DECISION

Matchnet PLC v. Donald Hobbs

Claim Number:  FA0305000159455

PARTIES

Complainant is Matchnet PLC, Beverly Hills, CA (“Complainant”) represented by Victor T. Fu, of Richardson & Patel LLP.  Respondent is Donald Hobbs, Deerfield Beach, FL (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <americansinglesgalore.com>, registered with Innerwise, Inc. d/b/a Itsyourdomain.Com.

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

Honorable Paul A. Dorf (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, Innerwise, Inc. d/b/a Itsyourdomain.Com confirmed by e-mail to the Forum that the domain name <americansinglesgalore.com> is registered with Innerwise, Inc. d/b/a Itsyourdomain.Com and that Respondent is the current registrant of the name. Innerwise, Inc. d/b/a Itsyourdomain.Com has verified that Respondent is bound by the Innerwise, Inc. d/b/a Itsyourdomain.Com 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@americansinglesgalore.com by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On June 30, 2002, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Honorable Paul A. Dorf (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."  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.

RELIEF SOUGHT

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

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <americansinglesgalore.com> domain name is confusingly similar to Complainant’s AMERICAN SINGLES mark.

2. Respondent does not have any rights or legitimate interests in the <americansinglesgalore.com> domain name.

3. Respondent registered and used the <americansinglesgalore.com> domain name in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Since June 1999, Complainant has used the AMERICAN SINGLES mark in commerce.  Complainant filed the mark with the U.S. Patent and Trademark Office on August 26, 1999 and it was registered on August 20, 2002 (Reg. No. 2,608,475).  Complainant’s mark is used in connection with providing dating services through an interactive website. 

Complainant registered the domain name <americansingles.com> on September 11, 2002.  The domain name provides information and access to the Complainant’s goods and services provided under the AMERICAN SINGLES mark to current and potential customers.  Complainant provides dating services at the <americansingles.com> domain name, an interactive website.

Respondent registered the disputed domain name on September 2, 2002.  Respondent is using the disputed domain name to redirect Internet users to a website offering the online dating services of the “DatingTech Network.”  The DatingTech Network operates an online dating service that competes with Complainant.

DISCUSSION

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."

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.

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.

Identical and/or Confusingly Similar

Complainant has established that it has rights in the AMERICAN SINGLES mark through evidence of Complainant’s registration of the mark with the U.S. Patent and Trademark Office (Reg. No. 2,608,475 – registered Aug. 20, 2002).  Complainant’s rights in the AMERICAN SINGLES mark date back to the filing date with the U.S. Patent and Trademark Office, i.e. August 26, 1999.  See FDNY Fire Safety Educ. Fund, Inc. v. Roger Miller, FA 145235 (Nat. Arb. Forum March 26, 2003) (finding that Complainant’s rights in the FDNY mark relate back to the date that its successful trademark registration was filed with the U.S. Patent and Trademark Office); see also J.C. Hall Co. v. Hallmark Cards, Inc., 340 F.2d 960, 144 U.S.P.Q. 435 (C.C.P.A. 1965) (registration on the Principal Register is prima facie proof of continual use of the mark, dating back to the filing date of the application for registration).

Respondent’s <americansinglesgalore.com> domain name is confusingly similar to Complainant’s mark because it merely adds the generic/descriptive word “galore” to the end of the AMERICAN SINGLES mark.  Furthermore, the fact that Complainant and Respondent are competitors, weighs in favor of concluding that the disputed domain name is confusingly similar to Complainant’s mark.  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 Vivid Video, Inc. v. Tennaro a/k/a Vivid Revolution, FA 126646 (Nat. Arb. Forum Nov. 14, 2002) (finding that any distinctiveness resulting from Respondent’s addition of a generic word to Complainant’s mark in a domain name is less significant because Respondent and Complainant operate in the same industry).

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Complainant urges that Respondent has no rights to or legitimate interests in the disputed domain name.  Respondent did not provide the Panel with a Response in this proceeding.  Thus, the Panel may accept all reasonable allegations and inferences in the Complaint as true.  See Bayerische Motoren Werke AG v Bavarian AG, FA 110830 (Nat. Arb. Forum June 17, 2002) (finding that in the absence of a Response the Panel is free to make inferences from the very failure to respond and assign greater weight to certain circumstances than it might otherwise do); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that Complainant’s allegations are true unless clearly contradicted by the evidence).

Moreover, due to Respondent’s failure to dispute the allegations in the Complaint, the Panel may presume that Respondent lacks any rights to or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii).  See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names); see also Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc., AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interests where no such right or interest was immediately apparent to the Panel and Respondent did not come forward to suggest any right or interest it may have possessed).

Furthermore, Respondent is using the <americansinglesgalore.com> domain name to redirect Internet traffic to a website offering online dating services provided by the “DatingTech Network,” which markets services similar to Complainant’s services.  The use of a domain name that is confusingly similar to Complainant’s mark in order to divert Internet users interested in Complainant’s services to a competing website is not a use 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).  See N. Coast Med., Inc. v. Allegro Med., FA 95541 (Nat. Arb. Forum Oct. 2, 2000) (finding no bona fide use where Respondent used the domain name to divert Internet users to its competing website); 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).

Finally, Respondent is not affiliated with Complainant and the evidence fails to establish that Respondent is authorized or licensed to register or use domain names or marks containing the AMERICAN SINGLES mark.  The WHOIS information for the <americansinglesgalore.com> domain name indicates Respondent, Donald Hobbs, as the registrant; however, it fails to establish Respondent as an “individual, business, or other organization” commonly known by the <americansinglesgalore.com> domain name.  Therefore, Respondent has no rights or legitimate interests in the domain name pursuant to Policy ¶ 4(c)(ii).  See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name); see also MRA Holding, LLC v. Costnet, FA 140454 (Nat. Arb. Forum Feb. 20, 2003) (noting that “the disputed domain name does not even correctly spell a cognizable phrase” in finding that Respondent was not “commonly known by” the name GIRLS GON WILD or <girlsgonwild.com>).

Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been established.

Registration and Use in Bad Faith

The fact that the domain name redirects to a website that competes with Complainant is evidence of Respondent’s knowledge of Complainant’s mark.  Registration of a domain name, despite knowledge of Complainant’s rights, is evidence of a bad faith registration pursuant to Policy ¶ 4(a)(iii).  See Entrepreneur Media, Inc. v. Smith, [2002] USCA9 115; 279 F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) (finding that "[w]here an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse"); see also Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration).

In addition, Respondent has registered a domain name primarily for the purpose of disrupting the business of their competitor, i.e. Complainant.  Both parties provide dating services via the Internet.  Respondent’s <americansinglesgalore.com> domain name includes the AMERICAN SINGLES mark in order to divert current and potential MatchNet PLC, customers to Respondent’s website.  The use of a competitor’s mark within a domain name, with the purpose of diverting customers to competing websites, constitutes disruption of a competitor’s business.  This practice has been recognized as bad faith pursuant to Policy ¶ 4(b)(iii).  See Surface Protection Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the competitive relationship between Complainant and Respondent, Respondent likely registered the contested domain name with the intent to disrupt Complainant's business and create user confusion); see also Lubbock Radio Paging v. Venture Tele-Messaging, FA 96102 (Nat. Arb. Forum Dec. 23, 2000) (concluding that domain names were registered and used in bad faith where Respondent and Complainant were in the same line of business in the same market area).

Furthermore, Respondent has attempted to capitalize on the goodwill surrounding Complainant’s AMERICAN SINGLES mark by using the mark within Respondent’s domain name.  Through this practice, Respondent has attempted to attract, for commercial gain, Complainant’s customers by creating a likelihood of confusion with Complainant’s mark and diverting them to Respondent’s website.  This practice has been recognized as an act of bad faith under the UDRP pursuant to Policy ¶ 4(b)(iv).  See Kmart v. Kahn, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if Respondent profits from its diversionary use of Complainant's mark when the domain name resolves to commercial websites and Respondent fails to contest the Complaint, it may be concluded that Respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)); see also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where Respondent directed Internet users seeking Complainant’s site to its own website for commercial gain).

The Panel finds the Policy ¶ 4(a)(iii) has been satisfied.

DECISION

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

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

Honorable Paul A. Dorf (Ret.) Panelist

Dated: July 14, 2003

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