Lavalife Inc. v. Yong Li
Claim
Number: FA0306000161269
Complainant is Lavalife Inc., Toronto, ON, Canada (“Complainant”)
represented by Candace Lynn Bell, of Kavinoky & Cook, LLP.
Respondent is Yong Li,
Beijing, China (“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <wwwlavalife.com>, registered with Iholdings.Com,
Inc. d/b/a Dotregistrar.Com.
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.
James
A. Carmody, Esq., as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on May 30, 2003; the Forum received a hard copy of the Complaint
on June 2, 2003.
On
June 3, 2003, Iholdings.Com, Inc. d/b/a Dotregistrar.Com confirmed by e-mail to
the Forum that the domain name <wwwlavalife.com> is registered
with Iholdings.Com, Inc. d/b/a Dotregistrar.Com and that Respondent is the
current registrant of the name. Iholdings.Com, Inc. d/b/a Dotregistrar.Com has
verified that Respondent is bound by the Iholdings.Com, Inc. d/b/a
Dotregistrar.Com registration agreement and has thereby agreed to resolve
domain-name disputes brought by third parties in accordance with ICANN's
Uniform Domain Name Dispute Resolution Policy (the "Policy").
On
June 3, 2003, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
June 23, 2003 by which Respondent could file a Response to the Complaint, was
transmitted to Respondent via e-mail, post and fax, to all entities and persons
listed on Respondent's registration as technical, administrative and billing
contacts, and to postmaster@wwwlavalife.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the Forum transmitted
to the parties a Notification of Respondent Default.
On
June 27, 2003, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the Forum appointed James A. Carmody, Esq., 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 for Uniform Domain Name Dispute Resolution Policy
(the "Rules") "to employ reasonably available means calculated
to achieve actual notice to Respondent."
Therefore, the Panel may issue its decision based on the documents
submitted and in accordance with the ICANN Policy, ICANN 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.
Complainant
requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <wwwlavalife.com>
domain name is confusingly similar to Complainant’s LAVALIFE mark.
2. Respondent does not have any rights or
legitimate interests in the <wwwlavalife.com> domain name.
3. Respondent registered and used the <wwwlavalife.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant
holds trademark registrations with the U.S. Patent and Trademark Office for the
LAVALIFE mark (Reg. Nos: 2,646,908 – registered Nov. 5, 2002 and 2,672,951 –
registered Jan. 7, 2003 – both filed Feb. 1, 2001) which is used in connection
with providing dating services through the phone and via an interactive
website. Complainant has also
registered the LAVALIFE mark in other foreign countries such as Australia and
Canada.
Complainant
registered the domain name <lavalife.com> on August 30, 2000. The domain name provides information and
access to the Complainant’s goods and services provided under the LAVALIFE mark
to current and potential customers.
Complainant provides dating services through a phone service and via an
interactive website.
Respondent
registered the disputed domain name on June 25, 2002. Respondent is using the disputed domain name to redirect Internet
users to a webpage for “ADULT SINGLES.”
Respondent’s services are marketed under the “ADULT SINGLES” mark. This website offers dating services similar
to those offered by Complainant.
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.
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 has
established that it has rights in the LAVALIFE mark through registration with
the U.S. Patent and Trademark Office (“USPTO”). Once the USPTO has granted registration of a mark, the
effective date of ownership rights to the mark is the date of filing. See FDNY Fire Safety Educ. Fund,
Inc. v. Roger Miller, FA 145235 (Nat. Arb. Forum March 26, 2003) (finding that
Complainant’s rights in the FDNY mark relate back to the date that its
successful trademark registration was filed with the U.S. Patent and Trademark
Office); see also J. C. Hall Co. v. Hallmark Cards, Inc., 340
F.2d 960, 144 U.S.P.Q. 435 (C.C.P.A. 1965) (registration on the Principal
Register is prima facie proof of continual use of the mark, dating back to the
filing date of the application for registration). Complainant also registered the LAVALIFE mark in foreign
countries such as Australia and Canada.
Respondent’s <wwwlavalife.com>
domain name is confusingly similar to Complainant’s mark because it merely
places the string of letters “www” before Complainant’s mark. The placement of “www” before Complainant’s
mark capitalizes on a common typing error.
Internet users who type Complainant’s mark into the URL but do not type
the period between “www” and LAVALIFE will be unwillingly diverted to
Respondent’s website. The addition of
the “www” before Complainant’s mark does not therefore create a distinct
characteristic capable of overcoming a Policy ¶ 4(a)(i) confusingly similar
analysis. See Bank of Am. Corp. v. InterMos, FA 95092
(Nat. Arb. Forum Aug. 1, 2000) (finding that Respondent’s domain name
<wwwbankofamerica.com> is confusingly similar to Complainant’s registered
trademark BANK OF AMERICA because it “takes advantage of a typing error
(eliminating the period between the www and the domain name) that users
commonly make when searching on the Internet”); see also Dana
Corporation v. $$$ This Domain Name Is For Sale $$$, FA 117328 (Nat. Arb.
Forum Nov. 19, 2002) (finding Respondent's <wwwdana.com> domain name
confusingly similar to Complainant's registered DANA mark because Complainant's
mark remains the dominant feature).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Complainant
urges that Respondent has no rights to or legitimate interests in the disputed
domain name. Respondent did not provide
the Panel with a Response in this proceeding.
Thus, the Panel may accept all reasonable allegations and inferences in
the Complaint as true. See
Bayerische Motoren Werke AG v Bavarian AG, FA 110830 (Nat. Arb. Forum June
17, 2002) (finding that in the absence of a Response the Panel is free to make
inferences from the very failure to respond and assign greater weight to
certain circumstances than it might otherwise do); see also Desotec N.V. v.
Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to
respond allows a presumption that Complainant’s allegations are true unless
clearly contradicted by the evidence).
Moreover, due to
Respondent’s failure to dispute the allegations in the Complaint, the Panel may
presume that Respondent lacks any rights to or legitimate interests in the
disputed domain name pursuant to Policy ¶ 4(a)(ii). See Pavillion
Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000)
(finding that Respondents’ failure to respond can be construed as an admission
that they have no legitimate interest in the domain names); see also Canadian Imperial Bank of Commerce v. D3M
Virtual Reality Inc., AF-0336 (eResolution Sept. 23, 2000) (finding no
rights or legitimate interests where no such right or interest was immediately
apparent to the Panel and Respondent did not come forward to suggest any right
or interest it may have possessed).
Furthermore,
Respondent is using the <wwwlavalife.com> domain name to redirect
Internet traffic to a webpage for “ADULT SINGLES,” which is a mark used by
Respondent to market services similar to Complainant’s services. The use of a confusingly similar domain name
in order to divert Internet users interested in Complainant’s services to a
competing website is not a use in connection with a bona fide offering of goods
or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair
use pursuant to Policy ¶ 4(c)(iii). See
N. Coast Med., Inc. v. Allegro Med.,
FA 95541 (Nat. Arb. Forum Oct. 2, 2000) (finding no bona fide use where
Respondent used the domain name to divert Internet users to its competing
website); see also Ticketmaster
Corp. v. DiscoverNet, Inc., D2001-0252 (WIPO Apr. 9, 2001) (finding no
rights or legitimate interests where Respondent generated commercial gain by
intentionally and misleadingly diverting users away from Complainant's site to
a competing website).
Finally,
Respondent is not affiliated with Complainant and the evidence fails to
establish that Respondent is authorized or licensed to register or use domain
names or marks containing the LAVALIFE mark.
The WHOIS information for the <wwwlavalife.com> domain name
indicates Respondent, Yong Li, as the registrant; however, it fails to
establish Respondent as an “individual, business, or other organazation”
commonly known by the <wwwlavalife.com> domain name. Therefore, Respondent has no rights or
legitimate interests in the domain name pursuant to Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar.
14, 2000) (finding no rights or legitimate interest where Respondent was not
commonly known by the mark and never applied for a license or permission from
Complainant to use the trademarked name); see also MRA Holding, LLC
v. Costnet, FA 140454 (Nat. Arb. Forum Feb. 20, 2003) (noting that “the disputed domain name
does not even correctly spell a cognizable phrase” in finding that Respondent
was not “commonly known by” the name GIRLS GON WILD or <girlsgonwild.com>).
Accordingly, the
Panel finds that Policy ¶ 4(a)(ii) has been established.
It can be
inferred that Respondent had knowledge of Complainant’s LAVALIFE mark when it
registered the disputed domain name because the domain name is a misspelling of
Complainant’s mark and is offering competing services. Registration of a domain name, despite
knowledge of Complainant’s rights, is evidence of bad faith registration
pursuant to Policy ¶ 4(a)(iii). See
Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. Feb.
11, 2002) (finding that "[w]here an alleged infringer chooses a mark he
knows to be similar to another, one can infer an intent to confuse"); see
also Samsonite Corp. v. Colony
Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of
bad faith includes actual or constructive knowledge of a commonly known mark at
the time of registration).
Moreover,
Respondent is engaged in a practice known as “typosquatting.” Respondent’s practice diverts Internet users
who misspell Complainant’s mark to a website sponsored by Respondent for
Respondent’s commercial gain, in violation of Policy ¶ 4(b)(iv). The practice of “typosquatting” has also
been recognized as a bad faith use of a domain name under the UDRP pursuant to
Policy ¶ 4(a)(iii). See AltaVista Co. v. Stoneybrook, D2000-0886
(WIPO Oct. 26, 2000) (awarding <wwwalavista.com>, among other
misspellings of altavista.com, to Complainant); see also Dow Jones & Co. v. Powerclick, Inc.,
D2000-1259 (WIPO Dec. 1, 2000) (awarding domain names <wwwdowjones.com>,
<wwwwsj.com>, <wwwbarrons.com> and <wwwbarronsmag.com> to
Complainants).
Furthermore,
Respondent has registered a domain name primarily for the purpose of disrupting
the business of their competitor, i.e. Complainant. Both parties provide dating services via the Internet. Respondent’s <wwwlavalife.com>
domain name includes the LAVALIFE mark in order to divert current and potential
Lavalife Inc., customers to Respondent’s website. The use of a competitor’s mark within a domain name, for the
purpose of diverting potential customers to competing websites, constitutes
disruption of a competitor’s business.
This practice has been recognized as bad faith pursuant to Policy ¶
4(b)(iii). See Surface Protection Indus., Inc. v.
Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the
competitive relationship between Complainant and Respondent, Respondent likely
registered the contested domain name with the intent to disrupt Complainant's
business and create user confusion); see also General Media Communications, Inc. v. Vine Ent., FA 96554 (Nat.
Arb. Forum Mar. 26, 2001) (finding bad faith where a competitor of Complainant
registered and used a domain name confusingly similar to Complainant’s
PENTHOUSE mark to host a pornographic web site).
The Panel finds
the Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under ICANN Policy, the Panel concludes
that relief shall be GRANTED.
Accordingly, it
is Ordered that the <wwwlavalife.com> domain name be TRANSFERRED
from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated:
July 9, 2003
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