Plentyoffish Media ULC v. Super Privacy Service c/o Dynadot
Claim Number: FA1608001687021
Complainant is Plentyoffish Media ULC (“Complainant”), represented by Kevin Costanza of Seed Intellectual Property Law Group PLLC, Washington, USA. Respondent is Super Privacy Service c/o Dynadot (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <plentypofish.com>, registered with Dynadot, 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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 4, 2016; the Forum received payment on August 4, 2016.
On August 7, 2016, Dynadot, LLC confirmed by e-mail to the Forum that the <plentypofish.com> domain name is registered with Dynadot, LLC and that Respondent is the current registrant of the name. Dynadot, LLC has verified that Respondent is bound by the Dynadot, 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 August 8, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 29, 2016 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@plentypofish.com. Also on August 8, 2016, 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 September 8, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson, 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant registered its PLENTYOFFISH mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,251,639, registered June 12, 2007), and holds rights in the mark that it uses for an online dating service. Respondent’s domain name, <plentypofish.com>, is confusingly similar to Complainant’s mark, because it merely adds the generic top-level domain (“gTLD”) suffix “.com” to the fully incorporated mark and simply mispells the “of” portion as “po.”
Respondent has no rights or legitimate interests in the disputed domain name. Complainant has not given Respondent any permission to use the PLENTYOFFISH mark, or any other marks associated with Complainant’s dating website. Respondent is not commonly known by the disputed domain name or “Plenty Po Fish”, and Respondent’s unauthorized use of Complainant’s mark on the disputed domain name cannot be said to be a bona fide offering of goods and services or a legitimate noncommercial or fair use of the disputed domain name by attempting to pass itself off as Complainant.
Respondent has engaged in bad faith registration and use of the <plentypofish.com> domain name. Respondent disrupts Complainant’s business by taking information from mistaken Internet users, and is also attempting to pass itself off as the Complainant in bad faith as part of a phishing scheme to gain personal information from mistaken individuals. There is further evidence of bad faith on Respondent because the disputed domain name contains adult-oriented material. Lastly, Respondent’s use of “po” instead of “of” in the disputed domain name is a form of bad faith typosquatting on Complainant’s PLENTYOFFISH mark pursuant to Policy ¶ 4(a)(iii).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Plentyoffish Media ULC of Vancouver, BC, Canada. Complainant is the owner of numerous domestic and international trademark registrations for the mark PLENTY OF FISH and variations thereon comprising the PLENTY OF FISH family of marks. Complainant has been using its mark continuously since at least as early as 2007 in connection with its provision of goods and services related to its provision of online communications and dating services.
Respondent is Super Privacy Service c/o Dynadot of San Mateo, CA, USA. Respondent’s registrar’s address is listed as the same. Respondent registered the <plentypofish.com> domain name on or about October 21, 2014.
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(f), 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 (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 has rights to the PLENTYOFFISH and several similar marks it uses for online dating services based on its registration with the USPTO (e.g., Reg. No. 3,251,639, registered June 12, 2007). Past panels have held that registration of a mark with the USTPO can confer rights in the registered mark pursuant to Policy ¶ 4(a)(i). See BGK Trademark Holdings, LLC & Beyoncé Giselle Knowles-Carter v. Chanphut / Beyonce Shop, FA 1626334 (Forum Aug. 3, 2015) (asserting that Complainant’s registration with the USPTO (or any other governmental authority) adequately proves its rights under Policy ¶ 4(a)(i).). The Panel here finds that Complainant has demonstrated rights in the PLENTYOFFISH mark.
Additionally, Complainant argues that Respondent’s domain name, <plentypofish.com>, is confusingly similar to the PLENTYOFFISH mark in which Complainant claims to have rights. Complainant contends that Respondent’s domain name fully incorporates their PLENTYOFFISH mark and merely differs through misspelling “of” as “po.” Prior panels have found that the misspelling of a mark and the addittion of a gTLD does not sufficiently differentiate a domain name from a mark in which a complainant has rights. See Wells Fargo & Company v. VALERIE CARRINGTON, FA 1621718 (Forum July 2, 2015) (finding that the <wllsfago.com> domain name is confusingly similar to the WELLS FARGO mark as the domain name merely omits the “e” and “r” from the mark while adding the “.com” gTLD suffix.). The Panel here finds that Respondent’s use of “po” instead of “of”, and adding the “.com” suffix to the PLENTYOFFISH mark does not negate confusing similarity under Policy ¶ 4(a)(i).
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel recognizes that 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), 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). The Complainant has met this burden.
Complainant argues that Respondent does not have any rights or legitimate interests in the <plentypofish.com> domain name. Complainant says it has not given Respondent any permission to use the PLENTYOFFISH mark, and that Respondent is not commonly known by “Plenty Po Fish” or the <plentypofish.com> domain name. The Panel notes that the WHOIS information lists “Super Privacy Service c/o Dynadot” as the registrant, and that the resolving website of the disputed domain name makes no use of the “Plenty Po Fish” name. Past panels have found that the WHOIS information for a domain name is sufficient to show a respondent is not commonly known by a domain name. See Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (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.”). The Panel here finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant further states that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶¶ 4(c)(i) and (iii). Complainant contends that Respondent’s resolving website reached through the <plentypofish.com> domain name attempts to pass itself off as Complainant’s, and that this website engages in fraudulent activities which cannot be said to demonstrate rights or legitimate interests in a domain name. The Panel notes Complainant has submitted evidence that Respondent has been using its PLENTYOFFISH, PLENTY OF FISH, and POF marks on the resolving website. Prior panels have agreed that attempting to use registered trademarks to pass off as another does not create rights or interests in a disputed domain name and is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Am. Int’l Group, Inc. v. Busby, FA 156251 (Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name); see also Kmart of Mich., Inc. v. Cone, FA 655014 (Forum April 25, 2006) (The panel found the respondent’s attempt to pass itself of as the complainant was not 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) when the respondent used the disputed domain name to present users with a website that was nearly identical to the complainant’s website). The Panel here finds that Respondent has not made a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name and does not have rights or legitimate interests in the domain.
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
As the Respondent has not provided a response to this action, the Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
The Complainant has proven this element.
Complainant contends that Respondent’s use of the disputed domain name is an intentional attempt to confuse Internet users and disrupts Complainant’s business in bad faith under Policy ¶ 4(b)(iii). The Panel notes complainant provided screenshots of the resolving website for <plentypofish.com> in the Complaint indicating a similarity with its own website. Previous panels have held that a respondent disrupts a complainant’s business when the domain name displays a website visually similar to a complainant’s website. See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Forum Mar. 8, 2007) (finding that the respondent’s registration and use of the disputed domain name, which displayed a website virtually identical to the complainant’s website, constituted bad faith pursuant to Policy ¶ 4(b)(iii)). The Panel here finds that Respondent has engaged in bad faith disruption under Policy ¶ 4(b)(iii).
Complainant also asserts that Respondent’s attempts to pass itself off as Complainant is bad faith under Policy ¶ 4(a)(iii). Again, Respondent’s domain resolves to a website that reflects Complainant’s marks. The Panel finds that the repeated use of Complainant’s marks on the website of the disputed domain is a form of fraud and bad faith registration and use of the domain name. See Am. Int’l Group, Inc. v. Busby, FA 156251 (Forum May 30, 2003) (finding that the disputed domain name was registered and used in bad faith where the respondent hosted a website that “duplicated Complainant’s mark and logo, giving every appearance of being associated or affiliated with Complainant’s business . . . to perpetrate a fraud upon individual shareholders who respected the goodwill surrounding the AIG mark”).
Complainant further contends that the adult-oriented advertisements that a user may be lead to from the domain, from which Respondent presumably profits, may demonstrate bad faith under Policy ¶ 4(a)(iii). Complainant has included the alleged adult-oriented advertisements and solicitations coming from the <plentypofish.com> domain name for the Panel to review. Previous panels have held that certain uses of adult-oriented advertisements are bad faith in previous actions. See Twitter, Inc. v. Kiribati Media / Kiribati 200 Media Limited, FA1502001603444 (Forum Mar. 19, 2015) (“Respondent’s use of the disputed domain name to feature adult-oriented advertisements is further evidence of bad faith under Policy ¶ 4(a)(iii).”). The Panel here finds that the advertisements of the disputed domain name constitute adult-oriented material and that the solicitations are evidence of bad faith registration and use under Policy ¶ 4(a)(iii).
Next, Complainant argues that Respondent is engaging in a phishing scheme to fraudulently steal information from mistaken Internet users. Complainant argues that the use of its PLENTYOFFISH and POF marks on the disputed domain name is done in an effort to coerce users to enter the personal information based on a belief that they are signing up for Complainant’s website. The alleged phishing attempts are evidenced on screen shots of Respondent’s website. Prior panels have held that a respondent who attempts to fraudulently solicit personal information does so in bad faith. See Google Inc. v. Domain Admin / Whois Privacy Corp., FA1506001622862 (Forum Aug. 10, 2015) (finding that the respondent’s apparent use of the disputed domain name in furtherance of a ‘phishing’ scheme further established its bad faith registration and use of the disputed domain name under Policy ¶ 4(a)(iii)); see also Juno Online Servs., Inc. v. Iza, FA 245960 (Forum May 3, 2004) (concluding that using a domain name that “is confusingly similar to Complainant’s mark, redirects Internet users to a website that imitates Complainant’s billing website, and is used to fraudulently acquire personal information from Complainant’s clients” is evidence of bad faith registration and use). The Panel here finds that Respondent’s actions support a conclusion that a phishing scheme is present and reflective of bad faith use and registration under Policy ¶ 4(a)(iii).
Complainant additionally asserts that Respondent’s misspelling of “of” as “po”, constitutes an attempt to typosquat on their PLENTYOFFISH mark in bad faith. Past panels have held that merely changing a letter or two to the complainant’s mark can constitute such bad faith. See Twitter, Inc. v. Domain Admin, FA1503001607451 (Forum Apr. 2, 2015) (“Typosquatting is a practice whereby a domain name registrant, such as Respondent, deliberately introduces typographical errors or misspellings into a trademark and then uses the string in a domain name. The conniving registrant wishes and hopes that Internet users will inadvertently type the malformed trademark when searching for the mark’s associated products or services. In doing so the wayward Internet users are directed to a web presence controlled by the domain name’s registrant where their accidental visits may be exploited. Here, Respondent simply changes a single letter in Complainant’s trademark before incorporating the mark into the at-issue domain name. Respondent’s typosquatting, in itself, is evidence of Policy ¶ 4(a)(iii) bad faith.”). The Panel here finds that <plentypofish.com> is a form of typosquatting on the PLENTYOFFISH mark, and thus indicative of bad faith registration and use of the disputed domain name.
Respondent makes no contentions with regards to Policy ¶ 4(a)(iii).
The Complainant has proven this element.
As the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <plentypofish.com> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: September, 22, 2016
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