Romantic Tours, Inc. v. Domain Holdings Register c/o Domain Manager Ron
Claim Number: FA0807001218410
Complainant is Romantic Tours, Inc. (“Complainant”), represented by Joseph
J. Weissman, of Johnson, Pope, Bokor, Ruppel & Burns,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hotrussionbrides.com>, registered with Fabulous.com Pty Ltd.
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 Ralph Yachnin as Panelist
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
8, 2008, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of August
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 email@example.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 5, 2008 Claimant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Ralph Yachnin as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <hotrussionbrides.com> domain name is confusingly similar to Complainant’s HOT RUSSIAN BRIDES mark.
2. Respondent does not have any rights or legitimate interests in the <hotrussionbrides.com> domain name.
3. Respondent registered and used the <hotrussionbrides.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant is a corporation that specializes in introducing
men to Russian and Ukrainian women for dating and possible marriage under the
HOT RUSSIAN BRIDES mark, which Complainant registered with the United States
Patent and Trademark Office (“USPTO”) on
Respondent registered the <hotrussionbrides.com>
domain name on
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. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
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.
The Panel finds that Complainant has established rights in
the HOT RUSSIAN BRIDES mark for purposes of Policy ¶ 4(a)(i) through its
trademark registration with the USPTO. See Men’s Wearhouse, Inc. v. Wick,
FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under
Complainant contends that
Respondent’s <hotrussionbrides.com> domain name is confusingly similar to its HOT
RUSSIAN BRIDES mark.
The <hotrussionbrides.com> domain name differs from Complainant’s mark in three ways:
(1) the spaces between the words have been removed; (2) the letter “o” has replaced
the letter “a” in the term “Russian”; and (3) the generic top-level domain
(“gTLD”) “.com” has been added. For the
purposes of Policy ¶ 4(a)(i), the deliberate introduction of a generic typo,
such as the misspelling of just one letter, does not sufficiently distinguish a
domain name from an incorporated mark, nor does the removal of spaces between
words. The addition of a gTLD also does not reduce the likelihood of confusion
between the domain name and the mark, because every domain name must contain a
gTLD. Therefore, the Panel finds that
these changes do not minimize or eliminate the resulting likelihood of
confusion, and so Respondent’s disputed domain name is not sufficiently
distinguished from Complainant’s mark pursuant to Policy ¶ 4(a)(i). See
Surface Prot. Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb.
5, 2001) (finding the domain name <mannbrothers.com> confusingly similar
to the complainant’s MANN BROTHERS mark “so as to likely confuse Internet users
who may believe they are doing business with Complainant or with an entity
whose services are endorsed by, sponsored by, or affiliated with Complainant;
hence, satisfying the confusing similarity requirement”); see also Belkin
Components v. Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001) (finding the
<belken.com> domain name confusingly similar to the complainant's BELKIN
mark because the name merely replaced the letter “i” in the complainant's mark
with the letter “e”); see also Isleworth Land Co. v. Lost in Space, SA, FA
117330 (Nat. Arb. Forum
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant contends that Respondent lacks all rights and legitimate interests in the <hotrussionbrides.com> domain name. Under Policy ¶ 4(a)(ii), after the complainant makes a prima facie case against the respondent, the respondent then has the burden of showing evidence that it does have rights or legitimate interests in the disputed domain name. Complainant has made a prima facie case under Policy ¶ 4(a)(ii). See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”).
Complainant contends that Respondent is not commonly known
by the <hotrussionbrides.com>
domain name nor has it ever been the owner or licensee of the HOT RUSSIAN
BRIDES mark. The WHOIS record for the
disputed domain name lists Respondent as “Domain
Holdings Register c/o Domain Manager Ron.” Because of this evidence, along with the fact
that Respondent has failed to show any evidence contrary to Complainant’s
contentions, the Panel finds that Respondent is not commonly known as <hotrussionbrides.com> pursuant to
Policy ¶ 4(c)(ii). See Am. Online, Inc. v. World
Photo Video & Imaging Corp., FA
109031 (Nat. Arb. Forum May 13, 2002) (finding that the respondent was not
commonly known by <aolcamera.com> or <aolcameras.com> because the respondent was doing business as
“Sunset Camera” and “World Photo Video & Imaging Corp.”); see also Am. W. Airlines, Inc. v.
Paik, FA 206396 (Nat. Arb. Forum
Respondent maintains a website at the <hotrussionbrides.com> domain name that advertises competitors of Complainant and provides hyperlinks to third-party websites, many of which belong to competitors of Complainant, and many of which include adult-oriented material. The Panel finds that this use of the <hotrussionbride.com> domain name is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Sony Kabushiki Kaisha v. Domain firstname.lastname@example.org +1.415.0, FA 128701 (Nat. Arb. Forum Dec. 16, 2002) (finding that the respondent’s use of its domain name in order to divert Internet users to a website that offers search engine services and links to adult orientated websites was not considered to be in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) or 4(c)(iii)); see also Compaq Info. Techs. Group v Jones, FA 99091 (Nat. Arb. Forum Oct. 4, 2001) (finding that the respondent had no rights or legitimate interests in a domain name that it used to redirect Internet users to a commercial website as part of that website’s affiliate program, where the resultant website contained banner ads as well as various links to offers for free merchandise, including merchandise from the complainant's competitor).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant contends that Respondent is using the disputed
domain name to divert Internet customers from Complainant’s website to
Respondent’s website at <hotrussionbrides.com>
through the confusion caused by the similarity between the HOT RUSSIAN BRIDES mark
and the <hotrussionbrides.com>
domain name. Complainant also contends
that Respondent intended to disrupt Complainant’s business by diverting
confused customers to Complainant’s competitors. The Panel finds that Respondent’s use of the
disputed domain name disrupts Complainant’s business, and is evidence of
registration and use in bad faith pursuant to Policy ¶ 4(b)(iii).
Complainant also contends that Respondent is gaining commercially through this diversion, both through click-through fees and through the competing services that Respondent is advertising. The Panel finds that this is an intentional use of the disputed domain name for commercial gain through a likelihood of confusion with Complainant’s mark, and so, pursuant to Policy ¶ 4(b)(iv), this use is also evidence of registration and use in bad faith. See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”); see also Qwest Comm’ns Int’l Inc. v. Ling Shun Shing, FA 187431 (Nat. Arb. Forum Oct. 6, 2003) (“Respondent has attempted to commercially benefit from the misleading <qwestwirless.com> domain name by linking the domain name to adult oriented websites, gambling websites, and websites in competition with Complainant. Respondent’s attempt to commercially benefit from the misleading domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv).”).
Respondent uses the <hotrussionbride.com> domain name to expose Internet visitors to adult-oriented material through advertisements for third-party businesses. The Panel finds that this use also constitutes bad faith in the registration and use of the <hotrussionbride.com> domain name pursuant to Policy ¶ 4(a)(iii). See Microsoft Corp. v. Horner, D2002-0029 (WIPO Feb. 27, 2002) (holding that the respondent’s use of the complainant’s mark to post adult-oriented material and to publicize hyperlinks to additional adult-oriented websites evidenced bad faith use and registration of the domain name); see also Ty, Inc. v. O.Z. Names, D2000-0370 Nat’l Ass’n of Stock Car Auto Racing, Inc. v. RMG Inc – BUY or LEASE by E-MAIL, D2001-1387 (WIPO Jan. 23, 2002) (“[I]t is now well known that pornographers rely on misleading domain names to attract users by confusion, in order to generate revenue from click-through advertising, mouse-trapping, and other pernicious online marketing techniques.”).
The Panel finds that Policy ¶ 4(a)(iii) has been 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 <hotrussionbrides.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: September 19, 2008
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