Lavalife Inc. f/k/a Interactive Media
Group (Canada) Limited v. Shiftlock Domains a/k/a John Morgan
Claim
Number: FA0501000406967
Complainant is Lavalife Inc. f/k/a Interactive Media
Group (Canada) Limited (“Complainant”), represented by Candace Lynn Bell, of Kavinoky Cook LLP, 726 Exchange Street, Suite 800,
Buffalo, NY 14210. Respondent is Shiftlock Domains a/k/a John Morgan (“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <lavalfie.com>, registered with Primus
Telco Pty Ltd d/b/a Primusdomain/Planetdomain.
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.
Louis
E. Condon as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on January
21, 2005; the National Arbitration Forum received a hard copy of the Complaint
on January 24, 2005.
On
January 24, 2005, Primus Telco Pty Ltd d/b/a Primusdomain/Planetdomain
confirmed by e-mail to the National Arbitration Forum that the domain name <lavalfie.com>
is registered with Primus Telco Pty Ltd d/b/a Primusdomain/Planetdomain and
that Respondent is the current registrant of the name. Primus Telco Pty Ltd d/b/a
Primusdomain/Planetdomain has verified that Respondent is bound by the Primus
Telco Pty Ltd d/b/a Primusdomain/Planetdomain 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
January 27, 2005, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of February 16, 2005 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@lavalfie.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 National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
February 21, 2005, pursuant to Complainant's request to have the dispute
decided by a single-member Panel, the National Arbitration Forum appointed
Louis E. Condon 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." 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 makes the following assertions:
1. Respondent’s <lavalfie.com>
domain name is confusingly similar to Complainant’s LAVALIFE mark.
2. Respondent does not have any rights or
legitimate interests in the <lavalfie.com> domain name.
3. Respondent registered and used the <lavalfie.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant has
registered the LAVALIFE mark with a variety of governmental authorities
worldwide, including in Australia (Ser. No. 885,185, issued May 8, 2002),
Canada (Reg. No. 575,668, issued Feb. 13, 2003), European Union (e.g., Reg. No.
2,641,728, issued June 27, 2003), and the United States (e.g., Reg. No.
2,646,908, issued Nov. 5, 2002). The
LAVALIFE mark is used in connection with a variety of goods and services,
including among other things: computer software, telecommunication services,
and the dissemination of advertising matter.
Respondent
registered the domain name, <lavalfie.com>, on May 26, 2004. The <lavalfie.com> domain name
resolves to a website located at <americansingles.com>, which is an
online commercial dating service.
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 rights in the LAVALIFE mark pursuant to paragraph 4(a)(i) of the
Policy as the result of its registration of the mark with a legitimate
governmental authority. See Janus Int’l Holding Co. v. Rademacher,
D2002-0201 (WIPO Mar. 5, 2002) (finding that the registration of a mark is prima facie evidence of validity, which
creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this
assumption); see also Am.
Online, Inc. v. Thomas P. Culver Enters., D2001-0564 (WIPO June 18, 2001) (finding that successful
trademark registration with the United States Patent and Trademark Office
creates a presumption of rights in a mark).
It is established that a
domain name is confusingly similar to a third-party mark pursuant to paragraph
4(a)(i) of the Policy where the domain name has simply transposed two letters
in the third-party mark. In the instant
case, the <lavalfie.com> domain name is confusingly similar to
Complainant’s LAVALIFE mark because it merely switched the positions of the
letters “I” and “F” in Complainant’s mark.
See Google Inc. v. Jon G., FA 106084 (Nat. Arb. Forum Apr. 26, 2002) (finding
<googel.com> to be confusingly similar to Complainant’s GOOGLE mark and
noting that “[t]he transposition of two letters does not create a distinct mark
capable of overcoming a claim of confusing similarity, as the result reflects a
very probable typographical error”); see also Pier 1
Imps., Inc. v. Success Work,
D2001-0419 (WIPO May 16, 2001) (finding that the domain name <peir1.com>
is confusingly similar to Complainant's PIER 1 mark); see also Geocities v. Geociites.com, D2000-0326
(WIPO June 19, 2000) (finding that the domain name <geociites.com> is
confusingly similar to Complainant’s GEOCITIES mark).
Complainant has
established Policy ¶ 4(a)(i).
Respondent has
not responded to the Complaint.
Therefore, the Panel accepts all reasonable allegations set forth in the
Complaint as true. See Am.
Online, Inc. v. Clowers, FA 199821 (Nat. Arb. Forum Nov. 14, 2003)
(finding that the failure to challenge a complainant’s allegations allows a
panel to accept all of the complainant’s reasonable allegations and inferences
as true); see also Wells
Fargo & Co. v. Shing, FA 205699 (Nat. Arb. Forum Dec. 8, 2003)
(finding that the failure to respond to a complaint allows a panel to make
reasonable inferences in favor of a complainant and accept the complainant’s
allegations as true).
Furthermore, the
Panel construes the fact that Respondent has failed to present evidence that it
has a right or legitimate interest in the disputed domain name as substantive
evidence that Respondent, in fact, lacks such a right and interest. 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 Honeywell Int’l Inc. v. Domain Deluxe, FA 269166 (Nat. Arb. Forum June 29,
2004) (“The failure of Respondent to respond to the Complaint functions both as
an implicit admission that Respondent lacks rights to and legitimate interests
in the domain names, as well as a presumption that Complainant’s reasonable
allegations are true.”).
Respondent is
using the domain name, <lavalfie.com>, which is confusingly
similar to Complainant’s mark, to direct Internet users to an online commercial
dating service website. The resolved
website contains no reference to the term “lavalfie,” which is not a recognized
word in either Merriam Webster’s Dictionary or the Cambridge Dictionary. It makes little sense for a domain name
registrant to register a non-existent word to divert Internet users to an
entirely unrelated domain name, such as <americansingles.com>, and which
does not contain the conjured-up word anywhere on the resolved website. Howevever, it would make sense if a domain
name registrant registered the domain name to siphon Internet users who happen
to misspell Complainant’s trademark to Respondent’s resolved website. Without the benefit of a Response, the Panel
finds the latter scenario is most accurate.
Yet, such action does not demonstrate a bona fide offering of
goods or services pursuant to paragraph 4(c)(i) of the Policy or a legitimate
noncommercial fair use pursuant to paragraph 4(c)(iii) of the Policy. See Toronto-Dominion
Bank v. Karpachev, 188 F.Supp.2d
110, 114 (D. Mass. 2002) (finding that, because
Respondent's sole purpose in selecting the domain names was to cause confusion
with Complainant's website and marks, its use of the names was not in
connection with the offering of goods or services or any other fair use); see
also Am. Online, Inc. v.
Tencent Communications Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000)
(finding that use of Complainant’s mark “as a portal to suck surfers into a
site sponsored by Respondent hardly seems legitimate”); see also Seiko Kabushiki Kaisha v. CS into Tech, FA
198795 (Nat. Arb. Forum Dec. 6, 2003) (“Diverting
customers, who are looking for products relating to the famous SEIKO mark, to a
website unrelated to the mark is not a bona fide offering of goods or services
under Policy ¶ 4(c)(i), nor does it represent a noncommercial or fair use under
Policy ¶ 4(c)(iii).”).
Moreover, there
is no evidence in the record that would indicate Respondent is commonly known
by the disputed domain name pursuant to paragraph 4(c)(ii) of the Policy. Respondent’s resolved website contains no
mention of the domain name. The WHOIS
registration information fails to suggest that Respondent is commonly known by
the domain name. Furthermore,
Respondent is not authorized to use a version of Complainant’s mark. These facts substantiate Complainant’s
contention that Respondent is not commonly known by the disputed domain name
pursuant to paragraph 4(c)(ii) of the Policy.
See Tercent Inc. v. Yi, FA 139720
(Nat. Arb. Forum Feb. 10, 2003) (finding that the WHOIS information, and its
failure to imply that Respondent is commonly known by the disputed domain name,
is a factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan.
23, 2001) (finding that Respondent does not have rights in a domain name when
Respondent is not known by the mark); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting
Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known
by the domain name prior to registration of the domain name to prevail"); see
also Compagnie de Saint Gobain v.
Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or
legitimate interests where Respondent was not commonly known by the mark and
never applied for a license or permission from Complainant to use the
trademarked name).
Complainant has
established Policy ¶ 4(a)(ii).
By registering
the domain name and resolving the domain name to an active website, Respondent
has demonstrated its intentional attempt to attract Internet users to its
website. Based on the fact that the
resolved website is a commercial online dating service, the Panel also concludes
that Respondent registered the domain name for commercial gain. The fact that Respondent registered a domain
name that contains a typosquatted version of Complainant’s mark suggests that
Respondent is attempting to deceive Internet users as to the source of the
resolved website. Therefore, without a
response from Respondent, the Panel concludes that Respondent registered and
used the disputed domain name in bad faith pursuant to paragraph 4(b)(iv) of
the Policy by intentionally attempting to attract Internet users to its website
for commercial gain by creating a likelihood of confusion with Complainant’s
mark. See Entrepreneur Media, Inc.
v. Smith, 279
F.3d 1135, 1148 (9th Cir. 2002) ("While an intent to confuse consumers
is not required for a finding of trademark infringement, intent to deceive is
strong evidence of a likelihood of confusion."); see also Dermalogica, Inc. v. Domains to Develop, FA 175201 (Nat. Arb. Forum Sept.
22, 2003) (finding that the <dermatalogica.com> domain name was a typosquatted
version of Complainant's DERMALOGICA mark and
stating, "[t]yposquatting itself is evidence of bad faith
registration and use pursuant to Policy ¶ 4(a)(iii).").
Complainant
has established Policy ¶ 4(a)(iii).
Complainant
having established all three elements required under the ICANN Policy, the
Panel concludes that relief should be GRANTED.
Accordingly, it
is Ordered that the <lavalfie.com> domain name be TRANSFERRED
from Respondent to Complainant.
Louis E. Condon, Panelist
Dated: March 4, 2005
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