Romantic Tours, Inc. v. LiquidNet
Claim Number: FA1003001316585
Complainant is Romantic
Tours, Inc. (“Complainant”), represented by Joseph J. Weissman, of Johnson, Pope, Bokor, Ruppel & Burns,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <agencyscams.com>, registered with Enom, 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.
Honorable Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 31, 2010.
On April 1, 2010, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <agencyscams.com> domain name is registered with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, Inc. 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 April 9, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 29, 2010 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 email@example.com. Also on April 9, 2010, the Written Notice of the Complaint, notifying Respondent of the email 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
After the deadline for submissions, submissions were received from Respondent on May 5, 2010 and May 11, 2010. An untimely submission was also received from Complainant on May 11, 2010. The untimely submissions were not considered by the Panel.
On May 5, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (Ret.)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 "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of a Written Notice, as defined in Rule 1. 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 <agencyscams.com> domain name is confusingly similar to Complainant’s HOT RUSSIAN BRIDES mark.
2. Respondent does not have any rights or legitimate interests in the <agencyscams.com> domain name.
3. Respondent registered and used the <agencyscams.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Romantic Tours, Inc., provides dating services for American men and Russian and Ukrainian women. Complainant offers its services under its HOT RUSSIAN BRIDES mark. Complainant holds a trademark registration with the United States Patent and Trademark Office ("USPTO") for its HOT RUSSIAN BRIDES mark (Reg. No. 3,159,522 issued October 17, 2006).
Respondent registered the <agencyscams.com> domain name on April 23, 2003. The disputed domain name resolves to a website to provide information about Complainant and to offer services which compete with 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. 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.”).
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 began using its HOT RUSSIAN BRIDES mark on August 25, 2003 and registered the mark with the USPTO (Reg. No. 3,159,522 issued October 17, 2006). Previous panels have determined that trademark registration with a federal trademark authority is sufficient to establish rights in a mark under Policy ¶ 4(a)(i). See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”); see also Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)). Therefore, the Panel finds that Complainant holds rights in the HOT RUSSIAN BRIDES mark pursuant to Policy ¶ 4(a)(i).
Complainant claims Respondent’s <agencyscams.com> domain name is confusingly similar to Complainant’s HOT RUSSIAN BRIDES mark. Complainant argues that the <agencyscams.com/why/hotrussianbrides> post-domain of Respondent’s website contains Complainant’s mark and provides the evidence that Respondent’s domain name is confusingly similar to Complainant’s mark. Previous panels have held that the UDRP does not apply to trademark infringement in post-domains and that the UDRP may only be applied to domain names. See Romantic Tours, Inc. v. Whois Privacy Prot. Serv., Inc., FA 1316557 (Nat. Arb. Forum Apr. 28, 2010) (“The Panelist notes that the UDRP does not offer relief for infringements via use of registered trademarks in post-domains and that the proceedings under the UDRP may be applied only to domain names.”). Therefore, the Panel concludes that Respondent’s <agencyscams.com> domain name is not confusingly similar to Complainant’s HOT RUSSIAN BRIDES mark under Policy ¶ 4(a)(i). See Knight-Ridder, Inc. v. Cupcake Patrol, FA 96551 (Nat. Arb. Forum Mar. 6, 2001) (finding that the domain name <hearld.com> is not identical or confusingly similar to a trademark in which the complainant has rights); see also Thomas Cook Holdings Ltd. v. Aydin, D2000-0676 (WIPO Sept. 11, 2000) (finding that the domain name, <hot18to30.com>, is neither identical nor confusingly similar to the complainant’s CLUB 18-30 trademark).
The Panel finds Policy ¶ 4(a)(i) has not been satisfied.
Because of the reasons the Panel gives in its discussion of Policy ¶ 4(a)(i), the Panel declines to analyze Policy ¶ 4(a)(ii). See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary).
Based on the Panel’s finding that Complainant has not satisfied Policy ¶ 4(a)(i), the Panel has declined to analyze Policy 4(a)(iii). See Hugo Daniel Barbaca Bejinha v. Whois Guard Protected, FA 836538 (Nat. Arb. Forum Dec. 28, 2006) (deciding not to inquire into the respondent’s rights or legitimate interests or its registration and use in bad faith where the complainant could not satisfy the requirements of Policy ¶ 4(a)(i)).
Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <agencyscams.com> domain name REMAIN with Respondent.
Honorable Karl V. Fink (Ret.), Panelist
Dated: May 17, 2010
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National Arbitration Forum