WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
eCrush, Inc. v. M.H. Cho
Case No. D2006-0339
1. The Parties
The Complainant is eCrush, Inc., of Chicago, Illinois, United States of America, represented by Hinckley, Allen & Snyder, LLP, United States of America.
The Respondent is M.H. Cho, Kyongnam, Republic of Korea.
2. The Domain Name and Registrar
The disputed domain name is registered with N, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 17, 2006. On March 17,�2006, the Center transmitted by email to N, Inc. a request for registrar verification in connection with the domain name at issue. On April�3,�2006, N, Inc. 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 April 3, 2006, in accordance with the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), paragraph 11, the Center informed the Complainant that absent an agreement by the parties regarding language, the administrative proceeding should be in the language of the domain name registration agreement, which here is Korean. The Complainant responded with numerous reasons to accept the Complaint in English on April�9,�2006. The Center notified the Parties that the Complaint would initially be accepted in English, reserving the ultimate decision for the Panel, and allowing the parties to submit documents in either English or in Korean. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “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�11,�2006. In accordance with the Rules, paragraph 5(a), the due date for Response was May�1,�2006.
On the Respondent’s request, in view of Complainant’s approval, the Center extended the Response due date until May 15, 2006. However, the Respondent did not file any response. Accordingly, the Center provided notice of the Respondent’s default on May�17,�2006.
The Center appointed Thomas P. Pinansky as the sole panelist in this matter on June�20,�2006. 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
The Complainant is an entertainment and social introduction network for teenagers and young adults which has been in operation since 1999 and to date, has millions of registered users. The Complainant’s business comprises four websites – “”, “”, “” and “”.
ESPIN THE BOTTLE is a registered service mark in the United States of America (Reg. No. 2,635,078 dated October 15, 2002). The Complainant has spent substantial time, effort and money advertising and promoting ESPIN THE BOTTLE. The domain name was registered on November�20,�1998. ESPIN THE BOTTLE mark has been prominently featured on eCrush’s websites since April 1999.
The Complainant conducts its business solely on-line and Internet is its only source of business.
On October 30, 2000, the Respondent registered , a portal site that provides hyperlinks to several third party websites that offer or advertise competing social relationship and online dating services and triggers various pop-up and pop-under advertisements.
5. Parties’ Contentions
A. Complainant
The Complainant asserts, inter alia, as follows:
The domain name is confusingly similar to the Complainant’s ESPIN THE BOTTLE registered mark and the Complainant’s domain name.
The term “espin” as comprising the Complainant’s mark is a fanciful, made up term and is a play on the word “spin” in the expression “spin the bottle”. The term “espin” in the Complainant’s mark is the dominant portion of the mark “espin the bottle” as it is a fanciful term and is the first word in the mark. Fanciful terms such as “espin” are stronger than arbitrary terms on the distinctiveness scale for the strength of marks.
The Respondent’s domain name incorporates the dominant and fanciful portion of the Complainant’s trademark – ESPIN – in its entirety and merely omits the words “the bottle”.
Omission of the terms “the bottle” makes nonsensical and can be characterized as “typosquatting”. The Respondent’s domain name is confusingly similar to the Complainant’s “espin the bottle” registered mark.
The Respondent has no rights or legitimate interests with respect to the Complainant’s registered mark ESPIN THE BOTTLE or the domain name.
The domain name does not comprise the legal name of the Respondent or a name that is otherwise commonly used to identify the Respondent.
The Respondent did not, prior to notice of this dispute, use the domain name or trademark corresponding to the domain name, in connection with a bona fide offering of goods or services.
The Respondent has not made a bona fide non-commercial or fair use of the domain name.
The Respondent is using the domain name to divert Internet traffic to its portal website that provides hyperlinks to websites of the Complainant’s competitors or websites which provide advertisements for or links to the Complainant’s competitors.
The Complainant has not authorized, licensed or otherwise permitted the Respondent to apply for or use any domain name comprising or incorporating the Complainant’s registered mark ESPIN THE BOTTLE or any variation thereof containing the dominant feature ESPIN or any domain name confusingly similar thereto.
The Respondent registered and is using the domain name in bad faith primarily for the purpose of intentionally attracting, for commercial gain, Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website or of a product or service on the Respondent’s website.
The Respondent’s domain name comprises a dominant portion of the Complainant’s registered trademark ESPIN THE BOTTLE and the Complainant’s domain name. The Respondent is using such domain name in connection with its “www.” portal website.
At the Respondent’s “www.” website, web users looking for the Complainant’s on-line dating and introduction services are faced with hyperlinks to several third party websites that offer competing on-line dating and social introduction services and several pop-up and pop-under advertisements.
Upon information and belief, the Respondent is receiving a commission or pay-per-click fee every time an Internet user is directed to the third party websites for which the Respondent provides links to on its website.
The Respondent’s unauthorized and unapproved redirection of web users searching for the Complainant’s ESPIN THE BOTTLE on-line dating services is solely for the purpose of achieving commercial gain.
The Respondent’s domain name consists solely of the dominant and fanciful portion of the Complainant’s registered mark – ESPIN – which term is nonsensical outside of the context of “spin the bottle” while the domain name website provides links to the Complainant’s competitors. It is reasonable to infer that the Respondent had actual knowledge of the Complainants’ rights in its ESPIN THE BOTTLE registered mark when it registered its domain name.
Also, “typosquatting” or registering a domain name that is a nonsensical word or adds or subtracts letters or words from a mark in which a party has rights is often evidence of bad-faith registration and use.
The Respondent has registered and is using the domain name in bad faith.
B. Respondent
The Respondent did not reply to the Complainant’s contentions by Response due date.
The Center received an electronic communication in Korean from the Respondent on June�29, 2006 – 45 days after the extended deadline for a response. The Respondent did not address any substantive matter regarding the Complaint but gave reasons for not being able to meet the deadline and stated that a response would be sent within a few days with evidence that the Complainant was making false claims.
Following this e-mail, no other communication was received from the Respondent.
�
6. Discussion and Findings
A. Selection of Language
The Complaint was filed in the English language. It is noted that the language of the registration agreement for the domain name is Korean, however the Complainant asserts that English should be the language of the proceeding.
According to paragraph 11 of the Rules, the language of the administrative proceeding shall be the language of the registration agreement unless the Panel decides otherwise. The spirit of paragraph 11 is to ensure fairness in the selection of language by giving full consideration to the parties’ level of comfort with each language, the expenses to be incurred and possibility of delay in the proceeding in the event translations are required and other relevant factors.
In the present case, the registration agreement for the domain name was made in the Korean language. However, it is apparent from the fact that the website with the disputed domain name is used by the Respondent is in English, and that the Respondent has sufficient ability to communicate in the English language.
The Complainant has requested that the Language of Proceeding be English and has provided supported arguments as to why the proceeding should be conducted in English. In view not to unduly delay the proceeding, in consideration of the above circumstances and in the interest of fairness to both parties, the Panel decides, under paragraph 11 of the Rules, that (i) English shall be the language of the administrative proceeding in this case, but to the extent the Respondent has submitted any documents or assertions in Korean, such documents or assertions have been considered by the Panel. The Respondent did not file a formal response to the Complainant’s contentions in any language. However, the Korean language document submitted, the Respondent’s e-mail dated June�29,�2006, has been reviewed by the Panel. See Groupe Industriel Marcel Dassault, Dassault Aviation v. Mr. Minwoo Park, WIPO Case No. D2003-0989.
B. Substantive Elements of the Policy
Paragraph�15(a) of the Rules instructs the Panel to decide the Complaint on the grounds of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Moreover, under paragraph�14(b) of the Rules, it is established that: “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.”
In light of the above, the Panel may draw such inferences from the Respondent’s failure to comply with the Rules as he considers appropriate (see Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009).
Under paragraph�4(a) of the Policy, the Complainant must prove each of the following:
(i) the domain name is identical or confusingly similar to the Complainant’s trademark or service mark;
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
C. Identical or Confusingly Similar
The Complainant has registered ESPIN THE BOTTLE as a service mark in the United States of America in connection with its on-line dating service as well as three other websites and has made continuous use of the mark.
The domain name omits “the bottle” from the Complainant’s mark, creating a nonsensical word, as the link between the play on the phrase “spin the bottle” and the characteristics of the service provided – on-line dating – is severed.
The domain name incorporates the dominant feature of the Complainant’s mark and is in the Panel’s view confusingly similar to the Complainant’s mark (see Olympus USA, Inc., Olympus America, Inc., and Olympus Optical Co., Ltd v. World Photo Video and Imaging Corp., WIPO Case No. D2001-1464.
Therefore, the Panel finds that the domain name is confusingly similar to the Complainant’s mark pursuant to paragraph 4(a)(i) of the Policy.
D. Rights or Legitimate Interests
According to paragraph�4(a)(ii) of the Policy, the Complainant must prove that the Respondent has no rights or legitimate interests in the domain name. In connection with the burden of proof, several WIPO UDRP decisions have held that “once a complainant establishes a prima facie evidence showing that none of the three circumstances establishing legitimate interests or rights applies, the burden of production on this factor shifts to the Respondent to rebut the showing” (see among others, Universal City Studios, Inc. v. David Burns and Adam-12 Dot Com, WIPO Case No. D2001-0784; see also International Hospitality Management-IHM S.p.A. v. Enrico Callegari Ecostudio, WIPO Case No. D2002-0683).
The Complainant has asserted that the Respondent has no relationship with or authorization from the Complainant to use its marks; the Panel notes that there is nothing in the record to suggest that the Respondent has been commonly known by the domain name; the Panel finds that the use of the domain is not fair or noncommercial as the website with the domain is used to offer competing services to the Complainant’s services.
The Respondent has not submitted a proper response. Therefore, the Respondent has failed to invoke any circumstance that could have demonstrated any rights or legitimate interests in the domain name under paragraph�4(c) of the Policy.
Accordingly the Panel holds that the Respondent has no rights or legitimate interests in the domain name pursuant to paragraph 4(b) of the Policy.
E. Registered and Used in Bad Faith
The Complainant contends that the Respondent registered and is using the domain name in bad faith in violation of paragraph 4(a)(iii) of the Policy. Paragraph 4(b) of the Policy sets forth four nonexclusive criteria for a complainant to show bad faith registration and use of domain names. One such criteria which indicates bad faith, listed under paragraph 4(b)(iv), includes “by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your web site or location”. As set forth above, the Complainant contends that the Respondent has violated paragraph 4(b)(iv) of the Policy, thus establishing bad faith.
The Panel finds that the Complainant has adequately supported the inference that the Respondent’s actions satisfy the requirement of Paragraph 4(b)(iv). The Respondent is, in using the domain name, diverting Internet users to the Respondent’s website offering competing services to the Complainant’s services. The mere fact of diverting users in this misleading manner is evidence of bad faith See Big Dog Holding, Inc. v. Day, NAF Claim No. FA 93554 (March 9, 2000).
It may be inferred from the nature of the Respondent’s domain name website – a portal site that leads to various services similar to those provided by the Complainant – that the Respondent was aware of the Complainant’s mark.
The conduct described above falls squarely within paragraph 4(b)(iv) of the Policy and accordingly the Panel concludes that the Complainant has proven bad faith in registration and use on the part of the Respondent.
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and paragraph 15 of the Rules, the Panel orders that the domain name , be transferred to the Complainant.
Thomas P. Pinansky
Sole Panelist
Dated: July 7, 2006
Full & Egal Universal Law Academy