Various, Inc. v. LIANGYUN LIN / LIN LIANG YUN
Claim Number: FA1706001737939
Complainant is Various, Inc. (“Complainant”), represented by Allison R. Imber of Allen, Dyer, Doppelt, Milbraith & Gilchrist, P.A., Florida, USA. Respondent is LIANGYUN LIN / LIN LIANG YUN (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <taiwanfriendfinder.com> and <seoulfriendfinder.com>, registered with Enom, Inc.; 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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 29, 2017; the Forum received payment on June 29, 2017.
On June 29, 2017; June 30, 2017, Enom, Inc.; GoDaddy.com, LLC confirmed by e-mail to the Forum that the <taiwanfriendfinder.com> and <seoulfriendfinder.com> domain names are registered with Enom, Inc.; GoDaddy.com, LLC and that Respondent is the current registrant of the names. Enom, Inc.; GoDaddy.com, LLC has verified that Respondent is bound by the Enom, Inc.; 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 5, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 25, 2017 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@taiwanfriendfinder.com, postmaster@seoulfriendfinder.com. Also on July 5, 2017, 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 28, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun nahm, Esq. 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 names be transferred from Respondent to Complainant.
A. Complainant
i) Complainant, Various Inc., is an online dating service provider that uses the FRIENDFINDER mark to promote its services. Complainant has rights in the mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,962,192, registered June 14, 2005). Respondent’s <taiwanfriendfinder.com> and <seoulfriendfinder.com> domain names are confusingly similar to Complainant’s mark as each includes the entirety of Complainant’s FRIENDFINDER mark in combination with the geographical terms “taiwan” and “seoul” and the generic top level domain
(“gTLD”) “.com.”
ii) Respondent does not have rights or legitimate interests in the disputed domain names. Respondent is not commonly known by the disputed domain names and Complainant has not granted respondent permission or license to use the FRIENDFINDER mark for any purpose. Respondent is not using the disputed domain names to make a bona fide offering of goods or services or for a legitimate non-commercial or fair use. Rather, Respondent is using the disputed domain names to trade off of Complainant’s goodwill to offer its directly competing online dating services. Further, Respondent attempts to pass itself off as part of Complainant’s network, creating confusion for Internet users seeking Complainant’s business.
iii) Respondent has registered and used the disputed domain name in bad faith. First, Respondent is attempting to disrupt Complainant’s business by attracting, for commercial gain, Internet users by creating confusion as to the source sponsorship, affiliation, or endorsement of the disputed domain names. Respondent also failed to provide any response to Complainant’s cease-and-desist letters. Lastly, Respondent had actual or constructive knowledge of Complainant’s rights in the FRIENDFINDER mark at the time it registered and subsequently used the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding. The Panel notes that the disputed domain names were registered on September 29, 2007.
Complainant established that it had rights in the mark contained in the disputed domain names. Each of the disputed domain names is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain names.
Respondent registered and used the disputed domain names 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."
Preliminary Issue: Multiple Respondents
In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” Complainant contends that both disputed domain names offer almost identical dating websites using the name “Friend Finder,” and the websites’ mirror image Terms of Use pages identify “Meta-4 Group and Meta-4 Group (Global) S.A., including Meta4Group (HK) Limited” as the entities providing the online dating services. The Terms of Use also lists the copyright owner of the websites as “WorldFriends (Global) S.A.R.L., a wholly owned subsidiary of Meta-4 Group (GLOBAL) S.A.,” which also attests to own the trademarks “SeoulFriendFinder” and “TaiwanFriendFinder.” Additionally, the disputed domain names both have a copyright notice of “Meta-4 Group S.A.” at the bottom of their homepages, and are all but identical in layout and content, including containing mirror image “Terms of Use,” “Privacy Policy,” “Member Services,” “User Guide,” and “Contact Us” pages.
The Panel finds the domain names are commonly owned/controlled by a single Respondent who is using multiple aliases.
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(f), 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 (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 claims rights in the FRIENDFINDER mark based upon its registration with the USPTO (e.g., Reg. No. 2,962,192, registered June 14, 2005). Registration with USPTO is sufficient to establish rights in a mark pursuant to Policy ¶ 4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)). Therefore, the Panel finds that Complainant has rights in FRIENDFINDER mark per Policy ¶ 4(a)(i).
Complainant next claims that Respondent’s <taiwanfriendfinder.com> and <seoulfriendfinder.com> are confusingly similar to the FRIENDFINDER mark as it includes the entirety of the FRIENDFINDER mark in combination with the geographical terms “taiwan” and “seoul.” Respondent also adds the gTLD “.com.” The omission of spacing and a mark and the addition of a gTLD are insufficient to distinguish a domain name from a mark per Policy ¶ 4(a)(i). See Health Republic Insurance Company v. Gustavo Winchester, FA 1622089 (Forum July 7, 2015) (finding, “Domain name syntax requires TLDs. Domain name syntax prohibits spaces. Therefore, omitted spacing and adding a TLD must be ignored when performing a Policy ¶4(a)(i) analysis.”). Similarly, the inclusion of the geographical generic terms “taiwan” and “seoul” in the disputed domain names may not mitigate the confusing similarity between <taiwanfriendfinder.com> and <seoulfriendfinder.com> and Complainant’s FRIENDFINDER Mark, because Complainant alleges they are merely descriptive, describing locations where Complainant offers their service under the FRIENDFINDER mark, and therefore do not defeat a claim of confusing similarity. See Doosan Corporation v. philippe champain, FA 1636675 (Forum Oct. 13, 2015) (finding that geographic designations or terms descriptive of a complainant’s business operations do not remove a domain name from the realm of confusing similarity.). Therefore, the Panel finds that each of the disputed domain names is confusingly similar to Complainant’s 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 (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 (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 argues that Respondent has no rights or legitimate interests in <taiwanfriendfinder.com> and <seoulfriendfinder.com> as Respondent is not commonly known by the disputed domain names, nor has Complainant authorized Respondent to use the FRIENDFINDER mark in any way. Where a response is lacking, WHOIS information can support a finding that a respondent is not commonly known by the disputed domain name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark.). The WHOIS information of record identifies Respondent as “Liangyun Lin / Lin Liang Yun.” Additionally, lack of evidence in the record to indicate that the respondent had been authorized to register a domain name using a complainant’s mark supports a finding that Respondent does not have rights or legitimate interests in the disputed domain name. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). The Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent has not been commonly known by the disputed domain name.
Complainant further argues Respondent’s lack of rights or legitimate interests in the disputed domain name is evinced by its failure to use the bona fide offering of goods or services or legitimate noncommercial or fair use. Complainant contends that Respondent is using the disputed domain names to pass off as a member of Complainant’s network in order to offer its directly competing online dating services. The use of a domain to pass off as a complainant and sell products and services that compete directly with said complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i). See Am. Int’l Group, Inc. v. Busby, FA 156251 (Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name); see also Upwork Global Inc. v. Shoaib Malik, FA 1654759 (Forum Feb. 3, 2016) (finding that Complainant provides freelance talent services, and that Respondent competes with Complainant by promoting freelance talent services through the disputed domain’s resolving webpage, which is neither a bona fide offering of goods or services, nor is it a legitimate noncommercial or fair use). Here, Respondent attempts to pass itself off as part of Complainant’s network to confuse users to and compete with Complainant’s business. The Panel agrees with Complainant’s assertion of Respondent’s passing off behavior and finds that Respondent failed to make 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).
First, Complainant asserts Respondent’s use of the disputed domain names disrupts Complainant’s business. Use of a disputed domain name to disrupt a complainant’s business does not evince a finding of good faith registration and use per Policy ¶ 4(b)(iii). See Fitness International, LLC v. ALISTAIR SWODECK / VICTOR AND MURRAY, FA1506001623644 (Forum July 9, 2015) (“Respondent uses the at-issue domain name to operate a website that purports to offer health club related services such as fitness experts, fitness models, fitness venues, exercise programs, and personal training, all of which are the exact services offered by Complainant. Doing so causes customer confusion, disrupts Complainant’s business, and demonstrates Respondent’s bad faith registration and use of the domain name pursuant to Policy ¶ 4(b)(iii).”). Here, Complainant argues Respondent’s registration and use of confusingly similar domain names would confuse Internet users who, otherwise seeking Complainant, arrive at one of Respondent’s resolving websites. The Panel finds Respondent registered and used <taiwanfriendfinder.com> and <seoulfriendfinder.com> in bad faith per Policy ¶ 4(b)(iii).
Second, Complainant claims that Respondent is able to generate web traffic, and in turn realize a commercial gain, through the use of domain names that are confusingly similar to the FRIENDFINDER mark. Where a respondent endeavors to offer competing services for commercial gain, bad faith under Policy ¶ 4(b)(iv) may be found. See ShipCarsNow, Inc. v. Wet Web Design LLC, FA1501001601260 (Forum Feb. 26, 2015) (“Respondent’s use of the domain name to sell competing services shows that Respondent is attempting to commercially benefit from a likelihood of confusion. Therefore the Panel finds that a likelihood of confusion exists, that Respondent is attempting to commercially benefit from Complainant’s mark, and that Complainant has rights that predate any rights of the Respondent, all of which constitutes bad faith under Policy ¶ 4(b)(iv).”). Complainant asserts Respondent capitalizes on visitors’ mistaken belief that they are accessing the same network that FRIENDFINDER offers. The Panel agrees and finds that this use constitutes bad faith pursuant to Policy ¶ 4(b)(iv).
Additionally, Complainant argues that Respondent’s bad faith was further demonstrated by Respondent’s failure to provide any response to Complainant’s letters. Failure to answer numerous cease-and-desist letters is evidence of bad faith. See Seiko Epson Corp. et al. v. JIT Consulting, FA 8000095476 (October 20, 2000) (“Epson also argues that Respondents provision of inaccurate contact information and his failure to answer numerous cease-and-desist letters as well as to respond to this complaint is evidence of bad faith. This panel agrees.”) The Panel finds that by Respondent not responding to Complainants letters evinces bad faith under Policy ¶4 (a)(iii).
Lastly, Complainant argues that Respondent had actual knowledge of Complainant's rights in the FRIENDFINDER mark. Registration of a disputed domain name with actual knowledge of a complainant’s rights in a mark used for said domain name evinces a finding of bad faith per Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of
it.”). Here, Complainant contends Respondent's offering of Complainant's own services or otherwise competing services at the resolving website indicates that Respondent had actual knowledge of Complainant's mark and rights. The Panel agrees, and finds further evidence of Respondent’s bad faith registration and use 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 <taiwanfriendfinder.com> and <seoulfriendfinder.com> domain names be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: August 2, 2017
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