Ecom Holdings Pty Ltd v. Latin Colombian Cupid
Claim Number: FA1012001363901
Complainant is Ecom Holdings Pty Ltd (“Complainant”), represented by John W. Dozier of Dozier Internet Law, P.C., Virginia, USA. Respondent is Latin Colombian Cupid (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <latincolombiancupid.com>, registered with GoDaddy.com, Inc.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically December 16, 2010; the National Arbitration Forum received payment December 16, 2010.
On December 17, 2010, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <latincolombiancupid.com> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name. GoDaddy.com, Inc. verified that Respondent is bound by the GoDaddy.com, Inc. registration agreement and thereby has agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On December 20, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 10, 2011, 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@latincolombiancupid.com. Also on December 20, 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 January 17, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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. The domain name that Respondent registered, <latincolombiancupid.com>, is confusingly similar to Complainant’s COLOMBIANCUPID mark.
2. Respondent has no rights to or legitimate interests in the <latincolombiancupid.com> domain name.
3. Respondent registered and used the <latincolombiancupid.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Ecom Holdings Pty Ltd, offers dating and matchmaking services over the Internet with the supporting services of chat, email, video and instant messaging. Complainant owns trademark registrations for the COLOMBIANCUPID mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,750,104 issued February 16, 2010) and IP Australia (Reg. No. 1,273,531 issued November 21, 2008).
Respondent, Latin Colombian Cupid, registered the <latincolombiancupid.com> domain name April 22, 2010. The disputed domain name resolves to a website competing with Complainant by offering similar dating and matchmaking services.
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."
Given 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 will draw such inferences as the Panel 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 Complainant to 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 owns a trademark registration for the COLOMBIANCUPID mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,750,104 issued February 16, 2010) and IP Australia (Reg. No. 1,273,531 issued November 21, 2008). The Panel finds that evidence of trademark registrations with the trademark authorities of the U.S. and Australia sufficiently prove Complainant’s rights in the COLOMBIANCUPID mark for the purposes of a Policy ¶ 4(a)(i) analysis. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)); see also Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”).
Complainant argues that Respondent’s <latincolombiancupid.com> domain name is confusingly similar to Complainant’s COLOMBIANCUPID mark because the only differences are the additions of the descriptive term “latin” and the generic top-level domain (“gTLD”) “.com.” The Panel finds that the addition of a descriptive word to Complainant’s mark is not considered a distinguishing change under a Policy ¶ 4(a)(i) analysis. See Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark); see also Sutton Group Fin. Servs. Ltd. v. Rodger, D2005-0126 (WIPO June 27, 2005) (finding that the domain name <suttonpromo.com> is confusingly similar to the SUTTON mark because the addition of descriptive or non-distinctive elements to the distinctive element in a domain name is immaterial to the analysis under Policy ¶ 4(a)(i)).
The Panel also finds that the added gTLD is of no consequence to the confusingly similar analysis as gTLDs are required in domain names. See Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”). Therefore, the Panel finds that Respondent’s <latincolombiancupid.com> domain name is confusingly similar to Complainant’s COLOMBIANCUPID mark according to Policy ¶ 4(a)(i).
The Panel finds that the domain name is confusingly similar to Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Complainant contends that Respondent does not have rights to or legitimate interests in the disputed domain name. Once Complainant makes a prima facie case to supports its allegations against Respondent, the burden of proof shifts to Respondent to demonstrate that it does have such rights or legitimate interests in the disputed domain name. The Panel finds that Complainant established a prima facie case, and as a result, the Panel may make an inference from Respondent’s failure to respond that Respondent does not have rights to or legitimate interests in the disputed domain name. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that “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 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.”).
Complainant further alleges that Respondent is not commonly known by the <latincolombiancupid.com> domain name, despite the WHOIS information listing the registrant as “Latin Colombian Cupid.” Complainant asserts that no corporate records exist under that name and that no trademark registration reflects any association between Respondent and the disputed domain name. Complainant contends that it has not authorized or permitted Respondent to use the COLOMBIANCUPID trademark. The Panel finds that the presence of the name “Latin Colombian Cupid” in the WHOIS information is some evidence to show that Respondent is commonly known by the disputed domain name pursuant to a Policy ¶ 4(c)(ii) analysis; however, limited by Complainant’s assertions that Respondent offered no proof to support any right to register a domain name using this identity. See Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that the respondent was “not commonly known by” the <shantiyogaworks.com> domain name despite listing its name as “Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the Panel that the respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name”); see also Yahoo! Inc. v. Dough, FA 245971 (Nat. Arb. Forum May 5, 2004) (finding that although “the WHOIS information for the <yasexhoo.com> domain name states that the registrant is YASEXHOO . . . this alone is insufficient to show that Respondent is commonly known by the domain name.”).
Complainant also alleges that Respondent uses the <latincolombiancupid.com> domain name to compete with Complainant by offering similar dating and matchmaking services at the resolving website. Complainant argues, and the Panel agrees, that this does not comport with the Policy ¶¶ 4(c)(i) and 4(c)(iii) requirements of a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Summit Group, LLC v. LSO, Ltd., FA 758981 (Nat. Arb. Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either 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 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)).
The Panel finds that Respondent has not shown rights to or legitimate interests in the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Complainant contends that the website resolving from Respondent’s <latincolombiancupid.com> domain name is a competing website that offers similar dating and matchmaking services. Because such a site operates within the same industry as Complainant and strives to reach the same customer base, Respondent’s operation of such a website under Complainant’s mark disrupts Complainant’s business. The Panel finds that this disruptive competition supports findings 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 Spark Networks PLC v. Houlihan, FA 653476 (Nat. Arb. Forum Apr. 18, 2006) (holding that the respondent’s registration of a domain name substantially similar to the complainant’s AMERICAN SINGLES mark in order to operate a competing online dating website supported a finding that respondent registered and used the domain name to disrupt the complainant’s business under Policy ¶ 4(b)(iii)).
Complainant urges that Respondent uses Complainant’s COLOMBIANCUPID mark in the <latincolombiancupid.com> domain name in order to create confusion and attract Complainant’s customers to Respondent’s website. Complainant alleges that Respondent aims to misappropriate Complainant’s goodwill by leading its customers to believe that Respondent is somehow affiliated with Complainant. Complainant asserts that Respondent creates this misleading impression in order to profit as more interested customers are attracted and diverted to Respondent’s competing commercial dating website. The Panel finds that this conducts supports findings of Respondent’s bad faith registration and use according to a Policy ¶ 4(b)(iv) analysis. See Carey Int’l, Inc. v. Kogan, FA 486191 (Nat. Arb. Forum July 29, 2005) (“[T]he Panel finds that Respondent is capitalizing on the confusing similarity of its domain names to benefit from the valuable goodwill that Complainant has established in its marks. Consequently, it is found that Respondent registered and used the domain names in bad faith under Policy ¶ 4(b)(iv).”); see also Gardens Alive, Inc. v. D&S Linx, FA 203126 (Nat. Arb. Forum Nov. 20, 2003) (“Respondent registered and used the <my-seasons.com> domain name in bad faith pursuant to Policy ¶¶ 4(b)(iii) and (iv) because Respondent is using a domain name that is confusingly similar to the MYSEASONS mark for commercial benefit by diverting Internet users to the <thumbgreen.com> website, which sells competing goods and services.”).
The Panel finds that Respondent registered and used the disputed domain name in bad faith; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <latincolombiancupid.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: January 31, 2011.
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