Complainant is M Nordic AB of Stockholm, Sweden, represented by Wistrand Advokatbyrå, Sweden.
Respondent is CoZaNic, Deon Venter of Minnebron, Gauteng, South Africa. 2. The Domain Names and Registrar
The disputed domain names , , , , and (the “Domain Names”) are registered with PDR Ltd. d/b/a PublicDomainR (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 19, 2014. On December 19, 2014, the Center transmitted by e-mail to the Registrar a request for registrar verification in connection with the Domain Names. On December 22, 2014, the Registrar transmitted to the Center by e-mail 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 January 6, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was January 26, 2015. On January 6, 2015, the Center received an e-mail communication from Respondent. On January 26 and 27, 2015, the Center received further e-mail communications from Respondent. Respondent did not however submit any formal response. Accordingly, the Center notified the parties about the commencement of panel appointment process on January 27, 2015.
The Center appointed Robert A. Badgley, Jonas Gulliksson and Charné Le Roux as panelists in this matter on February 20, 2015. The Panel finds that it was properly constituted. Each member of 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.
In its discretion, the Panel has considered the January 26 and 27, 2015 e-mails from Respondent. 4. Factual Background
Complainant is a licensee of M, LLC, an Internet dating service. M, LLC holds Community Trademark Registration No. 000182253, registered March 9, 2004, for the mark MATCH.COM in connection with “information and consultancy services in the nature and field of on-line dating and introduction services”. M, LLC or its predecessor company began using the mark for dating services in 1994.
Complainant asserts, and furnishes evidence, that the dating service operated by M, LLC and its affiliates is a leading dating service in the worldwide market, and in the “Nordic region” of Europe.
Pursuant to a contract effective December 16, 2011, Complainant is a sub-licensee, with one company between M LLC and Complainant, entitled to use the MATCH.COM mark in certain European markets. Complainant provides dating services through various European national markets, including Finland, France, Spain, the Czech Republic, and the United Kingdom.
Respondent registered the Domain Names on various dates between 2004 and 2013, namely: , , and on July 18, 2004; on May 31, 2005, and on September 29, 2013.
All but one of the Domain Names resolve to a website offering online dating services. For instance, the Domain Name resolves to a site which states, among other things: “CZm welcomes you to the world of online dating sites.” The Domain Name does not currently resolve to an active site. 5. Parties’ Contentions A. Complainant
Complainant asserts that it has established all three elements required under the Policy for a transfer of each of the Domain Names. According to Complainant, the Domain Names entirely incorporate the MATCH.COM mark and merely add the two-letter country code corresponding to various countries in which Complainant, as a trademark licensee, operates. According to Complainant, Respondent has no license or permission to use the MATCH.COM mark, and is improperly attempting to siphon off dating service business from consumers actually seeking Complainant’s services. B. Respondent
Respondent did not submit a formal Response. Rather, on the due date for submitting a response, Respondent asked the Center for an extension, citing “an important radio interview” he was doing that day. The Center responded by declining the extension, since the request was made on the last day of the response period and “there do not appear to be exceptional circumstances” warranting an extension.
The following day, January 27, 2015, Respondent sent an e-mail to the Center stating that he indeed had “exceptional circumstances” and later that day, sent another e-mail to the Center asking to “register this please”. Among other comments, Respondent contends that “match” is a generic word and hence it is questionable that Complainant or M, LLC could have trademark rights in that word. Respondent also stated: “We are not using the domains to compete with match. They are merely sample example sites or placeholders for out dating site template which we market at P.” Respondent added:
“We were totally unaware of their use as subdomains in their system like ‘es.m’. With this knowledge we are willing to undertake to no longer use the domains in question for dating and will use them for football match sites instead (some actually rank higher in football searches than dating although still infinitesimal).
We have not made anything out of these domains as they are samples, so we certainly are no threat to their precious bottom line. Business must be tough to sue a poor individual like me.” 6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to each of the Domain Names at issue in this case:
(i) the Domain Name 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 Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Complainant, under the license agreement submitted into the record, has rights in the mark MATCH.COM. Although “match” is a common dictionary word, the mark MATCH.COM has indeed been registered by the European Community, and is a valid mark. Moreover, the record is clear that the mark enjoys a measure of recognition in the Internet dating market.
Each of the Domain Names fully incorporates that mark and merely appends a two-letter country code. In the Panel’s view, these country-code appendages do not measurably reduce the confusing similarity between the mark and the Domain Names.
Accordingly, the Panel concludes that paragraph 4(a)(i) of the Policy has been established. B. Rights or Legitimate Interests
Complainant must first make a prima facie case that Respondent lacks rights or legitimate interests in the Domain Names under Policy 4(a)(ii), the burden of production then shifts to Respondent to show that it does have rights or legitimate interests.
Complainant asserts that Respondent has no relationship with Complainant or M, LLC and that Respondent does not have any rights corresponding to the Domain Names and is not commonly known by the Domain Names. There is no evidence that Respondent has any rights corresponding to the Domain Names or is making a legitimate noncommercial or fair use of the Domain Names. Indeed, Respondent does not deny that his motives are commercial in nature. Finally, the Panel concludes that Respondent cannot be making a bona fide offering of services by using confusingly similar Domain Names to host an Internet business in direct competition with that of Complainant.
Accordingly, the Panel concludes that paragraph 4(a)(ii) of the Policy has been established. C. Registered and Used in Bad Faith
With respect to each Domain Name, paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation”, are evidence of the registration and use of the Domain Name in “bad faith”:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or
(ii) that Respondent has registered the Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other on line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
Respondent does not deny that he was aware of the MATCH.COM mark when registering the Domain Names. Indeed, because Respondent has set up websites which purport to offer online dating services, the Panel concludes that Respondent had the MATCH.COM mark specifically in mind when registering each of the Domain Names.
The Panel further concludes that Respondent’s websites reflect bad faith use under paragraph 4(b)(iv).1 Respondent claims that the sites are mere templates, but in fact there is some interactivity at the sites (for example, visitors are asked to sign in or provide certain information). Whether a visitor to one of these sites could actually carry out a full registration as a prospective online dater and meet someone else through the operation of these sites is not known to the Panel. In any event, it is clear that Respondent is either operating an online dating service on his own or selling dating site templates to third parties. Even if an actual dating transaction cannot yet be effectuated at these sites, Respondent would be tarnishing the MATCH.COM mark (at least in Complainant’s countries) by discouraging visitors who were seeking to join or use MATCH.COM in one of the European countries at issue.
Having so decided, the Panel need not consider Complainant’s other arguments that Respondent is in bad faith under paragraphs 4(b)(ii) (a pattern of preclusive registrations) or 4(b)(iii) (disrupting the business of a competitor).
Accordingly, the Panel concludes that paragraph 4(a)(iii) of the Policy has been established. 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 Domain Name , , , , and be transferred to Complainant.
Robert A. Badgley
Presiding Panelist
Jonas Gulliksson
Panelist
Charné Le Roux
Panelist
Date: March 5, 2015
1 The Panel notes that the Domain Name does not currently resolve to an active website, but the Panel’s analysis regarding that Domain Name is essentially the same as with the other Domain Names, since it appears that Respondent could easily point that Domain Name to a similar website.
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