WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
M, LP v. Bill Zag and NWLAWS.ORG
Case No. D2004-0230
1. The Parties
The Complainant is M, LP, a corporation organized and existing under the laws of the State of Delaware and having its principal place of business in Richardson, Texas, United States of America.
The Respondent is Bill Zag and NWLAWS.ORG, both giving the same address in Portland, Oregon, United States of America (hereinafter referred to jointly and severally as "Respondent").
2. The Domain Names and Registrar
The disputed domain names, , , , , , , , , are registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 24, 2004. On March 25, 2004, the Center transmitted by email to eNom a request for registrar verification in connection with the domain names at issue. On March 25, 2004, eNom 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. On March 25, 2004, the Center received an email from Respondent. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on April 2, 2004. The Center verified that the Complaint together with the amendment to 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 April 5, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was April 25, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 26, 2004.
The Center appointed M. Scott Donahey as the Sole Panelist in this matter on May 24, 2004. 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
Complainant registered the service mark MATCH.COM with the United States Patent and Trademark Office ("USPTO") on August 19, 1997, showing a first use in commerce on March 10, 1995. Complaint, Annex E. Complainant also has registrations issued or applications pending in other jurisdictions. Complaint, Annex F.
Complainant operates an Internet dating and introduction services business. Complainant has more than eight million members in 230 countries. Complainant uses the domain name in connection with the rendering of its services. See Complaint, Annex G. Since 1995, Complainant has received in excess of US$200 million as a result of the provision of its services. Complainant expends millions of dollars per year in the advertising and promotion of its services and of its MATCH.COM mark. Complaint's services may be accessed through more than twenty-five regional sites in 18 different languages. See Complaint, Annex H.
Respondent registered the domain names at issue between August 4, 2002, and September 11, 2003. Complaint, Annex A. One of the domain names at issue, , resolves to a website located at "," at which site online introduction and dating services are offered. Complaint, Annex K. The remaining domain names are offered for sale to the general public on the Internet. Complaint, Annex I. The amounts requested for a transfer of the registration of the domain names at issue are clearly in excess of the cost of their registration. Id.
Respondent owns other domain names which it is offering for sale, including , , , , and , which domain names Complainant contends are identical or confusingly similar to well known trademarks or service marks of third parties.
5. Parties' Contentions
A. Complainant
Complainant contends that the domain names at issue are confusingly similar to Complainant's registered mark, that Respondent has no rights or legitimate interests in respect of the domain names, and that the domain names have been registered and are being used in bad faith.
B. Respondent
The Respondent did not submit a formal reply to the Complainant's contentions. However on March 25, 2004, the Center received the following email from Respondent:
"Dear [Attorney for Complainant],
We strongly believe you are abusing WIPO guidelines by trying to hijack generic dictionary English domain names. These Combination domains are not similar to your trademark nor they are [sic] misleading or confusing to consumers. This is a clear abuse and harassment from your part [sic].
Very truly yours,
Bill Zag"
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: "A Panel shall 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 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.
A. Identical or Confusingly Similar
Panels have been of two views as to what constitutes "confusing similarity." Some panels favor a subjective test, seeking to determine whether an Internet user confronted with the domain name at issue would likely be confused as to the source or sponsorship of the website to which the domain name resolves or to the goods or services offered at that website. See, e.g., Red or Dead Limited v. Kid Pty Ltd. (aka Kid Enterprises Pty Ltd.), WIPO Case No. D2000-0280). Other panels follow the objective test, which holds that a domain name which includes the mark or a confusingly similar approximation thereof is confusingly similar, regardless of the other terms in the domain name. This test is perhaps best enunciated in the case of Wal-Mart Stores Inc. v. Richard MacLeod, d/b/a For Sale, WIPO Case No. D2000-0662.
It is the Panel's view that the better view is the application of the objective test and if a domain name includes the registered mark within the domain name, then the domain name at issue is confusingly similar to the registered mark. In the present case, the mark MATCH.COM is contained in the domain names at issue, and the Panel finds that the domain names at issue are confusingly similar to Complainant's marks.
B. Rights or Legitimate Interests
Complainant has alleged that Respondent has no rights or legitimate interests in respect of the domain names at issue. Respondent has failed to formally respond. Therefore the Panel is entitled to infer that Respondent has no rights or legitimate interests in respect of the domain names at issue. Parfums Christian Dior v. QTR Corporation, WIPO Case No. D2000-0023. However, in the present case the Panel elects to look beyond the failure to respond in accordance with the Policy and the Rules and to examine the facts as educed by Complainant and to analyze them under the purposes for which the Policy was adopted.
It is important that Panelists decide cases based on the very limited scope of the Policy. The Policy is designed to curb the abusive registration of domain names in the circumstances where the registrant is seeking to profit from and exploit the trademark of another. "The primary rule in relation to domain name registrations is `first come, first served.' The UDRP provides a narrow exception. It is not a per se breach of the UDRP to register the trademark of another as a domain name where the trademark is a generic word." Macmillan Publishers Limited, Macmillan Magazines Limited and HM Publishers Holdings Limited v. Telepathy, Inc, WIPO Case No. D2002-0658. The Policy was not intended to permit a party who elects to register as a trademark or service mark a common word to bar all others from using the common word in combination with other common words, unless it is clear that the use involved is seeking to capitalize on the goodwill created by the mark holder. A simple search for the term "match" on the USPTO website turns up 1,889 registered marks which include the common word match, usually in combination with one or more other common words, most of which registrations predate that of Complainant.
In the present case, Respondent has registered nine domain names which contain the descriptive term and common English word "match" in combination with other common English words or numbers in the generic Top Level Domain (gTLD) .com. This Respondent is entitled to do. By registering the service mark MATCH.COM, Complainant cannot thereby preclude anyone else from ever registering the common term "match" in combination with other common words in the .com gTLD. So long as those domain names are used in their generic sense, rather than seeking to profit from the good will associated with Respondent's trademark, their registration and use would not violate the Policy. Therefore, the Panel finds that if Respondent has not used the domain names in bad faith, then Respondent has rights and legitimate interests in respect of the domain names at issue.
C. Registered and Used in Bad Faith
Respondent has registered nine domain names combining numbers (1800) or common English words ("flowers," "insure," "plastic surgery," "safe," "scholars," "schooling," "select," and "sonic") with the common English word "match" in the .com gTLD. Eight of the names have not been used to resolve to a website, but they have been offered for sale to the public on the Internet. "[S]elling a domain name is not per se prohibited by the ICANN Policy (nor is it illegal or even, in a capitalist system, ethically reprehensible). Selling of domain names is prohibited by the ICANN Policy only if the other elements of the ICANN Policy are also violated . . . ." Manchester Airport PLC v. Club Club Limited, WIPO Case No. D2000-0638 (emphasis in original). The registration of and offer to sell a domain name does not constitute bad faith unless the seller is attempting to capitalize on the trademark or service mark value inherent in the name by registering the name primarily for the purpose of selling it to the mark owner or its competitors. Allocation Network GmbH v. Steve Gregory, WIPO Case No. D2000-0016; Policy, paragraph 4(b)(i). Where the domain name registrant is not seeking to profit from the trademark value in a domain name, than a use or offer for sale is bona fide. Buhl Optical Co. v. M, Inc., WIPO Case No. D2000-1277. Indeed, the international media has heralded the sales prices realized for or the inherent value of generic domain names such as , , and .
It seems clear to this Panelist that , , , , , and do not remotely suggest an online dating service. It is conceivable that could suggest a telephonic dating service, that could suggest a dating service for the well-educated, or that could suggest an elite dating service. However, it is also possible that the names could be used in legitimate, non-competitive enterprises, such as being used in conjunction with putting academics with similar research interests in touch, or matching university programs to the interests and needs of students. It is only when the domain names are put to a use that seeks to profit from a mark holder's goodwill that the registration and use would be in bad faith.
In the present case, the Panel finds that none of the combinations registered by Respondent implicitly suggest Complainant's service mark and the services associated with that mark. Therefore the Panel finds that the offers to sell the eight domain names at issue are bona fide uses of the names. In the future, should the Respondent or any of the transferees attempt to use any of the domain names at issue in order to capitalize on the good will associated with Complainant's service mark, at that time Complainant would be able to bring a claim under the Policy based on the changed circumstances.
Complainant also contends and offers proof that the ninth domain name at issue, , is being used to resolve to a website that offers services directly competitive to those offered by Complainant. This is true; however the allegations as stated and the proof offered do not rise to a level sufficient to constitute bad faith under the Policy. Paragraph 4(b)(iv) of the Policy provides that it is bad faith if a registrant uses the domain name to intentionally attempt to attract Internet users to a website by creating a likelihood of confusion with the mark of another as to the source, sponsorship, affiliation, or endorsement of the website or product offered on the website, and this is done "for commercial gain." The allegation that commercial gain is involved is entirely lacking. Moreover, the print outs of the indicted website show that is not the case.
The "Sonic Singles" website to which resolves states "Now 100% Free!," "Join now for FREE!," "100% FREE DATING SITE," "SonicSingles offers 100% FREE features!," "Create a FREE profile . . .," "Upload your photos for FREE," "Browse all profiles for FREE," "Update your profile and photos for FREE," and "Contact other members via our internal mail system for FREE." Complaint, Annex K. There is no allegation that advertising revenues are derived from the site, nor is there any evidence in the print outs that any advertising is being conducted on the site. Id.
In summary, there is no evidence or allegations that the use of the domain name to resolve to the website has been done for commercial gain. Accordingly, the Panel finds that Complainant has failed to prove that Respondent has registered and is using the domain name in bad faith. In the future, should the domain name be used to resolve to a site offering services competitive to those of Complainant for the purpose of commercial gain, at that time Complainant would be able to bring a claim under the Policy based on changed circumstances.
Complainant also offers proof that Respondent has registered the trademarks of third parties in domain names such as , , , , and . It is alleged that this shows "a pattern of conduct" under paragraph 4(b)(ii). However, a "pattern of conduct" is only relevant where the domain name at issue has been registered "in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name." Policy, paragraph 4(b)(ii). That is not the case here, as Complainant owns the registration of the domain name corresponding to its service mark, MATCH.COM.
Complainant cites the case Stella D'oro Biscuit Co., Inc. v. The Patron Group, Inc., WIPO Case No. D2000-0012 for the proposition that the registration of trademarks of others for the purpose of selling the domain names for profit constitutes bad faith under the Policy. However, that case is distinguishable. In Stella D'oro the domain name at issue, , consisted of Complainant's famous mark alone (plus the gTLD suffix), which the Complainant contended "has no meaning or significance other than as a trademark identifying Stella D'oro's products and distinguishing them from those of competitors." Id., paragraph 4b. Also in the Stella D'oro case, the offer to sell the domain names was made not to the general public, but rather to the mark holders directly. This clearly comes within the purview of paragraph 4(b)(i) of the Policy. Finally the Complaint alleged that the fifty-seven other domain names were either "identical or virtually identical" to trademarks or service marks and that they had been registered to prevent the owner of the mark from reflecting the mark in a corresponding domain name. Stella D'oro, paragraph 4b. In the present case, Complainant made no such allegation, nor are the domain names cited "identical" or "virtually identical."
The Panel finds that the registrant of a common term or word as a trademark cannot preclude others from using that term in a domain name unless the registrant is attempting to profit from the goodwill associated with that mark. Complainant has failed to demonstrate that is the case here. If, in the future, the domain names at issue, or any of them, are used in such a way as to profit from the goodwill associated with Complainant's mark, Complainant may bring a Complaint to cancel or transfer the domain name(s) at that time.
D. Bad Faith Reverse Domain Name Hijacking
In an email addressed to counsel for Complainant and sent to the Center, Respondent alleges that Complainant is engaged in reverse domain name hijacking. However, Respondent has failed to follow the Rules and the Policy in asserting his right to such relief, so the Panel declines to consider what might be liberally interpreted to be a request for a declaration by the Panel under paragraph 15(e) of the Rules.
7. Decision
For all the foregoing reasons, the Complaint is denied.
M. Scott Donahey
Sole Panelist
Dated: June 2, 2004
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