Romantic Tours, Inc. v. Whois Privacy
Protection Service, Inc.
Claim Number: FA1003001316557
PARTIES
Complainant is Romantic Tours, Inc. (“Complainant”), represented by Joseph J. Weissman, of Johnson, Pope, Bokor, Ruppel & Burns, LLP, Florida, USA. Respondent is Whois Privacy Protection Service, Inc. (“Respondent”), represented by Jim McDonald.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <jimslists.com>,
registered with Godaddy.com, Inc.
PANEL
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.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on March 31, 2010.
On April 1, 2010, Godaddy.com, Inc. confirmed by e-mail to the National
Arbitration Forum that the <jimslists.com>
domain name is registered with Godaddy.com, Inc. and that the Respondent is the
current registrant of the name.
Godaddy.com, Inc. has verified that Respondent is bound by the
Godaddy.com, Inc. 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 April 8, 2010, the Forum served the Complaint and all Annexes,
including a Written Notice of the Complaint, setting a deadline of April 28,
2010 by which Respondent could file a Response to the Complaint, via e-mail to
all entities and persons listed on Respondent’s registration as technical,
administrative, and billing contacts, and to postmaster@jimslists.com. Also on April 8, 2010, the Written Notice of
the Complaint, notifying Respondent of the email addresses served and the
deadline for a Response, was transmitted to Respondent
via post and fax, to all entities and persons listed on Respondent’s
registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on April
8, 2010.
An Additional Submission was received from Complainant on April 13, 2010 and found to be timely and complete pursuant to the National Arbitration Forum’s Supplemental Rule 7.
On April 14, 2010, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed
An Additional Submission was submitted by
Complainant on April 19, 2010 and was determined to be deficient. The Panel has
chosen not to consider this Additional Submission in its Decision.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant contends that he is the owner of the federally registered
HOT RUSSIAN BRIDES® and HOTRUSSIANBRIDES.COM® trademarks.
Complainant further contends that he operates its business at its <hotrussianbrides.com>
website working with over one-hundred fifty (150) Russian and Ukrainian
placement agencies to facilitate its matchmaking.
Complainant further contends that he first registered the
hotrussianbrides.com domain on August 25, 2003 and that since 2004 Complainant
has served over 150,000 customers under its HOT RUSSIAN BRIDES® and
HOTRUSSIANBRIDES.COM® trademarks.
Respondent registered the disputed domain <jimslists.com> with a <jimslists.com/agencies/hotrussianbrides>
post-domain on May 4, 2009, which is four-and-a-half years after the Complainant
applied its HOT RUSSIAN BRIDES® trademark for registration and about
six months after the Complainant applied
to register its HOTRUSSIANBRIDES.COM® trademark with the United
States Patent and Trademark Office.
Respondent does not operate a genuine business at the <jimslists.com> domain with its <jimslists.com/agencies/hotrussianbrides>
post-domain, but uses its domain and post-domain to attract those interested in
the services under the HOT RUSSIAN BRIDES® trademark in order to
defame Complainant and divert customers to competing websites for the purpose
of making profits from these competing websites.
Based on these contentions, Complainant further alleges that:
1. Respondent’s registered domain name is confusingly similar to the
federally-registered trademarks HOT RUSSIAN BRIDES® and
HOTRUSSIANBRIDES.COM®;
2. Respondent has no rights or legitimate interests in its registered <jimslists.com> domain and for
its <jimslists.com/agencies/hotrussianbrides> post-domain.
3. Respondent registered and maintains its domain in bad faith.
B. Respondent
Respondent contends that his name is Jim and that he has owned the
disputed domain for several years. Respondent further alleges that he is known
by name by thousands of men around the world as the individual owner of
jimslists.com.
Complainant is dissatisfied with subpages titled
jimslists.com/hotrussianbrides.com.
Respondent contends that he has deleted these pages and removed all
references to “hotrussianbrides” from his website and that he did not make his
website in bad faith.
C. Additional Submissions
Complainant filed its Additional Written Statement on April 13, 2010 pursuant to UDRP Supplemental Rule 7(a).
Complainant contends that the
Response filed by Respondent on April 8, 2010 is deficient and constitutes an
additional evidence of bad faith.
FINDINGS
Complainant has established that it has
rights in the HOT RUSSIAN BRIDES® and HOTRUSSIANBRIDES.COM® trademarks
based on federal registration with the United States Patent and Trademark
Office. Complainant produced sufficient evidences to confirm registration of
the HOT RUSSIAN BRIDES® trademark (reg. no. 3159522 issued October
17, 2006 filed October 1, 2004) and HOTRUSSIANBRIDES.COM® trademark (reg.
no. 3602236 issued April 7, 2009 filed September 2, 2008) in class 45 for “dating
and marriage partner introduction services”. The evidences submitted by
Complainant further show that the date of first use in commerce for both marks
is May 13, 2004.
Based on the provided evidences, Complainant
further established that it first registered the hotrussianbrides.com domain on
August 25, 2003.
Complainant further established that the
disputed domain <jimslists.com> was registered by Respondent on May 4,
2009, namely almost six years after Complainant registered its <hotrussianbrides.com>
domain and over five years after Complainant started using its HOT RUSSIAN
BRIDES® and HOTRUSSIANBRIDES.COM® trademarks in commerce.
Complainant contends that Respondent does not
operate a genuine business at the <jimslists.com> domain with its post-domain
and, thus, uses its domain and post-domain to attract those interested in HOT
RUSSIAN BRIDES® and its services to spread mistruths about
Complainant and attract customers to its own competing websites that “Jim
Personally Recommends”.
Based on the provided evidences, particularly
the submitted print-outs of search results from the google search engine and
print-outs of the relevant pages from the webpage http://jimslists.com/agencies/hotrussianbrides.html,
Complainant established that the use of the sign “hotrussianbrides” within the
disputed domain may lead customers interested in HOT RUSSIAN BRIDES®
services to the <jimslists.com> domain. Complainant further established
that the contents of the web pages at the <jimslists.com> domain do not relate
to Respondent’s genuine business, but particularly contains information on HOT
RUSSIAN BRIDES® services of defaming character.
Complainant further established that JIMSLISTS.COM
is affiliated with competing websites to include <loveme.com>, <luckylovers.net>
and/or <elenasmodels.com> as the evidences show that the mentioned
websites are linked to the <jimslists.com/agencies/hotrussianbrides>
post-domain.
Complainant also produced evidences
establishing that Respondent contacted him via e-mail, admitted that his
website had caused Complainant monetary losses and requested that Complainant
and other businesses involved make an offer to buy his website.
In its Response submitted on April 8, 2010,
which is deficient in light of the requirements of UDRP Supplemental Rule 5(a)
and 5(b), Respondent represents himself as “Jim McDonald” and asserts that he
is known by name by thousands of men around the world as the individual owner
of jimslists.com. No evidences have been provided to support these
controversial allegations.
DISCUSSION
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.
Pursuant to Paragraph 4(a)(i)
of the Policy, Complainant established its rights in the HOT RUSSIAN BRIDES®
and HOTRUSSIANBRIDES.COM® trademarks through their registration with
the United States Patent and Trademark Office (USPTO) (Reg. No. 3,159,522
issued October 17, 2006 filed October 1, 2004 and Reg. No. 3,602,236 issued
April 7, 2009 filed September 2, 2008). See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum
July 12, 2006) (finding that the complainants had established rights in marks
where the marks were registered with a trademark authority); see also 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
mark pursuant to Policy 4(a)(i)).
These are the rights on which Complainant
relies in claiming trademark infringement and seeking relief against the use of
its registered trademark in the post-domain in question under the UDRP.
The Panelist notes that the UDRP
does not offer relief for infringements via use of registered trademarks in
post-domains and that the proceedings
under the UDRP may be applied only to domain names.
The Panelist finds that as none of the elements of the registered “HOT RUSSIAN BRIDES” trademark is contained within
the Respondent’s <jimslists.com> domain name, the
said domain name is neither identical nor similar with the Complainant’s
trademark as it bears no resemblance to Complainant’s mark.
Based on this conclusion, the Panelist finds that the disputed domain
name is not confusingly similar under Policy ¶ 4(a)(i).
See Thomas Cook Holdings Ltd. v. Aydin,
D2000-0676 (WIPO Sept. 11, 2000) (finding that
the domain name, <hot18to30.com>, is neither identical nor confusingly
similar to the complainant’s CLUB 18-30 trademark).
Based on the finding that Complainant has not satisfied Policy ¶ 4(a)(i), the Panelist has declined to analyze the other two
elements of the Policy. See Hugo Daniel Barbaca Bejinha v. Whois Guard
Protected, FA 836538 (Nat. Arb.
Forum Dec. 28, 2006) (deciding not to inquire into the respondent’s rights or
legitimate interests or its registration and use in bad faith where the
complainant could not satisfy the requirements of Policy ¶ 4(a)(i)).
DECISION
Based on the above findings and
conclusions, it is decided that the Claim of Romantic Tours, Inc. vs. Whois Privacy Protection Service, Inc. IS
HEREBY DISMISSED.
Dated: April 28, 2010
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