Match.com, LLC v. Registrant [1961893]: / Domain Administrator / Hostsphere.com
Claim Number: FA1207001451592
Complainant is Match.com, LLC (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Registrant [1961893]: / Domain Administrator / Hostsphere.com (“Respondent”), represented by Michael P. Eddy of Law Office of Michael P. Eddy, California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <macth.com>, registered with Moniker.
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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 2, 2012; the National Arbitration Forum received payment on July 2, 2012.
On July 5, 2012, Moniker confirmed by e-mail to the National Arbitration Forum that the <macth.com> domain name is registered with Moniker and that Respondent is the current registrant of the name. Moniker has verified that Respondent is bound by the Moniker 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 July 6, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 26, 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@macth.com. Also on July 6, 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.
A timely Response was received and determined to be complete on July 27, 2012.
Complainant’s Additional Submission was received on August 8, 2012. The Submission was not in compliance with Supplemental Rule 7 and not considered by the Panel.
Respondent’s Additional Submission was received on August 8, 2012 and was considered by the Panel.
On September 1, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
1. Complainant owns trademark registrations with the United States Patent and Trademark Office ("USPTO") for the following marks:
i. MATCH.COM (Reg. No. 2,088,545 registered August 19, 1997);
ii. MATCH.COM PLATINUM (Reg. No. 3,323,423 registered October 30, 2007); and
iii. MATCH.COM MAKE LOVE HAPPEN (Reg. No. 3,518,254 registered October 14, 2008).
2. The <macth.com> domain name is confusingly similar to Complainant’s MATCH.COM mark.
i. The disputed domain name merely transposes the letters “c” and “t” of Complainant’s mark.
3. Respondent has no rights or legitimate interests in the disputed domain name.
i. Respondent has not been commonly known by the disputed domain name as the WHOIS information identifies the registrant as “Registrant [1961893]: / Domain Administrator / Hostsphere.com.”
ii. Respondent has not been sponsored by or legitimately affiliated with Complainant in any way.
iii. Respondent is using the disputed domain name to redirect Internet users to a website featuring generic links to third-party websites, some of which directly compete with Complainant’s business, as well as a link to Complainant’s official website.
iv. Respondent did not register the disputed domain name until September 16, 2000.
4. The disputed domain name was registered and is being used in bad faith.
i. Respondent has engaged in typosquatting through its registration and use of the <macth.com> domain name, which is evidence of bad faith.
ii. Respondent’s advertised pay-per-click links displayed on the resolving website promote products that compete with Complainant, thereby disrupting Complainant’s business in bad faith.
iii. Respondent presumably profits from the confusion garnered by its usage of a misspelling of Complainant’s mark in the domain name.
1. Complainant’s representative is not an attorney and does not have the capacity to serve as Complainant’s representative in arbitration proceedings.
2. Complainant does not have the right to use the generic term “MATCH.COM” for matchmaking and related services.
i. Complainant’s MATCH.COM PLATINUM and MATCH.COM MAKE LOVE HAPPEN marks postdate the registration of the disputed domain name by six and eight years respectively.
ii. Complainant’s mark is comprised of generic terms and Complainant cannot own the rights to those terms on the internet.
3. Respondent has rights and legitimate interests in the <macth.com> domain name.
i. Respondent had not received any e-mails or letters from Complainant prior to the initiation of this action.
ii. Respondent has owned and used the disputed domain name without complaint for 12 years.
iii. The disputed domain name was registered for its usefulness as a generic or descriptive word, and was not registered to target Complainant’s business.
iv. Complainant manipulated the search results page in its Exhibit H to fabricate evidence against Respondent.
v. Respondent derives its pay-per-click advertising from its advertising provider <google.com>, and Complainant has paid an advertising fee to have the link to its own website posted on advertising pages through <google.com>.
4. The disputed domain name was not registered in bad faith and has not been used in bad faith because it is a generic term and the domain name has been used in conjunction with the generic term’s dictionary meaning.
i. Complainant has not provided evidence to show that Respondent has violated any of the factors listed in Policy ¶ 4(b).
ii. Under the doctrine of laches Complainant must be barred from obtaining a transfer of the domain name because Complainant has waited almost 12 years to bring the present dispute.
iii. The disputed domain name was registered for its usefulness as a generic or descriptive word, and was not registered to target Complainant’s business.
iv. Complainant manipulated the search results page in its Exhibit H to fabricate evidence against Respondent.
v. Respondent derives its pay-per-click advertising from its advertising provider <google.com>, and Complainant has paid an advertising fee to have the link to its own website posted on advertising pages through <google.com>.
C. Additional Submissions
Respondent’s Additional Submission pointed out the deficiency of Complainant’s Additional Submission and attempted to argue against the contentions therein as well as rearguing its contentions in the Response.
1. Complainant has rights in its MATCH.COM mark.
2. Respondent’s <macth.com> domain name is confusingly similar to Complainant’s mark.
3. Respondent has no rights to or legitimate interests in the domain name.
4. Respondent registered and used the domain name in 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.
Complainant’s representative.
Respondent contends that Complainant’s representative in this proceeding is not properly qualified under state law to represent Complainant on the ground that Complainant’s representative is not a lawyer. Respondent alleges certain facts on the composition of Complainant’s representative group and various provisions of California and Texas state law. The Panel finds these matters beyond consideration under the Policy.
Complainant asserts that it owns the following trademark registrations with the USPTO: MATCH.COM (Reg. No. 2,088,545 registered August 19, 1997); MATCH.COM PLATINUM (Reg. No. 3,323,423 registered October 30, 2007); and MATCH.COM MAKE LOVE HAPPEN (Reg. No. 3,518,254 registered October 14, 2008). The Panel finds that Complainant has established rights in the above marks under Policy ¶ 4(a)(i) through its trademark registrations of the marks with the USPTO. See Enter. Rent-A-Car Co. v. David Mizer Enters., Inc., FA 622122 (Nat. Arb. Forum Apr. 14, 2006) (finding that the complainant’s registration of the ENTERPRISE, ENTERPRISE RENT-A-CAR, and ENTERPRISE CAR SALES marks with the USPTO satisfied the requirement of demonstrating rights in the mark under consideration pursuant to Policy ¶ 4(a)(i)).
Complainant further contends that the <macth.com> domain name is confusingly similar to Complainant’s MATCH.COM mark. The Panel notes that the disputed domain name simply transposes the letters “c” and “t” of Complainant’s mark with no other changes noted. Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant’s MATCH.COM mark under Policy ¶ 4(a)(i). See Google Inc. v. Jon G., FA 106084 (Nat. Arb. Forum Apr. 26, 2002) (finding <googel.com> to be confusingly similar to the complainant’s GOOGLE mark and noting that “[t]he transposition of two letters does not create a distinct mark capable of overcoming a claim of confusing similarity, as the result reflects a very probable typographical error”).
While Respondent contends that the <macth.com> domain name is comprised of a common and generic/descriptive term and as such cannot be found to be confusingly similar to Complainant’s mark, the Panel finds that such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. See Precious Puppies of Florida, Inc. v. kc, FA 1028247 (Nat. Arb. Forum Aug. 10, 2007) (examining Respondent’s generic terms arguments only under Policy ¶ 4(a)(ii) and Policy ¶ 4(a)(iii) and not under Policy ¶ 4(a)(i)); see also Vitello v. Castello, FA 159460 (Nat. Arb. Forum July 1, 2003) (finding that the respondent’s disputed domain name was identical to complainant’s mark under Policy ¶ 4(a)(i), but later determining the issue of whether the disputed domain name was comprised of generic terms under Policy ¶¶ 4(a)(ii) and 4(a)(iii)).
Respondent contends that the disputed domain name is comprised of a common and generic/descriptive term and thus cannot be deemed confusingly similar to Complainant’s mark. However, because this argument is not applicable under Policy ¶ 4(a)(i), the argument will be presented under Policy ¶¶ 4(a)(ii) and (iii).
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.”).
Complainant asserts that Respondent has not been commonly known by the disputed domain name as the WHOIS information identifies the registrant as “Registrant [1961893]: / Domain Administrator / Hostsphere.com.” Further, Complainant contends Respondent has not been sponsored by or legitimately affiliated with Complainant in any way. Based upon Complainant’s assertions, and the WHOIS information on record, the Panel finds that Respondent is not commonly known by the <macth.com> domain name under Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name).
Further, Complainant argues that Respondent is using the disputed domain name to redirect Internet users to a website featuring generic links to third-party websites, some of which directly compete with Complainant’s business, as well as a link to Complainant’s official website. See Complainant’s Exhibit H. The Panel notes that Complainant’s evidence indicates such links as <match.com>, <maturesinglesonly.com>, <itsjustlunchorangecounty.com>, <matureprofessionalsingles.org>, and <christianmingle.com> among others. Complainant asserts that Respondent collects click-through fees from the websites that are linked-to on Respondent’s resolving website. The Panel finds that Respondent is not using the <macth.com> domain name for 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).
Complainant asserts that Respondent’s use of the disputed domain name for a pay-per-click advertising site featuring third-party links to Complainant’s competitors in the online matchmaking industry disrupts Complainant’s business in bad faith. Complainant argues that the links contained on Respondent’s website divert potential customers away from Complainant and to its competitors, thereby disrupting Complainant’s business. The Panel finds that Respondent’s use of the disputed domain name disrupts Complainant’s business and is evidence of bad faith registration and use under Policy ¶ 4(b)(iii). See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (“Respondent’s disputed domain name resolves to a parking website which provides click through revenue to Respondent and which displays links to travel-related products and services that directly compete with Complainant’s business. Accordingly, Respondent’s competing use of the disputed domain name is additional evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Further, Complainant argues that Respondent’s bad faith is further shown by Respondent’s use of the website to generate revenue as a click-through website. Complainant asserts that Respondent is attempting to take advantage of Complainant’s well known mark to commercially gain from those Internet users who click through to the third-party websites advertised on Respondent’s website. The Panel finds that Respondent has registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iv). See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes).
Lastly, Complainant argues that Respondent has engaged in typosquatting through its registration and use of the <macth.com> domain name. Complainant asserts that Respondent’s typosquatting is evidence, in and of itself, of bad faith registration and use under Policy ¶ 4(a)(iii). The Panel agrees and finds accordingly. See Nextel Commc’ns Inc. v. Geer, FA 477183 (Nat. Arb. Forum July 15, 2005) (finding that the respondent’s registration and use of the <nextell.com> domain name was in bad faith because the domain name epitomized typosquatting in its purest form).
Doctrine of Laches
The Panel finds that the doctrine of laches does not apply as a defense, and correspondingly chooses to disregard Respondent’s assertions. See Hebrew Univ. of Jerusalem v. Alberta Hot Rods, D2002-0616 (WIPO Oct. 7, 2002) (“The remedy available in an Administrative Proceeding under the Policy is not equitable. Accordingly, the defence of laches has no application.”); see also Drown Corp. v. Premier Wine & Spirits, FA 616805 (Nat. Arb. Forum Feb. 13, 2006) (finding that the laches defense was inappropriate under the Policy and that the time frame within which the complainant brought the proceeding was of no consequential value); see also Disney Enters. Inc. v. Meyers, FA 697818 (Nat. Arb. Forum June 26, 2006) (“Respondent’s efforts at arguing related equitable defenses such as estoppel and acquiescence are equally misplaced as these legal arguments are not contemplated by the Policy. Moreover, recognition of these arguments in accordance with Respondent’s desires requires the Panel to make a legal determination regarding the continuing validity of Complainant’s DISNEY mark. Such action is beyond the scope of the UDRP proceeding and if Respondent desires such an outcome it should avail itself of the proper judicial proceedings by which such a result might be accomplished.”).
Reverse Domain Name Hijacking.
Respondent contends that Complainant is engaged in hijacking the domain name. The Panel disagrees. Complainant has a registered trademark. Respondent’s domain name is confusingly similar to Complainant’s mark. There is no evidence of reverse domain name hijacking.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <macth.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: August 15, 2012
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