Spark Networks PLC v. J2DATE, Inc.
Claim Number: FA0505000482640
PARTIES
Complainant
is Spark Networks PLC (“Complainant”),
represented by Victor T. Fu, of Richardson & Patel LLP,
10900 Wilshire Boulevard, Suite 500, Los Angeles, CA 90024. Respondent is J2DATE, Inc. (“Respondent”), represented by Gideon D. Barazani, of AheadTech.com, PO Box 226, Atlantic
Beach, NY 11509.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <j2date.com>,
registered with Register.com.
PANEL
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.
Paul
M. DeCicco as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum electronically on May
20, 2005; the National Arbitration Forum received a hard copy of the Complaint
on May 24, 2005.
On
May 23, 2005, Register.com confirmed by e-mail to the National Arbitration Forum
that the domain name <j2date.com>
is registered with Register.com and that the Respondent is the current
registrant of the name. Register.com
has verified that Respondent is bound by the Register.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
May 25, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of June 14,
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@j2date.com by e-mail.
A
timely Response was received and determined to be complete on June 8, 2005.
On June 14, 2005, pursuant to Complainant’s request to
have the dispute decided by a single-member
Panel, the National Arbitration Forum
appointed Paul M. DeCicco as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
A.
Complainant
Complainant
contends as follows:
Complainant, Spark Networks, is an
English public limited company with its principal place of business in London,
England of the United Kingdom. Complainant also has offices in Beverly Hills,
California and Frankfurt, Germany. Complainant has been and is engaged in the
provision of online personals services via eight distinct web sites in over 236
countries, including the United States of America, and in four different
languages. Complainant is a leader in online personals and related services and
has over eight million members. One of Complainant’s most prominent websites,
<jdate.com>, has been in operation since January 1997.
On January 8, 1997, the <jdate.com> domain name was registered and
immediately thereafter <jdate.com> was launched in California. Amongst
the worldwide Jewish community, <jdate.com> is the leading online
personals for single Jews and <jdate.com>’s database contains members
from 150 countries around the world. <Jdate.com> grew from 85,973 members
in January 2000 with 18.9 million page views (in April 2000) to 500,000 members
and 31.4 million page views by July 2001.
Since its inception, Complainant has
spent a lot of time, effort, and vast amounts of money building goodwill in the
name JDATE®. To date, the word JDATE® is inextricably linked to Complainant and
the trademark JDATE® has become a famous trademark and brand amongst the Jewish
community worldwide.
Complainant owns U.S. Trademark
Registration No. 2,420,967, for the JDATE mark in Class 042 for computer
services, namely providing a web site <jdate.com> for facilitating the
introduction of individuals. The JDATE® trademark was registered on the
Principal Register on January 16, 2001 based on an application filed in the
U.S. Patent and Trademark Office on August 28, 1999. Since February 1997 and up
to the present time, Complainant has continuously utilized the JDATE® trademark
in connection with its operation of the online dating website at
<jdate.com>.
JDATE® is a registered trademark under
the European Community Trade Mark Number 2,341,584 (comprising of and valid in
twenty-five European Member States) under International Class 42: dating
services, dating agency services; arranging personal introductions, preparation
of personality profiles; consultancy and advisory services relating to the foregoing
which are provided on-line from a computer database via the Internet.
JDATE® is a registered trademark in
Australia, Registration Number 932,652, under International Class 42: computer
services, namely providing a website for facilitating the introduction of
individuals, including the access of a dating agency service.
JDATE® is a registered trademark in
Brazil, Registration number 826,098,193, under International Class 45: computer
services, namely providing a website for facilitating introduction of
individuals, all included in Class 45.
JDATE® is a registered trademark in
Israel, Registration Number 153,314, under International Class 45: computer
services, namely providing a website for facilitating introduction of
individuals, all included in Class 45.
Complainant has thus established
substantial goodwill in its mark and consumers of online personals services
throughout the United States and the world associate the JDATE® trademark with
Spark Networks.
Complainant alleges that Respondent, with
actual notice of Complainant’s ownership of the JDATE® mark and Complainant’s
operation of its official web site at jdate.com, registered the domain name, <j2date.com>,
which comprises Complainant’s JDATE® mark except with “2” added between “j” and
“date”.
B.
Respondent
Respondent
contends as follows:
Complainant, Spark Networks, is a large and
dominant provider of on-line personal services in many countries including the
United States and, may want to monopolize the online Jewish dating services
market.
J2Date, having the letter “J” and the
word “DATE” in it, just created a bogus excuse for Complainant to try to eliminate competitors.
<J2Date.com> was registered
with Register.com. There was never any intention to be similar or confusing in
a way to attract any of JDate’s users in the Jewish dating market as
Complainant claims. “J” does not only have to stand for “Jewish,” it could
stand for “Join2Date,” “Joy2Date” or any other combination of the letter “J.”
J2Date does not only cater to Jewish
people as the Complainant claims, and does not advertise anywhere on the site
“Jewish Singles” as JDATE does on its homepage. It would be highly unlikely for
any user to confuse <j2date.com> with jdate.com just because of
its name or appearance. One needs to make intentional effort to type the Number
“2” in between the “J” and the “Date” which is hard to perform mistakenly since
it is located on the top row of the keyboard. Moreover, the sites are far from
being similar in any way, shape or form, and they differ greatly in design,
logo, and general look.
J2Date is also in the process of
Trademark registration (application assigned Serial No. 78/591,835).
J2Date does not mention the word Jewish on its home page.
The fact that J2Date has two languages does not mean they cater to a specific
crowd.
<J2date.com> does not charge fees for membership as <jdate.com> does, therefore there
is no commercial gain on the part of J2Date. The domain name has been used for
over a year to offer personal services free of charge.
J2Date
does not intentionally attempt to attract users by creating likelihood of
confusion with JDATE. Complainant claims that J2Date creates substantial
delusion [sic] and consumer deception that internet users will be deceived into
believing that J2Date is sponsored or affiliated with Spark Networks, however
Respondent has no claims or any suggesting statements in that regard anywhere
on the site, nor created any confusing marks or visual similarities to JDATE’s
site.
Responded
asked Complainant to refund J2Date’s minimal costs for creating and promoting
the <j2date.com> site and would be willing to transfer that domain
name to Spark Network. Complainant admitted that in fact Spark Network just
does not like J2Date using that name and will consider refunding those costs.
<J2date.com> differs greatly from <jdate.com>.
J2Date is not using JDATE logo nor has any intention of being similar or
confusing in any way, on the contrary, J2Date likes to differ as much as
possible from JDATE in look, design, services, and users. Complainant has no
grounds for its alleged claims, and the domain name in dispute should operate
freely as registered unless otherwise settled between Complainant and
Respondent.
FINDINGS
Complainant
owns registered trademark rights in the word mark JDATE, having registered the
mark with the United States Patent and Trademark Office as well as other
trademark authorities.
Complainant
has continuously used the mark in commerce beginning from prior to the
Respondent’s registration of the at-issue domain name until the present.
Respondent
was not known by the domain name prior to registering the domain name.
Respondent is not authorized to use the Complainant’s trademark.
Respondent
has applied for registration of the J2DATE mark with the U.S. Patent and
Trademark office, but has not been issued a registration for such mark.
Respondent
registered the at-issue domain name with actual knowledge of Complainant’s
domain name.
Respondent
registered the at-issue domain name with constructive knowledge that
Complainant had trademark rights in the JDATE mark.
The
term “commercial gain” as used in the Policy does not necessitate that there be
a “for a fee” service offered by a Respondent.
The
“J” as used in Complainant’s trademark and Respondent’s domain name denotes
“Jewish.”
Respondent
conducts activities at a website referenced by <j2date.com> that
directly competes with the business of Complainant; to wit personal services
for single Jewish persons.
Complainant
and Respondent have similarly structured websites.
Complainant
and Respondent are competitors.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name
Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a
trademark or service mark in which the Complainant has rights;
(2)
the
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.
Under
U.S. trademark law, registered marks
are presumed to be inherently distinctive and to have acquired secondary
meaning. Complainant has shown that it has registered trademark rights in the
at-issue mark through registration with the United States Patent and Trademark
Office (“USPTO”) (Reg. No. 2,420,967 issued January 16, 2001). Therefore,
Complainant has established rights in the JDATE mark for the purposes of this
proceeding. See Men’s Wearhouse,
Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002); see also Am. Online, Inc. v. Thomas P.
Culver Enters., D2001-0564 (WIPO June 18, 2001).
Respondent’s domain name
fully incorporates Complainant’s JDATE mark and merely adds the
number “2” between the letter “J” and the word “Date.” See Am.
Online Inc. v. Chinese ICQ Network,
D2000-0808 (WIPO Aug. 31, 2000); see also Am. Online, Inc. v. iDomainNames.com, FA 93766 (Nat. Arb. Forum
Mar. 24, 2000). Furthermore, in this case, the top-level domain “.com” is irrelevant in
determining whether the <j2date.com> domain name is confusingly
similar to Complainant’s mark. See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000). Respondent’s <j2date.com>
domain name is thus confusingly similar to Complainant’s trademark.
Respondent
is not a licensee of Complainant and Respondent was not commonly known as <j2date.com> prior to registering the at-issue domain
name. The fact that
Respondent has applied for trademark registration of its domain name has no
evidentiary value in determining whether or not Respondent has rights in such
domain name. Therefore
unless one or more of the three saving circumstances pursuant to Policy 4(c) is
found, Respondent lacks rights or legitimate interests in the domain name
pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Yi, FA 139720
(Nat. Arb. Forum Feb. 10, 2003);
see also Charles Jourdan Holding
AG v. AAIM, D2000-0403 (WIPO June 27, 2000).
Respondent argues that it has rights in the <j2date.com>
domain
name because it was making a legitimate noncommercial or fair use of the domain
name without any intent to use it for commercial gain, to mislead consumers, or
to tarnish Complainant’s mark. If correct, Respondent may be found to
have rights or legitimate interest under Policy 4(c)iii. See Lockheed Martin Corp. v. Etheridge,
D2000-0906 (WIPO Sept. 24, 2000); see also Baja Marine Corp. v. Wheeler Tech., Inc., FA 96954 (Nat. Arb. Forum
May 17, 2001). However, contrary to Respondent’s assertion, Respondent’s <j2date.com> domain name links to
a website that clearly competes with Complainant’s business.
The
websites at <jdate.com> and <j2date.com> “compete” for the same customers regardless
of whether or not a fee is collected or revenue is generated. The relevant
target customers are single persons interested in dating, and in particular
Jewish single persons interested in dating. While Respondent’s website fails to
expressly state that it caters to Jewish singles, it nevertheless offers
content in English and Hebrew.
There is
other evidence that the target market of Complainant and Respondent is
identical. In its Response, Respondent suggests that Complainant’s trademark is
wholly descriptive or generic. Impliedly Respondent must hold that “J,” as used
in Complainant’s trademark, denotes “Jewish.” Within the context of its
bilingual dating website and the absence of any reasonable explanation for
registering <j2date.com>, the “J” in <j2date> likewise
denotes “Jewish” and conveys Respondent’s particular focus on Jewish dating.
The
close similarity of the <j2date.com> domain name to Complainant’s
trademark, the lack of any plausible explanation as to why Respondent chose the
particular domain it did, and the strong similarity between the form, purpose,
and content of the referenced website and Complainant’s website indicate that
the <j2date.com> domain name was selected by Respondent because,
rather than in spite, of Complainant’s trademark. It follows that the most plausible explanation of why Respondent
registered <j2date.com> is that it registered the domain name with
the intent to confuse Internet users seeking Complainant’s services and thereby
divert traffic to Respondent’s <j2date.com> website. Respondent’s
use of a domain name confusingly similar to Complainant’s mark to divert
Internet users to a competitor does not constitute 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 TM Acquisition Corp. v.
Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002); see also Yahoo! Inc. v. Web Master, FA 127717
(Nat. Arb. Forum Nov. 27, 2002); see also Toronto-Dominion
Bank v. Karpachev, 188 F.Supp.2d
110, 114 (D. Mass. 2002).
For
the above stated reasons the Respondent lacks rights or legitimate interest in
the <j2date.com> domain name.
At
the time it registered the at-issue domain name Respondent had actual knowledge
of Complainant’s website and constructive knowledge of Complainant’s trademark
rights. Respondent admits to the notoriety of Complainant’s business endeavor.
Respondent had constructive notice of Complainant’s trademark rights because of
Complainant’s trademark registration with the United States Patent and
Trademark Office. See Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb.
Forum Oct. 4, 2002). Registration of a domain name confusingly similar to a
trademark, with knowledge of the mark holder’s rights, is evidence of bad faith
registration and use. See Digi Int’l
v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002). Given that
Respondent has applied for trademark registration of “J2Date” it is also likely
that Respondent had actual knowledge of the JDATE mark as it is unlikely that
Respondent did not check the trademark register to determine the status of
JDATE prior to filing its application.
There
is further evidence of bad faith. Respondent’s <j2date.com> domain name is likely to cause Internet users to
mistakenly believe that Respondent, the sponsor of the domain name, is
affiliated with Complainant. In the instant case, Respondent trades on the
Complainant’s trademark by using a similar mark in a confusing context. It is
inconceivable that using the at-issue domain name to reference Respondent’s
website would not create such confusion given its similar domain name, its
similar website design, the websites similar content to Complainant’s website,
and the similar target market to Complainant’s target market. See Sony Kabushiki Kaisha v. Kil, D2000-1409
(WIPO Dec. 9, 2000); see also G.D. Searle & Co. v. Celebrex
Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002).
Respondent
argues that since it does not charge a fee for its services, it is not a
commercial endeavor and is subject to a “fair use” defense. The argument is
flawed. Charging a fee or not charging a fee does not determine whether or not
the Respondent’s activities can be considered as being for “commercial gain”
under the Policy 4(c). If a “for a fee” qualification were necessary to find
“commercial gain,” then a party might infringe another party’s trademark via a
domain name, siphon off the trademark holder’s customers by confusing customers
as to the origin of the services provided by the domain name holder, and then
once the trademark holder had been dealt a fatal economic blow, initiate a fee
for its services. Such a scheme renders “commercial gain” by giving a
competitive advantage (eliminating competition) to the domain name holder. One
need not think hard to find other scenarios where a commercial gain may be had
without charging a fee. A stilted interpretation of the meaning of “commercial
gain” necessitating that a fee be collected for services thus runs afoul of a
reasonable interpretation of the Policy.
Based
on the forgoing, it is more likely than not that Respondent is using and has registered the domain name <j2date.com>
to intentionally attract
Internet users to its website for commercial gain by creating a likelihood of
confusion with Complainant’s trademark as to the source, sponsorship,
affiliation or endorsement of its website.
Respondent’s intent evidences “bad faith.” See H-D Michigan, Inc. v.
Petersons Auto, FA 135608 (Nat. Arb. Forum Jan. 8, 2003).
DECISION
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <j2date.com>
domain name be TRANSFERRED from Respondent to Complainant.
Paul Michael DeCicco, Panelist
Dated: June 28, 2005
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