Plentyoffish Media Inc. v. James Lee
Claim Number: FA1410001583748
Complainant is Plentyoffish Media Inc. (“Complainant”), represented by Kevin Costanza of Seed Intellectual Property Law Group PLLC, Washington, USA. Respondent is James Lee (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <plenty-of-fish.us>, registered with GoDaddy.com, LLC.
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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 7, 2014; the National Arbitration Forum received payment on October 7, 2014.
On October 8, 2014, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <plenty-of-fish.us> 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 the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On October 9, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 29, 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@plenty-of-fish.us. Also on October 9, 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 November 7, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch as Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules to the usTLD Dispute Resolution Policy (“Rules”). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the Policy, the Rules, the Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the usTLD Policy, usTLD 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.
i. Complainant owns the PLENTYOFFISH mark through its trademark registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,251,639, registered June 12, 2007).
ii. Complainant uses the PLENTYOFFISH mark in connection with its business as an online dating service.
i. Policy ¶ 4(a)(i)
1. The <plenty-of-fish.us> domain name is confusingly similar to Complainant’s PLENTYOFFISH mark because Respondent has simply added two hyphens to the mark.
ii. Policy ¶ 4(a)(ii)
1. Respondent lacks rights or legitimate interests in the disputed domain name.
2. Respondent has not provided any evidence that Respondent owns a mark that is identical to the disputed domain name.
3. Respondent is not commonly known by the <plenty-of-fish.us> domain name. Respondent is neither licensed nor authorized to use the PLENTYOFFISH mark.
4. Respondent does not provide any bona fide offering of goods or services, or make a legitimate noncommercial or fair use of the disputed domain name.
5. Respondent is currently using the disputed domain name to attract Internet users to its own website, which contains links to other online dating services in direct competition with Complainant.
iii. Policy ¶ 4(a)(iii)
1. Respondent uses the disputed domain name to attract Internet users to its own website, which contains links to businesses that offer competing services to that of Complainant. Such behavior disrupts Complainant’s business.
2. Respondent uses the disputed domain name to attract confused Internet users to its own website for commercial gain.
2. Respondent did not submit a Response.
1. Respondent’s <plenty-of-fish.us> domain name is confusingly similar to Complainant’s PLENTYOFFISH mark.
2. Respondent does not have any rights or legitimate interests in the <plenty-of-fish.us> domain name.
3. Respondent registered or used the < plenty-of-fish.us > 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.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
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 uses the PLENTYOFFISH mark in connection with its business as an online dating services. Complainant claims to own the PLENTYOFFISH mark through its trademark registration with the USPTO (Reg. No. 3,251,639, registered June 12, 2007). Complainant argues that such registration is sufficient to establish rights in the PLENTYOFFISH mark pursuant to Policy ¶ 4(a)(i) requirements. Complainant’s argument is supported by previous UDRP decision. See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (concluding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO). Accordingly, the Panel finds that Complainant’s USPTO registration satisfies the requirements of Policy ¶ 4(a)(i).
Complainant argues that the <plenty-of-fish.us> domain name is confusingly similar to Complainant’s PLENTYOFFISH mark because Respondent has simply added two hyphens to the mark. The Panel also notes that the disputed domain name differs from the mark given the affixation of the country code top-level domain (“ccTLD”) “.us” Previous panels have generally found that a domain name differing from a mark by the addition of punctuation, such as hyphens, and the addition of a ccTLD are irrelevant to the Policy ¶ 4(a)(i) analysis. See Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”); see also CDW Computer Ctrs., Inc. v. The Joy Co., FA 114463 (Nat. Arb. Forum July 25, 2002) (finding that the addition of the ccTLD “.us” is inconsequential and does not defeat a claim of confusing similarity). As such, the Panel finds that Respondent’s <plenty-of-fish.us> domain name is confusingly similar to Complainant’s PLENTYOFFISH mark.
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.”).
It is Complainant’s position that Respondent lacks rights or legitimate interests in the disputed domain name. The Panel notes that Respondent has not provided any evidence demonstrating that it owns a mark that is identical to the disputed domain name. Previous panels have found that this is necessary to satisfy Policy ¶ 4(c)(i) requirements. See Meow Media Inc. v. Basil, FA 113280 (Nat. Arb. Forum Aug. 20, 2002) (finding that there was no evidence that the respondent was the owner or beneficiary of a mark that is identical to the <persiankitty.us> domain name). Accordingly, the Panel finds that Complainant has satisfied Policy ¶ 4(c)(i).
Additionally, Complainant alleges that Respondent is not commonly known by the <plenty-of-fish.us> domain name. May the Panel be advised that the WHOIS information identifies “James Lee” as the registrant of the disputed domain name. Further, Complainant urges that Respondent is neither licensed nor authorized to use the PLENTYOFFISH mark. The Panel recalls that Respondent has failed to submit a response to combat any of Complainant’s arguments. Given this lack of information, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(iii). See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the disputed domain names because the WHOIS information listed “Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't” as the registrant and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute).
Complainant also argues that Respondent has not provided any bona fide offering of goods or services, or made a legitimate noncommercial or fair use of the disputed domain name. Complainant urges that Respondent currently uses the disputed domain name to attract Internet users to its own website, which contains links to competing services to that of Complainant. See Compl., at Attached Ex. 4. Previous panels have refused to find a bona fide offering of goods or services, or a legitimate noncommercial or fair use where the disputed domain name was used in such a way. See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (concluding that the use of a confusingly similar domain name to operate a portal with hyperlinks to various third-party websites, some of which may be in direct competition with a complainant, does not constitute 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)). Consequently, the Panel finds that Respondent’s disputed domain name is not consistent with a bona fide offering of goods or services, or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(ii) and Policy ¶ 4(c)(iv).
Complainant argues that Respondent previously uses the disputed domain name to redirect confused Internet users to its own website that contains a variety of links to third-party websites, some of which directly compete with Complainant. Complainant argues that such diversion disrupts Complainant’s business and is evidence of bad faith pursuant to Policy ¶ 4(b)(iii). Typically, panels have held that such behavior qualifies as evidence of bad faith pursuant to Policy ¶ 4(b)(iii). See Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iii) where a respondent used the disputed domain name to operate a commercial search engine with links to the complainant’s competitors). Therefore, the Panel finds that Respondent is using the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii).
Moreover, Complainant argues that Respondent uses the disputed domain name to intentionally divert users to its own website for commercial gain. Typically, Panels have held that such a use of a disputed domain name constitutes bad faith pursuant to Policy ¶ 4(b)(iv). See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”). Consequently, the Panel agrees that Respondent is using the disputed domain name in bad faith under Policy ¶ 4(b)(iv).
Having established all three elements required under the usTLD, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <plenty-of-fish.us> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: November 20, 2014
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