eHarmony, Inc. v. Errol Scarlett
Claim Number: FA1401001537358
Complainant is eHarmony, Inc. (“Complainant”), represented by Lisa Greenwald-Swire of Fish & Richardson P.C., California, USA. Respondent is Errol Scarlett (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <eharmonyus.com>, registered with GODADDY.COM, LLC.
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.
Hon. Karl V. Fink (Ret.), as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 3, 2014; the National Arbitration Forum received payment on January 6, 2014.
On January 6, 2014, GODADDY.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <eharmonyus.com> domain name is registered with GODADDY.COM, LLC and that Respondent is the current registrant of the name. GODADDY.COM, LLC has verified that Respondent is bound by the GODADDY.COM, LLC 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 January 6, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 27, 2014 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@eharmonyus.com. Also on January 6, 2014, 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 January 29, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. 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
Complainant
a) Complainant has rights in the EHARMONY mark which it uses in connection with its well-known dating service and relationship website, founded by one of the world’s most well-regarded relationship experts, clinical psychologist Dr. Neil Clark Warren. Complainant is the owner of the United States Patent and Trademark Office (“USPTO”) registrations for the EHARMONY mark (e.g., Reg. No. 2,764,705 registered Sep. 16, 2003)..
b) The <eharmonyus.com> domain name is confusingly similar to the EHARMONY mark given that the domain name fully incorporates the distinctive and famous EHARMONY mark with the addition of the generic or geographic term “us” and the generic top-level domain (“gTLD”) “.com.”
c) Respondent is not commonly known by the <eharmonyus.com> domain name. Respondent does not have any license, permission, contract, or other relationship that allows Respondent to own or control a domain name incorporating the EHARMONY mark. Further, the WHOIS information does not provide any indication that Respondent or Respondent’s business operations are known by the <eharmonyus.com> domain name.
d) Respondent does not use the domain name in connection with a bona fide offering of goods or services. The <eharmonyus.com> domain name is used to offer dating services in direct competition with Complainant’s dating services.
e) Respondent has caused significant harm to Complainant’s business by creating associations with Complainant in an attempt to draw Internet users to the <eharmonyus.com> domain name rather than to Complainant’s website.
f) Respondent’s intentional and conspicuous use of the EHARMONY mark in the <eharmonyus.com> domain name and throughout the resolving website causes consumers to believe, mistakenly, that Complainant is somehow affiliated with or endorses the <eharmonyus.com> domain name. Respondent’s intentional creation of an unauthorized association with Complainant in connection with another online dating site diminishes the valuable EHARMONY brand.
g) Respondent’s website mimics the look and feel of Complainant’s official website. Respondent, like Complainant, displays pictures of smiling, happy couples and the profile pictures of its dating service users.
h) Respondent clearly had full knowledge of Complainant’s rights in the EHARMONY mark given that Respondent registered a domain name with nothing more than the generic term “us” and is hosting a website clearly derivative of Complainant’s genuine website.
B. Respondent
Respondent did not submit a Response.
For reasons set forth below, the Panel finds Complainant is entitled to the relief requested.
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 asserts that it has rights in the EHARMONY mark which it uses in connection with its well-known dating service and relationship website, founded by one of the world’s most well-regarded relationship experts, clinical psychologist Dr. Neil Clark Warren. Complainant notes that it is the owner of the USPTO registrations for the EHARMONY mark (e.g., Reg. No. 2,764,705 registered Sep. 16, 2003). Panels have found that registration of a trademark is clear evidence of having rights in the 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)). Therefore, the Panel finds that Complainant has rights in the EHARMONY mark under Policy ¶ 4(a)(i).
Complainant next alleges that the <eharmonyus.com> domain name is confusingly similar to the EHARMONY mark given that the domain name fully incorporates the distinctive and famous EHARMONY mark with the addition of the generic or geographic term “us” and the gTLD “.com.” Panels have found that the addition of a generic or geographic term fails to negate confusing similarity. See Am. Online, Inc. v. Shanghaihangwei Packing Material Co. Ltd., D2001-0443 (WIPO May 22, 2001) (finding the <ouricq.com> domain name to be confusingly similar to the complainant’s ICQ mark); see also Ticketmaster Corp. v. Kumar, FA 744436 (Nat. Arb. Forum Aug. 17, 2006) (finding that the <indiaticketmaster.com> domain name was confusingly similar to the complainant’s TICKETMASTER mark). Panels have further held that the addition of a gTLD is irrelevant to a Policy ¶ 4(a)(i) analysis. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Therefore, the Panel finds that Respondent’s <eharmonyus.com> domain name is confusingly similar to Complainant’s EHARMONY mark pursuant to Policy ¶ 4(a)(i).
Complainant has proven this element.
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 argues that Respondent’s lack of rights and legitimate interests in the disputed domain name is evidenced by the fact that Respondent is not commonly known by the <eharmonyus.com> domain name. Complainant asserts that Respondent does not have any license, permission, contract, or other relationship that allows Respondent to own or control a domain name incorporating the EHARMONY mark. Further, Complainant states that the WHOIS information does not provide any indication that Respondent or Respondent’s business operations are known by the <eharmonyus.com> domain name. The Panel notes that the WHOIS record for the <eharmonyus.com> domain name lists “Errol Scarlett” as the domain name registrant. Therefore, the Panel finds that Respondent is not commonly known by the <eharmonyus.com> domain name pursuant to Policy ¶ 4(c)(ii). 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).
Complainant asserts that Respondent does not use the domain name in connection with a bona fide offering of goods or services. Complainant notes that the <eharmonyus.com> domain name is used to offer dating services in direct competition with Complainant’s dating services. In Florists’ Transworld Delivery v. Malek, FA 676433 (Nat. Arb. Forum June 6, 2006), the panel held 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. The Panel finds that Respondent’s competitive use of the <eharmonyus.com> domain name is found not to be 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 has proven this element.
Complainant asserts that Respondent has caused significant harm to Complainant’s business by creating associations with Complainant in an attempt to draw Internet users to the <eharmonyus.com> domain name rather than to Complainant’s website. In Spark Networks PLC v. Houlihan, FA 653476 (Nat. Arb. Forum Apr. 18, 2006), the panel held 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). Therefore, the Panel finds that Respondent registered and is using the <eharmonyus.com> domain name in bad faith as demonstrated by its disruptive nature pursuant to Policy ¶ 4(b)(iii).
Complainant contends that Respondent’s intentional and conspicuous use of the EHARMONY mark in the <eharmonyus.com> domain name and throughout the resolving website causes consumers to believe, mistakenly, that Complainant is somehow affiliated with or endorses the <eharmonyus.com> domain name. Complainant notes that Respondent’s intentional creation of an unauthorized association with Complainant in connection with another online dating site diminishes the valuable EHARMONY brand. Panels have found bad faith as a result of the attempted creation of a likelihood of confusion in order to profit from Internet mistakes. See MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark). Accordingly, the Panel finds that Respondent registered and is using the <eharmonyus.com> domain name in bad faith under Policy ¶ 4(b)(iv).
Complainant further argues that Respondent’s website mimics the look and feel of Complainant’s official website. Complainant states that Respondent, like Complainant, displays pictures of smiling, happy couples and the profile pictures of its dating service users. Panels have found bad faith as a result of attempts to pass off as being affiliated with or owned by the complainant. See Target Brands, Inc. v. JK Internet Servs., FA 349108 (Nat. Arb. Forum Dec. 14, 2004) (finding bad faith because the respondent not only registered complainant’s famous TARGET mark, but “reproduced . . . [c]omplainant’s TARGET mark . . . [and] added [c]omplainant’s distinctive red bull’s eye [at the domain name] . . . to a point of being indistinguishable from the original.”). As such, the Panel finds that Respondent registered and uses the <eharmonyus.com> domain name in bad faith under Policy ¶ 4(a)(iii).
Complainant argues that Respondent clearly had full knowledge of Complainant’s rights in the EHARMONY mark given that Respondent registered a domain name with nothing more than the generic term “us” and is hosting a website clearly derivative of Complainant’s genuine website. While panels have concluded that constructive notice is not sufficient to support a bad faith finding, the Panel finds that, due to the fame of Complainant's mark, Respondent had actual knowledge of the mark and Complainant's rights. Thus, the Panel holds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware” of the complainant's YAHOO! mark at the time of registration).
Complainant has proven this element.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <eharmonyus.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.), Panelist
Dated: January 30, 2014
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