Ecom Holdings Pty Ltd v. Robert Funk
Claim Number: FA1009001345360
Complainant is Ecom Holdings Pty Ltd ("Complainant"), represented by John W. Dozier of Dozier Internet Law, P.C., Virginia, USA. Respondent is Robert Funk ("Respondent"), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <brazilcupidclub.com>, registered with GoDaddy.com, Inc.
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 September 8, 2010; the National Arbitration Forum received payment on September 8, 2010.
On September 9, 2010, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <brazilcupidclub.com> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the names. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On September 14, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 4, 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@brazilcupidclub.com. Also on September 14, 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 October 19, 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 Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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 <brazilcupidclub.com> domain name is confusingly similar to Complainant’s BRAZILCUPID mark.
2. Respondent does not have any rights or legitimate interests in the <brazilcupidclub.com> domain name.
3. Respondent registered and used the <brazilcupidclub.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Ecom Holdings Pty Ltd, operates an Internet dating and matchmaking service. Complainant offers its customers interaction through chat, email, video and instant messaging services. Complainant began using the BRAZILCUPID mark on June 29, 2005 when it created its official <brazilcupid.com> website. Complainant has used the disputed domain name continuously and extensively since that time and has subsequently applied for and received a trademark registration with the United States Patent and Trademark Office ("USPTO") for its BRAZILCUPID mark (Reg. No. 3,750,103 filed May 21, 2009; issued February 16, 2010).
Respondent, Robert Funk, registered the <brazilcupidclub.com> domain name on March 1, 2008. Respondent’s disputed domain name resolves to a website that purports to offer dating and matchmaking services in competition with Complainant. Respondent’s website also features advertisements and third-party links to competing websites.
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.
Complainant submits evidence to show that it owns a trademark registration with the USPTO for its BRAZILCUPID mark (Reg. No. 3,750,103 filed May 21, 2009; issued February 16, 2010). The Panel notes that Respondent’s disputed domain name was registered on July 26, 2007, which predates Complainant’s filing date for the trademark registration of May 21, 2009. The Panel finds that while Respondent’s disputed domain name registration predates Complainant’s trademark application date, Complainant may still establish common law rights in its mark for purposes of Policy ¶ 4(a)(i). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the complainant need not own a valid trademark registration for the ZEE CINEMA mark in order to demonstrate its rights in the mark under Policy ¶ 4(a)(i)); see also Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark).
Complainant has submitted evidence to show that it began operating its online dating and matchmaking service on June 29, 2005 after creating its official website at <brazilcupid.com>. Complainant contends that it has continuously and extensively used its BRAZILCUPID mark in commerce since that time. Complainant alleges that is has diligently developed its online dating website by utilizing chat, email, video and instant messaging features that have reached over fifteen million customers or potential customers. Complainant further submits evidence to show that it has subsequently applied for and received a trademark registration with the USPTO for its mark. Therefore, Complainant argues that its mark has developed secondary meaning through the continuous and extensive use of its mark in advertising and marketing Complainant’s online dating service. The Panel finds that Complainant has submitted sufficient evidence to establish common law rights in the BRAZILCUPID mark under Policy ¶ 4(a)(i). See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established); see also Kahn Dev. Co. v. RealtyPROshop.com, FA 568350 (Nat. Arb. Forum June 23, 2006) (holding that the complainant’s VILLAGE AT SANDHILL mark acquired secondary meaning among local consumers sufficient to establish common law rights where the complainant had been continuously and extensively promoting a real estate development under the mark for several years).
Complainant argues that the <brazilcupidclub.com> domain name is confusingly similar to Complainant’s BRAZILCUPID mark. Complainant argues that the domain name contains its entire mark while adding the generic term “club” and the generic top-level domain (“gTLD”) “.com,” and that such additions to its mark are not sufficient to establsih a domain name that is distinct from Complainant’s mark. The Panel finds that Respondent’s disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i). See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also 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 Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant maintains that Respondent does not have rights and legitimate interests in the <brazilcupidclub.com> domain name. Complainant is required to make 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 show that it has rights or legitimate interests in the disputed domain name. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”); see also Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”). The Panel finds that Complainant has produced a prima facie case. Due to Respondent’s failure to respond to these proceedings, the Panel may assume Respondent does not have any rights or 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 Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where the respondent fails to respond). The Panel, however, will examine the record to determine whether Respondent possesses rights or legitimate interests in the <brazilcupidclub.com> domain name pursuant to Policy ¶ 4(c).
Complainant asserts that it has not granted Respondent permission to use its BRAZILCUPID mark, and that Respondent is not commonly known by the <brazilcupidclub.com> domain name. The WHOIS information identifies “Robert Funk” as the registrant of the <brazilcupidclub.com> domain name. Respondent has not produced any evidence to show that it is commonly known by the disputed domain name. Therefore, the Panel finds that Respondent lacks rights and legitimate interests in the disputed domain under Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name).
Complainant contends that Respondent is using the disputed domain name to operate a competing dating website. Complainant submits screen-shot evidence to show that Respondent offers the same or similar services that are available through Complainant’s official website, and that such use does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. The Panel agrees and finds that Respondent’s use of the disputed domain name to offer the same or similar services that are offered by Complainant is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Am. Int’l Group, Inc. v. Benjamin, FA 944242 (Nat. Arb. Forum May 11, 2007) (Panelist Tyrus R. Atkinson, Jr., dissenting) (finding that the respondent’s use of a confusingly similar domain name to advertise real estate services which competed with the complainant’s business did not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)); see also Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant contends that Respondent operates a dating website through the <brazilcupidclub.com> domain name. The Panel finds that Respondent’s use of the disputed domain name disrupts Complainant’s dating business and is evidence of bad faith registration and use under 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 Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)).
Complainant further argues that Respondent’s misappropriation of Complainant’s BRAZILCUPID mark misleads Internet users into believing that Respondent’s website is affiliated with or sponsored by Complainant and Complainant’s official <brazilcupid.com> website. Complainant argues that Respondent is profiting from its diversion of Internet users who are seeking Complainant’s official website, but are re-routed to Respondent’s competing website. The Panel agrees and finds that Respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv) by intentionally attempting to attract Internet users to its website for commercial gain by creating a likelihood of confusion as to the affiliation or sponsorship of the disputed domain name with Complainant’s mark. See Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where the respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site); see also Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting).
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 <brazilcupidclub.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: October 19, 2010
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