PlentyOfFish Media, Inc. v. GuideCast / Otamere Omoruyi
Claim Number: FA1202001427566
Complainant is PlentyOfFish Media, Inc. (“Complainant”), represented by Kevin Costanza of Seed Intellectual Property Law Group PLLC, Washington, USA. Respondent is GuideCast / Otamere Omoruyi (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <pofmobile.com>, registered with REGISTER.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.
Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 31, 2012; the National Arbitration Forum received payment on February 1, 2012.
On February 1, 2012, REGISTER.COM, INC. confirmed by e-mail to the National Arbitration Forum that the <pofmobile.com> domain name is registered with REGISTER.COM, INC. and that Respondent is the current registrant of the name. REGISTER.COM, INC. has verified that Respondent is bound by the REGISTER.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 February 7, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 27, 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@pofmobile.com. Also on February 7, 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 March 5, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Karl V. Fink (Ret.) 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 <pofmobile.com> domain name is confusingly similar to Complainant’s POF mark.
2. Respondent does not have any rights or legitimate interests in the <pofmobile.com> domain name.
3. Respondent registered and used the <pofmobile.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, PlentyOfFish Media, Inc., uses its POF, PLENTYOFFISH, and PLENTY OF FISH marks in its business as an international mobile online dating and social network. Complainant owns the trademark for its POF mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,251,640 registered June 12, 2007), with the Canadian Intellectual Property Office (“CIPO”) (Reg. No. TMA800238 registered June 17, 2011), and with the European Union’s Office of Harmonization for the Internal Market (“OHIM”) (Reg. No. 007535925 registered July 29, 2009).
Respondent, GuideCast / Otamere Omoruyi, registered the <pofmobile.com> domain name on January 11, 2011. The domain name resolves to a website that appears to imitate Complainant’s website and offer downloads purporting to originate from Complainant’s business.
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 owns trademark registrations with the USPTO, the CIPO, and the OHIM for its POF mark:
USPTO
Reg. No. 3,251,640 registered June 12, 2007.
CIPO
Reg. No. TMA800238 registered June 17, 2011.
OHIM
Reg. No. 007535925 registered July 29, 2009.
The Panel determines that Complainant has ascertained rights in its POF mark under Policy ¶ 4(a)(i) by its trademark registrations with multiple trademark agencies. See Am. Int’l Group, Inc. v. Morris, FA 569033 (Nat. Arb. Forum Dec. 6, 2005) (“Complainant has established rights in the AIG mark through registration of the mark with several trademark authorities throughout the world, including the United States Patent and Trademark office (‘USPTO’)”); see also Honeywell Int’l Inc. v. r9.net, FA 445594 (Nat. Arb. Forum May 23, 2005) (finding the complainant’s numerous registrations for its HONEYWELL mark throughout the world sufficient to establish the complainant’s rights in the mark under the Policy ¶ 4(a)(i)).
Complainant argues that the <pofmobile.com> domain name is confusingly similar to its POF mark. Complainant alleges that by adding the descriptive word “mobile” and adding the generic top-level domain (“gTLD”) “.com” to the mark, the domain name is not appropriately distinguished from the POF mark. The Panel finds that adding a descriptive term and a gTLD to a mark are not adequate changes to render the domain name significantly different from the mark under Policy ¶ 4(a)(i). See AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that the respondent failed to differentiate the <aimprofiles.com> domain name from the complainant’s AIM mark by merely adding the term “profiles”); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar). The Panel therefore concludes that the disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) is satisfied.
Complainant argues that Respondent has no rights or legitimate interests in the <pofmobile.com> domain name. Policy ¶ 4(a)(ii) demands that Complainant plead a prima facie case sustaining the allegations. After Complainant has satisfied the requirement, Respondent has the burden of proof to show why it does have rights or interests in the disputed domain name. See Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)); see also 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 Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name). The Panel finds that Complainant has successfully satisfied the requirement of making a prima facie case. As a result of Respondent’s failure to reply to the proceedings, the Panel may infer that Respondent admits to possessing no rights or legitimate interests in the disputed domain name. See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the panel to draw adverse inferences from the respondent’s failure to reply to the complaint); see also Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where the respondent fails to respond). However, the Panel will inspect the evidence provided to make a determination as to whether or not Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).
Complainant argues that Respondent is not commonly known by the <pofmobile.com> domain name and that Respondent does not have license or permission to use the POF mark. The WHOIS information lists the registrant as “GuideCast / Otamere Omoruyi,” which does not provide evidence that Respondent is commonly known by the disputed domain name. The Panel finds that, without any evidence supporting the conclusion that Respondent is commonly known by the disputed domain name, Respondent lacks rights or legitimate interest in the <pofmobile.com> domain name under Policy ¶ 4(c)(ii). See Bluegreen Corp. v. eGo, FA 128793 (Nat. Arb. Forum Dec. 16, 2002) (finding that the respondent was not commonly known by the disputed domain names where it maintained the domain name registrations on the complainant’s behalf and then appropriated the disputed domain names for itself, without permission from the complainant); see also 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).
Complainant argues that Respondent does not use the disputed domain name in connection with a bona fide offering of goods or services and that Respondent does not make a legitimate noncommercial or fair use of the domain name. The <pofmobile.com> domain name resolves to a website that offers services identical to that which Complainant’s business offers, including a link to Complainant’s mobile application to download, allegedly for commercial gain. Complainant argues that the domain name’s corresponding website creates a “likelihood of confusion with Complainant’s POF mark as to the source, sponsorship, affiliation, or endorsement” of the domain name and the software it offers. The Panel finds that Respondent’s use of the disputed domain name to divert consumers to its own competing website for profit does not amount to a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor is it a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) (finding that use of the complainant’s mark to sell the complainant’s perfume, as well as other brands of perfume, is not bona fide use); see also G.D. Searle & Co. v. Pelham, FA 117911 (Nat. Arb. Forum Sept. 19, 2002) (finding that because the respondent is using the infringing domain name to sell prescription drugs, the panel could infer that the respondent is using the complainant’s mark to attract Internet users to its website for commercial benefit).
The Panel finds that Policy ¶ 4(a)(ii) is satisfied.
Complainant argues that Respondent registered and uses the <pofmobile.com> domain name in bad faith, causing disruption to Complainant’s business. Complainant contends that Respondent’s website offers a link for a downloadable application that mimics and competes with Complainant’s product. The Panel finds that misdirecting Internet users to Respondent’s competing website disrupts Complainant’s business and amounts to bad faith registration and use under Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also Spark Networks PLC v. Houlihan, FA 653476 (Nat. Arb. Forum Apr. 18, 2006) (holding that the respondent’s registration of a domain name substantially similar to the complainant’s AMERICAN SINGLES mark in order to operate a competing online dating website supported a finding that respondent registered and used the domain name to disrupt the complainant’s business under Policy ¶ 4(b)(iii)).
Complainant argues that Respondent’s use of the disputed domain name to intentionally divert consumers to the resolving website for financial profit demonstrates bad faith registration and use under Policy ¶ 4(b)(iv). Complainant argues that the <pofmobile.com> domain name causes uncertainty in consumers as to the relationship between Complainant’s business and the domain name and, as a result, Respondent capitalizes from the confusion when those consumers download Respondent’s product. The Panel concludes that Respondent’s use of the domain name to draw Internet traffic to its site, confuse consumers, and profit from the misdirection is evidence of bad faith registration and use under Policy ¶ 4(b)(iv). See Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where the respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site); see also Toyota Motor Sales U.S.A. Inc. v. Clelland, FA 198018 (Nat. Arb. Forum Nov. 10, 2003) (“Respondent used <land-cruiser.com> to advertise its business, which sold goods in competition with Complainant. This establishes bad faith as defined in Policy ¶ 4(b)(iv).”).
The Panel finds that Policy ¶ 4(a)(iii) is 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 <pofmobile.com> domain name be TRANSFERRED from Respondent to Complainant.
Karl V. Fink (Ret.), Panelist
Dated: March 9, 2012
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