WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Friends Reunited Limited v. Michele Dinoia aka SZK.com
Case No. D2007-1357
1. The Parties
Complainant is Friends Reunited Limited, Surrey, United Kingdom of Great Britain and Northern Ireland, represented by Taylor Wessing LLP, United Kingdom of Great Britain and Northern Ireland.
Respondent is Michele Dinoia also known as (aka) SZK.com, Pineto, Italy.
2. The Domain Name and Registrar
The disputed domain name <freindsreunited.com> is registered with Dotster, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 11, 2007. On September 17, 2007, the Center transmitted by email to Dotster, Inc. a request for registrar verification in connection with the domain name at issue. On September 17, 2007, Dotster, Inc. transmitted by email to the Center 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”), 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 September 20, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was October 10, 2007. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 11, 2007.
The Center appointed Frederick M. Abbott as the sole panelist in this matter on October 22, 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.
4. Factual Background
Complainant is the holder of two registrations for the word trade and service mark FRIENDS REUNITED on the register of the United Kingdom Intellectual Property Office, i.e., registration number 2372264, dated April 20, 2007,1 in international classes (ICs) 9, 16, 38 and 45, covering a range of goods and services including (but not limited to) telecommunications, message boards and dating agency services, and; registration number 2326051, dated January 14, 2005, in ICs 18, 21, 25, 26, 28, 35, 41 and 45, including (but not limited to) “Assisting in the tracing of former friends”. (Complaint, Annex 7)
Complainant’s principal use of the FRIENDS REUNITED service mark is in connection with the operation of an Internet website which permits individuals to find persons with whom they attended school and pursued other activities (Complaint). The main web portal for Complainant’s business is at Internet address “www.friendsreunited.co.uk”, although Complainant has registered a significant number of domain names that redirect Internet users to the web portal operated at that address (id., at Annex 6).
Complainant registered the domain name <friendsreunited.co.uk> in June 2000 (see id., Annex 4), was incorporated in February 2000, and claims to have started its business in July 1999.
Complainant has furnished substantial evidence in the form of published reports of Thompson Business Intelligence, to show that as of July 25, 2001, approximately 800,000 individuals had registered with Complainant’s web-based business (id., Annex 8). Complainant’s data shows that as of August 2001, approximately one million individuals had registered with its business, and that as of September 2007, 19 million individuals had registered with its business (Complaint). The data provided by Complainant is supported by published reports of Thompson Business Intelligence (id., Annex 9). Complainant indicates that it has invested substantially in advertising and promoting its Internet-based business.
According to the Registrar’s Verification Report, Respondent is registrant of the disputed domain name, <freindsreunited.com>. According to a Better-Whois.com WHOIS database report provided by Complainant, the record of registration for the disputed domain name was created on November 21, 2001.
As of July 9, 2007, the disputed domain name directed Internet users to a web portal page headed “Welcome to freindsreunited.com”, with subheading "For resources and information on Dating and Find [sic] people”. Various links were provided to “Dating”, “Find people”, “Free UK chat rooms”, and other services (Complaint, Annex 10). An Internet archive service report indicates that the web pages associated with the disputed domain name were revised on numerous occasions between 2003 and 2007 (id.).
Respondent has been the subject of numerous complaints under the Policy, and on numerous occasions domain names registered by Respondent have been the subject of orders for transfer by WIPO administrative panels. The previous administrative proceedings include Encyclopaedia Britannica, Inc. v. Michele Dinoia/SZK.com, WIPO Case No. D2005-0865; FNAC v. SZK.com, WIPO Case No. D2004-0413; Volvo Trademark Holding AB v. Michele Dinoia, WIPO Case No. D2004-0911; Phillip Morris USA, Inc. v. Michele Dinoia, SZK.com, WIPO Case No. D2005-0171; Gap (Apparel), LLC v. Michele Dinoia aka SZK.com, WIPO Case No. D2006-0545, and; BellSouth Intellectual Property Corporation v. Michele Dinoia, WIPO Case No. D2004-0486. (Complaint) Complainant alleges that Respondent has been determined to have registered and used in bad faith at least 49 domain names in WIPO administrative proceedings. The Panel has not attempted to independently verify that assertion. Complainant has also listed a number of proceedings conducted by National Arbitration Forum panels which it asserts also has resulted in the transfer of the subject domain names. (Id.)
The Registration Agreement in effect between Respondent and Dotser, Inc. subjects Respondent to dispute settlement under the Policy. The Policy requires that domain name registrants submit to a mandatory Administrative Proceeding conducted by an approved dispute resolution service provider, of which the Center is one, regarding allegations of abusive domain name registration and use (Policy, paragraph 4(a)).
5. Parties’ Contentions
Complainant alleges that it is the holder of rights in the trade and service mark FRIENDS REUNITED based on use in commerce and as evidenced by registration in the United Kingdom. Complainant argues that its common law rights in the trade and service mark arose before Respondent registered the disputed domain name. Complainant contends that the terms “Friends” and “Reunited” taken together are “inherently distinctive”. However, it also argues that they have acquired a protectable “secondary meaning” in connection with Complainant and its services.
Complainant contends that the disputed domain name is confusingly similar to its trade and service mark because it represents a commonly anticipated misspelling of Complainant’s mark.
Complainant states that Respondent has no rights or legitimate interests in the disputed domain name. Respondent has no association with Complainant. Complainant indicates that Respondent must have been aware of Complainant’s trade and service mark when it registered the disputed domain name because of the wide publicity its Internet business had received. Complainant argues that because Respondent’s web portal includes various headings similar to services offered by Complainant this evidences that Respondent was aware of Complainant’s business. Complainant states that it is logical to assume that Respondent earns income from “click throughs” from its web portal. Complainant argues that Respondent is not making legitimate noncommercial or fair use of the disputed domain name, and that it has not been commonly known by the disputed domain name.
Complainant alleges that Respondent registered and is using the disputed domain name in bad faith: (1) by implicitly offering to sell the disputed domain name because it could only be legitimately used by Complainant; (2) preventing Complainant from registering the disputed domain name and having engaged in a pattern of conduct of such behavior; (3) by disrupting the business of Complainant, and; (4) by intentionally attempting to attract for commercial gain Internet users to Respondent’s website by using Complainant’s mark to creating a likelihood of confusion as to whether Complainant is source, sponsor, affiliate or endorser of Respondent’s website.
Complainant requests the Panel to direct the Registrar to transfer the disputed domain name to Complainant.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. The Panel will confine itself to making determinations necessary to resolve this Administrative Proceeding.
It is essential to dispute resolution proceedings that fundamental due process requirements be met. Such requirements include that a respondent has notice of proceedings that may substantially affect its rights. The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).
A printout from the express courier service used by the Center in this proceeding indicates that the Complaint was successfully delivered to the address furnished by Respondent on its record of registration for the disputed domain name. The record of e-mail transmissions from the Center to Respondent does not indicate any difficulties. The Panel is satisfied that Respondent was given adequate notice of these proceedings, and that each party has been given adequate opportunity to present its position.
Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use, and to obtain relief. These elements are that:
(i) respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) respondent has no rights or legitimate interests in respect of the domain name; and
(iii) respondent’s domain name has been registered and is being used in bad faith.
Each of the aforesaid three elements must be proved by a complainant to warrant relief.
A. Identical or Confusingly Similar
Complainant first successfully registered its FRIENDS REUNITED trade and service mark at the UK Intellectual Property Office on January 14, 2005 (see Factual Background supra). Respondent registered the disputed domain name on November 21, 2001. In order for Complainant to establish that it was the holder of rights in a trademark at the time Respondent registered the disputed domain name, Complainant must rely on the establishment of common law rights prior to its successful registration of the trademark. The trademark law of the United Kingdom permits parties to establish trademark rights at common law through use in commerce, and as evidenced by consumer association of the trademark with the goods or services of its holder.2
Complainant has provided substantial evidence that as of August 2001 its Internet business was widely known and used by consumers in the United Kingdom. As of that date, approximately one million individuals had registered to use its service.
The Panel does not accept Complainant’s argument that the terms Friends Reunited taken together are inherently distinctive. Taken together, the terms are descriptive. However, in light of the fact that the UK Intellectual Property Office has registered FRIENDS REUNITED, the Panel is not prepared to conclude that the terms taken together are so “commonly descriptive” as to be incapable of acquiring secondary meaning. The Panel notes that Respondent has not submitted any argument on this account.
Based on the undisputed fact that approximately one million individuals associated the term Friends Reunited with Complainant’s web-based service business by August 2001 and having determined that for purposes of this proceeding the combined term is not commonly descriptive, the Panel finds that Complainant established rights in the mark FRIENDS REUNITED prior to November 21, 2001, the date on which Respondent registered the disputed domain name.
The disputed domain name <freindsreunited.com> transposes the letters “i” and “e” in the common English language term “friends”. Such a transposition is a common typographical error that would go unnoticed by many Internet users. The disputed domain name <freindsreunited.com> is confusingly similar to Complainant’s FRIENDS REUNITED trade and service mark. In the circumstances of this proceeding, it is a transposition/typographical error that appears deliberately intended to confuse Internet users as to Complainant’s association with Respondent’s web portal.
Complainant has established that it has rights in the FRIENDS REUNITED trade and service mark, and that the disputed domain name is confusingly similar to that mark.
B. Rights or Legitimate Interests
The second element of a claim of abusive domain name registration and use is that the respondent has no rights or legitimate interests in respect of the domain name (Policy, paragraph 4(a)(ii)). The Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests:
“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 trademark or service mark rights; or
(iii) you are 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.” (Policy, paragraph 4(c))
Respondent has not been authorized by Complainant to use its FRIENDS REUNITED trade and service mark. There is no evidence to show that Respondent has been commonly known by the disputed domain name.
Respondent was presumably aware of Complainant’s trademark and web business prior to its registration of the disputed domain name. This inference arises from Respondent’s decision to register the disputed domain name using a typographical transposition of a common word in Complainant’s mark at a time when Complainant’s mark was associated with an Internet business that had attracted approximately one million registered users. In these circumstances, Respondent’s use of the disputed domain name and Complainant’s mark to direct Internet users to a website offering services directly competitive with those of Complainant did not constitute a bona fide offering of services prior to notice of a dispute within the meaning of Paragraph 4(c)(i) of the Policy.
Respondent appears to be acting as a conduit to third party offers of services, and is presumably receiving some form of compensation for click-throughs to such third party service providers. Respondent is taking advantage of the goodwill associated with Complainant’s mark to offer services of third parties, including direct competitors of Complainant. This does not constitute a bona fide offering of services, or fair use of Complainant’s mark within the meaning of Paragraph 4(c)(i) and (iii) of the Policy. Respondent is using the domain name in a way that misleads Internet users for commercial gain. See, e.g., Fifth Third Bancorp v. Texas International Property Associates, WIPO Case No. D2007-0537, and MasterCard International Incorporated v. Paul Barbell, WIPO Case No. D2007-1139.
Complainant has established that Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The Policy indicates that certain circumstances may, “in particular but without limitation”, be evidence of bad faith (Policy, para. 4(b)). Among these circumstances are (1) that the domain name has been registered by a respondent “primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [respondent’s] documented out-of-pocket costs directly related to the domain name” (id., para. 4(b)(i)); (2) that a 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 [the respondent has] engaged in a pattern of such conduct” (id., para. 4(b)(ii)); (3) that a respondent has “registered the domain name primarily for the purpose of disrupting the business of a competitor” (id., para. 4(b)(iii)), and; (4) that a respondent “by using the domain name, … [has] intentionally attempted to attract, for commercial gain, Internet users to [its] website 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 [respondent’s] website or location of a product or service on [its] website or location” (id., para. 4(b)(iv)).
Complainant has argued that Respondent engaged in bad faith conduct sufficient to satisfy all of the listed criteria under Paragraph 4(b) of the Policy. As a matter of administrative procedure economy, the Panel need not address each of these arguments.
Respondent registered and has used the disputed domain name, which represents a minor transposition of letters and a common typographical misspelling of Complainant’s trade and service mark, for the purpose of intentionally attracting for commercial gain Internet users to Respondent’s website, by creating confusion as to source, sponsorship, affiliation or endorsement by Complainant of Respondent’s website. The content on Respondent’s website includes various links to third parties offering services directly competitive with those of Complainant, and those links were placed on the website by Respondent.3 Respondent is presumably receiving some form of compensation for click-throughs to such third party competitors. Such use of the disputed domain name constitutes bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
Complainant has satisfied each of the three elements necessary for a finding of abusive domain name registration and use within the meaning of the Policy.
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, <freindsreunited.com> be transferred to Complainant.
Frederick M. Abbott
Dated: November 5, 2007
1 In its Complaint, Complainant incorrectly states that the date of registration for this mark is September 6, 2004, which in fact is the filing date for this registration (Complaint, Annex 7). This apparently inadvertent misstatement is not material to the outcome of this proceeding.
2 See William Cornish, Intellectual Property, 4th ed. (Sweet & Maxwell 1999), at 16-08 through 16-13.
3 The content of Respondent’s web portal is “static”. It does not automatically update based on changes in the frequency of input of search terms (Complaint).