The Complainant is Tinder, Inc. of Dallas, Texas, United States of America (“United States”), represented by Locke Lord LLP, United States.
The Respondent is Whoisguard Protected, Whoisguard, Inc. of Panama / jesus johnson, jesus inc of Alexandria, Virginia, United States. 2. The Domain Names and Registrars
The disputed domain names , , , , , , , , , , , and are registered with NameCheap, Inc.
The disputed domain name is registered with eNom, Inc.
These two registrars are referred to individually as a “Registrar” and collectively as the “Registrars.” 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 19, 2017. On January 20, 2017, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On January 23, 2017, the Registrar NameCheap, Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. On January 26, 2017, the Registrar eNom, Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name that differed from the named Respondent and contact information in the Complaint.
The Center sent an email communication to the Complainant on January 27, 2017, providing the registrant and contact information disclosed by the Registrars, and inviting the Complainant to submit an amended Complaint. The Complainant filed an amended Complaint on February 1, 2017.
The Center verified that the Complaint together with the amended 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 3, 2017. In accordance with the Rules, paragraph 5, the due date for Response was February 23, 2017. The Respondent did not submit any response. Accordingly the Center notified the Respondent’s default on February 24, 2017.
The Center appointed Richard G. Lyon as the sole panelist in this matter on March 2, 2017. The Panel finds that it was properly constituted and has jurisdiction to decide this administrative proceeding. The Panel has submitted his Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
In the Complaint the Complainant asks the Panel to consolidate all of the disputed domain names into a single proceeding, citing a single registrant, twelve of the disputed domain names with a single registrar, use of the disputed domain names in an identical manner indicating common control, and arguing that the foregoing render the “arguments and legal authorities the same” for all disputed domain names. Consolidation, the Complainant argues, will avoid inconsistent adjudications, unnecessary duplication, extra expense, and “generally further[ ] the fundamental objectives of the Policy.”1
The Panel agrees with all of these contentions, and finds consolidation in this proceeding to accord with Policy precedent. The touchstones for consolidation are a “common grievance” and “would it be equitable and procedurally efficient to permit consolidation?” National Dial A Word Registry Pty Ltd. and others v. 1300 Directory Pty Ltd,WIPO Case No. DAU2008-0021; see also WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 4.16. The parties are the same and the Complainant advances the same contentions as to each disputed domain name. The Panel sees no prejudice to either party from consolidation, and considerable efficiency to be gained. The Complainant’s request for consolidation is granted. 4. Factual Background
Since 2012 the Complainant has operated dating services under the name Tinder. It owns two trademarks for TINDER, duly registered on the principal register of the United States Patent and Trademark Office (USPTO) in February 2014 and June 2016. Its principal website is “www.GoT”, which is interactive, allowing users to download a mobile application that also employs the word Tinder. This application has been downloaded more than 100 million times and the Complainant’s website and services have millions of users.
The Respondent registered twelve of the disputed domain names (the “July domain names”) on July 20, 2016 and registered on August 31, 2016. The Panel was unable to access any of the disputed domain names but the Complainant’s evidence indicates that at one time all of the July domain names redirected Internet users to , at which appeared material promoting dating services in some respects similar to those offered by the Complainant. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain names are identical to or confusingly similar to its USPTO-registered TINDER marks; that the Respondent cannot demonstrate a right to legitimate interest to the disputed domain names; that the Respondent’s use of the disputed domain names has not been bona fide; and that the Respondent registered and has used the disputed domain names in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
The Respondent’s failure to respond to the Complaint does not automatically result in a decision in the Complainant’s favor or require the Panel to accept as true any of the factual allegations in the Complaint. Under the Policy and Rules the Complainant is still required to prove with competent evidence each of the elements of paragraph 4(a) of the Policy. WIPO Overview 2.0, paragraph 4.6. A. Identical or Confusingly Similar
The Complainant’s USPTO-registered TINDER marks establish the first element of paragraph 4(a)(i) of the Policy, that the Complainant has rights in a mark. See WIPO Overview 2.0, paragraph 1.1. Each of the July domain names has as its dominant feature the word TINDER, rendering it confusingly similar to the Complainant’s marks. As the Complainant argues, neither the generic top-level domain (gTLD) nor the addition of a common word such as “meetup” or “flings” obviates confusing similarity. In fact most of the additions relate to dating, enhancing rather than reducing such confusion. The Complainant has carried its evidentiary burden under paragraph 4(a)(i) as to these twelve disputed domain names.
The disputed domain name is another matter. The Complainant’s contrary assertion notwithstanding, it is plainly not identical to TINDER. And on a standalone analysis – “a comparison between the trademark and the domain name itself to determine likelihood of Internet user confusion”2 – this domain name does not to this Panel’s eyes and ears appear confusingly similar to TINDER. Were the only domain name at issue in this case the Panel would quickly find it not confusingly similar to the Complainant’s marks, i.e., not likely to confuse Internet users seeking the Complainant. This raises the question of whether the Panel may look beyond a straightforward side-by-side matchup. May the Panel examine other evidence in the record of this case as part of his determination under paragraph 4(a)(i)? This question is issue-determinative as to this domain name. In a side-by-side comparison the Complainant has not met the first element of paragraph 4(a); if the Panel may look at the collateral evidence (evidence presented on other elements of this case) it is likely that the “tind” in “tindfun” was selected with the Complainant’s mark in mind.
Policy precedent says that the general answer is “no.” Paragraph 4(a)(i) “serves essentially as a standing requirement,” and “The content of a website (whether it is similar to or different from the business of a trademark holder) would usually be disregarded in the threshold assessment of risk of confusing similarity under the first element of the UDRP,” WIPO Overview 2.0, paragraph 1.2. The closest case is Starwood Hotels & Resorts Worldwide, Inc., The Sheraton LLC, Sheraton International Inc. v. Unister GmbH, Daniel Kirchhof,WIPO Case No. D2011-0781, though with a somewhat different fact pattern analytically quite close to this one. The trademark at issue was the letter “W,” which the complainant used for hotels (W Atlanta, W Istanbul, etc.); the domains at issue were the letter “w” followed by a hyphen, then followed by a city or area within a city that corresponded to a location at which the complainant operated a W Hotel (e.g., ). As in Starwood, also a default case, the collateral evidence submitted with the complaint suggested similarity between the domain and the mark.3 The learned panel nevertheless refused to consider that under paragraph 4(a)(i), stating “as elaborated in a number of cases the role for the Panel is to compare the mark and the domain name alone, independent of the use factors usually considered in a traditional trademark infringement action.” Given the weakness of the single-letter mark as shown by the evidence before the panel, the complaint was denied for failure to demonstrate confusing similarity.
There have been limited exceptions. The most frequently cited is RapidShare AG and Christian Schmid v. majeed randi,WIPO Case No. D2010-1089, involving the domain name (“Rapid Piracy”). In that case, another default case, after a thorough and careful analysis of the term “confusingly similar” in paragraph 4(a)(i) the learned panel first acknowledged and endorsed the consensus view described above, but went on to say “that does not mean that the content of the website cannot in some cases provide a pointer as to how Internet users will perceive a domain name that in turn might inform the relevant comparison.” In light of that, under the particular circumstances of that case, the panel found that by a thin margin that the complainant had met the standing requirement.
Rapid Piracy has several material distinctions from the present case. The domain name at issue in Rapid Piracy included two common words, one of them part of the complainant’s RAPIDSHARE mark. Here that is not the case, as only the four leading letters from the TINDER mark are included. In the view of this Panel, those four letters (tind) by themselves do not particularly suggest TINDER and are not a common or recognized abbreviation for the longer word.4 They could just as likely be a misspelling of “mind” or “tend,” an acronym, or simply a collection of four letters with no meaning at all. The added word “fun,” if indeed a separate word and not just three more letters, while descriptive of dating is not uniquely or especially so, unlike the respondent’s choice in Rapid Piracy, in which the extra word (piracy) “can be read as involving a conceptual allusion to the Complainants’ mark (perhaps suggesting an illegal version of the Complainants’ services)” (footnote omitted). Unlike Rapid Piracy, here without the collateral evidence the disputed domain name as a whole has no particular or even suggestive meaning; on its own it is in the Panel’s view gibberish.
These distinctions are not semantic arcana. The crucial factor for the Rapid Piracy panel was that the collateral evidence from the website might influence what an Internet user would deduce from the disputed domain name when searching for the complainant – “a pointer as to how Internet users will perceive” it. That is not the case here; “tindfun” remains gibberish and not especially likely to “point” to TINDER. At the end of his analysis the Rapid Piracy panel, like the Starwood panel, adhered to the consensus view of not factoring website content into the paragraph 4(a)(i) comparison: “The test is not of similarity between businesses or websites. It involves a comparison between mark and domain name only” (emphasis added). While highly relevant to the bona fides of the Respondent’s business and likely bad faith, the collateral evidence here does not bear directly on confusing similarity between the domain name and the Complainant’s marks. It only supports the Complainant’s assumption that the Respondent had the Complainant and his mark in mind.
Other panels have stated in dictum that collateral evidence may be considered under paragraph 4(a)(i), albeit in cases in which, on this Panel’s reading, the collateral evidence was unnecessary because the domain name at issue included the complainant’s mark or its dominant feature5 or a misspelling of the mark that left the mark easily recognizable,6 was phonetically similar to the mark,7 or included one element of the mark in translation.8 It is fair to summarize these panels’ use of the collateral evidence as reinforcement of the side-by-side comparison rather than determinative. The language used by these panels, however, indicates a willingness to extend to outcome-determinative situations like the Starwood case or this case. For instance, “The test of confusing similarity under the Policy is confined to a comparison of the domain name and the trademark alone. The content of a respondent’s website is generally disregarded unless that content might indicate an intention on the part of the respondent to confuse Internet users, in which case the conclusion that the domain name is confusingly similar to the trademark may more readily be drawn.” Thomas Wuttke v. Xiao Ming,WIPO Case No. D2012-2329 (citations omitted; emphasis added).
With some reservations, set out in the following paragraph, in deference to these panels’ views the Panel has determined to accept the commentary from these cases and consider the collateral evidence here. As earlier noted, when the collateral evidence is considered the comparison is fairly easy. The only English words in this Panel’s dictionary9 beginning with “tind” are tinder and its variants (e.g., tinderbox). A dozen other domain names that incorporate the Complainant’s mark and re-direction to a site that competes with the Complainant do support an inference that the Respondent intended to take advantage of that mark in . The threshold for confusing similarity under paragraph 4(a)(i) is not high. The Panel finds that the Complainant has just cleared it.
The Panel cautions future complainants against relying on this approach in circumstances in which there is scant basis or no basis at all for a finding of confusing similarity.10 If the Respondent’s active website had utilized a domain name that bore no possible relation to the Complainant’s marks – , for example – the Complainant would plainly have no recourse under the Policy. Standing, like jurisdiction, is a threshold matter. Also like jurisdiction standing cannot be manufactured from whole cloth no matter how egregious the underlying conduct complained of. A panel’s principal ground for determining confusing similarity should be the side-by-side comparison of the disputed domain name with the complainant’s mark, particularly whether “the relevant trademark [is] recognizable as such within the domain name,”11 and with any use of collateral evidence at most carefully limited to cases on the margin. B. Rights or Legitimate Interests
The Complainant has never authorized the Respondent to use its TINDER marks and nothing in the record suggests that the Respondent has been known, commonly or otherwise, by any name that includes the word TINDER. Those facts make out the Complainant’s prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names, and shifts the burden of production to the Respondent to demonstrate the contrary. The Respondent has furnished and the Panel can find nothing. The Complainant has therefore carried its evidentiary burden under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Shortly after registration the Respondent used the disputed domain names to redirect Internet users to a site that offers services competitive to the Complainant’s. Such conduct betrays both knowledge of the Complainant, its TINDER marks, and its business, and a clear intent to trade off the value of those marks. The Complainant has thus shown that “by using the domain name, [the Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [his] 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 [his] web site or location or of a product or service on [his] web site or location.” Policy, paragraph 4(b)(iv). For good measure, given the number of TINDER-related domain names the Respondent has registered, his conduct falls also within paragraph 4(b)(ii) of the Policy. The Complainant has proven bad faith. 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 names , , , , , , , , , , , , and be transferred to the Complainant.
Richard G. Lyon
Sole PanelistDate: March 27, 2017
1 Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons,WIPO Case No. D2010-0281.
2 WIPO Overview 2.0, paragraph 1.2.
3 The collateral evidence in that case was if anything stronger than here, apparently including evidence that the respondent was a "serial cybersquatter" with more than 1500 copycat domain names.
4 If for example its customers informally referred to the Complainant's dating service as "Tind," or if those four letters had otherwise taken on some special affiliation with the Complainant or its services, presumably the Complainant would have provided evidence to that effect.
5 E.g., The Colt Car Company Limited v. Lee Linford, FQ Performance Ltd,WIPO Case No. D2015-0023 (mark=FQ; domain=fqperformance); Kuhn Rikon AG v. J. Klozen,WIPO Case No. D2013-1194 (Kuhn Rikon Switzerland/ Swiss-Rikon); Thomas Wuttke v. Xiao Ming,WIPO Case No. D2012-2329 (wellensteyn/wellenstynsale).
6 E.g., BHP Billiton Innovation Pty Ltd v. Domains By Proxy LLC / Douglass Johnson,WIPO Case No. D2016-0364 (H & R Block/hrbloxk); WhatsApp Inc. v. Francisco Costa,WIPO Case No. D2015-1708 (whatsup/webwazzup)
7 E.g., WhatsApp Inc. v. Francisco Costa, supra note 6 (whatsup/webwazzup); Core Design Limited, Eidos Interactive Limited v. Parabellum Design Studio,WIPO Case No. D2002-1031 (Tomb Raider/Thumbraider).
8 E.g., Radio 2 Comunicacŏes Ltda. v. Simon Cristiano Dias,WIPO Case No. D2007-1906 (radio2/radiodios).
9 The American Heritage Dictionary of the English Language.
10 This is not hypothetical conjucture. The warning is prompted by more than simply the Panel's logic and general experience. This Panel faced exactly such a situation inWIPO Case No. D2007-1739, a case settled before decision, and at least one decision allowed this sort of overreach, in this Panel's opinion clearly erroneously. See Saks & Company v. Sohotofifth / Soho Fifth,WIPO Case No. D2015-0759.
11 WIPO Overview 2.0, paragraph 1.2.
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