Romantic Tours, Inc. v. SB Design
Claim Number: FA1102001373587
Complainant is Romantic Tours, Inc. (“Complainant”), represented by Joseph J. Weissman of Johnson, Pope, Bokor, Ruppel & Burns, LLP, Florida, USA. Respondent is SB Design (“Respondent”), Washington, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hot-russianbride.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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 17, 2011; the National Arbitration Forum received payment on February 17, 2011.
On February 18, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <hot-russianbride.com> domain name is registered with GoDaddy.com, Inc. and that 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 disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On February 18, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 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@hot-russianbride.com. Also on February 18, 2011, 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 March 15, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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 <hot-russianbride.com> domain name is confusingly similar to Complainant’s HOTRUSSIANBRIDES.COM mark.
2. Respondent does not have any rights or legitimate interests in the <hot-russianbride.com> domain name.
3. Respondent registered and used the <hot-russianbride.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Romantic Tours, Inc., is a Florida, USA corporation that operates a dating website for men and women from countries of the former Soviet Union (“FSU”) under its HOT RUSSIAN BRIDES mark. Complainant operates its business through a website resolving from the <hotrussianbrides.com> domain name. Complainant owns a trademark registration for its HOT RUSSIAN BRIDES mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,159,522 issued October 17, 2006).
Respondent, SB Design, registered the disputed domain name on July 14, 2009. The disputed domain name redirects Internet users to a competing website resolving from the <luckylovers.net> domain name. The Lucky Lovers homepage indicates that it is “a leader of russian dating” and that “LuckyLovers is much more than a regular russion singles website, it is a major russian dating site to find a date, a woman or man, in FSU, russian women, ukrainian women, belarus women and other countries…”
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.
The Panel finds that Complainant’s submission of evidence of its registration of the HOT RUSSIAN BRIDES mark with the USPTO (e.g., Reg. No. 3,159,522 issued October 17, 2006) successfully establishes Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i). See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO); see also Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO).
Complainant alleges that Respondent’s <hot-russianbride.com> domain name is confusingly similar to Complainant’s own HOT RUSSIAN BRIDES mark. Complainant indicates that the disputed domain name eliminates the spaces from between the terms of Complainant’s mark, adds a hyphen, deletes the letter “s,” and adds the generic top-level domain (“gTLD”) “.com” to the dominant portion of Complainant’s mark. The Panel finds that the addition of a hyphen and the deletion of a single letter do not sufficiently distinguish the disputed domain name from Complainant’s mark. See Teradyne, Inc. v. 4Tel Tech., D2000-0026 (WIPO May 9, 2000) (finding that the “addition of a hyphen to the registered mark is an insubstantial change. Both the mark and the domain name would be pronounced in the identical fashion, by eliminating the hyphen"); see also Universal City Studios, Inc. v. HarperStephens, D2000-0716 (WIPO Sept. 5, 2000) (finding that deleting the letter “s” from the complainant’s UNIVERSAL STUDIOS STORE mark did not change the overall impression of the mark and thus made the disputed domain name confusingly similar to it). The Panel additionally finds that the removal of spaces and the addition of a gTLD do nothing to distinguish the disputed domain name from Complainant’s mark. See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i). Accordingly, the Panel finds that, based on the above cited precedent, Respondent’s <hot-russianbride.com> domain name is confusingly similar to Complainant’s own HOT RUSSIAN BRIDES mark under Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) is satisfied.
Complainant alleges that Respondent lacks rights and legitimate interests in the <hot-russianbride.com> domain name. Previous panels have found that when a complainant makes a prima facie case in support of its allegations, the burden shifts to the respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). The Panel finds Complainant has made a prima facie case. Due to Respondent’s failure to respond to the Complaint, the Panel may assume that Respondent does not have rights or legitimate interests in the <hot-russianbride.com> domain name. However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c). See 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); see also Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because the respondent failed to submit a Response, “Complainant’s submission has gone unopposed and its arguments undisputed. In the absence of a Response, the Panel accepts as true all reasonable allegations . . . unless clearly contradicted by the evidence.”).
Complainant asserts that Respondent has never been licensed by Complainant nor does Respondent own any intellectual property rights, including pending trademark applications or registrations, in any HOT RUSSIAN BRIDES mark. Complainant further asserts that there is no evidence that Respondent has ever done business under the HOT RUSSIAN BRIDES name on the Internet or anywhere else. Furthermore, the WHOIS information lists the registrant of the disputed domain name as “SB Design.” The Panel cannot find any evidence in the record that would contradict Complainant’s assertions or provide any indication that Respondent is commonly known by the <hot-russianbride.com> domain name. Therefore, the Panel determines that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Complainant asserts that Respondent’s disputed domain name is not being used for a bona fide offering of goods or services or a legitimate noncommercial or fair use because the <hot-russianbride.com> domain name merely reroutes Internet users to a website resolving from the <luckylovers.net> domain name, which offers dating services in competition with those offered by Complainant under its HOT RUSSIAN BRIDES mark. The Panel finds that Respondent is therefore not using the disputed domain name 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 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 DLJ Long Term Inv. Corp. v. BargainDomainNames.com, FA 104580 (Nat. Arb. Forum Apr. 9, 2002) (“Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services because Respondent is using the domain name to divert Internet users to <visual.com>, where services that compete with Complainant are advertised.”).
The Panel finds that Policy ¶ 4(a)(ii) is satisfied.
Complainant alleges that Respondent registered and uses its <hot-russianbride.com> domain name to compete directly with Complainant by redirecting Internet users to a competing website resolving from the <luckylovers.net> domain name. The Panel agrees and finds that such registration and use supports a finding of bad faith under Policy ¶ 4(b)(iii) as it constitutes a disruption of Complainant’s business. See Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Nat. Arb. Forum Aug. 1, 2006) (finding that the respondent registered and used the <classicmetalroofing.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii) by redirecting Internet users to the respondent’s competing website); 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)).
Finally, Complainant alleges that Respondent, through its registration and use of the disputed domain name, clearly aims to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or the services offered on the website. The Panel presumes that the site to which Internet users are redirected is either owned and operated by Respondent itself, or that Respondent receives referral fees from the owner and operator of the <luckylovers.net> domain name based on the number of Internet users who visit the resolving website. Either way, the Panel concludes that Respondent profits from the diversion and is guilty of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Velv, LLC v. AAE, FA 677922 (Nat. Arb. Forum May 25, 2006) (finding that the respondent’s use of the <arizonashuttle.net> domain name, which contained the complainant’s ARIZONA SHUTTLE mark, to attract Internet traffic to the respondent’s website offering competing travel services violated Policy ¶ 4(b)(iv)); 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) is 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 <hot-russianbride.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: March 28, 2011
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