Spark Networks Limited v.
Joel Blatt
Claim Number: FA0806001199331
PARTIES
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 <sparkbliss.com>, registered with Schlund+Partner
Ag.
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.
Honorable Charles K. McCotter, Jr. (Ret.),
Joel M. Grossman and Jonas Gulliksson as Panelists.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on June 4, 2008; the
National Arbitration Forum received a hard copy of the Complaint on June 5, 2008.
On June 6, 2008, Schlund+Partner Ag confirmed by e-mail to the
National Arbitration Forum that the <sparkbliss.com> domain name is
registered with Schlund+Partner Ag and
that the Respondent is the current registrant of the name. Schlund+Partner
Ag has verified that Respondent is bound by the Schlund+Partner Ag 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 9, 2008, a Notification
of Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of June 30, 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 postmaster@sparkbliss.com by e-mail.
A timely Response was received and determined to be complete on June 24, 2008.
On July 3, 2008, pursuant to Respondent’s request
to have the dispute decided by a three-member
Panel, the National Arbitration Forum
appointed Honorable Charles K. McCotter, Jr., Joel M. Grossman and Jonas
Gulliksson as Panelists.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant Spark Networks Limited is
an English limited company with its principal place of business in Beverly
Hills, California (Up until January 10, 2005, Complainant was operating
under the name MatchNet pic; however, on January 10, 2005, MatchNet pic re-branded
its name to Spark Networks). Complainant also has
offices in
Complainant holds
several registered trademarks which prominently feature the SPARK term,
including, but not limited to, SPARK® (standard character) under U.S. Registration
No. 3,248,149 and SPARK NETWORKS® (standard character) under U.S. Registration
No. 3,134,171, in class 045 in connection with on-line personal introductions
through websites and interconnected global computer networks, for the purpose of
making acquaintances, friendship, and long term relationships. Said
registrations are based on applications filed in the U.S. Patent and Trademark
Office on July 13, 2003. Complainant has continuously utilized
these marks in connection with its online personals and social introduction
web sites and services since January 2005.
Complainants registrations of the SPARK® and SPARK
NETWORKS® trademarks are valid and subsisting and are prima facie evidence of Complainants exclusive rights to use said
marks in commerce on the services specified therein. Complainant has continuously used the SPARK® and SPARK
NETWORKS® trademarks in connection with the online personals services it
provides from the online personals websites it owns and via its primary
operating websites at the <spark.com> and <spark.net> domain names.
In connection with its registration of the mark and its operation of the web
sites at the <spark.com> and <spark.net> domain names, Complainant has vigorously advertised, promoted and
developed their SPARK® and SPARK NETWORKS® trademarks routinely spending
millions of dollars promoting the SPARK® and SPARK NETWORKS® brand since
inception. As a result of Complainants
extensive promotion of its SPARK® and SPARK NETWORKS® trademarks, the marks
have become recognizable through the United States and certain foreign
countries as a symbol of premier online personals services. Complainants
various online personals website are routinely ranked as some of the top
websites providing online personals services. For the year ended 2007, revenue
from subscribers to Complainants web sites totaled $65.2 million. Complainant has thus established substantial goodwill in
its trademarks, SPARK® and SPARK NETWORKS®, and consumers of online personals
services throughout the
Complainant alleges that Respondent, with actual notice
of Complainants ownership of the SPARK® and SPARK NETWORKS® marks and
Complainants operation of its official web site at the <spark.net> and <spark.com>
domain names, registered the domain name, <sparkbliss.com>,
which comprises the entirety of the SPARK® mark verbatim except with the word
"bliss" added. Respondent registered the domain name, <sparkbliss.com> through Schlund
+ Partner AG. on December 17, 2007. Respondent registered the domain name, <sparkbliss.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 Complainant. Complainant further alleges that Respondent's
registration of the domain name, <sparkbliss.com>,
is confusingly similar to the Complainants SPARK® trademark and the registered
domain names, <spark.net> and <spark.com>, for Complainants
official site. Since January 2005, Complainant has been involved in the sale of online personals services from <spark.net>
and <spark.com>, which are of an identical nature to Respondent's
services. Respondent has no rights or legitimate interest with respect to the
domain name, <sparkbliss.com>,
and is using the domain name in bad faith. The domain name, <sparkbliss.com>, was registered
by Respondent for the sole purpose of commercial gain by creating confusion
with Complainant and its
SPARK® 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 or a name
correspondent to the domain name in connection with a bona fide offering of
goods and services. Respondent was not authorized to use Complainants SPARK®
mark for any of the periods during which he has registered the domain name at
issue and has no legitimate, non-commercial or fair use of the domain name.
Respondent has intentionally attempted to attract, for commercial gain,
Internet users to Respondent's web site at <sparkbliss.com>,
by creating a likelihood of confusion with the Complainants SPARK® and SPARK
NETWORKS® marks as to the source, sponsorship, affiliation, or endorsement of
Respondent's web site at <sparkbliss.com>.
Upon entering this domain name, Internet users are confronted with a web page
which is strikingly similar to the home page of Complainants official website
at <spark.com> and <spark.net>. The same font and same shade of
orange in that font is utilized for content at the site and the design of the
web pages featuring small photos of various individuals is markedly similar.
Overall, the tone and contents of the home page are substantially similar to
the home page at <spark.com> and <spark.net>. Complainant is likely to be damaged by the continued
operation of Respondent's web site at <sparkbliss.com>
in that the prima facie effect as it
will tend to impair Complainants right to use of its Spark trademarks by
creating the potential for substantial dilution and consumer deception and
confusion because Internet users will be deceived into believing that
Respondent's web site is sponsored by, affiliated with, or somehow approved by Complainant. Complainant is also concerned that online users have
provided sensitive personal information to the Respondent under the erroneous
belief and/or assumption that the services provided by the Respondent are
sponsored, affiliated with, or somehow approved by Complainant.
B. Respondent
[a.] <sparkbliss.com>
is NOT Confusingly Similar To Complainant's Marks
The domain name at issue is not identical to either of the
Complainants trademarks, because <sparkbliss.com> is not identical
to "spark" or "sparknetworks." The issue is whether the domain
name is confusingly similar with the Complainant's alleged marks. The
Respondent submits that the addition of "bliss" to the term
"spark" is not confusingly similar with the Complainant's trademarks.
Respondent has rights and legitimate
interests in the name <sparkbliss.com>
because he made demonstrable preparations to use, and did use, the domain name,
prior to notice of this dispute, to make a bona fide offering of goods or
services pursuant to the Policy 4(c)(i).
Respondent secured the domains <sparkbliss.com> and
<sparkbliss.net> on December 17, 2007. Respondent promptly applied for
trademark protection for the mark "sparkbliss." Application for the
mark was confirmed as received by the United States Patent and Trademark Office
("USPTO") on February 11, 2008. Both domains went into public
"beta" production on approximately March 9, 2008. On June 11, 2008,
the USPTO confirmed "The mark of the application identified appears to be
entitled to registration," and scheduled the mark to be published for
opposition on July 1, 2008. All of these actions were undertaken well before
notice of any dispute by the Complainant.
Respondent initially chose to register
the disputed domain name because the name <sparkbliss.com> is comprised
of common terms routinely used in everyday language to describe a mental state
of beginning to feel happiness or other emotions, particularly in description
of romantic relationships or feelings.
Previous UDRP decisions have
recognized a respondent' s rights to use domain names
comprised of descriptive terms that are not exclusively associated with
Complainant's business. See
Energy Source Inc. v. Your Energy Source, FA 96364 (Nat.
Arb. Forum Feb. 19, 2001) (finding that a respondent has
rights and legitimate interests in the domain name where "Respondent has
persuasively shown that the domain name is comprised of generic and/or
descriptive terms, and, in any event, is not exclusively associated with
Complainant's business"); see also
Coming Attractions, Ltd. v. Comingattractions.com, FA 94341 (Nat. Arb.
Forum May 11, 2000) (finding a respondent had the right to register the subject
domain name, "comingattractions.com" based upon the generic use of
the term "coming attractions"); see
also Successful Money Mgmt. Seminars, Inc. v. Direct Mail Express, FA 96457
(Nat. Arb. Forum Mar. 7, 2001) (finding that "seminar" and
"success" are generic terms to which the Complainant cannot maintain
exclusive rights). In the present case, the descriptive words "spark"
and "bliss" are routinely used to describe the beginning of a feeling
of happiness in such varied forms as romance novels, relationship advice, and
poetry. As the examples show, "bliss" and "spark" are
routinely used descriptively in a variety of circumstances.
Respondent uses the combination of
descriptive terms to describe what a consumer may expect to find at
Respondent's website: an opportunity to spark blissful feelings by engaging in
Respondent's networking service. See Eastbay Corp. v. VerandaGlobal.com, Inc., FA 105983 (Nat. Arb.
Forum May 20, 2002) (finding that using a domain name consisting of a common
descriptive and generic expression as a portal to a website featuring various
advertisements and links is a bona fide offering of goods or services); see also Verkaik v. Crownonlinemedia.com,
D2001-1502 (WIPO Mar. 19, 2002) (finding that the respondent's use of the
"skyart.com" domain name to sell "digital and photo images of
Southwest scenes, especially the sky" bestowed rights and legitimate
interests in the domain name). Given that the words "spark" and
"bliss" are used generically by others, as shown, and are descriptive
of the services offered by the Complainant, the Respondent and others, the
Respondent's use of the domain name <sparkbliss.com>
is legitimate.
ICANN Policy If 4(c)(ii)
Respondent's business has been
commonly known by the name "sparkbliss." Respondent's trademark
application, filed well before notice of any dispute, reflected an applicant
name of "SigTran Consulting DBA Sparkbliss". Respondent's pending
trademark application, scheduled to be published for opposition in early July,
further buttresses Respondent's claim that his business has been and will
continue to be commonly known as "sparkbliss."
ICANN Policy If 4(c)(iii)
Respondent is making a legitimate use
of the domain name by providing its unique service, unlike services provided by
Complainant, on a developed and productive website. Respondent registered the
domain name and registered the trademark without any personal knowledge of the
existence of "Spark" or "Spark Networks" as the parent
company of web sites such as <jdate.com> or <americansingles.com>.
<sparkbliss.com> is not an online personals site like each of Spark
Networks web sites. In fact, the key to branding <sparkbliss.com> is to disassociate itself from anything
resembling Spark Network's marks and web sites. Respondent's trademark
application reflects this disassociation in that it seeks protection in an entirely
different International Class of goods than the trademarks held by Complainant.. Notably, Respondent has not received any notice of
consumer confusion between the marks of Complainant and Respondent. It must be
further presumed that Complainant has received no such complaints, because any
such evidence of consumer confusion would certainly have been included in
Complainant's prayer for relief.
[c.] <sparkbliss.com>
is NOT Registered or Used In Bad Faith
Complainant has failed to meet its
burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii) because Complainant has simply made general
allegations of bad faith without any support for its allegations. See Graman USA Inc. v.
Shenzhen Graman Indus. Co., FA 133676 (Nat. Arb. Forum Jan. 16,
2003) (finding that general allegations of bad faith without supporting facts
or specific examples do not supply a sufficient basis upon which the panel may
conclude that the respondent acted in bad faith); see also Loris Azzaro BV, SARL v. Asterix, D2000-0608 (WIPO Sept.
4, 2000) ("Mere belief and indignation by Complainant that Respondents
have registered and are using the Domain Name in bad faith are insufficient to
warrant the making of such a finding in the absence of conclusive evidence.").
First, Complainant has pointed to no
circumstances indicating that Respondent has registered the domain name for the
purpose of selling the name to Spark Networks, to disrupt the business of Spark
Networks, or from preventing Spark Networks from reflecting the mark in a
corresponding domain name. Indeed, Complainant has not identified any such
situation because such factual circumstances simply do not exist in this
matter.
Second, Respondent made no attempts to
hide his registration of the name <sparkbliss.com>. Respondent provided
accurate WHOIS registration data at time of registration and has maintained the
accuracy of the WHOIS information throughout these proceedings. It is hard to
imagine an operator in bad faith that would be so forthcoming about his identity.
Finally, as previously discussed,
Respondent did not register <sparkbliss.com> in bad faith because
Complainant's mark is simply comprised of common terms. See Canned Foods Inc. v. Ult. Search Inc., FA 96320 (Nat. Arb.
Forum Feb. 13, 2001) (holding that where the domain name is a generic term, it
is difficult to conclude that there was a deliberate attempt to confuse on
behalf of the respondent); see also
Lowestfare.com LLC v. US Tours & Travel, Inc., AF-0284 (eResolution
Sept. 9, 2000) (finding no bad faith where the respondent was using the
descriptive domain name "thelowestfare.com" to lead consumers to a
source of lowest fares in good faith). As in Lowestfare.com LLC, the present
matter involves Respondent's uses the descriptive domain name <sparkbliss.com>
in good faith to lead consumers to a developed website where consumers may
spark blissful interactions with others. Accordingly, the Respondent cannot be
considered to be using the name <sparkbliss.com> in bad faith.
DISCUSSION AND FINDINGS
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.
Complainants trademark registration with
the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,248,149
issued May 29, 2007) adequately confers rights in the SPARK mark to Complainant
pursuant to Policy ¶ 4(a)(i).
See Expedia, Inc. v. Emmerson, FA 873346 (Nat. Arb. Forum Feb. 9, 2007) (“Complainant’s trademark registrations with the USPTO adequately demonstrate its rights in the [EXPEDIA] mark pursuant to Policy ¶ 4(a)(i).”); see also State Farm Mut. Auto. Ins. Co. v. Malain, FA 705262 (Nat. Arb. Forum June 19, 2006) (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy ¶ 4(a)(i).”).
The Panel holds that the words "spark" and "bliss" are
sufficiently distinctive or at least suggestive in relation to the services
provided on the respective websites. The combination of the words
"spark" and "bliss" into "sparkbliss" does not
necessarily create a different overall impression. However, according to international trademark
principles, a case where a trademark consists of an older mark with the
addition of some descriptive or generic suffix is normally considered as a
matter of confusing similarity. In this case, however, the addition of
"bliss" to "spark" does not constitute merely an addition
of a non-distinctive suffix and this would speak in favour of an opinion that
there is no confusing similarity. There is, however, another element to be
considered, namely whether there is any likelihood of association between the
domain names "spark" and "sparkbliss".
The disputed domain name
contains the SPARK mark in its entirety and adds the word “bliss,” as well as
the generic top-level domain “.com.” The
Panel finds that these changes do not sufficiently distinguish the <sparkbliss.com> domain name, and
therefore concludes it is confusingly similar to Complainant’s mark pursuant to
Policy ¶ 4(a)(i).
The Panel holds that Complainant has not
established a prima facie case in support of its arguments that
Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii). See Terminal Supply, Inc. v.
HI-LINE ELECTRIC, FA 746752 (Nat. Arb. Forum Aug. 24, 2006)
(holding that the complainant did not satisfactorily meet its burden and as a
result found that the respondent had rights and legitimate interests in the
domain name under UDRP ¶ 4(a)(ii)); see
also Workshop Way, Inc. v. Harnage, FA
739879 (Nat. Arb. Forum Aug. 9, 2006) (finding that the respondent overcame the
complainant’s burden by showing it was making a bona fide offering of
goods or services at the disputed domain name).
The Panel finds that Respondent
may have a legitimate interest to the domain through his pursuit of a
trademark. Respondent has made demonstrable
preparations to use, and has indeed used, the <sparkbliss.com> domain name in connection
with a bona fide offering of goods or
services under Policy ¶ 4(c)(i). See Canned
Foods, Inc. v. Ult. Search Inc., FA 96320 (Nat. Arb. Forum Feb. 13, 2001)
(stating that “Respondent is using the domain <groceryoutlet.com> for a
website that links to online resources for groceries and similar goods. The
domain is therefore being used to describe the content of the site,” as
evidence that the respondent was making a bona fide offering of goods or
services with the disputed domain name); see
also Downstream Exch. Co. v.
Downstream Energy, FA 96304 (Nat. Arb. Forum Feb. 2, 2001) (finding
that the respondent established rights in the <downstreamexchange.com>
domain name pursuant to Policy ¶ 4(c)(i) by obtaining “the domain name in
contemplation of creating and operating an Internet auction exchange” and
showing demonstrable preparations for such use).
Complainant has failed to show that Respondent registered the domain name with Complainant's mark in mind. There is no evidence that Respondent registered its domain name only to cause detriment to Complainant's business or only for the purpose of selling it. On the contrary, Respondent is actually using it on web pages.
The Panel finds that Complainant failed to meet the burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii). See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that the respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish Policy ¶ 4(a)(iii); see also Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the panel may conclude that the respondent acted in bad faith).
DECISION
The Complainant having failed to fulfill Policy 4(a)(ii)and (iii) as required under the ICANN Policy, the Panel
concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <sparkbliss.com> domain name
registration REMAIN with Respondent.
Jonas Gulliksson, Honorable Charles K.
McCotter, Jr. (Ret.) and Joel M. Grossman, Panelists
Dated: July 17, 2008
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