainant's rights in the mark.”); see also U.S. Office
of Pers. Mgmt. v. MS Tech. Inc., FA 198898 (Nat. Arb. Forum Dec. 9, 2003)
(“[O]nce the USPTO has made a determination that a mark is registrable, by so
issuing a registration, as indeed was the case here, an ICANN panel is not
empowered to nor should it disturb that determination.”).
Complainant further asserts that
the domain name that Respondent registered, <hotamericansingles.com>,
is confusingly similar to Complainant’s AMERICAN SINGLES mark under Policy ¶
4(a)(i), because the domain name contains Complainant’s entire mark and simply
adds a generic term, “hot.”
Complainant, formerly known as Matchnet PLC, also provides evidence of
two Policy decisions where the Panel found domain names that added generic
terms to its AMERICAN SINGLES mark confusingly similar. See
Matchnet PLC v. Donald Hobbs, FA 159455 (Nat. Arb. Forum Jul. 14, 2003) (finding
<americansinglesgalore.com> domain name confusingly similar to the
AMERICAN SINGLES mark); see also Matchnet PLC v. PMC, FA 159457 (Nat.
Arb. Forum Jul. 15, 2003) (holding that the
<americansinglesconnection.com> domain name was confusingly similar to
Complainant’s AMERICAN SINGLES mark).
The Panel finds that Respondent’s addition of the term “hot” in the disputed domain name does not negate a finding of confusing similarity under Policy ¶ 4(a)(i). 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 Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied).
Respondent argues that in spite of Complainant’s registration of the AMERICAN SINGLES mark with the USPTO, the phrase “American singles” is common in the U.S. online dating business, because the term describes the target customer for the online dating business as well as what a customer would expect to find at an online dating website. Upon a Google search of the terms “American singles,” Respondent claims it found over 1.6 million uses of the phrase, mostly in connection with online dating services. Respondent also provides evidence of a prior Policy decision, Matchnet PLC v. Josh Joffe, FA 159456 (Nat. Arb. Forum Aug. 4, 2003), where the panel found the <americasingle.com> domain name to be sufficiently generic and not confusingly similar to Complainant’s mark. Therefore, Respondent asserts, Complainant cannot deny others in the online dating business the right to register domain names adding generic terms to the AMERICAN SINGLES mark and using the phrase in its generic sense.
Given the facts of this case and
the many other options available to Respondent to conduct its business in a
name other than the combined phrase AMERICAN SINGLES, for which Complainant
holds a trademark registration, this Panel declines to follow the minority view
that Complainant’s AMERICAN SINGLES mark is sufficiently generic so as to give
Respondent the right to use the terms in its <hotamericansingles.com>
domain name as Respondent urges.
Complainant
satisfied the requirements of ICANN Policy ¶ 4(a)(i).
Complainant must first make a prima facie case establishing that it has rights to and legitimate interests in a domain name that is contained in an identical or confusingly similar domain name registrations. Further Complainant must make a prima facie case that Respondent has no such rights to and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). Once Complainant makes this showing, the burden shifts to Respondent to show it does have rights or legitimate interests. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where Complainant asserts that Respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on Respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”).
Complainant argues that Respondent is not commonly known by the <hotamericansingles.com> domain name, because the WHOIS information lists the registrant of the domain name as “Sean Houlihan,” and that no other evidence in the record indicates that Respondent is commonly known by the disputed domain name. Complainant also asserts that it has not authorized or licensed Respondent to register or use a domain name incorporating Complainant’s AMERICAN SINGLES mark.
The Panel agrees that Respondent
has not shown that he is commonly known by the disputed domain name and the
Panel finds that Respondent has brought no other evidence of rights to or
legitimate interests in a domain name that contains in its entirety
Complainant’s protected mark, pursuant to Policy ¶ 4(c)(ii). See Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb.
5, 2001) (finding no rights or legitimate interests because the respondent is
not commonly known by the disputed domain name or using the domain name in
connection with a legitimate or fair use); see also Wells
Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the
WHOIS contact information for the disputed domain [name], one can infer that
Respondent, Onlyne Corporate Services11, is not commonly known by the name
‘welsfargo’ in any derivation.”).
In addition, Complainant alleges that Respondent is using the <hotamericansingles.com> domain name to operate an online dating website in direct competition with Complainant. Complainant claims that the <hotamericansingles.com> domain name resolves to a website displaying its AMERICAN SINGLES mark and containing content substantially similar to Complainant’s own online dating website at the <americansingles.com> domain name. Therefore, Complainant argues, Respondent is not using the disputed domain name 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), because Respondent is misleading Internet users seeking Complainant’s website and diverting them Respondent’s website for commercial gain.
The Panel concludes that Respondent’s use of the <hotamericansingles.com> domain name does not establish rights or legitimate interests in the disputed domain name pursuant to Policy ¶¶ 4(c)(i) and 4(c)(iii). See Yahoo! Inc. v. Web Master, FA 127717 (Nat. Arb. Forum Nov. 27, 2002) (finding that the respondent’s use of a confusingly similar domain name to operate a pay-per-click search engine, in competition with the complainant, was not a bona fide offering of goods or services); see also Clear Channel Commc’ns, Inc. v. Beaty Enters., FA 135008 (Nat. Arb. Forum Jan. 2, 2003) (finding that the respondent, as a competitor of the complainant, had no rights or legitimate interests in a domain name that utilized the complainant’s mark for its competing website).
Moreover, Complainant argues that Respondent is using the <hotamericansingles.com> domain name to engage in a fraudulent phishing scheme, because the domain name resolves to a website substantially similar to Complainant’s website and prompts Internet users to enter their personal information. The Panel finds that Respondent is diverting Internet users to its own website to fraudulently acquire their personal information, and thus Respondent does not have rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). See Juno Online Servs., Inc. v. Nelson, FA 241972 (Nat. Arb. Forum Mar. 29, 2004) (“‘Phishing’ involves the use of e-mails, pop-ups or other methods to trick Internet users into revealing credit cards, passwords, social security numbers and other personal information to the ‘phishers’ who intend to use such information for fraudulent purposes.”); see also Capital One Fin. Corp. v. Howel, FA 289304 (Nat. Arb. Forum Aug. 11, 2004) (finding that using a domain name to redirect Internet users to a website that imitated the complainant’s credit application website and attempted to fraudulently acquire personal information from the complainant’s clients was not a bona fide offering of goods or services or a legitimate noncommercial or fair use); see also HOPE worldwide, Ltd. v. Jin, FA 320379 (Nat. Arb. Forum Nov. 11, 2004) (finding that a domain name that “is confusingly similar to Complainant’s mark, redirects Internet users to a website that imitates Complainant’s website, and is used to acquire personal information from Complainant’s potential associates fraudulently” does not fall within the parameters of Policy ¶ 4(c)(i) or (iii)).
Complainant asserts
that Respondent has no authorization to use its AMERICAN SINGLES mark and
Respondent did not produce any evidence to counter that assertion. Instead, Respondent urges that because
Complainant’s protected mark consists of what Respondent urges are generic
terms, it is fair game for Respondent to use it. This avoids the issue of Respondent’s burden to produce evidence
to show his right to use the mark for which Complainant holds a registration
with United States’ authorities.
Respondent asserts that
it registered the domain name in connection with a bona fide offering of
goods or services pursuant to Policy ¶ 4(c)(i), because it operates an online
dating service for attractive people and is using the terms “American” and
“singles” in their generic sense. The
Panel notes that Respondent combines these two words into the identical phrase
in which the USPTO recognized that Complainant had rights two years before
Respondent did so.
Respondent also
maintains that it has registered and operated numerous dating-related domain
names under the generic formula <hot[geographic name]singles.com> since
2004, and that registration of the <hotamericansingles.com> domain name is
consistent with its overall marketing strategy. Respondent does not explain how that excuses Respondent for
opportunistically using Complainant’s protected mark.
Respondent further
urges that its website is not in direct competition with Complainant because
not everyone can join its online dating service. Apparently only the “hot”—whatever that means—need apply. On the other hand, Respondent urges,
Complainant permits anyone to register for its online dating service. The Panel finds that Respondent has provided
no credible proof to support this argument and that it is without merit. Even
if it were a valid argument, Complainant cannot overcome the fact that he is
using Complainant’s mark AMERICAN SINGLES in the domain name designed to
compete with Complainant.
Respondent also urges
that his use of the <hotamericansingles.com> domain name to
operate an online dating service does not mislead Internet users seeking
Complainant’s services but is based on common, generic usage of the terms and
thus Respondent’s use constitutes a bona fide offering of goods or
services pursuant to Policy ¶ 4(c)(i). Respondent does not explain how Internet
users know that he is not using Complainant’s mark in this generic way rather
than in the way the USPTO did when it recognized Complainant’s rights.
The
Panel finds that Complainant satisfied ICANN Policy ¶ 4(a)(ii).
Complainant urges that Respondent acted in bad faith in registering and using a domain name containing in its entirety Complainant’s protected mark. The presentations of the parties show that both are engaged in the same commercial area—matching up parties online for dating relationships. Respondent registered and is using the <hotamericansingles.com> domain name to accomplish this goal. Complainant’s domain name in which it does business uses its protected mark to do the same.
Complainant argues that Respondent
is a direct competitor in the online dating business and that the disputed
domain name resolves to Respondent’s website, which is substantially similar to
Complainant’s website and offers the same services. The minor variation between the Complainant’s mark and
Respondent’s registration supports findings that Respondent’s registration
sought to profit from Complainant’s expenditure of multiple millions of dollars
to build up goodwill in its mark. Given
Complainant’s prior rights and prior use, this supports findings of bad faith
pursuant to Policy ¶ 4(b)(iii). See EthnicGrocer.com, Inc. v. Unlimited
Latin Flavors, Inc., FA 94385 (Nat. Arb. Forum July 7, 2000) (finding that
the minor degree of variation from the complainant's marks suggests that the
respondent, the complainant’s competitor, registered the names primarily for
the purpose of disrupting the complainant's business);
see also Lubbock Radio
Paging v. Venture Tele-Messaging, FA 96102 (Nat. Arb. Forum Dec. 23, 2000)
(concluding domain names were registered and used in bad faith where the
respondent and the complainant were in the same line of business in the same
market area).
Furthermore, Complainant argues
that Respondent is using the <hotamericansingles.com> domain name,
which it maintains is confusingly similar to its AMERICAN SINGLES mark, to
redirect Internet users to Respondent’s own website providing substantially
similar online dating services that compete with Complainant. Complainant contends that Internet users
seeking Complainant’s online dating website are confused as to the source,
sponsorship, affiliation or endorsement of Respondent’s website, and thus
Respondent is taking advantage of the confusing similarity between the <hotamericansingles.com>
domain name and the AMERICAN SINGLES mark in order to profit from the goodwill
associated with the mark. The Panel
finds that such diversionary use of the disputed domain name constitutes bad faith
registration and use under 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 Luck's
Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30,
2000) (finding that the respondent engaged in bad faith use and registration by
using domain names that were identical or confusingly similar to the
complainant’s mark to redirect users to a website that offered services similar
to those offered by the complainant).
Complainant also alleges that Respondent is engaged in a fraudulent phishing scheme, because the <hotamericansingles.com> domain name resolves to a website substantially similar to Complainant’s website at the <americansingles.com> domain name prompting Internet users to enter their personal information. Respondent’s phishing in an effort to fraudulently acquire personal information from Internet users seeking Complainant’s online dating services also constitutes bad faith registration and use in violation of Policy ¶ 4(a)(iii). See Juno Online Servs., Inc. v. Nelson, FA 241972 (Nat. Arb. Forum Mar. 29, 2004) (“The domain name <billing-juno.com> was registered and used in bad faith by using the name for fraudulent purposes.”); see also Capital One Fin. Corp. v. Howel, FA 289304 (Nat. Arb. Forum Aug. 11, 2004) (finding bad faith registration and use because the respondent used the domain name to redirect Internet users to a website that imitated the complainant’s website and to fraudulently acquire personal information from the complainant’s clients).
Respondent claims that it has not attempted to attract Internet users seeking Complainant’s online dating services for its own commercial gain. Respondent claims that it is using the <hotamericansingles.com> domain name to operate an online dating service for a specific group—attractive people—whereas Complainant uses the AMERICAN SINGLES mark in connection with general online dating services. Given no credible proof to support it, this contention is baseless and not worthy of consideration.
Respondent also alleges that Internet users are not likely to be confused as to the source, sponsorship, affiliation or endorsement of the content on its website. It is difficult to envision the proof that Respondent could bring to support that allegation since the website is based on a domain name that contains in its entirety the protected mark of the Complainant.
Respondent also alleges that it did
not deliberately register <hotamericansingles.com> in bad faith
because the domain name is made up of three generic terms that are of common
usage in the online dating business and Respondent is using the disputed domain
name to operate a website associated with the descriptive quality of the domain
name. The Panel reviewed a long line of
cases in which Panels found domain names to be generic. Respondent urges here
that Complainant does not have the exclusive right to use the terms “American”
and “single” in a domain name and points toward cases looking at this same
issue that support Respondent’s point of view.
However, Respondent has chosen to use words in the same order in which
the USPTO recognized Complainant’s rights.
Further Complainant met its burden on the three prongs required by
showing a confusingly similar domain name containing a mark in which
Complainant has legal rights that have been recognized by the public authority
issuing protected trademarks.
Complainant further alleged that Respondent lacked rights in its
protected mark and the domain name containing the protected mark. Respondent did not come forward with
evidence to controvert the Complainant’s proof. Respondent is engaged in the same commercial area as Complainant
using Complainant’s name. No overriding
public interest suggests the need to override the rules to let this Respondent
operate a dating service using Complainant’s name. See, for example, Lowestfare.com LLC v. US Tours &
Travel, Inc., AF-0284 (eResolution Sept. 9, 2000) (finding no bad faith
where the respondent was using the descriptive domain name <thelowestfare.com>
to lead consumers to a source of lowest fares in good faith); see also Vitello v. Castello,
FA 159460 (Nat. Arb. Forum July 1, 2003) (“As to both registration and use, the
generic nature of the disputed domain name itself rebuts any allegation by
Complainant that Respondent registered or used the disputed domain name in bad
faith.”).
Respondent next argues that since Respondent has not offered to sell the domain name, has not prevented Complainant from reflecting its mark in a domain name, and has not disrupted Complainant’s business, no bad faith conduct exists. Even if Respondent had been able to show that it has not violated any of the factors listed in Policy ¶ 4(b), under the Policy Arbitrators look to the total circumstances. The Policy lists four circumstances demonstrating registration and use of a domain name in bad faith, but this list merely illustrates possible situations that demonstrate bad faith. The Panel looks to the totality of the circumstances surrounding the registration and use of a domain name in determining whether bad faith is present. See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (determining that Policy paragraph 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith); see also Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (finding that in determining if a domain name has been registered in bad faith, the Panel must look at the “totality of circumstances”).
Under the total circumstances, Respondent’s registration and use of the
<hotamericansingles.com> domain name supports findings of bad
faith under Policy ¶ 4(a)(iii). See Educ. Testing Serv. v. TOEFL,
D2000-0044 (WIPO Mar. 16, 2000) (finding that the Policy “indicates that its
listing of bad faith factors is without limitation”); see also Cellular One Group v. Brien, D2000-0028
(WIPO Mar. 10, 2000) (finding that the criteria specified in 4(b) of the Policy
is not an exhaustive list of bad faith evidence).
The Panel finds that Complainant satisfied the
requirements of ICANN Policy ¶ 4(a)(iii).
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <hotamericansingles.com>
domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: April 18, 2006
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