The Complainant is Can I Do Better Internet Corp. of White Rock, British Columbia, Canada, represented by Saper Law Offices, United States of America.
The Respondent is Blastapplications of Plainview, New York, United States of America, represented by New England Patent & Trademark, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, Inc (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 11, 2011. On January 11, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 12, 2011, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 January 18, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was February 7, 2011. The Response was filed with the Center on February 7, 2011.
On February 7, 2011 the Complainant advised the Center that it wished to make a supplemental filing “to clarify some issues and to correct some misleading information” contained in the Response. By email dated February 9, 2011 the Respondent objected to any supplemental filing by the Complainant, and further requested that “if the Panel allows Complainant to submit a supplemental filing, Respondent requests the opportunity to respond to any supplemental filing with a supplemental filing of its own.” On February 17, 2011 the Complainant submitted by email a supplemental filing, including various exhibits.
The Center appointed David J.A. Cairns as the sole panelist in this matter on February 22, 2011. 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 domain name was registered on May 27, 2007 by “Jon Walker”. On October 7, 2008 the Complainant adopted its current name. On February 24, 2011 the Panel confirmed from a WhoIs search that the domain name is owned by the Complainant, with Jon Walker being the administrative and technical contact.
The disputed domain name was registered on June 14, 2004 by “Craig Agranoff”. By means of an agreement made final on February 10, 2010 between Craig Aranoff as Seller and the Respondent as Buyer, the Respondent acquired various assets including the disputed domain name.
The Respondent is the owner of United States registered trademark Nº 3,872,790 for the standard character mark CANDOBETTER in relation to Internet-based dating, social introduction and social networking services. The application for registration was filed on March 24, 2010, and the registration date is November 9, 2010. The United States Patent and Trademark Office (“USPTO”) records a first use date of June 28, 2004, and a first use in commerce of January 20, 2009.
The Complainant sent a cease and desist letter to the Respondent on March 25, 2010, that was received on March 27, 2010. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is identical and confusingly similar to a service mark to which the Complainant has rights. The Complainant states that it has established common law rights in the service mark CANIDOBETTER.COM through use in commerce and promotional efforts, and as a result has established goodwill and a substantial business reputation in the service mark. It states that it launched its website “www.” on November 18, 2008, and that since the launch of its website its service mark has been used continuously in interstate commerce to provide a social networking website. In the Complaint the Complainant lists the Internet and traditional media outlets where it has promoted its service mark internationally. The Complainant states that its service mark is different from the disputed domain name only in the Respondent’s removal of the letter “i”. It states that the Respondent is using the disputed domain name for a website which is virtually indistinguishable from the Complainant’s website. Both websites give users the same three choices to select when voting on side by side user-uploaded photographs, and both websites have the same overall functionality, purpose and design. The Complainant states that the disputed domain name has caused confusion, is deceptive and is likely to continue causing mistake and deception as to the source and origin for the services.
The Complainant states that the Respondent has no rights or legitimate interests in the disputed domain name. It states that it has never licensed or otherwise permitted the Respondent to use any domain name incorporating the Complainant’s service mark and that there is no relationship whatsoever between the Complainant and the Respondent. It states that the Respondent’s use of the disputed domain name is not in connection with a bona fide offering of goods or services. Furthermore, the Respondent “is not making a legitimate commercial, noncommercial or fair use of the Complainant’s service mark”. The Complainant states that only recently, in March 2010, did the Respondent relaunch the website at the disputed domain name as a social networking website, copying the Complainant’s website in functionality, purpose and design. Prior to that time, the Respondent had used the disputed domain name for six years in a capacity that was completely unrelated to the Complainant’s services.
The Complainant also alleges that the disputed domain name is being used in bad faith. It says that after six years of using the disputed domain name in a manner completely unrelated to the Complainant’s services, the Respondent’s website was relaunched in bad faith earlier last year in a form virtually identical to the Complainant’s website. The Complainant states that this was a deliberate attempt by the Respondent to profit from diverting users to the Respondent’s website by causing mistake or deception as to the source of origin of the services, and intentionally disrupting the Complainant’s business. The Complainant also refers to promotional efforts and media attention drawing attention to the disputed domain name, confusing users and diverting those users from the Complainant’s established website. The Complainant states that the Respondent was obviously aware of the Complainant’s service mark and website when it relaunched the disputed domain name. The existing similarities are not coincidental. Further evidence of bad faith is the Respondent’s failure to respond, in all but the most cursory way, to the cease-and-desist letter sent by the Complainant on March 25, 2010, or to respond at all to the Complainant’s repeated attempts to make contact since then.
In its supplemental filing the Complainant clarifies the chain of ownership of the domain name and provides further evidence of the date of the first use of the Complainant’s website and earlier promotional efforts in relation to its service mark, including evidence of its own internal development phase. Finally, the Complainant states “the Respondent’s trademark registration is subject to cancellation by Complainant due to Complainant’s prior use dates. Therefore no weight should be placed on Respondent’s trademark registration”.
The Complainant requests that the disputed domain name be transferred to the Complainant. B. Respondent
The Respondent states that the Complainant has not established any rights to the domain name , any rights to the mark CANIDOBETTER.COM or any rights to the current design of the website. The Respondent accepts that the disputed domain name is “highly similar” to the Complainant’s domain name, and that they are only separated by the letter “i” in their respective wording. The Respondent also accepts they have a similar layout design, and that both websites act as a social networking website where registered users view side by side photographs of couples. However, it states that the Complainant has failed to establish any rights to its domain name, or to its service mark, or to the current design layout. It refers to inadequacies in the evidence presented by the Complainant to establish a chain of ownership from the original domain name registrant to the Complainant.
The Respondent also states that the Complainant has not established any common law rights to the service mark CANIDOBETTER.COM. It states that the “Complainant’s evidence shows virtually no public exposure or publication of the mark”, alleging that there is no evidence that the media outlets referred to by the Complainant broadcast, transmitted, published or otherwise publicly disseminated information about the Complainant’s domain name. The Complainant states that of the 61 media outlets the Complainant alleges to have promoted its domain name, 43 of the 61 are radio stations, to which the Complainant has largely provided only its own emails. There is no evidence that most of the Complainant’s emails were ever received, opened, read or answered by those radio stations.
The Respondent also states that the Complainant has not established any ownership or priority in the design layout of the website, and refers to evidence on this issue. The Respondent also submits evidence that the disputed domain name was used for a live website from February 28, 2009. The Respondent states that the Complainant has failed to establish that it has ownership and priority rights to the domain name, service mark or layout.
The Respondent also states that it has superior rights and legitimate interests in the disputed domain name, as well as the service mark CANDOBETTER, and the design layout of website hosted at the disputed domain name prior to the alleged launch date of “www.” website and prior to notice of this dispute. The Respondent states that the Complainant has provided no evidence to support its allegation that the Respondent knew or should have known of the Complainant’s website, or any evidence of contact with the Respondent or previous owner of the disputed domain name prior to March 27, 2010. The Respondent states that before it received any knowledge of the Complainant’s service mark the Respondent had prepared to use and used its website continuously in interstate commerce since its launch in connection with the bona fide offering of social networking website. The Respondent states that the disputed domain name was registered on June 14, 2004, and submits a copy of the legal agreement transferring ownership of the disputed domain name from its original purchaser to the Respondent.
The Respondent also submits evidence of its superior United States federal trademark right to CANDOBETTER for use in connection with Internet based dating, social introduction and networking services. It states that its federal trademark application was filed prior to notice of this dispute. Conversely it notes that the Complainant does not refer to any trademark registration. In addition, the Respondent states that it has established rights in the disputed domain name through use in commerce and promotional efforts that precede or are concurrent with the Complainant’s alleged first use of its domain name.
The Respondent also submits evidence of the development of its website at the disputed domain name, and notes that none of these emails mention the Complainant or the Complainant’s service mark. The Respondent also refers to “several well-known and highly-visited third party websites” that have published the disputed domain name along with screen shots of its website design.
The Respondent states that the Complainant has not established its allegation that the Respondent copied the layout design of the Complainant’s website. The Respondent states that it has submitted evidence of the development phase of the layout design for the disputed domain name as early as October 8, 2008, which is more than a month before the Complainant’s alleged launch date of its website. The Respondent states that its website was being developed as early as October 8, 2008 and available to the public by at least early 2009. It states that the Complainant has not established and it cannot be inferred that the Respondent knowingly or intentionally designed the layout of the website at the disputed domain name to confuse or divert users from the Complainant’s website.
The Respondent also states that the disputed domain name is not being used by the Respondent in bad faith, and states that the Complainant has failed to establish that the disputed domain name was registered or acquired primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the Complainant. It states that the disputed domain name was first registered on June 14, 2004, a full three years before the registration of the Complainant’s domain name, and therefore cannot have been registered in bad faith because the registrant could not have contemplated the Complainant’s non-existent right. The Respondent further states that the Complainant has not shown that the disputed domain name was acquired primarily by the Respondent for the purpose of selling, renting or otherwise transferring the domain name registration to the Complainant. It further states that the Complainant has provided no evidence to support its allegation that the Respondent knew or should have known of the Complainant’s website. The Complainant has not provided any evidence of contact with the Respondent or the previous owner of the disputed domain name prior to March 27, 2010. The Complainant never filed a United States or Canadian trademark application, and so any trademark search would not have revealed the Complainant’s rights. Further, the Respondent alleges that the Complainant evidence shows virtually no public exposure, broadcast, transmission, publication or any sort of dissemination of the Complainant’s trademark or its domain name other than a small New Zealand blog prior to March 27, 2010.
The Respondent further states that the Complainant has failed to establish that the disputed domain name was registered in order to prevent the Complainant from reflecting the mark in a corresponding domain name. It has also failed to establish that the disputed domain name was registered by the Respondent primarily to disrupt the Complainant’s business. Further, the Complainant also failed to establish that the disputed domain name was registered by the Respondent in an intentional attempt to attract for commercial gain Internet users to the domain name by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship, affiliation or endorsement of the Respondent’s website or location of a service on the Respondent’s website or location. In addition, the Complainant has provided no evidence in promotional media material submitted that hint, mention or even implies the existence of any confusion between the Complainant’s website and the Respondent’s website, or even any comparison of the two domain names. Finally, it states that the Complainant alleges a confusion among users and a diversion of users without providing any evidence of any confusion, diversion or any other comparison. 6. Discussion and Findings
A preliminary procedural issue is the admissibility of the supplemental filing by the Complainant, for which there is no provision in the Rules and to which the Respondent objects. This Panel considers that it has a discretion in this regard, and that it is appropriate to consider the circumstances of each case before deciding whether to admit unsolicited additional submissions (see Delikomat Betriebsverpflegung Gesellschaft m.b.H. v. Alexander Lehner, WIPO Case No. D2001-1447). In the present instance the Panel has decided to accept the unsolicited supplemental filing of the Complainant for the following reasons: (i) with one exception, the supplemental filing does not add any new element to the case but is directed to provide the evidential support for allegations in the Complaint; (ii) the supplemental filing does not add any new legal argument; (iii) the new element added by the supplemental filing is that the Respondent’s trademark registration is subject to cancellation application by the Complainant. For the reasons set out below, the Panel cannot make any finding on the basis of this new element that accordingly does not affect this decision; and (iv) the Panel is satisfied that the acceptance of this supplementary filing is consistent with its obligation in paragraph 10(b) of the Rules to ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case. The Panel notes that the Respondent has requested an opportunity to make a further supplemental filing in response, but in all the circumstances of this case the Panel decided that this was not necessary.
Turning to the merits, the Panel is required to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems appropriate.
Paragraph 4(a) of the Policy requires the Complainant to prove all three of the following elements to be entitled to the relief sought: (i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) that the disputed domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy elaborates some circumstances that shall be evidence of the registration and use of a domain name in bad faith. Paragraph 4(c) sets out various circumstances which, if found by the Panel to be proved based on the evaluation of all the evidence presented, shall demonstrate that the Respondent has rights or legitimate interests in the disputed domain name. A. Identical or Confusingly Similar
The Complainant alleges that it has common law rights in the service mark CANIDOBETTER.COM, based on use in commerce and promotional efforts.
The Panel notes that uunregistered trademark rights can support a claim under the Policy (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 1.7). Further, the Complainant is based in Canada, and Canadian trademark law recognizes and protects unregistered trademarks and trade names as a representation of an economic asset, namely the goodwill of a business. This goodwill includes the “advantages” of a trademark or tradename (particularly its reputation and favourable consumer recognition) that “share a common propensity to increase the sales of the product bearing the trademark” (see generally, David J.A. Cairns the Remedies for Trademark Infringement, Carswell, Ontario, 1988, at pages 4-5). The Complainant has promoted its service mark in the United States, where the Respondent is based, and the United States also recognizes common law trademarks.
The Respondent alleges that the Complainant has failed to establish any rights in the CANIDOBETTER.COM service mark. The Respondent argues that the Complainant has not demonstrated ownership of the domain name, and does not have any common law rights in the CANIDOBETTER.COM service mark. These submissions are largely based on evidential deficiencies in the Complaint that were addressed in the Complainant’s supplemental filing. The Panel accepts that the Complainant does in fact own the domain name, and that there has been sufficient use and promotion of this domain name to establish common law rights in CANIDOBETTER.COM.
The disputed domain name is not identical with the CANIDOBETTER.COM unregistered trademark, and therefore the Panel turns to consider confusing similarity. The similarity of the trademark and the domain name depends on many factors, including “. . . the relative distinctiveness of the trademark and the non-trademark elements of the domain name . . . (See Pfizer Inc v. The Magic Islands,WIPO Case No. D2003-0870).
The Panel considers that the disputed domain name is confusingly similar to the CANIDOBETTER.COM mark for the following reasons: (i) CANIDOBETTER.COM is not descriptive of any product or service and has a high degree of inherent distinctiveness; (ii) The disputed domain name differs from the CANIDOBETTER.COM trademark in the omission of the letter “i” which has little verbal or visual effect on the distinctiveness of the service mark; (iii) The Respondent in fact accepts that the disputed domain name is “highly similar” to the Complainant’s domain name, and that the websites at these domain names have similar design layouts.
For these reasons, the Panel finds that the disputed domain name is confusingly similar to the CANIDOBETTER.COM service mark, and therefore the first element of the Policy is satisfied. B. Rights or Legitimate Interests
The Respondent has a United States federal trademark registration for the CANDOBETTER trademark.1 This registered trademark is identical to the second level portion of the disputed domain name. In other words, the disputed domain name differs from the Respondent’s registered trademark only in the addition of the functional generic top-level domain suffix “.com”. This registered trademark creates a right of use in commerce in the United States, and use in commerce includes use in a domain name. Accordingly, the Respondent has rights or legitimate interests in the disputed domain name within the meaning of the Policy, derived from its United States trademark registration.
The Complainant in its supplemental filing submitted that “the Respondent’s trademark registration is subject to cancellation by Complainant due to Complainant’s prior use dates. Therefore no weight should be placed on Respondent’s trademark registration.” However, the Panel cannot disregard the Respondent’s current legal rights on the basis that they have been impugned in another forum, and nor can it make any finding as to how that other forum is likely to resolve the proceedings before it.
Accordingly, the Panel finds that it has not been demonstrated by the Complainant in these UDRP proceedings that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
In any event, the Panel notes that there has been considerable argument by the Parties related to the similarities of their business concepts and the design layout of their respective websites. These similarities might raise complex legal and commercial questions for the Parties, but their resolution is outside the scope of this proceeding. The Policy and Rules are designed to resolve questions of cybersquatting and not competing claims between trademark and copyright owners, which this Panel considers must be determined in other forums. C. Registered and Used in Bad Faith
In light of its decision on the second element of the Policy, the Panel is not required to address this element. 7. Decision
For all the foregoing reasons, the Complaint is denied.
David J.A. Cairns
Sole Panelist
Dated: March 8, 2011
1 The trademark registration was applied for and granted by the USPTO prior to filing of the present UDRP proceedings.
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