Zoosk, Inc. v. James Lee
Claim Number: FA1505001618575
Complainant is Zoosk, Inc. (“Complainant”), represented by Patchen M. Haggerty of Perkins Coie LLP, Washington, USA. Respondent is James Lee (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <zooskdating.us>, registered with GODADDY.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.
Hon. Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 8, 2015; the Forum received payment on May 11, 2015.
On May 11, 2015, GODADDY.COM, INC. confirmed by e-mail to the Forum that the <zooskdating.us> domain name is registered with GODADDY.COM, INC. and that Respondent is the current registrant of the name. GODADDY.COM, INC. has verified that Respondent is bound by the GODADDY.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 May 13, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 2, 2015 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@zooskdating.us. Also on May 13, 2015, 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 Forum transmitted to the parties a Notification of Respondent Default.
On June 9, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (Ret.) 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 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.
Complainant
Complainant has used the ZOOSK mark in connection with online social networking services since December 21, 2007. Complainant has established rights in the mark through registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,476,277, registered July 29, 2008.) Respondent’s disputed <zooskdating.us> domain name is confusingly similar to Complainant’s ZOOSK mark. Respondent’s disputed domain name includes Complainant’s whole ZOOSK mark, the generic descriptive word “dating”, and the country code top-level domain (“ccTLD”) “.us.” These minute differences are not sufficient to distinguish the domain name from Complainant’s mark.
Respondent is not commonly known by the disputed domain name. Respondent is not licensed by Complainant to use the ZOOSK mark which is exclusively associated with Complainant. Respondent’s use of the disputed domain name does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent appears to use the disputed <zooskdating.us> domain name to host a webpage offering online social networking services that compete with Complainant. Respondent uses the confusingly similar domain name to host click through advertisements to generate revenue from users who believe the website is connected with Complainant.
Respondent’s history of bad faith registration indicates that in this instance Respondent has registered the disputed <zooskdating.us> domain name in bad faith. Complainant’s bad faith is shown through Respondent’s use of the disputed domain name to generate revenue through click through advertisements. Based on Complainant’s widespread use of the ZOOSK mark and the fame associated with it, Respondent should have actual or constructive knowledge of Complainant’s rights in the mark.
Respondent
Respondent did not submit a Response in this proceeding.
For the 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 or 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(f), 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 claims it has used the ZOOSK mark in connection with online social networking services since December 21, 2007. Complainant states that it has established rights in the ZOOSK mark through registration with the USPTO (Reg. No. 3,476,277, registered July 29, 2008). Panels have routinely held that registration of a mark with the USPTO is sufficient to establish a complainant’s rights in a mark. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [Complainant’s] mark is registered with the USPTO, Complainant has met the requirements of Policy ¶ 4(a)(i).”). The Panel finds that Complainant has established its rights in the ZOOSK mark under Policy ¶ 4(a)(i).
Complainant contends that Respondent’s disputed <zooskdating.us> domain name is confusingly similar to Complainant’s ZOOSK mark. Complainant notes that Respondent’s disputed domain name includes Complainant’s whole ZOOSK mark, the word “dating”, and the ccTLD “.us.” Complainant argues that these slight differences are not significant enough to negate a finding of confusing similarity. Panels have held that the addition of a generic descriptive word to a complainant’s mark does not negate a finding of confusing similarity. See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)). Panels have also held that the presence of a ccTLD does not differentiate a domain name from a mark. See Crocs, Inc. v. [Registrant], FA 1043196 (Nat. Arb. Forum Sept. 2, 2007) (determining that “the addition of a ccTLD is irrelevant to the Policy ¶ 4(a)(i) analysis, as a top-level domain is required of all domain names”). The Panel finds that Respondent’s disputed <zooskdating.us> domain name is confusingly similar to Complainant’s ZOOSK mark under Policy ¶ 4(a)(i).
Complainant has proved 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 is not commonly known by the disputed <zooskdating.us> domain name. The WHOIS information indicates that the registrant of the disputed domain name is “James Lee.” Panels have routinely found a respondent to not be commonly known by a disputed domain name based on WHOIS and other provided information. 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). Accordingly, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(iii).
Complainant contends that the ZOOSK mark is exclusively associated with Complainant and that Respondent has not been affiliated with the mark or Complainant in any manner. There is no information available to indicate that Respondent has rights in the disputed domain name. Past panels have found a respondent to lack rights or legitimate interests in a disputed domain name based on a lack of a registered mark that reflects the disputed domain name. See Pepsico, Inc. v Becky, FA 117014 (Nat. Arb. Forum Sept. 3, 2002) (holding that because the respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)).
Complainant argues that Respondent’s use of the disputed domain name does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent uses the disputed <zooskdating.us> domain name to host a webpage offering online social networking services that compete with Complainant. Panels have held that use of a disputed domain name to direct internet users to a site that competes with a complainant is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that the respondent’s use of the disputed domain name to redirect Internet users to a financial services website, which competed with the complainant, was not a bona fide offering of goods or services).
Complainant argues that Respondent’s use of the confusingly similar domain name to host click through advertisements that generate revenue for Respondent is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. The disputed domain name resolves to a website with pictures stating “Zoosk Dating by Zoosk dating Network” and displays click through advertisements. Panels have found a respondent to lack rights or legitimate interests in a confusingly similar domain name which is being used to display click through advertisements. See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees). The Panel finds that Respondent’s use of the disputed domain name is not a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(ii) or 4(c)(iv).
Complainant has proved this element.
Complainant contends that Respondent has a history of bad faith registration which creates a strong inference that in this case Respondent has registered the disputed <zooskdating.us> domain name in bad faith. Respondent “James Lee” has registered several other domain names which are confusingly similar to websites which offer dating services, including other domain names which are confusingly similar to Respondent’s ZOOSK mark. Complainant’s other domain names include <zoosk-dating.net>, <okcupid-dating.com>, <chemistry-dating.com>, <fish-dating.net>. These domain names reflect prominent dating websites, <zoosk.com>, <okcupid.com>, <chemistry.com>, and <pof.com>, respectively. Respondent has been involved in several UDRP proceedings which resulted in the transfer of the domain name(s). Past panels have held that previous proceedings involving domain disputes were sufficient to establish a pattern of bad faith registration. See Liberty Mut. Ins. Co. v. Bin g Glu, FA 1036129 (Nat. Arb. Forum Sept. 2, 2007) (holding prior UDRP proceedings were sufficient evidence of a pattern of bad faith registrations). The Panel finds that under Policy ¶ 4(b)(ii) the Respondent has acted in bad faith.
Complainant also argues that bad faith is shown through Respondent’s use of the disputed domain name to generate revenue through click through advertisements. Panels have held that profiting from the confusion of internet users through the use of click through advertisements on a disputed domain name constitutes bad faith. See AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was commercially gaining from the likelihood of confusion between the complainant’s AIM mark and the competing instant messaging products and services advertised on the respondent’s website which resolved from the disputed domain name). The Panel finds that Respondent has acted in bad faith under Policy ¶ 4(b)(iv) through confusing internet users for Respondent’s commercial gain.
Complainant contends that given the widespread notoriety of Complainant’s mark, Respondent had actual or constructive knowledge of Complainant’s rights in the mark at the time of registration. While panels have concluded that constructive notice is not sufficient to support a bad faith finding, the Panel finds that Respondent had actual knowledge of the mark and Complainant's rights. The Panel holds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Nat. Arb. Forum Apr. 10, 2006) (stating that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant's mark when it registered the domain name, panels can find bad faith); 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 proved this element.
Complainant having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <zooskdating.us> domain name be TRANSFERRED from Respondent to Complainant.
__________________________________________________________________
Hon. Karl V. Fink (Ret.), Panelist
Dated: June 10, 2015
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