Complainant is Cupid plc of Edinburgh, Scotland, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), internally represented.
Respondent is Domain Admin, Whois Privacy Corp of Nassau, New Providence, Bahamas. 2. The Domain Name and Registrar
The disputed domain name is registered with I Corp. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 13, 2014. On November 13, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 18, 2014, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on November 19, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was December 9, 2014. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on December 10, 2014.
The Center appointed Ross Carson as the sole panelist in this matter on December 16, 2014. 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 is the owner of Office for Harmonization in the Internal Market (“OHIM”) Registration No. 010090371 for the word mark BECOQUIN registered January 12, 2011, in relation to Goods and Services in Classes 009, 038, and 045. The Goods and Services in Class 045 are more particularly described as: “dating agency services; computer dating services; provision of dating agency services via the Internet; dating services provided through social networking; marriage partner introduction or dating services; video dating services; social escort agency services; social escorting; social and personal introduction agencies; personality profiling services; psychological profiling; legal services; security services for the protection of property and individuals; personal and social services rendered by others to meet the needs of individuals; information and advice relating to dating and relationships; consultancy services relating to personal appearance; information and advisory services relating to the aforesaid services”, a business in which Complainant is involved.
Complainant is also the owner of OHIM Registration No. 0101175073 for a graphic trademark comprised of the words BECOQUIN BY BENAUGHTY incorporated within a fanciful graphic representation of a heart with horns and a tail. The trademark was filed with OHIM on August 4, 2011. The trademark was opposed and subsequently registered on May 4, 2014. The trademark was applied for and registered in relation to Goods and Services in Class 045 identical to the Goods and Services particularly described immediately above in Class 045 in Complainant’s BECOQUIN trademark registration.
The disputed domain name was created on February 27, 2012. 5. Parties’ Contentions A. Complainant A.1. Identical or Confusingly Similar
Complainant has established that it is the owner of OHIM trademark registrations for the word mark BECOQUIN and the graphical trademark BECOQUIN BY BENAUGHTY particulars of which are provided in Section 4 immediately above. As shown in the copies of the registrations provided as an Annex to the Complaint, Complainant’s registered word mark for BECOQUIN was registered on January 12, 2011, more than a year before Respondent created the disputed domain name on February 27, 2012. Complainant’s graphical trademark BECOQUIN BY BENAUGHTY was registered on May 4, 2014.
Complainant submits that the disputed domain name is identical or confusingly similar to Complainant’s registered trademarks BECOQUIN and BECOQUIN BY BENAUGHTY in which the Complainant has rights.
Complainant submits that the disputed domain name incorporating Complainant’s BECOQUIN word mark and part of Complainant’s figurative BECOQUIN BY BENAUGHTY trade mark could cause confusion to consumers on the basis that the consumers would believe that the disputed domain name resolved to a website belonging to Complainant. A.2. Rights or Legitimate Interests
Complainant submits that Respondent has no rights or legitimate interests in the disputed domain name which clearly infringes the Complainant’s trade marks in the relevant classes of services.
Complainant submits that the disputed domain name resolves to a webpage which is a copy of Complainant’s webpage associated with Complainant’s BECOQUIN and BENAUGHTY trademarks. Complainant further submits that Respondent’s copied webpage falsely references that the content of Respondent’s webpage is copyrighted material of Frindr Ltd, which is a wholly owned subsidiary company of Complainant.
Complainant therefore submits that the disputed domain name was registered primarily for the purpose of confusing customers into believing that the disputed domain name is a genuine brand of Complainant, and therefore diverting Internet business of Complainant away from Complainant’s legitimate BECOQUIN and BENAUGHTY branded websites to that of Respondent. A.3. Registration in Bad Faith
Complainant submits that Respondent registered the disputed domain name in bad faith as the disputed domain name resolves to a webpage which is a copy of Complainant’s webpages associated with Complainant’s BECOQUIN and BENAUGHTY domain names. A screen shot of Respondent’s webpage associated with the disputed domain name, dated March 12, 2012, recovered from the Internet Archive Wayback Machine was attached as an Annex to the Complaint. The webpage included the international copyright marking identifying Findr Ltd as the proprietor of copyright of Respondent’s webpage. Findr Ltd was stated to be an affiliate of Cupid plc. An additional statement on the webpage to which the disputed domain name resolves states that BECOQUIN is a trademark of Cupid plc. A.4. Domain Name Used in Bad Faith
Complainant submits that Respondent is using the disputed domain name which is identical or confusingly similar to Complainant’s BECOQUIN and BECOQUIN BY BENAUGHTY trademarks in bad faith. The disputed domain name resolves to a webpage featuring Complainant’s figurative BECOQUIN BY BENAUGHTY trademark copied from Complainant’s webpage associated with its BECOQUIN and BENAUGHTY trademarks to support the initial confusion that the disputed domain name is Complainant’s domain name relating to Complainant’s services. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred:
(i) the disputed domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The fact that Respondent did not submit a Response does not automatically result in a decision in favor of Complainant. The failure of Respondent to file a Response results in the Panel drawing certain inferences from Complainant’s evidence. The Panel may accept all reasonable and supported allegations and inferences following there from in the Complaint as true. Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403. A. Identical or Confusingly Similar
Pursuant to paragraph 4(a)(i) of the Policy, Complainant must establish rights in a trademark and secondly must establish that the disputed domain name is identical to or confusingly similar to the trademark in which Complainant has rights.
Complainant is the owner of OHIM trademark registrations for the word mark BECOQUIN and the graphical trademark BECOQUIN BY BENAUGHTY in which the words appear as part of a fanciful graphic representation of a heart with horns and a tail particulars of which are provided in Section 4 above. As shown in the copies of the registrations provided as an Annex to the Complaint Complainant’s registered word mark for BECOQUIN was registered on January 12, 2011, more than a year before Respondent created the disputed domain name on February 27, 2012. Complainant’s graphical trademark BECOQUIN BY BENAUGHTY was registered on May 4, 2014. A review of the OHIM database shows that both of Complainant’s trademarks remained registered at the date of the filing of the Complaint. In addition, the OHIM database showed that Complainant’s graphical trademark BECOQUIN BY BENAUGHTY was applied for on August 4, 2011, and published for opposition on September 6, 2011, well before the disputed domain name was created on February 27, 2012.
The Panel finds that Complainant has established UDPR-relevant trademark rights and notes that its BECOQUIN word mark was registered well before the creation date of the disputed domain name. Complainant’s figurative trademark BECOQUIN BY BENAUGHTY was filed and advertised for opposition before the creation date of the disputed domain name on February 27, 2012. Complainant’s figurative trademark incorporates Complainant’s BECOQUIN word mark, which was registered prior to the creation date of the disputed domain name as a distinctive element. The disputed domain name incorporates Complainant’s trademark BECOQUIN in its entirety, adding only the geographical abbreviation “fr” and the generic Top-Level Domain (“gTLD”) suffix “.com”.
Many UDRP panels have found that domain names are confusingly similar to trademarks when the disputed domain name incorporates the trademark in its entirety. See eBay, Inc v. Progressive Life Awareness Network,WIPO Case No. D2001-0068 (finding that the domain name incorporated the complainant’s mark in its entirety and holding it to be confusingly similar to the complainant’s EBAY mark).
The letters “fr” in the disputed domain name are an abbreviation for “France”. The website associated with the disputed domain name is in the French language and is intended for use by French speaking Internet users. The use of the abbreviation “fr” in the disputed domain name does not serve to distinguish the disputed domain name from confusing similarity with Complainant’s BECOQUIN or BECOQUIN BY BENANAUGHTY trademarks but increases the likelihood of confusion by incorporating a reference to France, suggesting that the disputed domain name is the French version of Complainant’s services provided in association with its trademarks. Previous UDRP panels under the Policy have found confusing similarity when respondents have used the abbreviated country description “US” in association with a complainant’s trademark as part of a domain name. See, e.g.,Dr. Ing. H.c. F. Porsche AG v. yangyong / Domain Whols Protection Services, WIPO Case No.D2012-1058(transfer of ).
The inclusion of the gTLD suffix “.com” in the disputed domain name does not affect a finding of confusing similarity. Prior UDRP panels have repeatedly held that the specific top level of the domain name such as “.org”, “.net” or “.com” generally do not affect the domain name for the purpose of determining whether it is identical or confusingly similar (see Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525, holding that confusing similarity under the Policy is decided upon the inclusion of a trademark in the domain name; and Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429, finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
The Panel finds that Complainant has proven that the disputed domain name is confusingly similar to Complainant’s trademarks BECOQUIN and BECOQUIN BY BENAUGHTY. B. Rights or Legitimate Interests
Complainant filed as an Annex to the Complaint a series of screen shots of the webpages associated with the disputed domain name copied from the Internet Archive Wayback Machine. All the screen shots are substantially identical. The earliest screen shot is dated March 12, 2012, and the latest screen shot of the webpage is dated May 17, 2014. The screen shots show a webpage containing an invitation to join an online meeting place to meet others in your geographical area. The screen shots have the explicit look and feel of belonging to Complainant. The top left hand side of the webpage features a copy of Complainant’s BECOQUIN BY BENAUGHTY graphical trademark incorporating a representation of a heart having horns and a fanciful bull’s tail. Below Complainant’s graphical trademark is the representation of a seal with the words “Totally free for ladies” in the French language. Below the seal in larger print is the statement: “The place for successful meetings – now”, also in the French language. The middle of the page shows a lady and a man together. The right hand side of the webpage features the heading “Join us. It’s FREE”. Immediately below the invitation to a series of requests for personal information to be completed by the Internet user interested in joining including: man or woman, email address, nickname, city, postal code and date of birth. Immediately below the request for personal information is what appears to be a live link entitled “Commence!”.
The bottom of the webpages includes the following copyright and trademark information: “Copyright 2003-2012, Frindr ltd. Frindr ltd is a subsidiary of Cupid plc. Be Naughty is a trademark of Cupid plc.”
The earliest screen shot of a webpage associated with the disputed domain name is dated March 12, 2012, shortly after the creation date of the disputed domain name on February 27, 2012.
The Panel infers from the evidence submitted by Complainant that Complainant has made out a prima facie case that before any notice of the dispute, Respondent did not use or make any demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. Complainant has shown that the disputed domain name was created on February 27, 2012, and the webpage incorporating Complainant’s two trademarks was introduced on the Internet less than two weeks later on March 12, 2012. Complainant has also established that its BECOQUIN word mark was registered on January 12, 2011, more than one year prior to the creation date of the disputed domain name.
The Panel finds that Complainant has made a prima facie case that Respondent is not making a legitimate noncommercial use of the disputed domain name. Respondent is using the disputed domain name which is confusingly similar to Complainant’s BECOQUIN word mark and BECOQUIN BY BENAUGHTY graphical trademark registration to resolve to webpages which have every appearance to of being a webpage belonging to Complainant for the purpose of acquiring confidential personal information provided by Internet users mistakenly believing that they are providing such confidential information to Complainant for one of its online chat or dating services.
The Panel finds that Complainant has made a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name. It is difficult for a complainant to prove the negative that a respondent does not have any rights or legitimate interests in a domain name. Previous decisions under the UDRP have found it sufficient for a complainant to make a prima facie showing that a respondent does not have any rights or legitimate interests in a domain name. Once this showing is made, the evidentiary burden shifts to the respondent to demonstrate its rights or legitimate interests in the domain name. See Deutsche Telekom AG v. Britt Cordon,WIPO Case No. D2004-0487, where the panel stated “A number of WIPO cases have established that, by virtue of paragraph 4(c) of the Policy, once a Complainant establishes a prima facie case that none of the three circumstances establishing legitimate interests or rights applies, the burden of production on this factor shifts to the Respondent.”
In this case, Respondent was given the opportunity by way of reply to demonstrate any rights or legitimate interests in the disputed domain name pursuant to paragraph 4(c) of the Policy. However, Respondent did not file a Response nor avail itself of the benefits of paragraph 4(c) of the Policy.
The Panel finds that Complainant has proven on a balance of probabilities that Respondent does not have any rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
Pursuant to paragraph 4(a)(iii) of the Policy, Complainant must prove that the disputed domain name has been registered and is being used in bad faith. C.1. Registered in Bad Faith
Complainant has established that its BECOQUIN word mark was registered on January 12, 2011, more than one year prior to the creation date of the disputed domain name on February 27, 2012, as noted in Section 6.A above. Complainant is also the owner of the graphic trademark comprised of the words BECOQUIN BY BENAUGHTY associated with a fanciful graphic representation of a heart with horns and a tail. The trademark was filed with OHIM on August 4, 2011. The trademark was opposed and subsequently registered on May 4, 2014. Complainant stated in the Complaint that its graphic trademark was in use by Complainant prior to the date of creation of the domain name and a search on the Internet Archive Wayback Machine shows that Complainant’s BECOQUIN BY BENAUGHTY trademark does appear on the webpages associated with Complainant’s domain name prior to the time that Respondent substantially copied Complainant’s webpage and incorporated the content thereof into its webpage associated with the disputed domain name.
The Panel finds on a balance of probabilities that Respondent created the disputed domain name with knowledge of Complainant’s BECOQUIN word mark and graphical trademark BECOQUIN BY BE BENAUGHTY trademark rights with the intention to falsely and misleadingly trading on the goodwill associated with Complainant’s trademark rights, which constitutes registration of the disputed domain name in bad faith. C.2. Domain Name Used in Bad Faith
Under paragraph 4(b)(iv) of the Policy, inter alia, the following circumstances shall be evidence of the use and registration of a domain name in bad faith: by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s website 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 its website or location or of a product or service on its website or location.
For the reasons in Section 6.B above, the Panel finds that Respondent is not making a legitimate commercial use of the disputed domain name. Respondent is using the disputed domain name which is confusingly similar to Complainant’s BECOQUIN word mark and BECOQUIN BY BENAUGHTY graphical trademark registration to resolve to webpages which have every appearance of being a webpage belonging to Complainant for the purpose of acquiring confidential personal information provided by Internet users mistakenly believing that they are providing such confidential information to Complainant for one of its online chat or dating services. The Panel infers, on balance, that the unlawfully acquired confidential information is used by Respondent for commercial gain by possibly operating a competitive chat room service or alternately selling the confidential information to others to perpetrate identity fraud for commercial gain.
The Panel finds that Complainant has proven the requirement of paragraph 4(a)(iii) of the Policy. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to Complainant.
Ross Carson
Sole Panelist
Date: December 29, 2014
Full & Egal Universal Law Academy