Humor Rainbow, Inc. v. James Lee
Claim Number: FA1506001626154
Complainant is Humor Rainbow, Inc. (“Complainant”), represented by Jason E Mueller of Locke Lord LLP, Texas, USA. Respondent is James Lee (“Respondent”), USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <okcupid-dating.com>, 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 Forum electronically on June 25, 2015; the Forum received payment on June 25, 2015.
On July 1, 2015, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <okcupid-dating.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 July 2, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 22, 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@okcupid-dating.com. Also on July 2, 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 July 29, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the 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 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 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.
1. Complainant uses the OKCUPID mark in connection with its online dating services. Complainant has registered the OKCUPID mark with the likes of the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,334,217, registered Nov. 13, 2007), which evinces rights in the mark. Respondent’s <okcupid-dating.com> domain name is confusingly similar to the OKCUPID mark as the domain incorporates the mark entirely and merely adds a hyphen, the descriptive word “dating,” and the generic top-level domain (“gTLD”) “.com.”
2. Respondent has no rights or legitimate interests in the <okcupid-dating.com> domain name. Respondent is not commonly known by the disputed domain name, nor does it have any affiliation with Complainant which would suggest Respondent has been authorized to register any variation of the OKCUPID mark. Next, Respondent has failed to evince any bona fide offering of goods or services or any legitimate noncommercial or fair use through the disputed domain name. Instead, Respondent purports to offer similar services to Internet users as Complainant, and even incorporates Complainant’s mark, stating on the resolving page, “100% free OkCupid dating site” in red at the top of the page. See Compl., at Attached Ex. 3.
3. Respondent has registered and used the disputed <okcupid-dating.com> domain name in bad faith. Respondent has utilized the site associated with the disputed domain name to benefit economically via pay-per-click fees associated with advertisements on the page and/or number of “hits” or Internet traffic associated with the site. Lastly, Respondent registered and used the disputed domain name with actual and/or constructive knowledge of the OKCUPID mark and Complainant’s rights in the mark.
1. Respondent did not submit a response to the complaint.
1. Respondent’s <okcupid-dating.com> domain name is confusingly similar to Complainant’s OKCUPID mark.
2. Respondent does not have any rights or legitimate interests in the <okcupid-dating.com> domain name.
3. Respondent registered or used the <okcupid-dating.com> 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.
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 OKCUPID mark in connection with its online dating services. Complainant has registered the OKCUPID mark with the USPTO (Reg. No. 3,334,217, registered Nov. 13, 2007), and argues that its USPTO registration should confer rights in the mark per Policy ¶ 4(a)(i). There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)). Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).
Next, Complainant contends that Respondent’s <okcupid-dating.com> domain name is confusingly similar to the OKCUPID mark as the domain incorporates the mark entirely and merely adds a hyphen, the descriptive word “dating,” and the gTLD “.com.” Panels have seen such alterations as insufficient in overcoming a finding of confusing similarity per Policy ¶ 4(a)(i). See InfoSpace.com, Inc. v. Ofer, D2000-0075 (WIPO Apr. 27, 2000) (finding that “[t]he domain name ‘info-space.com’ is identical to Complainant’s INFOSPACE trademark. The addition of a hyphen and .com are not distinguishing features”); see also Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) (“CHANEL, the salient feature of the Domain Names, is identical to a mark in which Complainant has shown prior rights. The addition of the generic term, “perfumes” is not a distinguishing feature, and in this case seems to increase the likelihood of confusion because it is an apt term for Complainant’s business.”). Therefore, this Panel agrees that the <okcupid-dating.com> domain name is confusingly similar to the OKCUPID mark per Policy ¶ 4(a)(i).
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 contends that Respondent has no rights or legitimate interests in the <okcupid-dating.com> domain name. Per Policy ¶ 4(c)(ii), Complainant posits that Respondent is not commonly known by the disputed domain name, nor does it have any affiliation with Complainant which would suggest Respondent has been authorized to register any variation of the OKCUPID mark. As Respondent has failed to submit any evidence to the record which would serve to demonstrate it as commonly known by <okcupid-dating.com>, this Panel finds that no basis exists where there is such a void in the record to decide in Respondent’s favor under Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name).
Next, Complainant proffers that Respondent has failed to evince any bona fide offering of goods or services or any legitimate noncommercial or fair use through the disputed domain name. Instead, Respondent seems to offer similar services to Internet users as Complainant, and even incorporates Complainant’s mark, stating on the resolving page, “100% free OkCupid dating site” in red at the top of the page. See Compl., at Attached Ex. 3. While Respondent presumably financially profits from its use of the disputed domain names, the Panel finds that no bona fide offering of goods or services or legitimate noncommercial or fair use exists per Policy ¶¶ 4(c)(i) and (iii). See Eastman Chem. Co. v. Patel, FA 524752 (Nat. Arb. Forum Sept. 7, 2005) (finding that the respondent was using a domain name that falsely conveyed an association with complainant and lead Internet users to his complaint website. This was evident by the fact that complainant’s EASTMAN trademark figured prominently at the top of the website. The Panel found respondent was “illegitimately identifying himself as the complainant and attracting visitors to his site by trading off the complainant’s goodwill in its EASTMAN CHEMICALS trademark.”). The Panel therefore sees that Respondent has evinced a clear intent to deceive and profit from such deceit through its use of the disputed domain name pursuant to Policy ¶¶ 4(c)(i) and (iii).
Complainant argues that Respondent has utilized the site associated with the disputed domain name to benefit economically via pay-per-click fees associated with advertisements on the page and/or number of “hits” or Internet traffic associated with the site. Pursuant to the language of paragraph 4(b)(iv) of the Policy, Complainant argues that Internet user confusion follows from Respondent’s use of the disputed domain name, and this Panel agrees based upon the evidence submitted in Attached Exhibit 2 that Respondent has registered and used the disputed domain name in bad faith. See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting).
Lastly, while Respondent has included Complainant’s mark in its domain name and on the resolving website and purportedly offers competing dating services, it may be seen that Respondent had actual and/or constructive knowledge of the OKCUPID mark when registering the <okcupid-dating.com> domain name per Policy ¶ 4(a)(iii). The Panel sees that arguments of constructive knowledge are irrelevant. See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Nat. Arb. Forum Apr. 8, 2008) ("There is no place for constructive notice under the Policy."). However, the Panel finds Complainant’s argument for Respondent’s actual knowledge particularly compelling and agrees with the decision in Radio & Records, Inc. v. Nat'l Voiceover, FA 665235 (Nat. Arb. Forum May 9, 2006) (finding that there are reasonable grounds to infer that Respondent had actual notice of Complainant's rights in the mark, and therefore registered the disputed domain name in bad faith, since Complainant's magazine covers an industry towards which Respondent's services are marketed), and therefore find bad faith per Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <okcupid-dating.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: August 11, 2015
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