national arbitration forum

 

DECISION

 

eHarmony, Inc. v. Stephen Warr

Claim Number: FA1008001341380

 

PARTIES

Complainant is eHarmony, Inc. (“Complainant”), represented by Lisa Greenwald-Swire, of Fish & Richardson P.C., California, USA.  Respondent is Stephen Warr (“Respondent”), England.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <eharmonyswingers.com>, registered with TUCOWS, INC.

 

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.

 

Judge Ralph Yachnin as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on August 16, 2010.

 

On August 17, 2010, TUCOWS, INC. confirmed by e-mail to the National Arbitration Forum that the <eharmonyswingers.com> domain name is registered with TUCOWS, INC. and that Respondent is the current registrant of the name.  TUCOWS, INC. has verified that Respondent is bound by the TUCOWS, 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 August 17, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 6, 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@eharmonyswingers.com by e-mail.  Also on August 17, 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.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On September 20, 2010, pursuant to Complainant'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" through submission of a Written Notice, as defined in Rule 1.  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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <eharmonyswingers.com> domain name is confusingly similar to Complainant’s EHARMONY mark.

 

2.      Respondent does not have any rights or legitimate interests in the <eharmonyswingers.com> domain name.

 

3.      Respondent registered and used the <eharmonyswingers.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, eHarmony, Inc., is an international online provider of dating and relationship services.  Complainant currently has more than twenty million registered users in more than 200 countries.  Complainant owns several trademark registrations with the United States Patent and Trademark Office ("USPTO") for its EHARMONY mark (e.g., Reg. No. 2,764,705 issued September 16, 2003).  Complainant also owns several trademark registrations with governmental trademark authorities worldwide including the European Union’s Office for Harmonization of the Internal Market (“OHIM”) (e.g., Reg. No. 4118709 issued January 24, 2006).  

 

Respondent, Stephen Warr, registered the <eharmonyswingers.com> domain name on June 24, 2009.  Respondent’s disputed domain name resolves to a website that offers adult-oriented dating services as well as adult oriented material.

 

DISCUSSION

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.

 

Identical and/or Confusingly Similar

 

The Panel finds that Complainant has established rights in its EHARMONY mark under Policy ¶ 4(a)(i) through its trademark registrations with the USPTO (e.g., Reg. No. 2,764,705 issued September 16, 2003) and OHIM (e.g., Reg. No. 4118709 issued January 24, 2006).  See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that the complainant’s federal trademark registrations for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)); see also Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (finding that the complainant had established rights in the GOOGLE mark through its holding of numerous trademark registrations around the world).

 

Complainant contends that Respondent’s <eharmonyswingers.com> domain name is confusingly similar to Complainant’s EHARMONY mark.  Complainant notes that Respondent’s disputed domain name contains Complainant’s entire mark while adding the generic term “swingers” and the generic top-level domain (“gTLD”) “.com.”  Complainant contends that the additions made to its mark by Respondent are not sufficient to render the domain name distinct from Complainant’s mark.  The Panel agrees and finds that Respondent’s disputed domain name is confusingly similar to Complainant’s EHARMONY mark pursuant to Policy ¶ 4(a)(i).  See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Warner Bros. Entm’t Inc. v. Rana, FA 304696 (Nat. Arb. Forum Sept. 21, 2004) (finding that the addition of the generic term “collection” to Complainant’s HARRY POTTER mark failed to distinguish the domain name from the mark); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).

 

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.        

 

Rights or Legitimate Interests

 

Complainant has alleged that Respondent does not possess rights and legitimate interests in the <eharmonyswingers.com> domain name under Policy ¶ 4(a)(ii).  Complainant is required to produce a prima facie case in support of these allegations.  Once Complainant has produced a prima facie case the burden of proof shifts to Respondent to display that it does possess rights and legitimate interests in the disputed domain name.  See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (finding that if the complainant satisfies its prima facie burden, “then the burden shifts to the respondent to show that it does have rights or legitimate interest in the subject domain names.”); see also Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name).  The Panel finds that Complainant has established a prima facie case that Respondent lacks rights and legitimate interests in the <eharmonyswingers.com> domain name.  Respondent has failed to respond to these proceedings, and as such the Panel finds that it may infer that Respondent lacks rights and legitimate interests in the disputed domain name.  See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“[Rule 14(b)] expressly provide[s] that the Panel ‘shall draw such inferences’ from the Respondent’s failure to comply with the rules ‘as it considers appropriate.”).  However, the Panel will analyze the evidence on record to determine whether Respondent has rights and legitimate interests in the disputed domain name under Policy ¶ 4(c). 

 

Complainant contends that Respondent is not commonly known by the disputed domain name, nor has Respondent been given authorization to use Complainant’s EHARMONY mark.  The WHOIS information for the <eharmonyswingers.com> domain name identifies “Stephen Warr” as the registrant, which the Panel finds to be not similar to the disputed domain name.  Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).  See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).

 

Complainant argues that Respondent does not have rights or legitimate interests in the <eharmonyswingers.com> domain name.  Complainant alleges that Respondent is using the disputed domain name to send Internet users to an adult-oriented dating website that displays adult-oriented images and offers adult-oriented chat and video services.  Complainant further contends that Respondent is using the disputed domain name to offer competing or related services that Complainant offers under its EHARMONY mark.  The Panel finds that Respondent’s use of the disputed domain name is not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See Herbalife Int’l of Am., Inc. a wholly owned subsidiary of Herbalife Int’l, Inc. v. onle c/o onle fre, FA 1319972 (Nat. Arb. Forum April 22, 2010) (“use of the disputed domain name to link Internet users seeking Complainant’s goods to adult oriented content is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii); see also Target Brands, Inc. v. Bealo Group S.A., FA 128684 (Nat. Arb. Forum Dec. 17, 2002) (finding that use of the <targetstore.net> domain name to redirect Internet users to a pornographic website did not equate to a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of a domain name under Policy ¶ 4(c)(iii)).

 

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

 

Registration and Use in Bad Faith

 

Complainant contends that Respondent is using the disputed domain name to divert Internet users seeking Complainant’s official <eharmony.com> website to Respondent’s website that offers similar services.  The Panel infers that such use by Respondent results in the disruption of Complainant’s online presence and is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).  See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business.  The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also Marriott Int’l, Inc. v. MCM Tours, Inc., FA 444510 (Nat. Arb. Forum May 6, 2005) (“The Respondent is a travel agency and thus operates in the same business as the Complainant. The parties can therefore be considered as competitors. The Panel thus finds that the Respondent registered the domain name primarily for the purpose of disrupting the business of a competitor, which constitutes evidence of registration and use in bad faith under Policy 4(b)(iii).”).

 

Complainant further alleges that Respondent’s diversion of Internet users seeking Complainant’s products to Respondent’s website that offers adult-oriented dating services as well as related chat, video and image services is for Respondent’s commercial gain.  Further, Complainant argues that Respondent’s website creates confusion for Internet users as to the source and affiliation of the content and services offered on Respondent’s website.  The Panel finds that Respondent’s use of the <eharmonyswingers.com> domain name to advertise and offer adult-oriented dating services as well as other related adult-oriented content, presumably for financial gain, is further evidence of Respondent’s bad faith registration and use under Policy ¶ 4(b)(iv).  See Google Inc. v. Bassano, FA 232958 (Nat. Arb. Forum Mar. 8, 2004) (holding that the respondent’s use of the <googlesex.info> domain name to intentionally attract Internet users to a website featuring adult-oriented content constituted bad faith registration and use under Policy ¶ 4(b)(iv)); see also Wells Fargo & Co. v. Party Night Inc., FA 144647 (Nat. Arb. Forum Mar. 18, 2003) (finding that the respondent’s tarnishing use of the disputed domain names to redirect Internet users to adult-oriented websites was evidence that the domain names were being used in bad faith).

 

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.        

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <eharmonyswingers.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Hon. Ralph Yachnin, Panelist

Justice, Supreme Court, NY (Ret)

 

Dated:  September 23, 2010

 

 

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