Various, Inc. v. Uasya Utkin
Claim Number: FA1910001866737
Complainant is Various, Inc. (“Complainant”), represented by Diana L. Ballou of Various, Inc., California, USA. Respondent is Uasya Utkin (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <myadultfriendfinder.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.
Steven M. Levy, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 14, 2019; the Forum received payment on October 14, 2019.
On October 15, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <myadultfriendfinder.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 October 16, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 5, 2019 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@myadultfriendfinder.com. Also on October 16, 2019, 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 November 6, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Steven M. Levy, 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant provides mail and online dating services. Complainant has rights in the trademark ADULTFRIENDFINDER through its use in commerce since 1991 and its registration of the mark with the United States Patent and Trademark Office (“USPTO”) dating back to 2005. Respondent’s <myadultfriendfinder.com>, registered on November 8, 2018, is identical or confusingly similar to Complainant’s mark as it includes the ADULTFRIENDFINDER mark in its entirety, merely adding the generic or descriptive word “my.”
Respondent lacks rights or legitimate interests in the <myadultfriendfinder.com> domain name as it fails to use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain name to pass itself off as Complainant. Respondent’s website displays an image that is copied from Complainant’s own website but which directs users to other dating sites which compete with Complainant.
The Respondent registered and uses the <myadultfriendfinder.com> domain name in bad faith. Respondent attempts to confuse Internet users in order to receive advertising commissions for any traffic it sends to various other dating sites and to purloin Complainant’s user’s data. In addition, Respondent’s inclusion of a link to Complainant’s website demonstrates that it had actual knowledge of Complainant’s rights in the ADULTFRIENDFINDER mark prior to registration of the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights;
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the disputed domain name was registered and is being used by Respondent 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."
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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant asserts rights in the ADULTFRIENDFINDER mark based on its registration with the USPTO. Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Complainant provides a USPTO screenshot evidencing its registration of the ADULTFRIENDFINDER mark.[i] Accordingly, the Panel finds that Complainant has established rights in the ADULTFRIENDFINDER mark for the purposes of Policy ¶ 4(a)(i).
Complainant next argues that Respondent’s <myadultfriendfinder.com> domain name is identical or confusingly similar to Complainant’s mark as it includes the ADULTFRIENDFINDER mark in its entirety, adding the generic or descriptive word “my” to the mark. The Panel also notes that, while Complainant does not argue this, Respondent also adds the generic top-level domain (“gTLD”) “.com” to Complainant’s wholly incorporated mark. Adding a generic or descriptive term along with a gTLD may be insufficient to defeat a finding of confusing similarity under Policy ¶ 4(a)(i). See Empowered Medical Solutions, Inc. d/b/a QRS-Direct and QRS Magnovit AG v. NULL NULL / QUANTRON RESONANCE SYSTEMS / JIM ANDERSON / HTR / unknown HTR / HTR, FA 1784937 (Forum June 8, 2018) (“Adding or removing descriptive terms or a gTLD is insufficient to differentiate a disputed domain name from a complainant’s mark under Policy ¶ 4(a)(i).”) The Panel therefore finds that the disputed domain name is confusingly similar to the ADULTFRIENDFINDER mark under 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). Should it succeed in that effort, the burden then shifts to Respondent to show that it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
The Panel notes that Complainant does not make any specific contentions as to Policy ¶ 4(c)(ii). However, WHOIS information may be used to determine whether a respondent is or is not commonly known by a disputed domain name. See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). The WHOIS information identifies the registrant as “Uasya Utkin” and there is no evidence in the record to suggest that Respondent is known otherwise or that it is by some other means commonly known by the disputed domain name. Therefore, the Panel determines that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Complainant does assert that Respondent fails to use the <myadultfriendfinder.com> domain name in connection with a bona fide offering of goods or services or to make a legitimate noncommercial or fair use of the name as Respondent’s resolving website copies certain graphics from Complainant’s site and contains a link to Complainant’s actual website. A respondent’s use of a disputed domain name to pass itself off as a Complainant may not be 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 Kmart of Mich., Inc. v. Cone, FA 655014 (Forum Apr. 25, 2006) (The panel found the respondent’s attempt to pass itself off as the complainant was not 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) when the respondent used the disputed domain name to present users with a website that copied parts of the complainant’s website). Complainant provides screenshots of the disputed domain name’s resolving website which Complainant alleges is identical to, and contains links to, Complainant’s actual website. Unfortunately, Complainant does not submit any screenshots of its own website and so the Panel has nothing by which to compare Respondent’s site. However, the Respondent has not filed a Reply or made any other submission in this case, and thus has not disputed this claim. Further, the Panel reviewed Complainant’s home page and found that, while the graphic at Respondent’s site is not identical, it certainly does copy Complainant’s ADULTFRIENDFINDER logo, the color and layout, a “Sign Up Now” form, and other graphic elements of Complainant’s own site. Respondent’s site also shows what appear to be home page graphics from other adult dating sites that Complainant has identified as its competitors. As such, the Panel finds that Respondent is not using the disputed domain name 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).
Next, Complainant argues that Respondent is using the <myadultfriendfinder.com> disputed domain name in furtherance of a phishing scheme as Respondent attempts to capture users’ personal information by using a strikingly similar and confusing domain name. Use of a domain name that is confusingly similar to the mark of another to facilitate a phishing scheme may not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶4(c)(iii). See Enterprise Holdings, Inc. v. I S / Internet Consulting Services Inc., FA 1785242 (Forum June 5, 2018) (“On its face, the use of a domain name that is confusingly similar to the mark of another in order to facilitate a phishing scheme cannot be described as either a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶4(c)(iii).”) Complainant provides screenshots of the disputed domain name’s resolving webpage which appears to contain information about dating and displays images from Complainant’s website as well as those of its competitors. However, the Panel notes that Complainant provides no evidence to support its claim and makes no additional arguments regarding the purported phishing scheme. As such, the Panel lacks sufficient evidence upon which to determine if phishing is present or impacts the determination under Policy ¶ 4(a)(ii).
Complainant argues that the Respondent had actual knowledge of Complainant’s rights in the ADULTFRIENDFINDER mark at the time of registration of the <myadultfriendfinder.com> domain name. Actual knowledge of a Complainant’s mark prior to registering a disputed domain name is an adequate foundation to support evidence of bad faith under 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.”) Actual knowledge of another’s trademark rights can be inferred from a respondent’s use of a complainant’s trademark. See Norgren GmbH v. Domain Admin / Private Registrations Aktien Gesellschaft, FA1501001599884 (Forum Feb. 25, 2014) (holding that the respondent had actual knowledge of the complainant and its rights in the mark, thus demonstrating bad faith registration under Policy ¶ 4(a)(iii), where the respondent was using the disputed domain name to purposely host links related to the complainant’s field of operation). Complainant argues that Respondent’s website contains links to both Complainant’s own website and to the websites of some of Complainant’s competitors in the field of adult dating. It asserts that this demonstrates Respondents actual knowledge of Complainant’s rights in the ADULTFRIENDFINDER mark prior to registering the disputed domain name. The Panel agrees.
Next, the Panel notes that while Complainant makes no specific arguments that would fall under Policy ¶ 4(b), such arguments are merely illustrative rather than exclusive to support a finding of bad faith. See Bloomberg Finance L.P. v. Domain Admin - This Domain is For Sale on GoDaddy.com / Trnames Premium Name Services, FA 1714157 (Forum Mar. 8, 2017) (determining that Policy ¶ 4(b) provisions are mere illustrative of bad faith, and that the respondent’s bad faith may be demonstrated by other allegations of bad faith under the totality of the circumstances). Nevertheless, the Panel will consider all the facts of the case as well as the limited assertions made by Complainant on the issue of bad faith.
Complainant argues that “the obvious purpose of the us [sic] of this domain name is to confuse Complainant’s customers or potential customers to purloin Complainant’s user’s data”. A respondent’s use of a domain name that is confusingly similar to a complainant’s, to attempt to confuse Internet users into providing their personal information is evidence of bad faith registration per Policy ¶ 4(a)(iii).”). See Capital One Fin. Corp. & Capital One Bank v. Howel, FA 289304 (Forum Aug. 11, 2004) (“The <capitalonebank.biz> domain name is confusingly similar to Complainant’s mark, it is being used to redirect Internet users to a website that imitates Complainant’s credit application website, and it is being used to fraudulently [sic] acquire personal information from Complainant’s clients. Respondent’s use of the domain name supports findings of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”) Complainant argues that Respondent uses Complainant’s mark in order to deceive Internet users into believing some affiliation exists between Complainant and Respondent and gain access to personal information. However, as noted above, there is no evidence of record to indicate that Respondent’s website gathers user data.
However, Complainant also asserts that the <myadultfriendfinder.com> site copies portions of Complainant’s own website, as well as those of its competitors, and provides corresponding links. Further “[t]he link, when live, redirects users to a number of different and competitive websites, none of which is associated with Complainant.” It goes on to assert that “Respondent likely receives advertising commissions for any traffic it sends to the various websites.” While not elucidated as such, Complainant’s assertions do seem to fit within the parameters of Policy ¶ 4(b)(iv). Given the nature and appearance of Respondent’s website this assertion seems quite plausible and Respondent has not participated in this case to dispute it.
Considering all of the circumstances of this case, the Panel finds, upon a preponderance of the evidence, that Respondent registered and uses the disputed domain name in bad faith 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 <myadultfriendfinder.com> domain name be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: November 7, 2019
[i] It is should be noted that the submitted USPTO screenshots either do not show the name of trademark owner or, in one case, show Friendfinder, Inc., an entity that is not here named as a Complainant and is not mentioned anywhere in the Complaint. However, the Panel has, itself, reviewed the USPTO assignment records for the asserted registrations and found that they do, in fact, reflect that Various, Inc. is the current owner.
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