WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
QSoft Consulting Limited v. Mark Brooks
Case No. D2007-1124
1. The Parties
The Complainant is QSoft Consulting Limited, Surrey, United Kingdom of Great Britain and Northern Ireland, represented by Olswang, London, United Kingdom of Great Britain and Northern Ireland.
The Respondent is Mark Brooks, California, United States of America.
2. The Domain Name and Registrar
The disputed domain name <gaydarwatch.net> is registered with Blue Razor Domains, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 1, 2007. On August 3, 2007, the Center transmitted by email to Blue Razor Domains, Inc a request for registrar verification in connection with the domain name at issue. On August 3, 2007, Blue Razor Domains, Inc transmitted by email to the Center its verification response confirming that the 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”), 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 the Respondent of the Complaint, and the proceedings commenced on August 23, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was September 12, 2007. The Respondent did not submit any response within time. Accordingly, the Center notified the Respondent’s default on September 13, 2007.
The Center appointed John Swinson as the sole panelist in this matter on September 28, 2007. 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.
An email communication was received by the Panel from the Respondent on October 9, 2007, after the first draft of this decision had been prepared. The email communication was not in the form of a response, and contained statements of fact made on behalf of the Respondent that did not contradict the assertions made in the Complainant. The Panel will not accept this email as a formal response, or consider the contents in it, as it is out of time and no reasons have been given as to why it was not filed in the proper way or in time. However, the Panel notes that the contents in the email, even if considered, would not change the result set out below.
4. Factual Background
The Complainant is a technology company registered in the United Kingdom which owns a number of brands aimed at the gay and lesbian market. One of these brands is GAYDAR.
The Complainant owns and operates a gay and lesbian dating website at “www.gaydar.co.uk”. The Complainant also owns and operates GaydarRadio (an independent digital online radio station accessible at “www.gaydarradio.com”). The Complainant has been trading under the GAYDAR brand since November 1999. The Complainant registered the <gaydar.co.uk.> domain name on May 15, 1999.
The Complainant owns several Community Trade Mark registrations and two Australian trade mark registrations in respect of the word GAYDAR, as well as other Community Trade Marks which include the word GAYDAR. The earliest registration date of these trade marks is August 16, 2002.
The Complainant has also registered a number of similar domain names including <gaydarradio.com>, <gaydarshop.com>, <gaydargirls.com>, and <gaydardate.com>.
The Respondent Mark Brooks is an individual residing in the United States of America. He registered the disputed domain name on April 9, 2007. The Respondent owns the domain name <onlinepersonalswatch.com> and operates a website titled “Online Personals Watch - Online Personals News and Commentary”. The <onlinepersonalswatch.com> domain name diverts to a website located at <onlinepersonalswatch.typepad.com>. The Respondent’s Online Personals Watch website contains links to interviews with dating experts and authors as well as press releases and articles relating to dating. The Online Personals Watch website also displays the official rankings of Internet dating websites, and lists “www.gaydar.co.uk” as the top ranking Internet dating site in the United Kingdom.
The website for the disputed domain name is active and is stated to be “parked free by GoDaddy.com”. GoDaddy.com is a well-known domain name registrar. The website contains search engine facilities and Google sponsored advertised links. For the most part, when viewed by the Panelist, the sponsored links on the “www.gaydarwatch.net” website connect to websites offering watches for sale.
5. Parties’ Contentions
The Complainant makes the following submissions and arguments:
The Complainant’s GAYDAR brand is one of the biggest and most recognised brands in the global gay marketplace. GAYDAR has been the Complainant’s core brand since 1999 and is used as a “house” mark in conjunction with words or elements to designate the Complainant’s related services or sub-brands. The public is accustomed to seeing the GAYDAR mark both alone and in conjunction with other words or elements.
The website operated by the Complainant at “www.gaydar.co.uk” is the United Kingdom’s largest gay and lesbian dating website.
The Complainant has accrued significant revenue from the GAYDAR marks and has spent significant sums in developing and publicising the brand. Through its continuous and extensive use of the GAYDAR name and brand, the Complainant has accrued unregistered rights and goodwill in the GAYDAR mark. The Respondent must have had actual knowledge of the Complainant’s rights in their trade marks.
The disputed domain name includes the whole of the Complainant’s GAYDAR mark and is identical or confusingly similar to the Complainant’s marks.
The Respondent has no trade mark rights to “Gaydarwatch” and has not been granted any license, contract or other authorisation to register and utilise the term “Gaydar” in the domain name.
The Respondent has engaged in a pattern of activity registering domain names incorporating a registered trade mark or well known mark together with the tail end of the Respondent’s own family of domain names, the word “watch” (for example <facebookwatch.net>, <myspacewatch.net>, <youtubewatch.net> and <yahoowatch.net>).
The Respondent has close relationships with the Complainant’s competitors and has proposed to use the domain name to publicise news in the press on Gaydar and for his own commentary on Gaydar. The success of this proposal relies on trading off the Complainant’s rights, name and reputation, to the Complainant’s detriment. The Respondent therefore registered the domain name for the purpose of attracting Internet users to the website by association with the Complainant.
In a series of emails to the Complainant, the Respondent indicated an intention to use the domain name to publicise news about GAYDAR and to comment on its activities.
The Complainant offered to pay the Respondent’s administrative costs for transferring the domain name back to the Complainant but this offer was refused.
The Respondent did not formally reply to the Complainant’s contentions.
As discussed above, the Respondent submitted an email communication after the deadline for filing a response had passed. For the record, it is noted that the Respondent stated in his email that he retained the domain name for <onlinepersonalswatch.com>, as well as other domain names such as <lavalifewatch.com>, <yahoopersonalswatch.com> and <perfectmatchwatch.com>. The Respondent stated that he uses these domain names for the sole purpose of aggregating news and commenting on the websites for the purpose of user and industry feedback. He makes no statement as to intended use of the disputed domain name.
6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) the 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 onus of proving these elements is on the Complainant.
A. Identical or Confusingly Similar
The Complainant owns trademark registrations for the word mark GAYDAR.
Based on the evidence presented, the Panel finds that the Complainant has also accrued significant goodwill in the GAYDAR name and associated marks, both in the United Kingdom and internationally.
The next issue is whether the disputed domain name is identical, or confusingly similar, to the trade mark in which the Complainant has rights.
The difference between the Complainant’s trade mark and the disputed domain name is that the word “watch” has been added after the GAYDAR mark. The disputed domain name therefore includes the whole of the Complainant’s GAYDAR trade mark. GAYDAR, which is quite a distinctive trade mark, has been paired with the generic, descriptive and non-distinctive word “watch”, so the principal and distinctive element of the disputed domain name remains “Gaydar”.
Where a domain name consists of a registered trademark followed by a generic term, the latter is not a distinguishing feature and does not lessen the likelihood of confusion with a trade mark: The Nasdaq Stock Market, Inc. v. Green Angel, WIPO Case No. D2001-1010.
The Panel finds that the disputed domain name is confusingly similar to the GAYDAR trade mark owned by the Complainant.
This view is supported by two recent WIPO decisions involving domain names that include the word “watch” that have similar factual circumstances to the facts in this dispute. See SANOFI-AVENTIS v. Jason Trevenio, WIPO Case No. D2007-0648; and Apax Partners Worldwide LLP v. Styling You HB, WIPO Case No. D2007-0147.
Therefore, the Panel finds that the requirements of the Policy paragraph 4(a)(i) are satisfied.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in the disputed domain name:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trade mark or service mark rights; or
(iii) you are making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.”
(Policy, paragraph 4(c)).”
The Respondent did not submit a response or attempt to demonstrate any rights or legitimate interest in the disputed domain name.
Complainant has not granted the Respondent any license or other authorisation to use its trade marks in relation to the disputed domain name. This is not disputed by the Respondent. The Complainant’s evidence shows that Respondent is not known by the disputed domain name, and has not demonstrated any rights or interest in any component of the disputed domain name.
The Respondent has not yet attempted to make any bona fide use of the disputed domain name. The disputed domain name currently resolves to a “template” website that contains sponsored advertising links to websites where watches can be purchased, as well as a search function. The Panel finds that, in these circumstances, this is not use of the domain name in connection with a bona fide offering of goods or services.
In email correspondence with the Complainant dated July 17, 2007, the Respondent indicated an intention to use the disputed domain name to publicise press on the GAYDAR brand and to publish his own commentary on GAYDAR’s activities. Other domain names operated by the Respondent automatically redirect to his Online Personals Watch website, to a specific page dedicated to particular dating websites. For example, the Respondent’s <lavalifewatch.com> domain name automatically redirects to a page on the Respondent’s Online Personals Watch website (onlinepersonalswatch.typepad.com/news/lavalife/index.html) that contains with interviews, press releases, articles and commentary on Lavalife.
However, the Respondent’s Online Personals Watch website is not directly relevant to this dispute, as the Respondent has not presented any evidence of preparations to use, the dispute domain name or a name corresponding to the disputed domain name in connection with the Respondent’s Online Personals Watch website or any similar website.
Moreover, the Respondent did not provide any evidence that he is making legitimate non-commercial use of the disputed domain name, or intends to do so. At present, the domain is being used to host sponsored advertised links, which constitutes use of a commercial nature. It cannot be assumed that the Respondent intends to make legitimate fair use of the disputed domain name, merely because his other websites may possibly be legitimate.
If the website is a genuine complaints, commentary or watchdog website, then paragraph 4(c)(iii) may be satisfied. However, under this approach, all the circumstances are carefully considered, and paragraph 4(c)(iii) will not be satisfied, for example, if the website is merely a sham website created after the Respondent unsuccessfully attempted to sell the domain name, or if the website mostly includes links to competitors websites. Compare Legal & General Group Plc v. Image Plus, WIPO Case No. D2002-1019. Currently, the disputed domain name does not resolve to a website that is a genuine complaints, commentary or watchdog website.
The Panel finds that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests, and the Respondent has failed to demonstrate such rights or legitimate interests. Accordingly, the Panel finds that Paragraph 4(a)(ii) of the Policy is satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy enumerates four, non-inclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. Subparagraph (iv) includes circumstances where the Respondent, by using the disputed domain name, has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.
The Complainant and its brand are widely known (at least in the gay and lesbian marketplace) in the United Kingdom and internationally. Correspondence between the Complainant and Respondent, coupled with the Respondent’s professional interest in the online dating industry, makes it clear that the Respondent was aware of the Complainant’s business and its rights in the mark GAYDAR at the time he registered the disputed domain name.
It can therefore be inferred that the Respondent is using the disputed domain name to trade off the Complainant’s reputation and gain a commercial benefit for himself. This constitutes bad faith within the terms of the Policy.
It can be inferred that the Respondent intended to attract users to his website for his own commercial gain by creating a likelihood of confusion with the Complainant’s mark. Paragraph 4(b)(iv) of the Policy has therefore been satisfied. Compare SANOFI-AVENTIS v. Jason Trevenio, WIPO Case No. D2007-0648.
The Panel therefore finds that the registration and use of the disputed domain name has been in bad faith. Accordingly, the Panel finds that paragraph 4(a)(iii) of the Policy is satisfied.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <gaydarwatch.net> be transferred to the Complainant.
Dated: October 12, 2007