WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bret Kelly v. QSoft Consulting Ltd.
Case No. D2003-0221
1. The Parties
The Complainant is Bret Kelly, Toronto, Ontario of Canada, represented by Jellinek, Thomas Law Firm of Canada.
The Respondent is QSoft Consulting Ltd., Twickenham, of United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name is registered with Network Solutions, Inc. Registrar.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 20, 2003. On March 21, 2003, the Center transmitted by email to Network Solutions, Inc. Registrar a request for registrar verification in connection with the domain name at issue. On March 25, 2003, Network Solutions, Inc. Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 26, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was April 15, 2003. The Response was filed with the Center on April 15, 2003.
The Center appointed Knud Wallberg as the sole panelist in this matter on April 17, 2003. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
(i) Complainant and its Trade-Marks
The Complainant is the owner of a well known trademark which is registered in the United States. The trademark on which the complaint is based is GAYDAR, which bears U.S. Trademark Registration No. 2,613,823.
The services in connection with which the trademark is used are: 1) under Class 41, entertainment services, namely, providing an on-line adult content website catering primarily to the gay community; and providing an on-line adult entertainment website catering primarily to the gay community; providing an on-line computer database in the field of adult entertainment; and 2) under Class 35, online ordering services featuring photographs of nude men; rental of advertising space; promoting the goods and services of others by placing advertisements in an electronic web site accessed through computer networks; rental of advertising space; and advertising services, namely, providing advertising space in an on-line website.
(ii) Respondent and its Trade-Marks
The Respondent owns registered trade marks for "GAYDAR" � both in Europe and Australia as follows:
"GAYDAR" � European Community trade mark number 2127264 registered in the following classes:
Class 35 � Advertising and sales promotional services provided by means of the I nternet
Class 38 � Communication services provided by means of interactive website
Class 42 � Dating agency services provided via the internet; web design services, website consultancy services
"GAYDAR" � Australian trade mark number 911830 registered in the following classes:
Class 35 � Advertising, marketing and promotional services, including such services provided by means of the internet
Class 38 � Communication services; including such services provided by means of an interactive website
Class 45 � Introduction agency services; including such services provided via the internet.
5. Parties� Contentions
Due to the nature of this conflict the Panel has decided to reflect the parties contentions in length.
A. Complainant
The domain name is confusingly similar to the Complainant�s trademark
The domain name is confusingly similar with the Complainant�s GAYDAR trademark and the domain name .
The sole difference between the Complainant�s GAYDAR trademark and the disputed domain name is the addition of the prefix "my". This difference is trivial and does not affect the confusing nature of the domain name. See, Ferrero S.p.A. v. Mr. Jean-Francois Legendre WIPO Case No. D2000-1534 (March 1, 2001), where the panel found that the combination of an existing name (i.e a trademark � in that case nutella) with a possessive pronoun (such as "my" or "your") does not basically change the significance of the existing name as such in the combined expression. The panel stated that, "the added prefix "my" has, both grammatically and phonetically, an inferior distinctive importance compared to the principal component of the word: the term "my-Nutella" is clearly dominated by its principal component "Nutella"�. From the point of view of ordinary consumers and internet users � as well as from an objective viewpoint � the domain names are confusingly similar to Complainant�s trademark and the distinctive element of the Domain Names and Complainant�s trademark are identical."
The Respondent has no rights or legitimate interests in respect of the domain name
The Respondent is not a licensee of the Complainant, nor is the Respondent otherwise authorized to use the Complainant�s GAYDAR trademark or any confusingly similar name.
The Complainant has used the trademark in commerce and carried on business as GAYDAR since May 1998, when the Complainant registered and and began conducting business on the sites. In November 1999, the Respondent registered . On February 28, 2000, the Complainant submitted an application to register the trademark GAYDAR. The Respondent registered on March 21, 2000, almost two years after the Complainant began using his trademark. In May 2001, the Respondent asked the Complainant to meet with the Respondent�s representative to discuss a joint business venture. At that time, G was receiving approximately 270,000 unique visitors per month making it one of the most popular adult content websites on the Internet. The Complainant declined the opportunity to work with the Respondent. On July 12, 2001, an affiliate of the Respondent sent the Complainant an offer to buy for $75,000 USD. By letter dated July 17, 2001, the Complainant declined the Respondent�s offer. The Respondent then began using in competition with the Complainant.
By email dated November 8, 2002, the Complainant, through its counsel sent a cease and desist letter to the Respondent regarding the disputed domain name. The Respondent�s counsel responded by letter dated November 15, 2002. That letter states, inter alia, [a]s our client was aware of your client�s trade mark application � and your client�s domain name ", our client chose to register the domain name .
The Respondent registered its domain name with complete disregard for the Complainant�s rights in the mark.
The Respondent has registered a domain name that is confusingly similar to the Complainant�s as a means of diverting traffic from the Complainant�s web site. See Express Messenger Systems, Inc. v. Golden State Overnight, WIPO Case No. D2001-0063 (March 28, 2001) where the panel found that the Respondent�s use of a domain name to direct Internet users to its competing website was in bad faith. The panel went on to find that "[b]ad faith use of domain names does not establish rights or legitimate interests in names in the sense of paragraph 4(a)(ii) of the Policy".
Similarly, in Microchip Technology, Inc. v. Milos Krejcik and EDI Corporation, d/b/a A, WIPO Case No. D2001-0337 (May 21, 2001), the panel found that a Respondent had no rights or legitimate interest in respect of a domain name if the Respondent knew of the Complainant�s mark, whether registered or common law, and the Respondent�s website created an unnecessary likelihood of confusion.
The domain name was registered and is being used in bad faith.
The Respondent, by using the domain name, has intentionally attempted to attract, for commercial gain, Internet users to its web site by creating a likelihood of confusion with the Complainant�s mark. See Express Messenger Systems, Inc. v. Golden State Overnight, WIPO Case No. D2001-0063 (March 28, 2001).
The Respondent is using the domain name in direct competition with the Complainant and is infringing the Complainant�s trade-mark rights.
The domain name was registered primarily for the purpose of disrupting the business of a competitor, namely the Complainant. The Respondent was aware that the Complainant was using the domain name prior to registering . Prior to the Respondent using his website as an adult entertainment website, the Respondent was aware that the Complainant had applied for registration of the trademark GAYDAR in relation to an adult entertainment website and that the Complainant was operating a dating service and chat line at "". The Respondent�s website provides the same or similar services as the Complainant�s. Copies of the Complainant�s and Respondent�s web site home pages were attached as annex to the Complaint.
The Respondent uses the Complainant�s trademark on . For example, the title to the Respondent�s webpage is "gaydar", not "mygaydar", and various other pages on also use the trademark GAYDAR.
The Complainant�s trademarks and domain names have been and are recognized by the public and the industry as originating from a single source, namely the Complainant, and the Complainant�s trademarks and domain names serve to distinguish the Complainant�s products and services from the products and services of others. The large number of hits that receives is an indication of the above average distinctive nature of the mark. See Shopping24 v. Christian Rommel, WIPO Case No. D2000-0508 (September 28, 2000).
By using the domain name, the Respondent has intentionally attempted to attract for financial gain, Internet users to the Respondent�s web site 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.
B. Respondent
Whether the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights
It is admitted that the domain name is similar to the Complainant�s trade mark "GAYDAR" in that the word "GAYDAR" appears in its entirety in the Respondent�s domain name.
Whether the Respondent has rights or legitimate interests in respect of the domain name
The Respondent refutes all the arguments set out by the Complainant and asserts that it does have rights and a legitimate interest in the domain name for the following reasons:
The Respondent is the owner of the registered trade marks as set out above.
In addition to , the Respondent has registered a further 23 domain names as set out in Annex 3 to the Response.
The Respondent operates a valuable business through the use of its registered domain names and has built up a substantial reputation in its mark "GAYDAR". Notably, the Respondent registered the domain name in May 1999, nine months prior to the Complainant�s application to register its United States trade mark "GAYDAR" which was filed on February 28, 2000. The Respondent independently thought of using the name "GAYDAR" for its website business in about May 1999,when Mr. Gary Frisch heard the word "Gaydar" to refer to a gay person�s intuition about whether another person was gay or not. He immediately registered through his company Qsoft Consulting Ltd, the Respondent in these proceedings. The Respondent had no knowledge of the Complainant�s domain name when it originally thought of using the name "GAYDAR" for its business and domain name. Once the Respondent started to develop its business plan it soon became aware that the Complainant had registered but noted that the Complainant was only using the domain name as a "landing page" to divert internet users to a pornographic website at "". The Respondent at this time had not intended to develop its business outside of the United Kingdom as it did not know how popular its website would become. However, the website at "" quickly became extremely successful. It was from the success of the "" website that the Respondent�s business has grown, and more domain names have been registered to expand the business worldwide.
Apart from the trade mark applications and domain names listed above the Respondent owns and operates a radio station known as GAYDAR RADIO which is broadcast on Sky Digital (the UK�s digital and satellite broadcasting station) and is available in the UK in London on DAB (digital radio). The Respondent therefore promotes a broad range of activities using the "GAYDAR" mark.
The annual turnover of the Respondent, Qsoft Consulting Ltd, for 2002, was �2.4million in Europe and US$0.5million in the United States. QsoftConsulting Ltd trades as Gaydar and Mygaydar through its website services and radio station. During 2002, the Respondent spent �300,000 advertising and promoting the Gaydar brand worldwide and in the United States spent US$250,000 promoting the domain. Example copies of magazine advertising for are attached at Annex 4, including in each case the front cover of the magazine and the advertisement for . Therefore not only does the Respondent promote its range of activities through the "GAYDAR" mark, but also through the domain name.
The Respondent�s "" and "" websites have close to one million members worldwide. It is a community site, which has over 150,000 members visiting each day (compared to the 270,000 per month claimed by the Complainant). The business model is based upon people chatting and communicating online and as can be seen from the website at "" the Respondent offers legitimate services such as a dating agency, chat line, and messaging services for members, electronic cards, classified advertisements for buying and selling goods by members, Gaydar Radio on-line and shopping via G. Copies of example pages from the Respondent�s website were attached.
In contrast the Complainant�s website was, until about late February/early March 2003, simply a pornographic website and offered no services whatsoever other than links to other websites. Indeed from the time the Complainant first registered its domain name in May 1998, until about May 2000, the Complainant did not in fact use this domain name for a website in association with a corresponding name, but simply used it as a "landing page" and provided links to divert consumers to another website at "". This is a pornographic website which offers no services whatsoever. It is therefore incorrect for the Complainant to assert in its Complaint that it began conducting business on its site "" from May 1998, and that the Respondent was aware that the Complainant was operating a dating service and chatline at "" since the Complainant was not offering services of this nature at all.
It is Respondent�s submission that the Complainant has intentionally changed its website to include headings such as "shopping" "dating" "chat" and so on, in order to bring its site more in line with the Respondent�s website. It would appear that this is a cynical attempt to strengthen its Complaint and persuade the Panel deciding this dispute that it offered similar services to those of the Respondent prior to the Respondent offering such services, which it patently did not. Even so, it is clear from the Complainant�s website at "" that the Complainant is still not offering a dating agency service as it claims � it is simply providing a link to a gay dating agency service at "GAY.COM".
Because it was clear that in March 2000, the Complainant was not using the domain name other than to divert users to "" the Respondent entered into negotiations with the Complainant to purchase . The Respondent, via its representative Mr. David Muniz had meetings, telephone calls and e-mails to discuss the possibility of purchasing . The Respondent offered US$75,000 for the domain name (the draft Agreement was enclosed in the Complaint). This was an extremely advantageous amount for the domain name. However, the Complainant refused the Respondent�s offer. Now that the Respondent has built up a successful business with its own domain name , the Complainant appears to be attempting to hijack the Respondent�s legitimate domain name in order to gain for itself the considerable reputation that the Respondent has built up in the domain name since registering in March 2000.
The Complainant states that the Respondent is not "authorized to use the Complainant�s GAYDAR trademark or any confusingly similar name". During the course of negotiations concerning the purchase of the domain name and trade mark "GAYDAR", the Complainant confirmed to the Respondent�s representative Mr. David Muniz that he would not enforce his trade mark rights in the name "GAYDAR" if the Complainant chose to use the name and would allow the Complainant to market in the United States under the name "MYGAYDAR.COM". A copy e-mail from Mr. Muniz dated July 11, 2001, which states that Mr. Kelly, the Complainant, had agreed "not to in-force [sic] his trademark on the name gaydar if we choose to use the domain name in the United States" was enclosed . Although there was never a written agreement in this respect the Respondent relies upon the oral agreement made by the Complainant. In this regard the Respondent submits that the Complainant has authorised the Respondent to use the domain name in dispute.
The Respondent is not using in competition with the Complainant as alleged at paragraph 12(iii)(b) of the Complaint since the Complainant was not and is not offering similar services to the Respondent. Moreover, the Complainant has no intention whatsoever of diverting traffic from the Complainant�s website as alleged at paragraph 12(iii)(e) of the Complaint because the Respondent�s website offers bona fide services of a dating agency and chat line and is not a pornographic site, which the Complainant�s site is and has always been. The Respondent does not wish to divert the types of consumer which the Complainant�s website attracts. The Respondent has no wish to be associated with the Complainant and does not therefore wish to attract consumers from the Complainant�s website. It is submitted that this dispute can be distinguished from the case of Microchip Technology Inc. v. Milos Krejcik and EDI Corporation, d/b/a A, WIPO Case No. D2001-0337 (May 21, 2001), since whilst the Respondent knew of the Complainant�s mark, the Respondent has concurrent rights in the mark "GAYDAR".
Therefore for approximately two years before the Respondent received any notice of the dispute, there is ample evidence that the Respondent used the domain name in connection with a bona fide offering of goods or services. In addition, the Respondent is commonly known by the domain name in issue, as it has built up a substantial reputation in the domain name through advertising and promoting that domain name. This was done in the knowledge that the Complainant had agreed not to enforce any rights he had in the mark GAYDAR if the Respondent chose to use the domain name . It is also part of the Respondent�s "stable" of trade marks and domain names which it uses to promote its services worldwide. Under the circumstances the Respondent is making legitimate and fair use of the domain name, and has no intention whatsoever misleadingly to divert consumers or to tarnish the Complainant�s trademark "GAYDAR", which would equally tarnish the Respondent�s own rights in the mark "GAYDAR".
For the reasons set out above the Respondent submits that it has substantial rights and a legitimate interest in the domain name .
Whether the domain name has been registered and is being used in bad faith.
The Respondent has not registered nor used the domain name in bad faith. The Respondent registered the domain name because it was successfully running its business through "" and its other domain names, but felt that it needed a global presence and more of a presence in the United States. As explained above, the Respondent, unable to register the domain name , registered instead, in order to obtain this presence. The look of the website at "" is exactly the same as "" and the Respondent�s other "Gaydar" related websites and offers the same services. Examples of some of the home pages of the Respondent�s websites were attached. The Respondent is offering legitimate services and is in no way in competition with "".
It is refuted that the Respondent has intentionally attempted to attract for commercial gain internet users to its website by creating a likelihood of confusion with the Complainant�s mark as stated in the Complaint. If the Respondent was attempting to attract consumers to its website one would expect that the number of consumers accessing the Complainant�s website ought to be similar or greater than the number accessing the Respondent�s website for the reasons set out at paragraph 25 below. However, a search of the website "" indicates that the traffic rank for "" is at number 128,067 in the ranking of websites by amount of traffic to a website (see Annex 14, the hard copy of which is highlighted for your ease of reference). "" is ranked at 8,678 by traffic rank (see again Annex 14) i.e. it has far greater traffic than "" and is therefore ranked much nearer the top of the list. By comparison, Y is ranked as the number one website by amount of traffic.
If the Respondent was attempting to attract internet users to its website then in the Respondent�s submission, the traffic rank ought to be similar or, indeed, there ought to be greater traffic to the "" website compared with the "" website. In the Respondent�s submission this is because the word "Gaydar" is known within the gay community and so nobody looking for "" is likely to type in "MYGAYDAR.COM" by mistake. Indeed the opposite is far more likely to be the case and somebody looking for "" may, without knowledge of these particular websites, type in "GAYDAR.COM" instead. If it is the case that consumers mistakenly type in "GAYDAR.COM" when looking for "" the Complainant would be benefiting from the Respondent�s advertising and promotion and attracting consumers from the Respondent�s website and not vice versa as the Complainant complains. Indeed if one looks at the Complainant�s own personal website at "", he states at the link "Excitement" that he gets traffic from "" when people type in "GAYDAR.COM" by mistake. There is no evidence that those seeking "" are going to "" by mistake. In the Respondent�s submission users of the internet are aware of the difference between the two websites and are aware that the Respondent�s website offers legitimate services of a dating agency and other services, compared with the Respondent�s website which until very recently offered only pornography. This is the reason for the enormous difference in popularity of the two websites as shown by the traffic ranking of "" (ranked at 8,678) compared with "" (ranked at 128,067). Further evidence of the popularity of the Respondent�s websites is that "" is ranked at 753.
The Complainant and the Respondent are not competitors and the domain name was not registered by the Respondent primarily to disrupt the Complainant�s business as alleged in the Complaint. The Complainant was not running a business using "" but simply using it to divert consumers to "" and, at times, other websites. Accordingly there was no business to disrupt. As has been shown the Complainant and the Respondent did not and do not offer similar services. As set out above, it is the Respondent�s submission that the Complainant has recently changed the look of its website and added services to what was simply a pornographic website in order to bolster its Complaint in these proceedings. The Complainant has, until about late February/early March 2003, only ever used the domain name as a pornographic website and to provide links to other websites whilst "" offers the legitimate services of a dating agency and chat line, as well as shopping and radio services via links to its "g" and "" websites. The Complainant�s website at "" still offers no services of its own but simply provides links to other websites.
The Respondent does not use the Complainant�s trade mark as the title to its webpage as alleged by the Complainant. The title of the website on the home page is clearly "MYGAYDAR" and this is used throughout the website. The only occasions on which the Respondent uses the word "GAYDAR" as opposed to "MYGAYDAR" appears to be at the login screen where it says "Welcome to Gaydar login"; on the "Chat" page; and in relation to the Respondent�s other domain names such as and . These are all legitimate uses of the word "GAYDAR" since the Respondent owns trade marks in "GAYDAR" in Europe and Australia and is commonly known by the name "GAYDAR".
The Respondent submits that far from the public and industry recognising the Complainant�s trade mark as originating from the Complainant as alleged in the Complaint, it is the Respondent which has built up the reputation in its own mark "GAYDAR" by spending �300,000 on advertising and promoting the brand worldwide and US$250,000 promoting the domain name in the United States. As previously stated, the popularity of the Respondent�s brand is evidenced by the fact that the website at "" is ranked at number 753 by traffic ranking and "" is ranked at 8,678. The Respondent submits that the Complainant did not use the domain name until the Respondent had already built up its reputation in the "GAYDAR" mark and domain name and is now attempting to attract financial gain for itself by riding on the success of the Respondent.
For the reasons set out above the Respondent submits that the domain name was not registered and is not being used in bad faith. The Complainant has not filed any evidence to support its claim in this regard, but has simply made bald statements which it cannot substantiate. In addition therefore, the Respondent asks the Panel to make a finding of reverse domain name hijacking in accordance with paragraph 15 (e) of the Rules.
6. Discussion and Findings
According to Paragraph 15(a) of the Rules, the Panel shall decide a Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
1) 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; and
2) that the Respondent has no rights or legitimate interests in respect of the domain name; and
3) that the domain name has been registered and is being used in bad faith
It is clear from the cited wording of the Policy, and from the preparatory drafts by WIPO that lead to the present Policy, that the UDRP procedure has a narrow scope and is only designed to deal with abusive registration of domain names.
This particular case seems to fall out of the scope of the Policy.
It is not disputed that Complainant registered and started using the domain name and in May 1998, and through this use acquired trademark rights to the mark GAYDAR at least in the USA. The mark was applied for in February 2000 and in September 2002 was registered as trademark with the USPTO. Therefore, for the purpose of Para 4(a)(i) of the Policy, the Panel is satisfied that the Complainant has statutory rights.
However, it has not been demonstrated to what extent the name was used globally and in particular in the country of residence of the Respondent, UK. It has thus not been demonstrated to what extent Complainant had established common law rights to the trade mark in the UK (or other jurisdictions) at the time when the contested domain name was registered in March 2000, or to what extent Respondent otherwise knew or should have known of the existence of Complainant and his activities.
Further, Respondent registered the domain name in May 1999, and apparently started using it shortly after. Respondent has also obtained several other domain names containing the second or third level domain GAYDAR. Respondent later filed applications to register and obtained registrations of the trademark GAYDAR in the EU and Australia. The Panel has not been presented with any evidence showing that Complainant has challenged these registrations.
Although the Respondent did not have registered rights to the mark GAYDAR at the time the contested domain name was registered, the Panel finds that at the time of the commencement of this dispute, the parties had homonymous trademark rights to the mark GAYDAR, and that Respondent well before this point in time had established bona fide use of the contested domain name.
The Panel must therefore conclude, that although the contested domain name is confusingly similar to the trademark in which complainant has rights, the Respondent has concurrent rights and legitimate interests in respect of the domain name. Further it has not been proven or otherwise established that Respondent registered and is using the domain name in bad faith.
The Respondent has claimed that this is a case of reverse domain name hijacking. The Panel disagrees with this claim. Although the Panel has found that the Complaint shall be dismissed, the Panel has no reason to believe that the Complaint was filed in bad faith.
7. Decision
For all the foregoing reasons, the Complaint is denied.
Knud Wallberg
Sole Panelist
Dated: April 30, 2003
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