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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

MatchNet plc. v. MAC Trading

Case No. D 2000 - 0205

 

1. The Parties

The Complainant is MatchNet plc. an English corporation having its principal place of business at 8670 Wilshire Boulevard, Beverley Hills, California 90211, USA.

The Respondent is MAC Trading having an address at ONSALEHIREPURCHASEORANYIDEA, 6/FL,Bankingcentre, Tirana, Albania.

 

2. The Domain Name

The Complaint relates to the domain name <americansingle.com>.

 

3. Procedural History

The Complaint was received by the WIPO Arbitration and Mediation Center (hereinafter the "Center") on March 23, 2000, and complied with the requirements of the Rules for Uniform Domain Name Dispute Resolution Policy (hereinafter "the Rules") and the WIPO Supplemental Rules for Uniform Dispute Resolution Policy (hereinafter the "Supplemental Rules").

The appropriate fees were paid by the Complainant. The Center has completed a formal requirements checklist relating to this Complaint and having reviewed the file submitted to the Administrative Panel in accordance with paragraph 9 of the Rules, the Administrative Panel agrees with the Center’s assessment that the Complaint complied with the formal requirements.

On March 28, 2000, the Center sent to Network Solutions Inc. by e-mail, a request for confirmation that a copy of the Complaint had been sent to Network Solutions Inc. as required by the Supplemental Rules, paragraph 4(b).

On March 29, 2000, Network Solutions Inc. responded by e-mail confirming that it had received the Complaint from the Complainant. Network Solutions Inc. further confirmed:

- that Network Solutions Inc. is the Registrar of the domain name registration <americansingle.com>;

- that the Respondent is the current registrant of the <americansingle.com> domain name registration; that the registrant is MAC TRADING (AMERICANSINGLE4-DOM) ONSALEHIREPURCHASEORANYIDEA, 6/FL,BANKINGCENTRE, TIRANA, AL;

- that the Administrative Contact is CooperationOrImagination ForAny (BAR10-ORG) LONG @STAR .COM hairy.com 1407, LAI-CHING HOUSE, LAI-ON ESTATE HK, HK, 852; that the Technical Contact, Zone Contact is myDNS Support (MS311-ORG) support @ MYDNS.COM;

- that the Billing Contact is CooperationOrImagination ForAny (BAR10-ORG) LONG @STAR .COM hairy.com 1407, LAI-CHING HOUSE, LAI-ON ESTATE HK, HK, 852;

- that Network Solutions 5.0 Service Agreement is in effect and that the domain name <americansingle.com> is in "active" status.

On March 30, 2000, the Center sent a Notification of Complaint and Commencement of Administrative Proceeding as required by paragraph 2(a) of the Rules to the Respondent (Registrant), the Administrative Contact/Billing Contact, the Technical Contact/Zone Contact. Said Notification was sent by Post/Courier (with enclosures), facsimile (Complaint without attachment) and e-mail (Complaint without attachment). Said Notification was copied to the Complainant's representative by e-mail. A further copy was communicated to the Internet Corporation for Assigned Names and Numbers (ICANN) and the Registrar, Network Solutions Inc. The e-mail sent to the Respondent at <postmaster@americansingle.com> was returned undelivered as it had permanent fatal errors (reason: host unknown).

Said Notification of Complaint and Commencement of Administrative Proceeding inter alia advised the Respondent that the administrative proceedings had commenced on March 30, 2000, and that the Respondent was required to submit a Response to the Center on or before April 18, 2000.

On April 20, 2000, the Center sent a Notification of Respondent Default to the Respondent (Registrant), the Administrative Contact/Billing Contact and the Technical Contact/Zone Contact by post/courier, facsimile and e-mail. A copy of the said Notification was at the same time sent to the Complainant's representative.

On April 20, 2000, James Bridgeman was invited by the Center to serve as Administrative Panelist in the administrative proceedings. On April 22, 2000, the Administrative Panelist submitted a Statement of Acceptance and Declaration of Impartiality to the Center in accordance with paragraph 7 of the Rules.

On April 26, 2000, an Administrative Panel consisting of a single member was appointed in accordance with paragraph 6(b) of the Rules.

In the view of the Administrative Panel, the proper procedures were followed and the panel was properly constituted.

 

4. Factual Background

Given the Respondent's failure to file a Response in this case, the Administrative Panel accepts as true and accurate, all statements of fact made by the Complainant in its submissions. (vide: Talk City Inc. v. Robertson, (WIPO Case D2000-0009, February 24, 2000); Eauto, L.L.C. v. EAuto Parts, (WIPO Case D2000-0096, April 9, 2000)).

The Complainant is an English corporation having its principal place of business at 8670 Wilshire Boulevard, Beverley Hills, California 90211, USA.

The Complainant is a supplier of internet dating services. These services have been and remain available via a web site accessible through three (3) domain names viz. <americansingles.com> <americansingles.org> and <as.org>. In its submissions, the Complainant states that it currently serves over 500,000 registered members who can use its internet dating services via the said web site.

The Complainant claims continuous use of the name AmericanSingles on the internet in connection with the provision of dating services since April or June 1995 by its predecessor-in-interest, Cupid's Network Inc.

On May 17, 1999, the Complainant purchased said Cupid's Network Inc. including its AmericanSingles web site and its trademarks. Since that date, the Complainant has continued to offer internet dating services on the said site. The Complainant claims to have expended substantial sums of money in promoting its services under the AmericanSingles name and states that from August to September 1999 the Complainant spent nearly $1 million to promote its services under this name advertising on radio and on the internet.

The Complainant does not have any registered trademark or service mark. Nor does it claim to have filed any application for registration of any trademark or service mark.

The Respondent has not filed any Response to the Complaint and so, other than the fact that the Respondent has stated that its address is at ONSALEHIREPURCHASEORANYIDEA, 6/FL,Bankingcentre, Tirana, Albania, there is no information about its status and very little information about its activities.

From the information furnished by the Complainant, it would appear that the Respondent registered the domain name <americansingle.com> in December 1999. The Complainant has furnished print-outs from Network Solutions Inc. WHOIS database which indicate that the Respondent has registered a number of other domain names such as <providentsavingsbank.com>, <dowjonestv.com> and <tnntv.com>.

The Respondent has established a web site accessible via said <americansingle.com> domain name which provides sexually explicit and pornographic material. This is achieved through framing such material from other web sites. When a user first accesses <americansingle.com>, the user is simultaneously forced to view two new browser screens, each presenting an additional web site offering internet dating services in competition with the Complainant. One of these web sites, Adult Friend Finder Erotic Personals appears to offer sexually explicit materials. When a user attempts to leave <americansingle.com> by clicking on the "back" button of the browser, the user is forced to view a new browser screen that contains a web site offering pornographic material. If the user waits until this screen is substantially downloaded and then tries to close the browser screen, another browser screen appears offering new pornographic material. This process appears to continue until the user quickly closes the new browser screen.

 

5. Parties’ Contentions

A. Complainant

The Complainant submits

(a) that the domain name is confusingly similar to a mark in which the Complainant has rights;

(b) that the Respondent has no rights or legitimate interests in respect of the domain name;

(c) that the Respondent has registered and is using the domain name in bad faith.

In support of these contentions the principal submissions of the Complainant are as follows:

The Complainant claims to be the owner of the common law service mark "AmericanSingles". It submits that its common law rights have accrued through use of the service mark by the Complainant and its predecessor-in-interest on the internet in connection with the provision of dating services since 1995. As a result of this use for nearly five years, and the expenditure of substantial sums of money advertising the said internet dating services, by itself and its predecessor-in-interest, the Complainant submits that it has acquired rights in the mark.

The Complainant submits that the domain name <americansingle.com> is virtually identical to the Complainants trademark, lacking only the letter "s" at the end of the second level domain name.

The Complainant submits that the Respondent does not have any rights or legitimate interests in respect of the domain name - that the Respondent is not commonly known as, nor does it carry on business as "americansingle".

It is submitted by the Complainant that the Respondent has acted in bad faith in registering and using the said domain name <americansingle.com>. The Complainant asserts that the Respondent has registered the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name. [vide: Uniform Domain Name Dispute Resolution Policy (hereinafter the " Uniform Policy"), paragraph 4(b)(i)]. The Complainant argues that the fact that the Respondent has registered other domain names such as <providentsavingsbank.com>, <dowjonestv.com> and <tnntv.com> supports this allegation.

It is further argued that the Respondent has demonstrated its bad faith in this regard by including the word(s): 'ONSALEHIREPURCHASEORANYIDEA' in the Respondents postal address as stated in the registration information supplied by the Respondent to Network Solutions Inc.

The Complainant further alleges that the Respondent has engaged in a pattern of conduct that indicates that it registered the domain name to prevent the owner of the mark from reflecting the mark in a corresponding domain name [vide: Uniform Policy paragraph 4(b)(ii)] and that by using the domain name the Respondent has intentionally attempted to attract, for commercial gain, internet users to an on-line location by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the pornographic services accessible via the domain name [vide: Uniform Policy pparagraph 4(b)(iv)].

B. Respondent

There has been no communication from the Respondent.

 

6. Discussion and Findings

Procedural Matters Relating to the Respondent's Default

Paragraph 4(d) of the Rules provides that the Center shall immediately notify the Complainant, the Respondent, the concerned Registrar(s), and ICANN of the date of commencement of the administrative proceeding.

Paragraph 5(a) of the Rules requires that within twenty (20) days of the date of commencement of the administrative proceeding the Respondent shall submit a response to the Center.

Paragraph 6(b) of the Rules provides inter alia that if neither the Complainant nor the Respondent has elected a three-member Panel, the Center shall appoint, within five (5) calendar days following receipt of the response by the Center, or the lapse of the time period for the submission thereof, a single Panelist from its list of panelists. This procedure is also set out in paragraph 7(c) of the Supplemental Rules.

Paragraph 6 (f) of the Rules provides that once the entire Panel is appointed, the Center shall notify the Parties of the Panelists appointed and the date by which, absent exceptional circumstances, the Panel shall forward its decision on the Complaint to the Center.

Paragraph 10 (b) of the Rules requires the Panel to ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case.

Paragraph 10(c) of the Rules inter alia requires the Administrative Panel to proceed with due expedition.

Paragraph 14 of the Rules sets out the procedure to be followed by the Administrative Panel where either party is in default of the procedures and provides that:

(a) In the event that a Party, in the absence of exceptional circumstances, does not comply with any of the time periods established by these Rules or the Panel, the Panel shall proceed to a decision on the Complaint.

(b) If a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate.

Having considered the file transmitted to the Administrative Panel by the Center pursuant to paragraph 9 of the Rules, the Administrative Panel finds

  • that the Center has complied with paragraph 2(a) of the Rules and has employed reasonably available means calculated to achieve actual notice to the Respondent;
  • that the Respondent has been given a fair opportunity to present its case and has not done so;
  • that there is no evidence of any exceptional circumstances applying to these proceedings.
  • In the circumstances, the Administrative Panel is required by paragraphs 10(c) and 14(a) to proceed to make a decision on the basis set out in paragraph 15(a) of the Rules.

    Substantive Matters

    The Rules, at paragraph 15(a), require the Administrative Panel to decide on the basis of the statements and documents submitted in accordance with the Uniform Policy, the Rules and any rules and principles of law that it deems applicable.

    In accordance with paragraph 4(a) of the Uniform Policy, the Complainant bears the onus of proof and must establish:

    (i) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

    (ii) that the Respondent has no legitimate interests in respect of the domain name;

    (iii) that the domain name has been registered and is being used in bad faith.

    Identical or Confusingly similar to the Complainant’s Service Mark Rights.

    Does the reference to "trademark or service mark" in paragraph 4(a)(i) of the Uniform Policy include a reference to unregistered marks?

    In The British Broadcasting Corporation v. Jaime Renteria (WIPO Case D2000- 0050, March 23, 2000) the Administrative Panel addressed the question of unregistered trade marks and stated at page 6 of the decision: "This Administrative Panel acknowledges that the Uniform Policy in paragraph 4(a)(i) refers merely to a 'trademark or service mark' in which the Complainant has rights, and in particular does not expressly limit the application of the Uniform Policy to a registered trademark or service mark of the Complainant. Further, this Administrative Panel recognizes that the WIPO Final Report on the Internet Domain Name Process (the Management of Internet Names and Addresses: Intellectual Property Issues, April 1999), from which the Uniform Policy is derived, does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names. It is therefore open to conclude that the Uniform Policy is applicable to unregistered trademarks and service marks."

    In Bennett Coleman & Co. Ltd. v. Steven S Lalwani and Bennett Coleman & Co. Ltd. v. Long Distance Telephone Company (WIPO Consolidated Cases D2000-0014 and D2000-0015, March 11, 2000) the Administrative Panel stated at page 4 of the decision: "The Respondents have also asserted that the Complainant's Indian trade marks are no longer registered. Whether or not that is so, it is clear that the Complainants have a very substantial reputation in their newspaper titles arising from their daily use in hard-copy and electronic publication. In India itself wrongfully adopting the titles so as to mislead the public as to the source of publications or information services would in all likelihood amount to the tort of passing off. As is already stated, it is this reputation from actual use which is the nub of the complaint, not the fact of registration as trade marks."

    Referring to the above decisions, in SeekAmerica Networks Inc. v. Tariq Masood and Solo Signs (WIPO Case D2000-0131, April 13, 2000) the Administrative Panel accepted that the Rules do not require that the Complainant's trade mark or service mark be registered by a government authority or agency for such rights to exist.

    This Administrative Panel accepts the reasoning of the above decisions and in the absence of any submissions from the Respondent relating to distinctiveness, concludes that AmericanSingles is a service mark for the purposes of paragraph 4(a)(i) of the Rules. In the absence of any contrary or rebuttal evidence from the Respondent the Administrative Panel accepts the Complainant's claim that it has rights in said common law service mark.

    It is obvious that the domain name <americansingle.com> is virtually identical to the said trademark and is certainly confusingly similar.

    Legitimate Interest of the Respondent

    Paragraph 4(c) of the Uniform Policy provides that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate the Respondent's rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii) of the Uniform Policy:(i) that before any notice to the Respondent of the dispute, the Respondent's use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

    (ii) that the Respondent (as an individual, business, or other organisation) has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights; or

    (iii) that the Respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

    The Complainant has made out a prima facie case that the use of the domain name by the Respondent is not a bona fide offering of goods or services, that the Respondent is not commonly known by the domain name, that the Respondent appears to be using the domain for commercial gain, attracting internet users to third party sites offering sexually explicit and pornographic material and that such use is calculated to mislead consumers and to tarnish the service mark of the Complainant.

    There is no evidence before the Administrative Panel in this case that the Respondent has any legitimate interest in the domain name <americansingle.com> for the purposes of paragraph 4(a)(ii) of the Uniform Policy under the above criteria or otherwise.

    The Administrative Panel, as permitted by paragraph 14(b) of the Rules, draws the inference from the Respondent's failure to respond to this administrative proceeding, that the Complainant is correct in its assertion that the Respondent has no rights or legitimate interest in the domain name.

    Bad Faith

    Paragraph 4(b) of the Uniform Policy provides that for the purposes of paragraph 4(a)(iii) of the Uniform Policy, "the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

    (i) circumstances indicating that the Respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

    (ii) that the Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or

    (iii) that the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

    (iv) that by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent's web site or other on-line location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's web site or location or of a product or service on the Respondent's web site or location.

    The Complainant has convincingly argued that the Respondent has registered and used the domain name in bad faith. The Administrative Panel accepts the reasoning that the Respondent presented false registration information to Network Solutions Inc. by listing its address as including the word(s): "ONSALEHIREPURCHASEORANYIDEA". This is prima facie evidence that the Respondents has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant.

    The Complainant's allegation that the Respondent demonstrated bad faith in that it has registered numerous other domain names apparently for the purpose of selling them is outside the terms of reference of these administrative proceedings. However, the Administrative Panel notes that the Complainant has submitted no evidence regarding the Respondent's rights or otherwise to the ownership of these domain names.

    Finally, the Administrative Panel accepts that the Respondent has intentionally attempted to attract for commercial gain internet users to its web site by using the domain name which is likely to cause confusion with the Complainant’s web sites. The Respondent has used its web site to furnish sexually explicit and pornographic material under the domain name and in the circumstances, given the likelihood of confusion, there is a prima facie case that this could tarnish the Complainant's goodwill in its common law service mark.

     

    7. Decision

    The Administrative Panel decides that the Respondent has registered the domain name <americansingle.com> identical or confusingly similar to the Complainant's service mark, that the Respondent has no rights or legitimate interest in respect of that domain name and that the Respondent has registered and used that domain name in bad faith. Accordingly, this Administrative Panel decides that said domain name <americansingle.com> should be transferred to the Complainant.

     


     

    James Bridgeman
    Presiding Panelist

    Dated: May 11, 2000

     

    Источник информации: http://www.internet-law.ru/intlaw/udrp/2000/d2000-0205.html

     

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