1.1 The Complainant is Tinder, Inc. of Dallas, Texas, United States of America (the “United States” or “US”), represented by Locke Lord LLP, United States.
1.2 The Respondent is GhostMonitor, Inc. of Minden, Nevada, United States, Registration Private, c/o Domains by Proxy, LLC of Scottsdale, Arizona, United States / Peter Bodnar of Debrecen, Hungary. 2. The Domain Name and Registrar
2.1 The disputed domain name (the “Domain Name”) is registered with GoD, LLC (the “Registrar”). 3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 22, 2017. At that time the publically available WhoIs database for the Domain Name displayed the details of the Registrar’s “privacy” service. On June 22, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On June 23, 2017, the Registrar transmitted by email to the Center its verification response disclosing the underlying registrant and contact information for the Domain Name. The Center sent an email to the Complainant on June 26, 2017 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint.
3.2 On June 30, 2017 a person identified as the designated point of contact for “GhostMonitor, Inc” sent an email communication to the Center requesting further information about the proceeding and stating the willingness to resolve the case in a way suitable for all the Parties. On the same date the Center provided the requested information and informed the Parties that if they wished to suspend the proceeding to explore settlement options between the Parties, the Complainant should submit a request for suspension by July 7, 2017.
3.3 The Complainant filed an amended Complaint on July 1, 2017 and did not submit any request for suspension of the proceedings. On July 11, 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”).
3.4 In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 11, 2017. In accordance with the Rules, paragraph 5, the due date for Response was July 31, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 1, 2017.
3.5 The Center appointed Matthew S. Harris as the sole panelist in this matter on August 8, 2017. 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
4.1 The Complainant is a well-known online dating service based in the United States that has traded under the Tinder name since early 2012. The Tinder App has been downloaded over 100 million times and had already gained an estimated 50 million users by March 2, 2015, with sixty percent of Tinder users coming from outside North America.
4.2 The Complainant is the owner of various trade marks that incorporate or comprise the term “Tinder”. They include:
(i) United States registered trade mark no 4479131 for the word mark TINDER in class 9 registered on February 4, 2014; and
(ii) European registered trade mark no 012278396 for the word mark TINDER in classes 9, 42 and 45 registered on March 31, 2014.
4.3 The Respondent would appear to be an individual located in Hungary.
4.4 The Domain Name was registered on April 10, 2016. It has since registration been used to display a website, the home page of which displayed text in Hungarian. The Google translation for that text is as follows:
“Find anyone Tinder
Begin your search with your first name and find out if it is true.
Once you’ve typed the name you are looking for, we’ll direct you to the free search page where you can see the results as obscured. For 1490 HUF, you can disclose all the profiles found for that name.”
4.5 There was also a “Terms of Service” page on the website operating from the Domain Name in which was to be found the assertion “The website is operated by GhostMonitor, Inc.”
4.6 As at the date of this decision that website no longer is displayed and instead diverts Internet users to the Google search home page. 5. Parties’ Contentions A. Complainant
5.1 The Complainant describes its business and marks. It contends that the Domain Name incorporates its TINDER trade mark in its entirely and that notwithstanding the addition of the word “hunter”, the Domain Name is identical or at least confusingly similar to that registered mark.
5.2 The Complainant makes various assertions of US law that it is not necessary to record in this decision. It further contends that none of the examples of rights or legitimate interest set out in paragraph 4(c) of the Policy can be demonstrated by the Respondent in this case. Instead it claims that the Domain Name has been used to lure Internet users to the website operating form the Domain Name. It also asserts that the home page of the website operating from the Domain Name incorporates an icon which is similar to the flame icon used by the Complainant and uses fonts, colours and other branding elements that are identical or confusingly similar to that of the Complainant’s own service. On that page the Respondent is said to offer a search function of Tinder users that has not been authorised by the Complainant. It is further claimed that by reason of these activities the Domain Name is being used to “misappropriate the goodwill of [the Complainant] and to suggest that [the Respondent is] connected or associated with, or somehow endorsed by, [the Complainant].”
5.3 The Complainant also denies that the Respondent has become commonly known as “Tinder Hunter” (relying on the decision in Neteller plc v. Prostoprom,WIPO Case No. D2007-1713) or that the Respondent’s use involves a legitimate noncommercial or fair use of the Domain Name.
5.4 Further it contends that the way that the Domain Name has been used demonstrated that the Domain Name was registered and has been used in bad faith. B. Respondent
5.5 The Respondent did not file a Response to the Complainant’s Complaint. 6. Discussion and Findings
6.1 There are no exceptional circumstances within paragraph 5(f) of the Rules so as to prevent this Panel from determining the dispute based upon the Complaint, notwithstanding the failure of the Respondent to lodge a Response.
6.2 To succeed in these proceedings the Complainant must make out its case in all respects under paragraph 4(a) of the Policy. Namely, the Complainant must prove that:
(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights (paragraph 4(a)(i)); and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name (paragraph 4(a)(ii)); and
(iii) the Domain Name has been registered and are being used in bad faith (paragraph 4(a)(iii)).
6.3 However, under paragraph 14(b) of the Rules, where a party does not comply with any provision of the Rules, the Panel shall “draw such inferences therefrom as it considers appropriate”. A. Identical or Confusingly Similar
6.4 The Panel accepts that the Domain Name is confusingly similar to the Complainant’s United States and European Union registered trade marks for the term “Tinder”. The Domain Name can only be sensibly understood as incorporating the entirety of that term in combination with the word “hunter” and the “.com” Top-Level Domain. None of these additions so distract from or change the natural reading of the term “Tinder” in the Domain Name so as to prevent a finding of confusing similarity for the purposes of the Policy (as to which see Research in Motion Limited v. One Star Global LLC,WIPO Case No. D2009-0227).
6.5 In the circumstances, the Complainant has made out the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
6.6 The Panel accepts the Complainant’s contention that at the time that its Complaint was filed, the Domain Name was being used for a website that in part imitated the branding of the Complainant. This fact together with the text of the Domain Name itself was likely to lead internet users to believe that the Respondent’s website was either operated by or affiliated or somehow endorsed by Tinder when that is not the case.
6.7 There is no right or legitimate interest in a domain name that is being used in such a fashion and in the opinion of the Panel, such use positively suggests that no so right or legitimate interest exists.
6.8 The Panel notes that the Complainant seeks to rely upon the decision in Neteller plc v. Prostoprom,WIPO Case No. D2007-1713 in support of its argument that the Respondent had not at the relevant time become commonly known as “Tinder Hunter”. In this respect it cites the following passage in that decision:
“It cannot be the case that a cybersquatter who registers a domain name in bad faith, and then operates a business under that domain name long enough for the business to become “commonly known by” the domain name, thereby acquires a complete defense under Paragraph 4(c)(ii). That would not make any sense. If that were the correct interpretation of Paragraph 4(c)(ii), every cybersquatter who registered a domain name in bad faith would be able to “create” a defense under Paragraph 4(c)(ii) by the simple expedient of adopting the domain name as the name of his/her business or organization, thereby defeating the intended operation of the Policy.
In the Panel’s view, the better interpretation of Paragraph 4(c)(ii) is that, to come within the safe harbor of that provision, a respondent (or his/her organization or business) must have been commonly known by the at-issue domain at the time of registration. There is no evidence of that in this case.”
6.9 The panel in the Nereller plc v. Prostoprom case supra was a distinguished one and it is a decision that has been subsequently followed by at least one other panel (see Subur Tiasa Holdings Berhad v. Yeh, Charles,WIPO Case No. D2016-1174). However, the Panel is not convinced that this analysis is right. The requirement of 4(c)(ii) is in the opinion of the Panel a stringent one and requires the respondent to demonstrate that it has developed a substantial reputation in the name that is independent of the complainant’s mark. Therefore, the circumstances where an entity adopts a domain name because of its associations with a trade mark of another and can then demonstrate that, notwithstanding that association, the domain name has by reason of its use become independently “commonly known” by that name, are likely to be very rare. Merely adopting the domain name as the name of business would be far from sufficient.
6.10 The paragraph 4(c)(ii) defence in the case where the domain name deliberately incorporated the trade mark of another did succeed in Green Bay Packers, Inc. v. Moniker Privacy Services / Montgomery McMahon,WIPO Case No. D2016-1455. However, the fact that this was a case where there had been eight years of use for a commercial fan site and where the respondent has demonstrated that it was achieving over 1 million hits a year, if anything demonstrates the difficult task that a respondent faces in such a case.
6.11 Further, it is noteworthy that in the Nereller plc v. Prostoprom case supra the panel only made the remarks quoted above after having already decided as a matter of fact that the respondent had failed to demonstrate at the time of the complaint (as opposed to the time of registration) that it was commonly known by the Domain Name.
6.12 The Panel also notes that the statement in the Nereller plc v. Prostoprom case supra is difficult to reconcile with the statement in section 2.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Jurisprudential Overview 3.0”) that:
“Panels tend to assess claimed respondent rights or legitimate interests in the present, i.e., with a view to the circumstances prevailing at the time of the filing of the complaint.”
6.13 However, none of this matters in this case as regardless of when the assessment takes place, the Panel accepts that paragraph 4(c)(ii) does not apply in this case.
6.14 In the circumstances, the Complainant has made out the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
6.15 It follows from the Panel’s conclusion that the Domain Name is being used to lead Internet users to believe that the Respondent’s website was either operated by or affiliated or somehow endorsed by the Complainant when it is not, that the Domain Name is being used in bad faith. The Respondent’s use falls within the example of circumstances indicating bad faith use set out in paragraph 4(b)(iv) of the Policy.
6.16 The Panel is also persuaded that the Domain Name was registered with this use in mind. In this respect, the term “Tinder Hunter” is inherently suggestive of the service that was subsequently offered from that Domain Name, and there is no evidence before the Panel to suggest that there has been any other use of the Domain Name.
6.17 In the circumstances, the Complainant has made out the requirements of paragraph 4(a)(ii) of the Policy. 7. Decision
7.1 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, , be transferred to the Complainant.
Matthew S. Harris
Sole Panelist
Date: August 22, 2017
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