Romantic Tours, Inc. v. Whois Privacy Protection Service, Inc.
Claim Number: FA1003001316557
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.
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.
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 email@example.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.
Complainant requests that the domain name be transferred from Respondent to 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.
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.
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.
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)).
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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