Spark Networks Limited v. Joel Blatt
Claim Number: FA0806001199331
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.
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.
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 firstname.lastname@example.org 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.
Complainant requests that the domain name be transferred from Respondent to 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
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.
[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).
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
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National Arbitration Forum