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Generic Top Level Domain Name (gTLD) Decisions |
Matchnet PLC v. Josh Joffe
Claim Number: FA0305000159456
PARTIES
Complainant
is Matchnet PLC, Beverly Hills, CA
(“Complainant”) represented by Victor T.
Fu, of Richardson & Patel LLP.
Respondent is Josh Joffe,
Riverdale, NY (“Respondent”) represented by Ari Goldberger, of ESQwire.com Law Firm.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <americasingle.com>,
registered with Register.Com.
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
Irving H. Perluss (Retired) is the 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, Register.Com confirmed by e-mail to the Forum that the domain
name <americasingle.com> is
registered with Register.Com and that the Respondent is the current registrant
of the name. Register.Com has verified
that Respondent is bound by the Register.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@americasingle.com by e-mail.
Respondent
was granted an extension until July 14, 2003 to respond. A timely Response was received and
determined to be complete on July 14, 2003.
On July 22, 2003, pursuant to Complainant’s request to
have the dispute decided by a single-member
Panel, the Forum appointed Judge Irving H.
Perluss (Retired) as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
1. Complainant
MatchNet plc (“MatchNet”) is an English public limited company with its
principal place of business in London, England. MatchNet also has offices in Beverly Hills, California and
Frankfurt, Germany. MatchNet is engaged
in the provision of online dating services via eight distinct websites 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.
2. MatchNet
is the owner of U.S. Trademark Registration No. 2608475, for the mark AMERICAN
SINGLES in Class 042 for computer services,
providing a website
(<AmericanSingles.com>) for facilitating the introduction of individuals.
The AMERICAN SINGLES trademark was
registered on the Principal Register on August 20, 2002. The 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 AMERICAN SINGLES trademark in connection
with
its operation of the online dating website at <americansingles.com>.
3. In
connection with its registration of the mark and its operation of the website
at <americansingles.com>, MatchNet has advertised,
promoted, and
developed its AMERICAN SINGLES trademark, spending substantial funds each
year. As a result of MatchNet’s
extensive promotion of its AMERICAN SINGLES trademark, the mark has become
recognizable through the United
States and certain foreign countries as a
symbol of premier online dating services.
MatchNet has established substantial goodwill in its mark and consumers
of online dating services throughout the United States and
the world associate
AMERICAN SINGLES trademark with MatchNet.
4. MatchNet
alleges that Respondent, on May 30, 2000, with actual notice of MatchNet’s
ownership of the AMERICAN SINGLES mark and MatchNet’s
operation of its official
website at <americansingles.com>, registered the disputed domain name <americasingle.com>,
which comprises MatchNet’s AMERICAN SINGLES mark except with the “n” removed
from the first term and the “s” removed from the second
term. Respondent registered the disputed domain
name <americasingle.com> knowing that the registration and the
manner in which it was intended to be used would directly or indirectly
infringe the legal
rights of MatchNet, and that Respondent’s registration of
the disputed domain name <americasingle.com> is confusingly
similar to the MatchNet’s AMERICAN SINGLES trademark.
5. Since
June 1, 1999, MatchNet has been involved in the sale of online dating services
from <www.americansingles.com > which are
of an identical nature to
Respondent’s services. Respondent has
no rights or legitimate interest with respect to the domain name <americasingle.com>
and is using the domain name in bad faith.
The domain name <americasingle.com> was registered by
Respondent for the sole purpose of commercial gain by creating confusing with
MatchNet and its AMERICAN SINGLES
mark.
Respondent is not commonly known by the domain name and has not acquired
any trademark or service mark rights in the domain name. Respondent has not used and has no intention
of using the domain name in connection with a bona fide offering of goods and
services. Respondent was not authorized
to use MatchNet’s AMERICAN SINGLES mark for any of the periods during which he
has registered the domain
name at issue and he has no legitimate,
non-commercial or fair use of the domain name.
MatchNet will be damaged by the continued operation of Respondent’s
website at <americasingle.com> in that it creates the potential
for substantial dilution and consumer deception and confusion because Internet
users will be
deceived into believing that Respondent’s website is sponsored
by, affiliated with, or approved by MatchNet and AMERICAN SINGLES.
B.
Respondent
1. Complainant’s
mark is a generic term containing the words “AMERICAN” and “SINGLES,” which are
commonly used in the online personals
business (hereinafter “online dating”) in
which both Complainant and Respondent are engaged. The term describes both the target end user for the online dating
business, as well as what such end user would expect to find at
the site: namely, “singles” (i.e., unmarried people, or those not in a relationship) living in
“America.” Accordingly, Complainant has
no enforceable trademark rights under the Policy, notwithstanding its
registered trademark. In addition, the
registration date for Complainant’s mark is subsequent to the registration date
of the disputed domain name, which
was registered by Respondent more than two
years before the trademark registration date.
Thus, Complainant does not have enforceable trademark rights for purposes
of this proceeding.
2. Respondent
has rights and a legitimate interest to the disputed domain name because
Respondent has been using the geographically descriptive
domain name <americasingle.com>
to offer online dating services. The
use of this geographically descriptive term is consistent with Respondent’s
overall marketing strategy, which owns over 200 other
geographically,
ethnically, and other topically descriptive online dating domain names,
including the term “single” or “singles.”
Complainant, itself, has engaged in a business relationship with
Respondent and is estopped from claiming that Respondent is not engaged
in the
bona fide offering of services in connection with the disputed domain name.
3. Respondent
did not register, and has not used, the disputed domain name in bad faith. The disputed domain name incorporates the
term “America Single” which is entirely appropriate to use for online dating
services marketed
to singles living in America. Under the Policy, anyone is entitled to use a descriptive term
domain name to promote a service it describes.
Complainant has not demonstrated that the dispute domain name was
acquired primarily for the purpose of selling, renting or transferring
it to
Complainant; to prevent Complainant from reflecting its trademark in a domain
name; or to disrupt Complainant’s business or
attract customers seeking to
purchase its products. The descriptive
term “American single” has widespread third-party use and Complainant does not
have exclusive rights to it.
FINDINGS AND DETERMINATIONS
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;
(2)
the
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.
It is evident that the disputed domain
name is confusingly similar to Complainant’s AMERICAN SINGLES mark. This is because Respondent has merely
removed the “n” from “American” and the “s” from “singles.” It has been held that the omission of
letters from a mark is not sufficient to avoid a finding under Policy
¶4(a)(i). See State
Farm Mut. Auto. Ins. Co. v. Try Harder & Co., FA 94730 (Nat.
Arb. Forum June 15, 2000) (finding that the domain name <statfarm.com> is
confusingly similar to Complainant’s
STATE FARM mark); see also Compaq
Info. Techs. Group, L.P. v. Seocho, FA 103879 (Nat. Arb. Forum Feb.
25, 2002) (finding that the domain name <compq.com> is confusingly
similar to Complainant’s
COMPAQ mark because the omission of the letter “a” in
the domain name does not significantly change the overall impression of the
mark).
The first prong of Complainant’s required
proof has been established, but, as we shall see, the second and third required
prongs under
the Policy cannot be.
Professor McCarthy in his treatise Trademarks
and Unfair Competition (Update 3/2003) teaches us at section 12.1 (page
12-5):
A mark answers the buyer’s questions ‘Who
are you? Where do you come from?’ ‘Who vouches for you?’ But the name of the product answers the
question ‘What are you.’ Many
competitive products will give the same answer, regardless of source of origin
– e.g., a personal computer, a type of restaurant,
a bar of soap. Such generic
designations tell the buyer what the product is, not where it came from. If the public chooses to call a product a
‘Thermos’ bottle rather than a ‘THERMOS brand vacuum-insulated bottle,’ then
‘Thermos’ is
not serving as a mark – it is used as a generic name, regardless
of the producer’s intentions.
An analogy is to the case where a person
is asked ‘Who are you?’ If he answers,
‘I am a human, homo sapiens,’ he is not telling the questioner who he is, but what he is. He has answered
by giving his generic identification – not a name by which he can be identified
and distinguished from all other human
beings within that genus. So it is with the buyer who unconsciously
asks the product, ‘Who are you?’
The concepts of ‘generic name’ and
‘trademark’ are mutually exclusive.
Thus, if, in fact, a given term is ‘generic,’ it can never function as a
mark to identify and distinguish the products of only one
seller. (Footnotes omitted; emphasis in original.)
And, at section 12.2 (page 12-7), it is
said:
Generic names are regarded by the law as
free for all to use. They are in the
public domain. As the U.S. Supreme
Court stated: ‘Sharing in the goodwill
of an article unprotected by patent or trademark is the exercise of a right
possessed by all – and in the
free exercise of which the consuming public is
deeply interested.’ To grant an
exclusive right to one firm of use of the generic name of a product would be
equivalent to creating a monopoly in that
particular product, something that
the trademark laws were never intended to accomplish. (Footnotes omitted.)
Thus, it is vital to determine whether
Complainant’s mark is generic and unprotectible.[1]
Genericness is a question of fact.[2] However, when the mark owner has a federal
registration, there is a presumption that the term is not generic, and the
challenger bears
the burden of rebutting the presumption.[3]
The Panelist finds and determines that
Respondent has carried his required burden of proof in establishing that
Complainant’s mark
is generic.
The terms “American” and “single” are
generic. The first definition of the
adjective “single” at page 1100 of Webster’s Ninth New Collegiate Dictionary
(1983) is “not married.”
Clearly, then, the Panelist believes that
in the public mind, the mark will be regarded as generic, meaning an American
who is unmarried,
and on the Internet providing a place for unmarried Americans
to meet.
This finding and determination is
enhanced because Respondent has registered domain names containing the
“singles” term to communities
across the globe by nationally, ethnicity,
religion, interest groups, etc., in comprehensive fashion. Respondent’s “singles” branding strategy was
in place long before Respondent registered the disputed domain name <americasingle.com>
in May 2000, beginning as early as August 1997 when Respondent registered
<Jewishsingles.net>. To date,
Respondent has registered, and is using, over 200 descriptive “singles” domain
names.
As further evidence of the public
perception of the term “American singles,” it appears there is extensive
third-party use of the
term. An
advanced <google.com> search for the term “American singles,” and
“American Single,” excluding “MatchNet” (to eliminate results
related to
Complainant) yielded over 95,000 combined third-party uses respectively of the
descriptive terms (61,700 for “American
singles” and 34,900 for “American
single”).
The Panelist, accordingly, finds and
determines that Respondent has rights and a legitimate interest in the disputed
domain name because
Complainant’s mark is generic.[4]
Having found and determined that
Complainant’s mark is generic, it must follow that Respondent did not register
nor is he using the
disputed domain name in bad faith.[5]
Respondent has charged Complainant with attempting
to reverse hijack the disputed domain name.[6]
The Panelist declines to so find because
Complainant’s mark was federally registered and, thus, presumptively valid.
This, in the Panelist’s view, is
demonstrable evidence of Complainant’s good faith and justification.
DECISION
Having
failed to establish all three elements required under ICANN Policy, the Panel
concludes that relief sought by Complainant shall
be DENIED.
JUDGE IRVING H. PERLUSS
(Retired), Panelist
Dated: August 4, 2003
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