Spark Networks USA, LLC v. Dennis Tesic
Claim Number: FA1110001411839
Complainant is Spark Networks USA, LLC (“Complainant”), represented by Victor T. Fu of LKP Global Law, LLP, California, USA. Respondent is Dennis Tesic (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <christianmingler.com>, registered with Tucows, Inc. (“Tucows”).
The undersigned, Mr. David H Tatham, 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.
Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on October 17, 2011; the Forum received payment on October 18, 2011.
On October 18, 2011, Tucows confirmed by e-mail to the Forum that the disputed domain name <christianmingler.com> is registered with it and that Respondent is the current registrant of the name. Tucows has also verified that Respondent is bound by its 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 October 19, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 8, 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@christianmingler.com. Also on October 19, 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.
A timely Response was received and determined to be complete on November 1, 2011.
On November 10, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Mr. David H Tatham as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant states that it is engaged in providing online personals services in over 236 countries and in four different languages and that it has over eight million members. One of its most prominent websites is at <christianmingle.com> which has been in operation since July 2001 and which has attracted a substantial number of paying subscribers.
Complainant owns a U.S. registration of CHRISTIANMINGLE No. 2,940,052 registered on April 12, 2005. This registration belonged originally to The Christian Mingle LLC but was assigned to Complainant on August 23, 2006. Complainant claims that this trademark has been continuously used since July 2001 in connection with an online dating site.
Complainant contends that by virtue of its use of, and advertising for, the name CHRISTIANMINGLE this name has become famous throughout the USA and also several other countries.
Complainant further contends that the disputed domain name, <christianmingler.com>, infringes its rights in the name and trademark CHRISTIANMINGLE and that it is confusingly similar as it simply adds the letter ‘R’ to its own mark. In addition, Complainant alleges that the disputed domain name was registered for the sole purpose of commercial gain because, like Complainant’s website, it too is directed at Christian communities throughout the world.
Complainant annexed to the Complaint a copy of Respondent’s website which, it claims, confronts users with a web page offering banner advertisements and paid links to various online dating websites all directed at Christians. These include Complainant’s website.
Complainant wrote a cease and desist letter to Respondent in March 2011 with later follow up demands by various means and to different addresses, none of which received any substantive response.
Complainant concludes by alleging that Respondent’s registration of the disputed domain name is in bad faith, that it will impair its own right to use its own trademark, and that users will be deceived into thinking that the website at the disputed domain name is somehow affiliated with Complainant and its trademark.
B. Respondent
Respondent commences its Response by pointing out that the disputed domain name, <christianmingler.com>, is comprised of two dictionary words, ‘christian’ and ‘mingler’, neither of which is trademarked and Respondent contends that the domain name does not directly or indirectly infringe Complainant’s rights. Nor are the two domain names confusingly similar because the content at Respondent’s website revolves around Christian graphics, images, and Windows desktop wallpaper. It also contains bible studies and reviews of bible related software and Christian books. None of this involves dating services. This, Respondent claims, is a website where Christians can mingle or interact with each other.
Respondent contends that he has had to accept advertising and to work with Google Adsense in order to defray the costs he has incurred for registration fees, web-hosting services, and design and programming services. All advertising on the site has now been discontinued.
Respondent contends that he has legitimate rights in the disputed domain name because he has been using it since 2008 for all of the above mentioned services which are bona fide. Annexed to the Complaint were screen shots of the website from the Internet Archive dated January and April 2009 which, Respondent contends, are proof that he was acting bona fide prior to Complainant’s cease and desist letter. He also contends that this letter was sent to incorrect or non-working addresses. Respondent asserts that the copy of his website which Complainant annexed to the Complaint shows only half of it, and he provides what he describes as a true and correct screenshot copy.
Respondent states that, for all of the above reasons, the domain name was not registered in bad faith
Both Complainant and Respondent offer services which are aimed at Christians – Complainant runs an online dating site for Christians, while respondent merely posts information and literature for Christians. Complainant is based in California while respondent hails from Canada.
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."
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.
It is important for Respondent to note the above requirements because he is not legally represented and it is apparent from the Response that he may not be aware of all of them or of their importance.
Complainant has a trademark registration in the USA of the single word CHRISTIANMINGLE. This is No. 2,940,052, registered on April 12, 2005, in respect of “Computing dating services, namely, providing online information in the field of computer dating services, and providing an online forum to enable others to exchange messages and information in the field of computer dating services, and providing an online gallery to enable others to display photographs and detailed personal information in the field of computer dating services” claiming July 3, 2001 as its date of first use. A copy of this mark was annexed to the Complaint and the Panel is satisfied that Complaint does have rights in this name.
The disputed domain name contains the top-level domain “.com”, but a TLD is something that is required of all domain names, and it has been held in numerous Decisions that this should be disregarded when comparing a domain name with a name in which a Complainant has rights. See, e.g., Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> to be identical to Complainant’s mark POMELLATO because the generic top-level domain “.com” after it was not relevant); see also Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO April 22, 2000) where the Panel said: “Similarly, the addition of the generic top-level domain (gTLD) name ".com" is likewise without legal significance since use of a gTLD is required of domain name registrants, ".com" is one of only several such gTLDs, and ".com" does not serve to identify a specific service provider as a source of goods or services.”
Respondent argues that because his name contains two words, both of them having a dictionary meaning, and because the content of his website is different from the use to which Complainant puts its name, there cannot be any confusion. However this does not address the real issue. The concept of “confusingly similar” lies at the very heart of all trademark conflicts, where the test is whether the names are phonetically, visually or conceptually similar. The same thinking has been carried over into Decisions under the Policy because the words “identical or confusingly similar” appear in Paragraph 4(a)(i) thereof. There is only a single letter difference between Complainant’s trademark and the disputed domain name. The two words are, therefore, almost phonetically similar, as well as being visually similar, and they are especially similar conceptually.
The Panel is therefore satisfied that the trademark CHRISTIANMINGLE is confusingly similar to the disputed domain name <christianmingler.com> and that paragraph 4(a)(i) of the Policy is therefore proved.
It is well established that the burden for proving that a Respondent has no rights or legitimate interests in a disputed domain name rests with a Complainant. However this puts him in the almost impossible position of proving a negative. So it is customary, when a Complainant has made out a prima facie case that a Respondent lacks rights and legitimate interests in a disputed domain name, for the burden to shift to Respondent to show that it does have rights or legitimate interests. See, e.g., both Hanna-Barbera Productions., Inc. v. Entertainment Commentaries, FA 741828 (NAF August 18, 2006), and AOL LLC v. Jordan Gerberg, FA 780200 (NAF September 25, 2006).
In this case the Panel finds that Complainant has indeed made out a prima facie case. Therefore the burden shifts to Respondent.
Under paragraph 4(c) of the Policy there are three ways in which a Respondent may demonstrate that he does have rights and legitimate interests in a disputed domain name –
(i) “That he has used the name in connection with a bona fide offering of goods or services”.
In this case, Respondent has stated that he has been using the disputed domain name since 2008 “on topics of interest to Christian internet users. As proof thereof there were annexed to the Response copies of what he claimed were screenshots for his website dated in January and April 2009. They are not dated so we only have Respondent’s word for their authenticity. However this has not been challenged by Complainant and the Panel is therefore prepared to accept that they are genuine. They consist of attractive pictures on which are printed quotations from the Bible and these are accompanied by some explanatory text. 2009 was well after Complainant had registered its similar trademark, but at least a year before it wrote its first cease and desist letter. In the Panel’s view this is evidence of bona fide use, and it has concluded that Respondent has satisfied paragraph 4(c)(i) of the Policy.
(ii) “That he has been commonly known by the domain name.”
Respondent’s name is Dennis Tesic and nothing like the disputed domain name <christianmingler.com> so paragraph 4(c)(ii) of the Policy does not apply.
(iii) “That he is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark at issue.”
Here, it could be said that Respondent has been using the website at the disputed domain name commercially because it contains links to other sites and he would profit from anyone clicking on those links.
Respondent states that this was not done by him but by Google and only in order recoup some of his costs in setting up and operating the site. Furthermore he intends to take them down immediately – should his name survive this dispute. But the principle content of the site is noncommercial, and although it is well established that a domain name registrant will normally be deemed responsible for the content of his website, Panels have held otherwise. The leading case on this is Mariah Media Inc. v. First Place® Internet, Inc. D2006-1275 (WIPO December 6, 2006) in which it was said “Unless there is persuasive evidence that the Domain Name was selected opportunistically to create confusion and exploit the Complainant’s marks, the P{an el would conclude that the Respondent has a legitimate interest in using the Domain Name for a commercial purpose.” In the same case, the Panel quoted with approval six other cases in which there had been a similar finding. There is absolutely no evidence in this case that Respondent has set out to deceive, to create a diversion, or to tarnish Complainant’s trademark. So, on this basis, the Panel has concluded that he has also satisfied the requirements of paragraph 4(c)(iii) of the Policy.
The Panel therefore finds that Respondent has succeeded in two of the legs of paragraph 4(c) and so paragraph 4(a)(ii) of the Policy has not been proved.
Once a finding had been made that a Respondent has legitimate rights and interest in a disputed domain name, it is difficult to conclude that it was also registered in bad faith. In this case, Complainant has asserted that the disputed domain name was registered in bad faith, but has produced little or no facts or argumentation in support thereof.
In Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech Ltd., FA 406512 (Nat. Arb. Forum March 9, 2005) it was found that mere assertions of bad faith were insufficient for a complaint to establish this section of the Policy. Likewise, in Graman USA Inc., v. Shenzhen Graman Indus. Co., FA 133676 (Nat. Arb. Forum Jan. 16, 2003) it was found that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis for a Panel to conclude that the Respondent has acted in bad faith.
Paragraph 4(b) of the Policy contains several non-exclusive circumstances indicating bad faith, the only one of which that might suit the circumstances of this particular case is 4(b)(iv) –
“by using the domain name, you have intentionally attempted to attract, for commercial gain, internet users to your website …. by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or a product or service on your website or location.”
Respondent denies any prior knowledge of Complainant’s name, trademark, or website and the Panel is prepared to accept this, despite the very strong similarity between the two names, and to agree with him that he has not attempted to attract visitors to his website who may have been seeking that of Complainant. Furthermore, although the worldwide web knows no geographical boundaries, this sounds plausible as he is in Canada and Complainant is many thousands of miles away in California. Respondent also contends that the content of the two sites are quite different and directed towards different clienteles. Having examined both sites, the Panel agrees that this is true.
This case is not dissimilar to PRIMEDIA Special Interests Publ’ns, Inc. v. Treadway, D2000-0752 (WIPO Aug. 21, 2000) in which it was found that the Respondent had not registered the <shutterbug.com> domain name to disrupt Complainant’s business because at the time of his acquisition of the name his contemplated use of it was not competitive with Complainant’s SHUTTERBUG magazine.
With regard to Respondent’s assertion that the advertisements and links on his website were there solely to offset his expenses in operating the website, no bad faith was, for example, found in the case of Nintendo of America, Inc. v. Jones D2000-0998 (WIPO Nov. 17, 2000) where the Respondent operated a fan club website without commercial gain.
In all the circumstances, the Panel has concluded that paragraph 4(b) has also not been proved.
Having established only one of the three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <christianmingler.com> domain name should REMAIN WITH Respondent.
David H Tatham, Panelist
Dated: November 23, 2011
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