Plentyoffish Media Inc. v. Praparat Pattum / Hypernet Group
Claim Number: FA1206001448040
Complainant is Plentyoffish Media Inc. (“Complainant”), represented by Jared M. Barrett of Seed Intellectual Property Law Group PLLC, Washington, USA. Respondent is Praparat Pattum / Hypernet Group (“Respondent”), Thailand.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <plentyfish.info>, registered with GoDaddy.com LLC (R171-LRMS).
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 June 8, 2012; the National Arbitration Forum received payment on June 11, 2012.
On June 11, 2012, GoDaddy.com LLC (R171-LRMS) confirmed by e-mail to the National Arbitration Forum that the <plentyfish.info> domain name is registered with GoDaddy.com LLC (R171-LRMS) and that Respondent is the current registrant of the name. GoDaddy.com LLC (R171-LRMS) has verified that Respondent is bound by the GoDaddy.com LLC (R171-LRMS) 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 June 12, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 2, 2012 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@plentyfish.info. Also on June 12, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 July 9, 2012, 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:
Respondent’s <plentyfish.info> domain name, the domain name at issue, is confusingly similar to Complainant’s PLENTY OF FISH mark.
Respondent does not have any rights or legitimate interests in the domain name at issue.
Respondent registered and used the domain name at issue in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, PlentyOfFish Media, Inc., is the owner of U.S. Trademark Registration No. 3,302,508, registered October 2, 2007, for its PLENTY OF FISH mark for “providing on-line forums for the transmission of messages among computer users concerning making acquaintances, friendship, dating, long-term relationships and marriage” in Class 38 and “computer services, namely, providing web-site services featuring on-line dating” in Class 45 as well as many other US and international registrations. Respondent registered the <plentyfish.info> domain name on December 29, 2011. Respondent is not commonly known by the <plentyfish.info> domain name. The <plentyfish.info> domain name resolves to Respondent’s competing online dating website. Respondent’s willingness to sell the disputed domain name is evidence of bad faith.
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.
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.”).
Complainant has rights in the PLENTY OF FISH mark, which it uses in connection with online dating and social networking services and owns several USPTO trademark registrations for the PLENTY OF FISH mark (e.g., Reg. No. 3,302,508, registered October 2, 2007). Registration of a mark with a national trademark authority is sufficient evidence of rights in a mark. 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)). The registration of a mark satisfies the required showing of Policy ¶ 4(a)(i), regardless of the location of the parties. See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence). Therefore, Complainant has rights in the PLENTY OF FISH mark under Policy ¶ 4(a)(i).
The <plentyfish.info> domain name is confusingly similar to the PLENTY OF FISH mark. The deletion of the word “of” in the domain name does not distinguish the <plentyfish.info> domain name from the PLENTY OF FISH mark. See Asprey & Garrard Ltd v. Canlan Computing, D2000-1262 (WIPO Nov. 14, 2000) (finding that the domain name <asprey.com> is confusingly similar to the complainant’s ASPREY & GARRARD and MISS ASPREY marks). The deletion of spaces and the addition of the generic top-level domain (“gTLD”) “.info” are irrelevant to a Policy ¶ 4(a)(i) analysis. See U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i).”). Therefore, the <plentyfish.info> domain name is confusingly similar to the PLENTY OF FISH mark pursuant Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been established.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. 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 UDRP ¶ 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 AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Respondent has not applied for or obtained any state or federal trademark registrations for the <plentyfish.info> domain name. Additionally, the WHOIS information for the <plentyfish.info> domain name, lists “Praparat Pattum / Hypernet Group” as the domain name registrant. Therefore, Respondent is not commonly known by the <plentyfish.info> domain name pursuant to Policy ¶ 4(a)(i). 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).
The <plentyfish.info> domain name resolves to Respondent’s competing online dating website. Using a disputed domain name to operate a competing website is not a protected use under Policy ¶¶ 4(c)(i) and 4(c)(iii). See Florists’ Transworld Delivery v. Malek, FA 676433 (Nat. Arb. Forum June 6, 2006) (holding that the respondent’s use of the <ftdflowers4less.com> domain name to sell flowers in competition with the complainant did not give rise to any legitimate interest in the domain name). Therefore, Respondent’s use of the <plentyfish.info> domain name is neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
The Panel finds that Policy ¶ 4(a)(ii) has been established.
Complainant provided the Panel with correspondence from Respondent to Complainant concerning the transfer of the domain name in which, Respondent offers to sell the <plentyfish.info> domain name for a cost of $100,000. Respondent’s willingness to sell the disputed domain name, but only for an amount far in excess of probable out-of-pocket costs, is evidence of bad faith. The panels in Dynojet Research, Inc. v. Norman, AF-0316 (eResolution Sept. 26, 2000), and World Wrestling Fed’n Entm’t., Inc. v. Bosman, D99-0001 (WIPO Jan. 14, 2000), found that the willingness to sell a disputed domain name for an exorbitant amount is evidence of bad faith. Respondent’s willingness to sell the <plentyfish.info> domain name is evidence of Respondent’s bad faith registration and use of the disputed domain name pursuant to Policy ¶ 4(b)(i).
Respondent’s bad faith registration and use of the <plentyfish.info> domain name is further demonstrated by Respondent’s utilization of the <plentyfish.info> domain name. Respondent is using the <plentyfish.info> domain name to operate its competing dating service so that Respondent can commercially gain. Respondent is using Complainant’s mark in connection with the <plentyfish.info> domain name in order to increase the amount of Internet users diverted to the disputed domain name. Therefore, Respondent registered and is using, in bad faith, the <plentyfish.info> domain name in order to commercially gain from Internet users’ mistakes pursuant to Policy ¶ 4(b)(iv). See Scholastic Inc. v. Applied Software Solutions, Inc., D2000-1629 (WIPO Mar. 15, 2001) (finding bad faith under Policy ¶ 4(b)(iv) because the respondent initially used the disputed domain name to sell educational services that targeted the complainant’s market).
Respondent makes no contentions with regards to Policy ¶ 4(a)(iii).
The Panel finds that Policy ¶ 4(a)(iii) has been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <plentyfish.info> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: July 18, 2012
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