The Complainant is Helpful Things, LLC, United States of America (the “United States” or “U.S”), represented by SafeNames Ltd., United Kingdom.
The Respondent is Withheld for Privacy Purposes, Iceland / Sirikwan Burnett, United States. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 13, 2021. On May 14, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 14, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on May 17, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on May 17, 2021. 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 May 20, 2021. On that same day, the Respondent sent an email to the Center stating, “I want to close the domain.” The Center on May 21, 2021, advised the Parties that the proceeding could be suspended to implement a settlement agreement should the Parties wish to explore settlement options, provided the suspension request was submitted no later than May 27, 2021. Neither Party replied to the Center’s communication. In accordance with the Rules, paragraph 5, the due date for Response was June 9, 2021. The Center sent the Commencement of Panel Appointment Process on June 11, 2021. The Center appointed William R. Towns as the sole panelist in this matter on June 16, 2021. 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 Complainant is the owner and operator of a popular online dating platform launched in early 2018, trading under the “doublelist” name. The Complainant has obtained a trademark registration for its DOUBLELIST mark, issued by the United States Patent and Trademark Office (USPTO), U.S. Reg. No. 5926633, applied for May 30, 2019, and registered December 3, 2019, for online classified and personal ads and online dating. The Complainant in a relatively short period of time following the registration of its DOUBLELIST mark has become well-known for its online services, and has been recognized as such by UDRP panels in several decisions. See, e.g., Helpful Things, LLC. v. WhoisGuard, Inc. / Robin Gupta,WIPO Case No. D2019-2225; Helpful Things, LLC v. Hedhli, Ghassen,WIPO Case No. D2020-0804 (number of visitors to Complainant’s website has reached millions; DOUBLELIST mark has become distinctive identifier associated with Complainant’s services). The Complainant has registered the domain name The Respondent registered the disputed domain name Upon learning of the Respondent’s registration and use of the disputed domain name, the Complainant’s representative dispatched a cease and desist letter to the Respondent on April 20, 2021. The Respondent offered no reply. The Complainant thereafter commenced this proceeding under the Policy. 5. Parties’ Contentions A. Complainant The Complainant submits that the disputed domain name The Complainant asserts that the Respondent lacks rights or legitimate interests in respect of the disputed domain name. The Complainant maintains that the Respondent is using the disputed domain name to divert Internet users to a website being passed off as that of the Complainant. The Complainant represents that the DOUBLELIST mark is prominently displayed in the top-left corner of the Respondent’s webpage, and that the bottom of the webpage features information on DOUBLELIST. The Complainant further remarks that the Respondent’s website content is styled in the same manner in which the Complainant’s services are presented, and displays a “© doublelist.com” copyright notice on the Respondent’s webpages. The Complainant, citing Self-Portrait IP Limited v. Franklin Kelly,WIPO Case No. D2019-0283, emphasizes that numerous UDRP decisions have affirmed that the impersonation of a complainant constitutes neither use of the disputed domain name in connection with a bona fide offering of goods or services under paragraph 4(c) (i) of the Policy, nor a legitimate noncommercial use without intent for commercial gain misleadingly to divert consumers. The Complainant emphasizes that the Respondent’s reproduction of the Complainant’s DOUBLELIST mark in the disputed domain name carries with it a risk of implied affiliation. The Complainant submits that the Respondent registered and is using the disputed domain name in bad faith. The Complainant observes that its registration of the DOUBLELIST mark predates the Respondent’s registration of the disputed domain name, and avers that the renown of the Complainant’s services has accrued substantial recognition in the DOUBLELIST mark, which is one of the most recognized brand names for online classified and personal ads, empowering its users to find likeminded people and safely explore relationships. The Complainant emphasizes that UDRP panels have recognized the Complainant’s rights in and renown of the DOUBLELIST mark. The Complainant observes that the Respondent chose to ignore the cease and desist letter sent by the Complainant’s representatives and placing the Respondent on notice of the Complainant’s trademark rights. The Complainant contends that the absence of any reply by the Respondent infers bad faith behavior, citing Facebook, Inc. and Instagram, LLC v. C W / c w, c w,WIPO Case No. D2018-1159. The Complainant maintains that the Respondent was using the disputed domain name in bad faith prior to any notice of the dispute. The Complainant submits there is clear evidence of the Respondent’s behavior positing bad faith registration and use of the disputed domain name within the meaning of paragraph 4(a)(iii) of the Policy. The Complainant asserts that the Respondent intentionally has attempted to attract for commercial gain Internet users to the Respondent’s website, in order to create a likelihood of confusion with the Complainant’s DOUBLELIST mark. The Complainant further represents that the mere registration of a domain name that is identical to a famous or widely-known mark can by itself give rise to a presumption of bad faith. According to the Complainant, the Respondent also registered the disputed domain name in order to disrupt the business of the Complainant by offering services effectively identical to those of the Complainant. The Respondent also suggests there is further evidence that the Respondent is operating other competitive websites abusing the DOUBLELIST brand in order to derive further commercial gain. B. Respondent The Respondent did not reply to the Complainant’s contentions. As previously noted, the Respondent sent an email to the Center stating, “I want to close the domain”. No further communication was received. 6. Discussion and Findings A. Scope of the Policy The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store,WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware,WIPO Case No. D2000-0187. See Final Report of the First WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169-177. The term “cybersquatting” is most frequently used to describe the deliberate, bad faith abusive registration of a domain name in violation of rights in trademarks or service marks. Id. at paragraph 170. Paragraph 15(a) of the Rules provides that the panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the panel deems applicable. Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred: (i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and (ii) the respondent has no rights or legitimate interests with respect to the domain name; and (iii) the domain name has been registered and is being used in bad faith. Cancellation or transfer of the domain name is the sole remedy provided to the complainant under the Policy, as set forth in paragraph 4(i). Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations. Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the view is that the burden of production shifts to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270. B. Identical or Confusingly Similar The Panel finds that the disputed domain name The Complainant’s DOUBLELIST mark is clearly recognizable in the disputed domain name.2 The first element test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name.3 Top-Level Domains (“TLDs) generally are disregarded when evaluating the identity or confusing similarity of the complainant’s mark to the disputed domain name under paragraph 4(a)(i) of the Policy, irrespective of any ordinary meaning that might be ascribed to the TLD.4 In this instance, the disputed domain name is identical to the Complainant’s DOUBLELIST mark when the TLD “.cam” is disregarded. Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in a domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) of the Policy has been made. The disputed domain name is identical to the Complainant’s DOUBLELIST mark, and it is undisputed that the Respondent has not been authorized to use the Complainant’s mark. The record nonetheless reflects that the Respondent is operating an online dating website prominently displaying the Complainant’s distinctive DOUBLELIST mark and logo. The Respondent has not posted on its website any disclaimer of affiliation with or endorsement by the Complainant. Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights or legitimate interests in a domain name by demonstrating any of the following: (i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or (ii) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or (iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. The Respondent has not submitted a formal response to the Complaint, in the absence of which the Panel may accept all reasonable inferences and allegations in the Complaint as true. See Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009. The Panel has carefully reviewed the record in this case, and finds nothing therein that would bring the Respondent’s registration and use of the disputed domain name within any of the “safe harbors” of paragraph 4(c) of the Policy. It is patently evident from the record in this case that the Respondent was aware of the Complainant and had the Complainant’s DOUBLELIST mark in mind when registering the disputed domain name. The record clearly evinces that the Respondent registered the disputed domain name with the intention of exploiting and profiting from the Complainant’s mark, and is using the disputed domain name in an attempt to impersonate the Complainant. To the extent the Respondent might claim to be making a fair use of the disputed domain name, any reliance by the Respondent on Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903 (hereinafter “Oki Data”) would be misplaced. Fundamentally, a respondent’s use of a domain will not be considered “fair” if it falsely suggests affiliation with the trademark owner. UDPR panels generally have found that domain names identical to a complainant’s trademark carry a high risk of implied affiliation. See WIPO Overview 3.0, sections 2.5 and 2.5.1. The use of a domain name cannot be “fair” if it suggests a non-existent affiliation with the trademark owner; nor can a use be “fair” if it is pretextual. See 201 Folsom Option JV, L.P. and 201 Folsom Acquisition, L.P. v. John Kirkpatrick,WIPO Case No. D2014-1359; Project Management Institute v. CMN.com,WIPO Case No. D2013-2035. In addition, the Respondent stated “I want to close” ”the disputed domain name. Having regard to all of the relevant circumstances in this case, and in the absence of any explanation by the Respondent, the Panel concludes that the Respondent has neither used nor undertaken demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. Further, and for the reasons discussed above, the Panel holds that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. Further, the Panel has found no indication in the record that the Respondent has been commonly known by the disputed domain name within the meaning of paragraph 4(c)(ii) of the Policy. In short, nothing in the record before the Panel supports a finding of the Respondent’s rights or legitimate interests in the disputed domain name. Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith: (i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or (ii) circumstances indicating that the respondent 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 the respondent has engaged in a pattern of such conduct; or (iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location. The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. See Match.com, LP v. Bill Zag and NWLAWS.ORG,WIPO Case No. D2004-0230. For the reasons discussed under this and the preceding heading, the Panel considers that the Respondent’s conduct in this case constitutes bad faith registration and use of the disputed domain name within the meaning of paragraph 4(a)(iii) of the Policy. The Panel concludes that the Respondent had the Complainant’s DOUBLELIST mark firmly in mind when registering the disputed domain name. The Respondent’s registration and use of the disputed domain name clearly is demonstrative of bad faith. The Respondent sought to capitalize on the Complainant’s trademark rights, using the disputed domain name to create a likelihood of confusion with the Complainant’s mark as to source, sponsorship, affiliation, or endorsement of the Respondent’s website and the products or services offered thereon. Accordingly, the Panel finds that the Complainant has satisfied the requirements 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 William R. Towns 1 See WIPO Overview 3.0 , section 1.7 . 2 Id. 3 Id. 4 See WIPO Overview 3.0 , section 1.11.2 and cases cited therein.
Sole Panelist
Date: July 2, 2021
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