Spark Networks Limited v. D. Benare d/b/a ISystems
Claim Number: FA0805001191878
Complainant is Spark Networks Limited (“Complainant”), represented by Victor
T. Fu, of Richardson & Patel LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <jdate.net>, registered with Stargate Holdings Corp.
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.
Hon. Sir Ian Barker, QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum
On May 23, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 12, 2008 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 firstname.lastname@example.org by e-mail.
A timely Response was received and determined to be complete on
Complainant requests that the domain name be transferred from Respondent to Complainant.
The Complainant is an English company with its principal place of
The Complainant is the owner of
The Complainant uses its JDATE registered trademark in conjunction with
online dating services it provides on <jdate.com>. The Complainant alleges that with actual or
constructive notice of the Complainant’s ownership of the JDATE mark, the
Respondent registered the disputed domain name on
The Respondent has no rights or legitimate interests in respect to the disputed domain name and has registered and is using it in bad faith. The disputed domain name was registered by the Respondent for the sole purposes of commercial gain by creating confusion with the Complainant and its mark. This is an intentional attempt to attract for commercial gain Internet users to the Respondent’s website. Internet users accessing the Respondent’s website are confronted with a web page bearing the prominent title “The Jewish Dating Network” with links to various competitors of the Complainant.
The Respondent has refused to respond to the Complainant’s written demands to take down the website.
The Complainant’s registered mark is limited to supplying computer
services for the introduction for dating purposes of individuals. The Respondent’s commercial website
<magic.jdate.net> is for scheduling expression calculator software
product. The word “date” is used in the
sense of the calendar –
A non-profit website has been hosted for five years at the disputed domain name. It is run by a 30-year old non-profit organisation of Rabbis’ wives known as the “Jewish Dating Network.” It uses a “sub-domain” address. No fee has ever been charged by the Respondent for allowing the Jewish Dating Network to use the sub-domain. Nor has this network ever made any money in relation to this site which provides free advice and personal matchmaking services. It offers no computer services. In the exhibit of the Respondent’s website provided to the Panel, the Complainant has blacked out statements on the site that the organisation is not-for-profit.
Since 2002, the Respondent has been using the disputed domain name as well as the domain name <magic.jdate.net> to sell its JDate Expression Calculator software. The software has changed as new versions were developed and the home page was moved to the sub-domain to accommodate the request of the Jewish Dating Network Group. Since 2001, thousands of users have used the <jdate.net> website.
The Jewish Dating Network is a non-profit organisation operating with no intent for commercial gain. Free advice and contact information is offered at the website. The Respondent has never offered to sell the disputed domain name. He agreed to the use of the sub-domain by a group of elderly Rabbis’ wives who do charitable matchmaking. The Complainant is not a competitor of the Respondent. The Respondent sells an Expression Calculator software and has not gained from the individuals who operate the “matchmaking” service.
The Complainant has made threats of criminal prosecution and law suits against the Respondent. All various actions were resolved in the Respondent’s favour.
The fact that the Complainant has been actively aware of the disputed domain name website and has waited until now to file these proceedings should be a consideration. There is no evidence that the Respondent had actual notice of the Complainant’s trademark or the operation of its site at the time of registration of the disputed domain name in 2001.
The Respondent registered the disputed domain name primarily for use by anyone desiring to purchase its JDate Expression Calculator software. There is no infringement of the Complainant’s rights.
The Complainant has been well aware of the Respondent’s use of the site for a Jewish dating service. The Respondent obtains no benefit from this use. The only commercial gain associated with the disputed domain name is the JDate software which has nothing to do with Jewish dating agencies. Jewish Café is a competitor of the Complainant, but another competitor, Jewish Matchmaker, is listed as a worst site at the subdomain.
The Complainant did not exhibit a correct copy of the Respondent’s website. There is no evidence of Internet traffic being diverted. The Rabbi’s wives network put up the site because of constant requests for their recommendations.
The Respondent has had extensive correspondence with a Mr. Fu, representing the Complainant concerning proceedings which were resolved in the Respondent’s favour.
(a) The disputed domain name is identical to a registered trademark in which the Complainant has rights.
(b) Although the Respondent suggests that there is operating on his website by way of sub-domain, a non-commercial business without gain, there is no evidence that this business has been operating without knowledge by the Respondent of the Complainant’s activities. Consequently, the Respondent does not come within Paragraph 4(c) of the Policy.
(c) The Respondent has registered and continues to use the disputed domain name in bad faith.
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.
The disputed domain name is identical to a registered trademark in which the Complainant has rights.
Therefore, the Complainant has proved
The Complainant gave the Respondent no rights in respect of the disputed domain name. Therefore, the burden shifts to the Respondent to show that he comes within one of the limbs of Paragraph 4(c) of the Policy. It is clear that the Respondent is not commonly known by the disputed domain name. His only defence suggested under this paragraph is that he is making a legitimate non-commercial or fair use by using the disputed domain name under Paragraph 4(c)(iii).
The Respondent does not provide any affidavits or declarations under penalty in support of his contentions that the sub-domain is operated by a Jewish group on a non-commercial basis. There is no supporting evidence from this group, as one might have expected, which would have helped discharge the onus on the Respondent.
In the Panel’s view, whilst there is an unproven suggestion that the use is non-commercial, it does not appear to be a fair use because the website features links to at least one competitor of the Complainant, if not to more competitors.
In these circumstances the disputed domain name does not constitute either a bona fide offering of goods or services under Paragraph 4(c)(i) or a legitimate non-commercial or fair use under Paragraph 4(c)(iii) – See Florists Transworld Delivery v. Marleck, FA 676433 (Nat. Arb. Forum June 6, 2006), where the respondent’s use of the disputed domain name to sell flowers in competition with the complainant did not give rise to any legitimate interest in the domain name, and Expedia Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005), where the respondent’s use of the disputed domain name to redirect Internet users to a website featuring links to services that competed with the complainant’s was not a bona fide offering of goods or services or a legitimate non-commercial or fair use.
Consequently, the Panel considers Paragraph 4(a)(ii) of the Policy proved.
In the Panel’s view, the Complainant has met the burden of proof of bad faith registration and use.
The disputed domain name was registered in May 2001 after the Complainant’s trademark was granted registration by the USPTO in January 2001. The Respondent, in a fairly narrowly-defined field of interest, namely Jewish dating agencies, can be presumed to have had constructive notice of the Complainant’s trademark. See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002).
Bad faith registration and use can be inferred from the fact that the website at the disputed domain name has links to competitors of the Complainant. See Spark Networks Plc v. Houlihan, FA 653476 (Nat. Arb. Forum Apr. 18, 2006).
Moreover, the use of the disputed domain name is likely to confuse Internet users into thinking that the website has some connection with the Complainant and its services. The Complainant has been operating under <jdate.com> for many years. It is not hard to infer that the Respondent would have known of the Complainant’s activities and brand.
Although the equitable doctrine of laches does not form part of the Policy, a lengthy delay makes it very hard for a complainant to prove bad faith registration. Here the delay is seven years. However, the inferences of bad faith registration and use are sufficiently strong to overcome any difficulty caused by the delay of the Complainant in taking action.
Any use by the Respondent of the disputed domain name for promoting a calculator software product would have much greater acceptance and if there were not a Jewish dating agency accessed by the disputed domain name in direct competition with the dating service offered by the Complainant.
The Complainant has accordingly satisfied
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <jdate.net> domain name be TRANSFERRED from Respondent to Complainant.
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