WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Global Personals, LLC v. Domains By Proxy, LLC / Thomas Kupracz
Case No. D2013-0528
1. The Parties
Complainant is Global Personals, LLC of Miami, Florida, United States of America, represented by Bryn & Associates, P.A., United States of America.
Respondent is Domains By Proxy, LLC / Thomas Kupracz of Scottsdale, Arizona, United States of America and Laval, Quebec, Canada, respectively, represented by Gonzalez & Mosier Law PLLC, United States of America.
2. The Domain Name and Registrar
The disputed domain name <best-fling-sites.com> (the “Domain Name”) is registered with GoDaddy.com, LLC. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 18, 2013. On March 19, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 21, 2013, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on March 22, 2013, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on March 22, 2013.
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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on March 26, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was April 15, 2013. The Response was filed with the Center on April 15, 2013.
On April 20, 2013, Complainant filed a supplemental submission.
The Center appointed Clive L. Elliott as the sole panelist in this matter on April 23, 2013. 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 Domain Name was registered on May 27, 2012.
5. Parties’ Contentions
Complainant states that it provides consumers around the world with access to a thriving adult social network community through its website “www.fling.com”, and that it has over 3.5 million Internet visitors each month to this website. It submits that it is one of the most popular adult dating websites in the world.
Complainant advises that since at least 2006, it has continually used the service mark FLING to identify its online service and adult social networking community and that it has engaged in substantial advertising and promotional efforts to promote its services and the FLING mark around the globe. As a result Complainant contends that its FLING mark has become one of the most respected and recognizable marks in the adult entertainment industry. Complainant asserts that in 2012, “www.fling.com” was named the Best Dating Website by AVN, the adult entertainment industry equivalent to an Academy Award.
Complainant states that it has exclusive rights in the FLING mark, which was registered, in both standard character and stylized forms, on December 4, 2007, and December 23, 2008, respectively. Complainant also states that it has exclusive rights to use of its FLING mark for the provision of adult social networking services as it has been continuously using the mark for the provision of such services since at least 2006.
Complainant contends that Respondent registered the Domain Name because it was confusingly similar to the <fling.com> domain name and FLING mark. Complainant also contends that in the time that Respondent has owned the registration of the Domain Name, it has never used it for the offering of any goods or services. Instead Respondent has used the Domain Name to publish a fake review site that has been optimized around Complainant's FLING trademark, in order to capture customers searching for Complainant's services and then direct them to direct competitors of Complainant.
Complainant asserts that the Domain Name is near identical and confusingly similar to its FLING mark, adding only descriptive terms, “best” and “sites”, as well as a generic top-level domain (“gTLD”) “.com”. Complainant claims that the word “sites” is related to Complainant's adult dating site offering under the FLING mark, and the term “best,” is a laudatory word that adds no distinctiveness to the Domain Name, and thereby Respondent has failed to eliminate the confusing similarity between Complainant's mark and the Domain Name.
It is argued that registration and use of a Domain Name in bad faith does not establish rights or legitimate interests. According to the UDRP, once complainant asserts that respondent has no rights or legitimate interests with respect to a domain name in issue, the burden then shifts to respondent to provide “concrete evidence” that it has rights to, or legitimate interest in, the domain name at issue.
Complainant submits that Respondent has registered the Domain Name in bad faith, as Respondent has not used the Domain Name in connection with a bona fide offering of goods and services, nor shows signs of an intention to do so. Complainant asserts that Respondent has used the Domain Name to publish what appears at first glance to be a website devoted to review and commentary on a number of adult dating websites, including Complainant’s <fling.com> website. However, it is contended that upon closer scrutiny Respondent has peppered every page of its website with Complainant’s registered mark. Additionally, Complainant’s mark appears many more times in the HTML code behind these web pages.
Complainant states that a deeper analysis of Respondent’s website reveals that Complainant’s mark has been purposefully used with an extremely high density as a search engine optimization (“SEO”) keyword intended to boost Respondent’s website in search results presented when an Internet user searches for Complainant’s <fling.com> website. Complainant contends that its FLING mark appears as many as 49 times on a single page in Respondent’s website presented on the Domain Name and that Respondent’s bad-faith SEO manipulation has succeeded in pushing the Domain Name into the second search result position on Google.
Complainant contends that after attracting Internet users searching for Complainant’s site, Respondent then directs them to Complainant's direct competitors. This is apparent from the character of links provided on Respondent's mock review page, where although many websites are “reviewed,” users are provided with “Visit” links to only five of the actual sites providing services — none of which are Complainant’s website. Moreover, each of those five links are embedded with affiliate advertising codes that provide pecuniary gain directly to Respondent when users ultimately purchase services from Complainant’s competitors.
Complainant submits that this commercial gain both harms Complainant and unjustly enriches Respondent, as Respondent gains website traffic from the traffic driven to sites controlled by Complainant’s direct competitors through nothing more than the false association created with Complainant’s protected trademarks.
Complainant asserts that Respondent is not making a legitimate noncommercial or fair use of the Domain Name and that rather he is using the Domain Name to unfairly compete with Complainant.
Complainant contends that Respondent purchased the registration for the Domain Name in bad faith because the Domain Name was registered in 2012, which is well after Complainant had established clear trademark rights in the FLING mark, and that the Domain Name includes Complainant’s trademark, Internet users may (at least initially) mistakenly believe that the resulting website is affiliated with Complainant.
Complainant states that it has sent two cease and desist demands to Respondent and that on February 19, 2013, in its second letter to Respondent concerning unauthorized uses of the FLING mark, Complainant specifically outlined its rights in and to the Domain Name and requested transfer of the Domain Name. Complainant states that Respondent has ignored all of Complainant’s attempts to communicate.
Respondent denies the statements and allegations in the Complaint.
Respondent claims that the Complaint lacks any credible evidence of “bad faith” registration and that there is no evidence that Respondent registered or acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant 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. Respondent also claims that there is no evidence that Respondent registered the Domain Name in order to prevent Complainant from reflecting the mark in a corresponding domain name, because Complainant’s domain name <fling.com> preceded Respondent’s in registration. Respondent further claims that there is no evidence that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor and that all Respondent has done is maintain an industry-specific but participant-agnostic website that compares websites on which customers can seek to engage in a fling, and provide analysis of which sites are effective for that purpose.
Respondent asserts that Complainant is unable to sustain allegations of infringement based upon Complainant’s trademark rights, because the FLING mark is generic in view of the goods and services of both Respondent and Complainant. Respondent suggests that it is well settled that the name of a thing cannot be a trademark for that thing and that the name of a product or service itself is the very antithesis of a mark. In this case, it is submitted that Complainant is asserting that its marks for FLING and FLING.COM preclude Respondent’s use of the word “fling” within the Domain Name <best-fling-sites.com>. Respondent submits that in this case, FLING is a generic term for a “deliberately short-term sexual relationship between two people” and cannot be used as a trademark for websites promoting deliberately short-term sexual relationships between two people.
Respondent points out that Complainant contends it possesses an exclusive right to use the term FLING and FLING.COM for its goods and services, however, even a valid registration for the marks does not preclude all usage – only that usage protected by the goods and services descriptions of the marks, and only within the larger framework of trademark law.
Respondent points out that the FLING.COM mark is restricted to web site services featuring on-line dating clubs and the FLING mark is for “providing websites featuring information and content in the fields of personal relationships and dating.” Respondent argues that these deliberately vague descriptions were clearly intended to mislead and disguise the true nature of Complainant’s services during the registration process, as the true nature of Complainant's services renders these marks generic. For example, Complainant’s own website describes the service as such: “Fling.com is the Hottest Place to Hook Up! Find sex by contacting fellow Fling members and get laid tonight.” This self-description of Complainant’s services is the very definition of the term “fling” a “deliberately short-term sexual relationship between two people.”
Respondent contends that if generic names could be one seller’s exclusive property, competitors would have difficulty informing consumers that they were competitors, because they would be unable, without elaborate and possibly confusing paraphrase to give the name of the product they were selling.
Respondent states that he had been using the Domain Name for reasonable comparative commercial purposes before any notice of Complainant’s dispute, and that Complainant and Respondent had been working amicably together in an advertising relationship prior to the dispute, and it was only after a negotiation on advertising rates broke down that Complainant proceeded with a dispute.
Respondent asserts that the commercial relationship between Complainant and Respondent has existed since at least 2010, long before initiation of the Complaint and that this demonstrates use of the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services since at least 2010, and that Respondent (as an individual, business, or other organization) has been commonly known by the Domain Name and is making a legitimate fair use name for the goods or services or a portion thereof, for which it is registered.
Respondent submits that Complainant’s allegations of famous marks or likelihood of confusion are without merit, as long as Respondent’s use is one that allows consumers to compare goods or services. Respondent claims that such use is the primary purpose of his website, and is evident from the plain language of the website and that as long as Respondent does not pass off its services as those of Complainant, the statute provides protection for such comparative use, and even if an accused use does not strictly qualify as comparative advertising or promotion within the statutory defense, it may still be exempt as a non-trademark use, which does not dilute.
Respondent suggests that there is no reasonable likelihood that Respondent’s reviews, tips, and comparisons would be mistaken by consumers to be the services offered by Complainant at the domain name <fling.com>, as one is a review site that discusses effectiveness of third-party sites without a subscription mechanism or on-site matching; and the other is an actual site providing flings subsequent to a subscription system.
C. Complainant’s supplementary submissions
Complainant agrees that Respondent was previously an independent advertiser for Complainant’s “www.fling.com” website, however states that Respondent has never been paid any negotiated rate for his services, and no negotiations have ever taken place between Respondent and Complainant regarding any advertising rate or otherwise. Complainant denies Respondent’s assertions that negotiations had taken place, that those negotiations had broken down, and that Complainant initiated the instant dispute as a result.
Complainant advises that there has never been a dispute between Respondent and Complainant over the advertising rate that Respondent should be paid for his services and in fact, Respondent has never contacted Complainant’s Independent Advertising Manager about any subject at all.
Complainant points out that even if there had been some argument between Respondent and Complainant over advertising rates (which there was not), it had no connection to the Domain Name, as Complainant was unaware of Respondent’s identity as the true registrant for the Domain Name until the WHOIS record for the Domain Name was unmasked by Domains By Proxy, LLC, after Complainant filed its Complaint in this dispute – at which time Respondent’s advertiser account was terminated for violation of Complainant’s advertiser terms.
Complainant’s advertiser terms prohibit registration and use of domain names that incorporate Complainant’s trademarks. Complainant advises that had it been aware that Respondent was the true registrant of the Domain Name prior to March 22, 2013, Respondent’s independent advertiser account would have been terminated long ago, and there would not have been any negotiations concerning his advertising rates.
Complainant submits that the fact that Respondent was an independent advertiser of Complainant, prior to registration and use of the Domain Name, shows Respondent’s bad faith. And also shows that Respondent was aware of Complainant and its marks, that Respondent was fully aware of the character of his actions in registering and using a domain name that is confusingly similar to Complainant’s marks, and that he affirmatively chose to act in bad faith by concealing his identity as he used the Domain Name to attract and direct Complainant’s customers to its direct competitors.
6. Discussion and Findings
A. Identical or Confusingly Similar
Complainant asserts that through extensive use and by virtue of registration it has acquired exclusive rights in the FLING mark, which was registered, in both standard character and stylized forms in 2007 and 2008, respectively (hereinafter the “FLING Trademark”). Complainant also asserts that it has used the FLING Trademark for the provision of adult social networking services since at least 2006.
The question thus arises, whether in a practical sense, the ownership of a registered trademark to which the Domain Name is arguably confusingly similar (because it contains the FLING Trademark in its entirety) automatically satisfies the requirements under paragraph 4(a)(i) of the Policy. Arguably, if Complainant owns a registered trademark then it usually satisfies the threshold requirement of having trademark rights and equally the location of the registered trademark and the goods and/or services it is registered for are largely irrelevant when finding rights in a mark.
However, it might also be argued that Complainant cannot claim over-extensive rights in a descriptive or generic term, comprising or forming part of the trademark in issue. Respondent of course argues that the word “fling” is the very definition of a “deliberately short-term sexual relationship between two people” and is thus directly descriptive of goods or services relating thereto. Such discussion is not however generally recognized as applicable under this ground for purposes of the Policy.
Prevailing authority is that a UDRP panelist should not over-analyse the position once a complainant has established that it has trademark rights and such trademark is incorporated and recognizable as such within the domain name in question (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.2, and the cases cited therein. On the basis of the above, the Panel finds that the Complainant satisfies the threshold requirement of having relevant trademark rights as required by the Policy, that the Domain Name is at least confusingly similar to the trademark and accordingly that this particular ground is established.
B. Rights or Legitimate Interests
As courts in various jurisdictions have repeatedly stated, care has to be exercised where one party attempts to acquire exclusive rights in eloquently descriptive words and phrases. In refusing to transfer the domain name <nudescape.com> it was noted:
“The question has to be answered to some extent by asking whether the Respondent has the right to use the words “nude” and “scape” to describe its pornographic services. That is, quite apart from whether the Complainant may have rights in these or similar words. It seems to the Panel that there is a reasonably good argument that the Respondent should have a right to use these common English words to describe its pornographic services. Otherwise, parts of the English language would soon be acquired and removed from common use by those wishing to name their businesses or describe their services.”
America Online Inc. v. Media Dial Communications, WIPO Case No. D2001-0799.
The evidence on record indicates that the word “fling” has a particular meaning and resonance in relation adult dating websites including online adult social networking community services. It is also a word or term particularly apt for use in relation to a website that either provides or reviews adult dating services.
The Panel finds that the word or term “fling” is one which members of the public, including Respondent, may have wish to use on or in connection with adult dating services, or social networking community services more generally. Indeed, the Panel is of the view that they are entitled to do so as long as they do not infringe the particular rights covered by the above trademark registration(s) in accordance with the requirements of the Policy. In this regard, it is relevant to note that Respondent has added to the common descriptor “fling” the words “best” and “sites”. While these words are themselves descriptive, once combined in this way, a term with a quite different meaning emerges – namely a reference to “the best fling sites”. Such reference is both apt and appropriate for use in relation to an entity or website that reviews sites or services aimed at those interested in having a “fling” or in the wider community involved in such affairs.
On the face of it Respondent appears to be providing a service which reviews, at least to some extent, different “fling” dating websites or services and for that type of business the Domain Name is apt for use.
For these reasons the Panel finds on the basis of the evidence presented that Complainant has not established that Respondent lacks rights or legitimate interests in the Domain Name.
C. Registered and Used in Bad Faith
Even if it is established that Complainant has some rights in the word or term “fling”, the purpose of the UDRP is not necessarily to privilege the first of many mark or name users to seek redress, but instead to prevent any mark owner from being particularly and purposefully harassed and targeted in accordance with the use circumscribed under the Policy.
The Panel sees no reliable indication, other than the similarity of names and the fact that Complainant and Respondent appear to be involved in the same area of online activity, that Respondent intended to register or use the Domain Name for any of the purposes identified in paragraph 4(b) or otherwise construed as in bad faith under the Policy.
Accordingly, Complainant has not shown that the Domain Name was registered and used in bad faith.
For the foregoing reasons, the Complaint is denied.
Clive L. Elliott
Date: May 7, 2013