Kenneth L. Greer v. norm Weiss / agent marketing
Claim Number: FA1401001540688
Complainant is Kenneth L. Greer (“Complainant”), represented by Zachary D. Messa of Johnson, Pope, Bokor, Ruppel & Burns, LLP, Florida, USA. Respondent is norm Weiss / agent marketing (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <dancepartnersmatch.com>, registered with GoDaddy.com, LLC.
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.
Jeffrey M. Samuels, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 24, 2014; the National Arbitration Forum received payment on January 24, 2014.
On January 24, 2014, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <dancepartnersmatch.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 February 3, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 24, 2014 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@dancepartnersmatch.com. Also on February 3, 2014, 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.
A timely Response was received and determined to be complete on February 24, 2014.
On March 3, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Jeffrey M. Samuels 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant Ken Greer is a U.S. citizen. Complainant is the owner of U.S. Trademark Registration No. 2,834,659 for the mark DANCEPARTNER.COM, as used in connection with “providing website for dancers whereby people may post their profile which may be viewed and then contacted by others.” The registration issued on April 20, 2004. The mark was first used by Complainant in March 2003.
Complainant also owns the domain name dancepartner.com, which was registered on October 14, 1998, and resolves to an active website where dancers and others may post their profile which may be viewed and then be contacted by others.
According to Complainant, the disputed domain name <dancepartnersmatch.com> was purchased by Respondent on or about September 27, 2012. The site offers a service that helps bring dancers together for social and competitive dancing. Respondent has been a member of Complainant’s dancepartner.com social network since October 28, 2006.
On September 22, 2013, Complainant sent a “cease and desist” letter to Respondent. There being no response, Complainant followed up with another letter on October 1, 2013, and with still another letter on October 24, 2013. On November 24, 2013, Respondent replied to Complainant’s letters stating that he was a paying member of Complainant’s website. On November 26, 2013, Complainant emailed Respondent demanding transfer of the domain name. Respondent did not reply.
Complainant asserts that the disputed domain name, <dancepartnersmatch.com,> is identical or confusingly similar to the DANCEPARTNER.COM trademark. He notes that the domain name incorporates the term “dancepartner” and that the slight differences that exist between the mark and domain name are “inconsequential,” given that they relate solely to a descriptive and/or generic term, primarily “match.”
Complainant further contends that Respondent has no rights or legitimate interests in the disputed domain name. Complainant maintains that Respondent is not commonly known by the domain name and that Complainant has no affiliation with Respondent and did not authorize Respondent to use the DANCEPARTNER.COM mark. Complainant insists that “Respondent merely uses the [disputed domain] name to lure unsuspecting Internet users to a website dedicated to fooling them that the DANCEPARTNER.COM mark is owned by Respondent, or at a minimum that Respondent is affiliated or sponsored by Complainant. As a result, Respondent has utilized its <dancepartnersmatch.com> domain to unfairly disrupt Complainant’s business and to ride on the coattails of the goodwill inherent in Complainant’s DANCEPARTNER.COM trademark.”
With respect to the issue of “bad faith” registration and use, Complainant notes that he registered the DANCEPARTNER.COM trademark over eight years before Respondent registered the disputed domain name and that he registered the <dancepartner.com> domain name 12 years before Respondent registered <dancepartnersmatch.com>. According to Complainant, Respondent, a member of Complainant’s website, was on constructive and/or actual notice of Complainant’s trademark and domain name and yet decided to register the confusingly similar domain name to create a likelihood of confusion by taking advantage of the similarity between the DANCEPARTNER.COM mark and the <dancepartnersmatch.com> domain name in an attempt to capitalize on the goodwill inherent in Complainant’s mark.
B. Respondent
Respondent Norman Weiss, in his Response, argues that he purchased the disputed domain name in good faith; that his website is totally different from Complainant’s, in that Complainant charges a fee while Respondent does not; that the name “dance” is generic and there are over 300 websites with the name “dance” in them; and that the disputed domain name cannot be both identical and confusingly similar to Complainant’s mark.
Respondent accuses Complainant of harassment. Respondent points out that his site has been up for over one year and that he is not causing Complainant any financial harm. Respondent closes his Response by offering Complainant an opportunity to purchase the disputed domain name for $35,000. He notes that he has invested money in building and advertising the site.
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.
The Panel concludes that the disputed domain name, <dancepartnersmatch.com>, is confusingly similar to the DANCEPARTNER.COM domain name.[1] The domain name incorporates in full the term “dancepartner.” The addition of the letter “s” to “partner” and the inclusion of the descriptive term “match” does not change the result. See Keystone Publ’g., Inc. v. UtahBrides.com, D2004-0725 (WIPO Nov. 17, 2004) (finding that the <utahwedding.com> domain name was confusingly similar to the complainant’s UTAHWEDDINGS.COM mark because the domain name simply lacked the letter “s”).
The Panel further concludes that Complainant has rights in the DANCEPARTNER.COM mark. The evidence establishes that Complainant owns a U.S. trademark registration for such mark and has used the mark since March 2003. See AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006) (finding that, where the complainant had submitted evidence of its registration with the USPTO, “such evidence establishes complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i)”).
The Panel finds that Complainant has met his burden of establishing that Respondent has no rights or legitimate interests in the disputed domain name.
The evidence establishes that Respondent uses the disputed domain name in connection with a service that competes with Complainant’s. Previous panels have found that using a confusingly similar domain name to resolve to a website offering services that compete with the complainant’s business offerings is not a use which affords the respondent the protections of Policy ¶¶ 4(c)(i) and 4(a)(c)(iii). See Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks).
The Panel concludes that the disputed domain name was registered and is being used in bad faith.
The evidence supports a determination that Respondent uses the disputed domain name to unfairly disrupt and compete with Complainant’s business and to take advantage of the goodwill associated with it. Prior panels have found bad faith use and registration under paragraph ¶ 4(b)(iii) of the Policy where a respondent uses a confusingly similar domain name to divert Internet users to respondent’s website and away from Complainant’s business. See Surface Prot. Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the competitive relationship between the complainant and the respondent, the respondent likely registered the contested domain name with the intent to disrupt the complainant's business and create user confusion).
The Panel further notes that Respondent made a conditional consent to transfer the <dancepartnersmatch.com> domain name to Complainant for a fee of $35,000. Panels have routinely found that offering to sell a disputed domain name for an excessive out-of-pocket cost signals bad faith use and registration under Policy ¶ 4(b)(i). See Randstad Gen. Partner, LLC v. Domains For Sale For You, D2000-0051 (WIPO Mar. 24, 2000) (finding bad faith where the respondent offered the domain name for sale on its website <internetdomains4u.com> for $24,000).
The fact that Respondent is a member of Complainant’s website, and thereby presumably aware of Complainant’s DANCEPARTNER.COM mark and dancepartner.com domain name, adds further support for a determination that the disputed domain name was registered and is being used in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <dancepartnersmatch.com> domain name be TRANSFERRED from Respondent to Complainant.
Jeffrey M. Samuels, Panelist
Dated: March 7, 2014
[1] In response to one of Respondent’s arguments, the Panel notes that the Policy only requires that the disputed domain name be either identical or confusingly similar to the mark in issue, not that it be both identical and confusingly similar.
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