Generic Top Level Domain Name (gTLD) Decisions

DECISION

Matchnet PLC v. PMC

Claim Number: FA0305000159457

PARTIES

Complainant is Matchnet PLC, Beverly Hills, CA (“Complainant”) represented by Victor T. Fu of Richardson & Patel LLP.  Respondent is PMC, Orem, UT (“Respondent”) represented by Eric W. Pearson of Argue Pearson Harbison & Myers LLP.

           

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <americansinglesconnection.com>  registered with Go Daddy Software, Inc.

PANEL

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.

            Judge Richard B. Wickersham, (Ret.) as Panelist

PROCEDURAL HISTORY

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, Go Daddy Software, Inc. confirmed by e-mail to the Forum that the domain name <americansinglesconnection.com> is registered with Go Daddy Software, Inc. and that the Respondent is the current registrant of the name.  Go Daddy Software, Inc.  has verified that Respondent is bound by the Go Daddy Software, Inc.  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@americansinglesconnection.com by e-mail.

A timely Response was received and determined to be complete on June 23, 2003.

On July 1, 2003, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Judge Richard B. Wickersham, (Ret.), as Panelist.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to  Complainant.

           

PARTIES’ CONTENTIONS

A.   Complainant

Complainant MatchNet plc (“MatchNet”) is an English public limited company with its principal place of business in London, England of the United Kingdom.  Matchnet also has offices in Beverly Hills, California and Frankfurt, Germany.  MatchNet is publicly traded on the Frankfurt Stock Exchange under the symbol, “MHJG.”  At all times mentioned herein, MatchNet has been and is engaged in the provision of online dating services via eight district web sites in over 236 countries, including the United States of America, and in four different languages.  MatchNet is a leader in online dating and related services and has over eight million members.  One of MatchNet’s most prominent websites is <americansingles.com> which has been in operation since June, 1999.

   MatchNet is the owner of U.S. Trademark Registration No. 2608475, for the mark “AMERICANSINGLES” in Class 042 for computer services, namely providing a web site (AmericanSingles.com) for facilitating the introduction of individuals.  The AMERICANSINGLES® trademark was registered on the Principal Register on August 20, 2002.  Said registration was based on an application filed in the U.S. Patent and Trademark Office on August 26, 1999.  Since June, 1999 and up to the present time, MatchNet has continuously utilized the AMERICANSINGLES® trademark connection with its operation of the online dating website at <americansingles.com>.

           

B.   Respondent

Respondent affirmatively states that (a) it is a Utah corporation organized December 17, 2001, (b) Respondent and its predecessors-in-interest and affiliates have owned and operated online dating Websites since September 1996, (c) Respondent has created and currently operates over twenty separate online dating communities worldwide, with a focus on targeted geographical, ethnic or other demographical niches, including the “SinglesConnection” online dating communities accessed and operated through <www.asiansinglesconnection.com>, <www.blacksinglesconnection.com>, <www.greeksinglesconnection.com>, <www.iraniansinglesconnection.com>, <www.italiansinglesconnection.com>, <www.latinsinglesconnection.com>, and <www.uksinglesconnection.com>, and (d) the online dating community operated by Respondent at the Subject Domain Name is simply another of Respondent’s demographically targeted, “SinglesConnection” -themed sites.

Respondent affirmatively states and alleges that its use of Respondent’s “AmericanSinglesConnection” mark (“Respondent’s Mark”) does not infringe on any trademark of Complainant.  Notwithstanding Complaint’s U.S. federal registration of the “AmericanSingles” trademark (the “Complainant’s Mark”), the Complainant’s mark is so generic and descriptive as to make it incapable under applicable federal and state trademark laws of producing a protectable trademark right.  Like Respondent, Complainant operates a Web site providing dating services for American singles.   Complainant’s Mark is entirely descriptive of this service and has little or no identifying value aside from such description.  Respondent has previously notified Complainant, through its counsel, of Respondent’s position on this matter, including Respondent’s belief that the federal registration of Complainant’s Mark would be dismissed on this basis if subject to challenge from Respondent or any other third party within the statutory challenge period.

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 that the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(1) the Respondent has no rights or legitimate interests in respect of the domain name; and

(2) the domain name has been registered and is being used in bad faith.

            Identical and/or Confusingly Similar   Policy ¶ 4(a)(i).

Complainant has submitted evidence of a federal trademark registration with the United States Patent and Trademark Office (“USPTO”) for the AMERICAN SINGLES mark (Reg. No. 2,608,475 registered on August 20, 2002) related to computer services, namely providing a website for facilitating the introduction of individuals.  Complainant asserts that it has operated a website at <americansingles.com> since June 1999 to provide its online dating and related services.  The Panel holds that Complainant has established that it has rights in the AMERICAN SINGLES mark through registration with the USPTO and continuous use in commerce since 1999.  See The Men’s Wearhouse, Inc. v. Brian Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning”).

Respondent’s <americansinglesconnection.com> domain name is confusingly similar to Complainant’s AMERICAN SINGLES mark because the disputed domain name incorporates Complaint’s complete mark and adds the generic term “connection” to the end of the mark.  The Panel decides that the addition of the generic term “connection” does not significantly differentiate the domain name from the mark with regard to Policy ¶ 4(a)(i) because Complainant’s mark comprises the dominant  element of the domain name and the term “connection” directly relates to Complainant’s business of connecting people through its dating and related services.  See Space Imaging LLC v. Brownwell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where Respondent’s domain name combines Complainant’s mark with a generic term that has an obvious relationship to Complainant’s business); see also Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum May 5, 2001) (finding that the <hoylecasino.net> domain name is confusingly similar to Complainant’s HOYLE mark, and that the addition of “casino,” a generic word describing the type of business in which Complainant is engaged, does not take the disputed domain name out of the realm of confusingly similarity).

            Rights or Legitimate Interests   Policy ¶ 4(a)(ii).

Respondent has no rights to or legitimate interest in the <americansinglesconnection.com> domain name because Respondent is using the disputed domain name to compete directly with Complainant.  The use of a domain name confusingly similar to a federally registered trademark to compete with the trademark holder is not a bona fide offering of goods or services with regard to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use with regard to Policy ¶ 4(c)(iii).  See am Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that “[I]t would be unconscionable to find a bona fide offering of services in a respondent’s operation of web-site using a domain name which is confusingly similar to the Complainant’s mark and for the same business”); 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).

            Registration and Use in Bad Faith   Policy ¶ 4(a)(iii).

Respondent’s use of a domain name confusingly similar to Complainant’s mark to compete with Complainant evidences Respondent’s bad faith registration and use.  The Panel finds that Respondent registered and used the <americansinglesconnection.com> domain name to attract Internet users for commercial gain by creating a likelihood of confusion with Complainant’s mark, which is evidence of bad faith registration and use under Policy ¶ 4(b)(iv).  See America Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that Respondent intentionally attempted to attract Internet users to his website for commercial gain by creating a likelihood of confusion with the Complainant’s mark and offering the same chat services via his website as the Complainant); see also Identigene, Inc. v. Genetest Lab., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where Respondent’s use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that Complainant is the source of or is sponsoring the services offered at the site).

           

FINDINGS AND DECISION

Having established all three elements required under ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <americansinglesconnection.com> domain name be TRANSFERRED from Respondent to Complainant.

                                                                       

                                                                                    JUDGE RICHARD B. WICKERSHAM, (Ret.), Panelist

                                                                       

                                                                                                Dated: July 15, 2003