PlentyOfFish Media, Inc. v. Private Whois Service
Claim Number: FA1107001400471
Complainant is PlentyOfFish Media, Inc. (“Complainant”), represented by Kevin Costanza of Seed Intellectual Property Law Group PLLC, Washington, USA. Respondent is Private Whois Service (“Respondent”), Bahamas.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <plentyoffishmobile.com>, registered with INTERNET.BS CORP.
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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 26, 2011; the National Arbitration Forum received payment on July 27, 2011.
On July 27, 2011, INTERNET.BS CORP. confirmed by e-mail to the National Arbitration Forum that the <plentyoffishmobile.com> domain name is registered with INTERNET.BS CORP. and that Respondent is the current registrant of the name. INTERNET.BS CORP. has verified that Respondent is bound by the INTERNET.BS CORP. 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 August 1, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 22, 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@plentyoffishmobile.com. Also on August 1, 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 August 24, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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 <plentyoffishmobile.com> domain name is confusingly similar to Complainant’s PLENTYOFFISH mark.
2. Respondent does not have any rights or legitimate interests in the <plentyoffishmobile.com> domain name.
3. Respondent registered and used the <plentyoffishmobile.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, PlentyOfFish Media, Inc., operates an online dating and social networking service. Complainant has registered its PLENTYOFFISH mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,251,639 registered June 12, 2007).
Respondent, Private Whois Service, registered the <plentyoffishmobile.com> domain name on July 7, 2010. The disputed domain name resolves to what looks like an independent review site for online dating services. The reviews for Complainant’s site are resoundingly negative, however, and links are provided to Complainant’s competitors, such as ArrangementSeekers.com, CougarLife.com, and AshleyMadison.com.
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 claims that it has established rights in the PLENTYOFFISH mark for the purposes of Policy ¶ 4(a)(i). Past panels have determined that registration of a mark with a federal trademark authority is sufficient to confer rights. See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations). Complainant has registered its PLENTYOFFISH mark with the USPTO (Reg. No. 3,251,639 registered June 12, 2007). The Panel concludes that this is sufficient to confer rights in the mark for the purposes of Policy ¶ 4(a)(i). See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”). The fact that Respondent operates in a different country than that in which Complainant’s mark is registered is irrelevant to Policy ¶ 4(a)(i) analysis. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
Complainant also claims that Respondent’s domain name is confusingly similar to Complainant’s PLENTYOFFISH mark for the purposes of Policy ¶ 4(a)(i). The disputed domain name wholly includes Complainant’s mark, adding the term “mobile” and the generic top-level domain (“gTLD”) “.com”. Respondent’s addition of the term “mobile” is likely meant to reference the software version of Complainant’s online dating and social networking service which is available for mobile devices. The Panel holds that the addition of the generic term “mobile”, which bears an obvious relationship to Complainant’s business, is insufficient to distinguish Respondent’s domain name form Complainant’s mark. See Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the respondent’s domain name combines the complainant’s mark with a generic term that has an obvious relationship to the complainant’s business). Additionally, the addition of the “.com” gTLD cannot serve to distinguish the disputed domain name. See Whitney Nat’l Bank v. Easynet Ltd, FA 944330 (Nat. Arb. Forum Apr. 30, 2007) (“The additions of generic words with an obvious relationship to Complainant’s business and a gTLD renders the disputed domain name confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).”). The Panel finds that Respondent’s domain name is confusingly similar to Complainant’s mark for the purposes of Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
It is now well-established that Complainant shoulders the initial burden of presenting a prima facie case, and, once this has been done, the burden shifts to Respondent. 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.”). In the present case, Complainant has met its burden by presenting a prima facie case. Respondent, however, has failed to meet its burden by failing to produce a Response. Some panels have interpreted this as an admission that Respondent lacks rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). See Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.”). This Panel, however, will continue to examine the record in order to determine whether such rights or legitimate interests exist under Policy ¶ 4(c).
Complainant alleges that Respondent is not commonly known by the <plentyoffishmobile.com> domain name pursuant to Policy ¶ 4(c)(ii). The WHOIS information for the disputed domain name identifies that registrant as “Private Whois Service.” The Panel finds no similarity between the disputed domain name and the WHOIS information, which it views as evidence that Respondent lacks rights or legitimate interests in the disputed domain name. See 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). Moreover, Complainant asserts that it has never licensed or otherwise authorized Respondent to register or use the <plentyoffishmobile.com> domain name. Absent any evidence in the record tending to show otherwise, the Panel must conclude that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See 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 further alleges that Respondent’s use of the disputed domain name constitutes neither a bona fide offering of goods or services under Policy ¶ 4(c)(iii) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). The disputed domain name resolves to what purports to be an independent review site for online dating services, which provides links to several of Complainant’s competitors. By using a confusingly similar domain name to divert Internet users to a site featuring links to Complainant’s competitors, the Panel concludes that Respondent has used the domain name in conjunction with neither a bona fide offering of goods or services under Policy ¶ 4(c)(iii) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be 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 also Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that the respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with the complainant was 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)).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s <plentyoffishmobile.com> domain name resolves to what purports to be an independent review site for online dating services, which features resoundingly negative reviews of Complainant’s services and provides links to several of Complainant’s competitors. Complainant alleges that by redirecting Internet users seeking information about to Complainant’s services to this type of site, Respondent has engaged in bad faith registration and use under Policy ¶ 4(b)(iii). The Panel finds that Respondent’s site does disrupt Complainant’s business. Users who visit Respondent’s site in an earnest attempt to gather information about Complainant’s services may be either persuaded or fooled into visiting Complainant’s competitors instead. This represents bad faith registration and use under Policy ¶ 4(b)(iii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users seeking information on Complainant’s educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business).
Finally, the Panel assumes that Respondent is profiting from the operation of its website, whether through click-through fees or through some other relationship with the competing dating sites it advertises. By using a confusingly similar domain name and authoring reviews of Complainant and its competitors, Respondent is attempting to create confusion as to its site’s affiliation with Complainant and the industry as a whole. Respondent seeks to use this confusion as a vehicle through which it generates traffic for its website, which presumably leads to a greater commercial gain. The Panel finds that Respondent’s intent to divert Internet users searching for Complainant’s services, coupled with its intent to profit from such diversion, constitutes bad faith registration and use under 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) 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 <plentyoffishmobile.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: August 27, 2011
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