eHarmony, Inc. v. Jean Louis Charge
Claim Number: FA1403001550322
Complainant is eHarmony, Inc. (“Complainant”), represented by Lisa Greenwald-Swire of Fish & Richardson P.C., California, USA. Respondent is Jean Louis Charge (“Respondent”), France.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <eharmonypromotionalcode.org>, 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.
David A. Einhorn appointed as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 21, 2014; the National Arbitration Forum received payment on March 24, 2014.
On March 24, 2014, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <eharmonypromotionalcode.org> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. 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 March 25, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 14, 2014 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@eharmonypromotionalcode.org. Also on March 25, 2014, 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 April 21, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David A. Einhorn 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’s Contentions
a) Complainant is the owner of the EHARMONY mark, used in connection with its dating service and relationship website. Complainant has multiple registrations with the United States Patent and Trademark Office (“USPTO”) for the EHARMONY mark (e.g., Reg. No. 2,764,705 registered Sep. 16, 2003).
b) The <eharmonypromotionalcode.org> domain name is confusingly similar to the EHARMONY mark. The disputed domain name is comprised of Complainant’s mark, the generic phrase “promotional code,” and the generic top-level domain (“gTLD”) “.org.”
c) Respondent is not commonly known by the disputed domain name. Respondent does not have any license, permission, contract, or other relationship that allows Respondent to have registered the EHARMONY mark in the domain name. The WHOIS record lists “Jean Louis Charge” as the domain name registrant.
d) Respondent does not use the disputed domain name in connection with a bona fide offering of goods or services. Respondent resolves the <eharmonypromotionalcode.org> domain name to a website that displays an array of adult-oriented information and images.
e) Given that the <eharmonypromotionalcode.org> domain name fully incorporates the distinctive and famous EHARMONY mark, it is evident that Respondent willfully adopted the disputed domain name in an attempt to unfairly capitalize on and then tarnish the valuable goodwill Complainant has built in its mark. Respondent’s use of the phrase “promotional code” in the domain name was clearly meant to entice interested or prospective subscribers to enter the <eharmonypromotionalcode.org> domain name’s resolving website under the pretense that they would be able to obtain a discount for Complainant’s services.
f) Respondent clearly had full knowledge of Complainant’s rights in the EHARMONY mark at the time it registered the <eharmonypromotionalcode.org> domain name as evidenced by Respondent’s exploitation of the EHARMONY mark in conjunction with the deceptive promise of a “promotional code.”
B. Respondent
Respondent failed to submit a Response in this proceeding. However, the Panel notes that the <eharmonypromotionalcode.org> domain name was registered on June 25, 2013.
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 asserts that it is the owner of the EHARMONY mark, used in connection with its dating service and relationship website. Complainant argues that it has multiple registrations with the USPTO for the EHARMONY mark (e.g., Reg. No. 2,764,705 registered Sep. 16, 2003). Panels have found that, regardless of the location of the parties, registration of a mark with a trademark authority is evidence of rights in a mark. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction). Therefore, the Panel finds that Complainant has rights in the EHARMONY mark under Policy ¶ 4(a)(i).
Complainant next alleges that the <eharmonypromotionalcode.org> domain name is confusingly similar to the EHARMONY mark. Complainant notes that the disputed domain name is comprised of Complainant’s mark and the generic phrase “promotionalcode”. Therefore, the Panel finds that Respondent’s <eharmonypromotionalcode.org> domain name is confusingly similar to the EHARMONY mark under Policy ¶ 4(a)(i). See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)).
Complainant asserts that Respondent is not commonly known by the disputed domain name. Complainant argues that Respondent does not have any license, permission, contract, or other relationship that allows Respondent to have registered the EHARMONY mark in the domain name. Further, Complainant notes that the WHOIS record lists “Jean Louis Charge” as the domain name registrant. In Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006), the panel concluded 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 disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark. Therefore, the Panel finds that Respondent is not commonly known by the <eharmonypromotionalcode.org> domain name pursuant to Policy ¶ 4(c)(ii).
Complainant contends that Respondent does not use the disputed domain name in connection with a bona fide offering of goods or services. Complainant explains that Respondent resolves the <eharmonypromotionalcode.org> domain name to a website that displays an array of adult oriented information and images, with all of the linked websites resolving to explicit and adult-oriented content. Therefore, the Panel finds that Respondent’s use of the disputed domain name is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and 4(c)(iii). See Target Brands, Inc. v. Bealo Group S.A., FA 128684 (Nat. Arb. Forum Dec. 17, 2002) (finding that use of the <targetstore.net> domain name to redirect Internet users to an adult-oriented website did not equate to a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of a domain name under Policy ¶ 4(c)(iii)).
Thus, Complainant has also satisfied Policy ¶ 4(a)(ii).
Complainant asserts that, given that the <eharmonypromotionalcode.org> domain name fully incorporates the distinctive and famous EHARMONY mark, it is evident that Respondent willfully adopted the disputed domain name in an attempt to unfairly capitalize on and then tarnish the valuable goodwill Complainant has built in its mark. Complainant further argues that Respondent’s use of the phrase “promotional code” in the domain name was meant to entice interested or prospective subscribers to enter the <eharmonypromotionalcode.org> domain name’s resolving website under the pretense that they would be able to obtain a discount for Complainant’s services. In Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006), the panel found 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. Therefore, the Panel similarly holds that Respondent registered and is using the <eharmonypromotionalcode.org> domain name in bad faith pursuant to Policy ¶ 4(b)(iv).
Complainant argues that Respondent’s use of the disputed domain name to host adult oriented material is evidence of bad faith. Complainant notes that the website at the <eharmonypromotionalcode.org> domain name displays adult oriented information and hyperlinks to websites featuring adult-oriented content. The panel in Wells Fargo & Co. v. Party Night Inc., FA 144647 (Nat. Arb. Forum Mar. 18, 2003), found 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. For this same reason, this Panel finds bad faith in the registration and use of the <eharmonypromotionalcode.org> domain name by Respondent under Policy ¶ 4(a)(iii).
Complainant argues that Respondent clearly had full knowledge of Complainant’s rights in the EHARMONY mark at the time it registered the <eharmonypromotionalcode.org> domain name, as evidenced by Respondent’s exploitation of the EHARMONY mark in conjunction with the deceptive promise of a “promotional code.” The Panel finds that, in light of Respondent’s incorporation of the mark in its entirety into this domain name, it can be inferred that Respondent had actual knowledge of the mark and Complainant's rights. Thus, the Panel holds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
Complainant has therefore also satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <eharmonypromotionalcode.org> domain name be TRANSFERRED from Respondent to Complainant.
David A. Einhorn, Panelist
Dated: May 2, 2014
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