WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Avid Life Media, Inc. v. Melody Carstairs
Case No. DAU2011-0001
1. The Parties
The Complainant is Avid Life Media, Inc. (being the parent company or Cougar Life Inc.) of Ontario, Canada, represented by SafeNames Ltd., United Kingdom of Great Britain and Northern Ireland.
The Respondent is Melody Carstairs of Victoria, Australia.
2. The Domain Name and Registrar
The disputed domain name <cougarlife.com.au> (“the Domain Name”) is registered with TPP Domains Pty Ltd. dba TPP Internet (“the Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 12, 2011. On January 13, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On January 20, January 24, and January 26, 2011, the Registrar transmitted by email to the Center its verification responses confirming that the Domain Name was created on March 12, 2010, that the Respondent is listed as the registrant, providing the contact details, and confirming that the Domain Name will remain locked pending these Administrative Proceedings and that the .au Dispute Resolution Policy (the “Policy”) applies to the Domain Name. On January 25, 2011, the Center received a further submission from the Complainant.
The Center verified that the Complaint satisfied the formal requirements of the Policy, the Rules for .au Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .au 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 January 28, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was February 17, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 18, 2011.
The Center appointed Alan L. Limbury as the sole panelist in this matter on February 24, 2011. 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, a social entertainment company based in Toronto, Canada and founded in 2007, is the parent company of Cougar Life Inc., also of Toronto. Cougar Life Inc. is the registered proprietor of Canadian trademark COUGAR LIFE, No. TMA 774395, registered on August 13, 2010 with respect to “providing on-line chat rooms for transmission of messages among computer users concerning erotic and adult fantasy; providing Internet voice communication services via the Internet; Internet based dating, matchmaking and social introduction services”.
Cougar Life Inc. is also the applicant for registration of the COUGAR LIFE mark with respect to the same services in the United States (application No. 77793446 dated July 30, 2009) and in Australia (application No. 1395372 dated November 19, 2010).
On its website at “www.avidmedia.com” and otherwise, the Complainant has promoted the Cougar Life brand as an online community in which people build profiles where they can meet people who have similar life choice interests. The Complainant has promoted the website “www.cougarlife.com” as a dating site for “strong, successful, sexy older women and vibrant, ambitious young men”.
As mentioned, the Domain Name was registered by the Respondent on March 12, 2010. Prior to a cease and desist letter from the Complainant dated August 9, 2010, the Domain Name resolved, via an affiliate link belonging to the Respondent, to the Complainant’s Internet dating website. Following the cease and desist letter, the Respondent has parked the Domain Name by redirecting it to another site of hers, “www.namepond.com”.
5. Parties’ Contentions
The Complainant claims rights in the registered trademark COUGAR LIFE and also claims common law rights in that mark, to which it says the Domain Name is identical.
The Complainant says the Respondent has no rights or legitimate interests in respect of the Domain Name because the Respondent is not commonly known by the Domain Name, has no trade mark registration for COUGAR LIFE and was not authorised by the Complainant to use the COUGAR LIFE trademark. Her use of the Domain Name prior to notice of this dispute was not making a bona fide offering of goods or services. Her intention in registering the Domain Name was to use the reputation of the trademark COUGAR LIFE and to trade on its fame to make financial gain and profit as well as to tarnish the Complainant’s mark.
The Complainant says that although the Policy requires that the Domain Name be registered or subsequently used in bad faith, the Respondent’s actions satisfy both these criteria. The Respondent clearly had prior knowledge of the Complainant’s business since she targeted the Complainant and its business by redirecting the Domain Name to the Complainant’s official website via an affiliate link. The Complainant operates an affiliate program under which owners of websites can earn commission for every referral that goes on to register an account with the Complainant. In redirecting via an affiliate link, the Respondent has intentionally set out to deceive the Complainant with regards to the real source of the web traffic.
The Complainant seeks the transfer to it of the Domain Name.
The Respondent has made no response to the Complaint.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles it is to use in determining this dispute: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules, and any rules and principles of law that it deems applicable.”
To succeed in a complaint under the Policy, a complainant must establish that:
(i) the domain name is identical or confusingly similar to a name, trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered or subsequently used in bad faith.
As with the Uniform Domain Name Dispute Resolution Policy, a respondent is not obliged to participate in a proceeding under the Policy but if it fails to do so, asserted facts may be taken as true and reasonable inferences may be drawn from the information provided by the complainant: Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441. See also Microsoft Corporation v. Freak Films Oy, WIPO Case No. D2003-0109; SSL International plc v. Mark Freeman, WIPO Case No. D2000-1080 and Alta Vista Company v. Grandtotal Finances Limited et al., WIPO Case No. D2000-0848.
A. Identical or Confusingly Similar
The registrant of the Canadian trademark COUGAR LIFE is not the Complainant but its wholly owned subsidiary, Cougar Life Inc. In the absence of any evidence of a licence, the Panel is not prepared to infer that its parent, the Complainant, has rights in that registered mark. See Danfoss A/S v Coldwell Banker Burnet et al., WIPO Case No. DBIZ2001-00020.
Trademark registration applications do not give rise to trade mark rights: see Aspen Grove, Inc. v. Aspen Grove, WIPO Case No. D2001-0798 and Spencer Douglass MGA v. Absolute Bonding Corporation, WIPO Case No. D2001-0904.
To succeed in a Complaint under the Policy in relation to an unregistered mark, it is necessary for the Complainant to produce evidence proving that, prior to the filing of the Complaint, it has provided goods or services under the unregistered mark and had thereby acquired a reputation such that members of the public would associate those goods or services with the Complainant and not with others not authorized by the Complainant to use the mark. That is to say, the Complainant must prove that, prior to filing the Complaint, it had acquired a right in the unregistered mark such as would enable it to bring a legal action against a third person using the mark without its consent: British Heart Foundation .v. Harold A Meyer III (eResolution Case No. AF0957).
The Panel is satisfied, on the evidence of use of the COUGAR LIFE mark by the Complainant in the online environment to which it is directed, and the evidence of publicity given to that mark, that the Complainant has common law rights in the COUGAR LIFE mark with respect to online dating services.
In determining whether a domain name is identical or confusingly similar to a trademark, country code top level domain suffixes are to be ignored: see BT Financial Group Pty Limited v. Basketball Times Pty Ltd, WIPO Case No. DAU2004-0001.
The Panel finds that the Domain Name is identical to the Complainant’s common law COUGAR LIFE trademark. The Complainant has established this element of its case.
B. Rights or Legitimate Interests
The Complainant’s assertions set out above establish a prima facie case of absence of rights or legitimate interests in the Domain Name on the part of the Respondent. The onus therefore shifts to the Respondent to show, by concrete evidence, that she has such rights or interests. In the absence of a response, the Complainant’s assertions stand unrebutted.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Complainant has established this element of its case.
C. Registered or Subsequently Used in Bad Faith
Under the Policy, paragraph 4(b)(iv), the following circumstances shall be evidence of bad faith registration and (sic) use:
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to a website…by creating a likelihood of confusion with the complainant’s name or mark as to the…affiliation or endorsement of that website […]
Here the Domain Name, which comprises the Complainant’s distinctive COUGAR LIFE trademark with the “com.au” suffix, conveys to Internet users that it will lead them to the official Australian website of the Complainant. In the hands of the Respondent this representation is misleading because the Respondent’s “www.cougarlife.com.au” website is not the official Australian website of the Complainant.
The Panel finds that the Respondent has been fully aware of this and that, by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to her “www.cougarlife.com.au” website by creating a likelihood of confusion with the Complainant’s mark as to the affiliation or endorsement of that website.
The Panel therefore finds that the Domain Name has been used in bad faith.
The Complainant has established this element of its case.
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 <cougarlife.com.au> be transferred to the Complainant upon the Registrar (or Registry for .au, being the Australian Domain Name Administrator (AUDA)) being satisfied of the Complainant’s eligibility under any relevant eligibility criteria for .au domain names. If the Complainant’s eligibility be not so established, the Panel orders that the domain name <cougarlife.com.au> be transferred to Cougar Life Inc. upon the Registrar being satisfied of that company’s eligibility under any relevant .au eligibility criteria. If Cougar Life Inc.’s eligibility be not so established, the Panel orders that the domain name <cougarlife.com.au> be cancelled.
Alan L. Limbury
Dated: March 9, 2010