Plentyoffish Media Inc. v. Whois Privacy Protection Service / Whois Agent
Claim Number: FA1302001485534
Complainant is Plentyoffish Media Inc. (“Complainant”), represented by Kevin Costanza of Seed Intellectual Property Law Group PLLC, Washington, USA. Respondent is Whois Privacy Protection Service / Whois Agent (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <pofpictures.com>, registered with BIZCN.COM, INC.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 15, 2013; the National Arbitration Forum received payment on February 18, 2013.
On February 26, 2013, BIZCN.COM, INC. confirmed by e-mail to the National Arbitration Forum that the <pofpictures.com> domain name is registered with BIZCN.COM, INC. and that Respondent is the current registrant of the names. BIZCN.COM, INC. has verified that Respondent is bound by the BIZCN.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 March 1, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 21, 2013 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@pofpictures.com. Also on March 1, 2013, 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 March 29, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco, 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
Complainant contends as follows:
Complainant Plentyoffish Media Inc. owns multiple trademark registration for its PLENTY OF FISH and POF trademarks including registrations with the United States Patent and Trademark Office (“USPTO”), the Canadian Intellectual Property Office (“CIPO”), and other registrars worldwide.
The subject domain name is identical or confusingly similar to a trademark in which Complainant has rights.
The dominant portion of the subject domain name, i.e. “POF,” is identical to Complainant’s registered POF trademark and the entire “POFpictures.com” domain name simply combines the gTLD “.com” and the generic name “pictures” with Complainant’s POF mark. A domain name containing the identical mark of a complainant combined with only a generic word or term and the gTLD is confusing similar to the mark.
Respondent is not using and has not used the POFpictures.com domain name in connection with a bona fide offering of goods or services. Instead, the domain name has been and is currently being used to intentionally attract, for commercial gain, Internet users to the POFpictures.com website by creating confusion with Complainant's POF mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website and software. Such use is insufficient to establish rights or legitimate interests in a domain name, and instead, is evidence of bad faith registration and use.
Complainant has not licensed or otherwise permitted Respondent to use the POF, PLENTYOFFISH or PLENTY OF FISH marks or to apply for or use any domain name incorporating the same.
Respondent is not commonly known as “POF,” “POFpictures” “PlentyOfFish”, “PlentyOfFishPictures” or any variant thereof, and to the best of Complainant’s knowledge, Respondent has not applied for or obtained any state or federal trademark or service mark registration for the same.
Respondent is not making legitimate noncommercial use of POFpictures.com, but rather, is intentionally attracting, presumably for commercial gain, Internet users to its POFpictures.com website by creating confusion with Complainant's POF mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website and software.
The POFpictures.com domain name constitutes an extension of Complainant’s POF.com domain name and incorporates Complainant’s POF mark in its entirety, such that Internet users seeking the POF.com website or Complainant’s POF services may easily find themselves diverted to Respondent’s website. Once redirected, Internet users are deceived into disclosing their login information through confusion arising from the unauthorized use of Complainant’s POF mark, as well as use of a site format that mimics that of Complainant’s POF.com site.
Respondent is believed to be capitalizing on deception and confusion. In addition, Respondent is using Complainant’s customer accounts to spam others with links back to the POFpictures.com site to spread the confusion.
Moreover, registering a domain name primarily for the purpose of disrupting the business of a competitor is evidence of bad faith registration and use pursuant to ICANN Policy ¶ 4(b)(iii). Here, Respondent is disrupting Complainant’s business by diverting consumers who may be seeking to use Complainant’s legitimate POF services by creating a likelihood of confusion with mock services promoted by Respondent under Complainant’s POF mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complaint owns registered trademarks for POF mark in the United States, Canada, and elsewhere throughout the world.
Respondent is not affiliated with Complainant and had not been authorized to use the POF mark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired trademark rights in POF.
The <pofpictures.com> domain name addressed a website that presents a device for fraudulently capturing login information.
Paragraph 15(af) 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.”).
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant’s USPTO registrations, or CIPO registrations, or any of the its other worldwide registrations of the POF mark is conclusive evidence of Complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See Towmaster, Inc. v. Hale, FA 973506 (Nat. Arb. Forum June 4, 2007) (finding that “Complainant’s timely registration with the USPTO and subsequent use of the BIG TOW mark establishes rights in the mark pursuant to Policy ¶ 4(a)(i).”). It is immaterial that Respondent may reside outside the jurisdiction of the trademark’s registrar. See Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction).
Respondent’s at-issue <pofpictures.com> domain name is dominated by Complainant’s entire POF trademark, adds the generic term “pictures” to the mark, and appends the top level domain name “.com” to the resulting string. These differences between the domain name and Complainant’s trademark are insignificant for the purposes of Policy ¶4(a)(i) and therefore the Panel finds that Respondent’s domain name is confusingly similar to Complainant’s POF mark.
See Westfield Corp. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the <westfieldshopping.com> domain name confusingly similar because the WESTFIELD mark was the dominant element); see also PlentyOfFish Media, Inc. v. Private Whois Service, FA1400471 (Nat. Arb. Forum August 27, 2011) (finding plentyoffishmobile.com to confusingly similar to complainant’s PLENTYOFFISH mark); see also Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”)
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at‑issue domain name.
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond and, as is shown below, there is no evidence supporting a finding pursuant to Policy 4(c) that Respondent has rights or interests in respect of the at-issue domain name, Complainant’s prima facie showing acts conclusively.
WHOIS information identifies “Whois Privacy Protection Service / Whois Agent” as the registrant of the disputed domain name. The registrant’s name is thus dissimilar to Respondent’s domain name. Additionally, there is no evidence of record that might support a conclusion that Respondent is commonly known by the <pofpictures.com> domain name. Based on the forgoing the Panel concludes, according to Policy ¶ 4(c)(ii), that Respondent is not commonly known by the <pofpictures.com> domain name. See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Furthermore, Respondent used the domain name to address a website designed to fraudulently obtain proprietary login information from its visitors. Using the domain name in this manner is neither a bona fide offering of goods or services under Policy ¶4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶4(c)(iii). See Blackstone TM L.L.C. v. Mita Irelant Ltd., FA 1314998 (Nat. Arb. Forum Apr. 30, 2010) (“The Panel finds that Respondent’s attempt to “phish” for users’ personal information is neither a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”); see also Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”);
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name pursuant to Policy ¶4(a)(ii).
Policy ¶4(b) bad faith circumstances are present, as well as other circumstances, indicating that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
As mentioned above, Respondent registered and used the <pofpictures.com> domain name in bad faith by employing a domain name that is confusingly similar to Complainant’s trademark to divert Internet users who were ostensibly looking for Complainant, to Respondent’s website. Respondent’s ultimate intent was to commercially benefit from such diversion. Upon a visitor’s arrival at Respondent’s at-issue website, the visitor was presented with a login device designed to fraudulently obtain the visitor’s proprietary personal information, a practice known as “phishing.” Using the domain name in this manner demonstrates bad faith pursuant to Policy ¶ 4(b)(iv). See 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). Additionally, Respondent’s overt phishing activity, in and of itself, indicates that the at-issue domain name was registered and used in bad faith. See Juno Online Servs., Inc. v. Iza, FA 245960 (Nat. Arb. Forum May 3, 2004) (concluding that using a domain name that “is confusingly similar to Complainant’s mark, redirects Internet users to a website that imitates Complainant’s billing website, and is used to fraudulently acquire personal information from Complainant’s clients” is evidence of bad faith registration and use).
Finally, by diverting consumers who may be seeking Complainant to its own unauthorized website, Respondent is disrupting Complainant’s business by confusing Complainant’s customers with the fraudulent services provided at Respondent’s website. Using the domain name in this manner demonstrates bad faith under Policy ¶ 4(b)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <pofpictures.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: March 31, 2013
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