WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Plentyoffish Media Inc. v. Pramualsin Kerdngam
Case No. D2012-1328
1. The Parties
The Complainant of Plentyoffish Media Inc. of Vancouver, Canada, represented by Seed Intellectual Property Law Group, PLLC, United States of America.
The Respondent is Pramualsin Kerdngam of Chanthaburi, Thailand.
2. The Domain Name and Registrar
The disputed domain name <plentyoffish.us.com> is registered with Name.com LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 29, 2012. On June 29, 2012, the Center transmitted by email to CentralNic a request for registrar verification in connection with the disputed domain name. On June 29 and July 7, 2012, CentralNic transmitted by email to the Center its verification response confirming the Respondent is listed as the registrant and providing the contact details. On July 2, 2012, the Center transmitted to the Registrar a request for registrar verification in connection with the disputed domain name. On July 4, 2012 and July 9, 2012 the Registrar transmitted by email to the Center its verification responses 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 CentralNic Dispute Resolution Policy (the “Policy”) and the Rules for CentralNic Dispute Resolution Policy (the “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 July 10, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was July 30, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 1, 2012.
The Center appointed Adam Taylor as the sole panelist in this matter on August 8, 2012. 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 operates a well-known online dating site with millions of users.
The Complainant owns a number of registered trade marks for the term PLENTY OF FISH including U.S. trade mark no. 3,302,508 filed August 4, 2006 / registered October 2, 2007 in international classes 38 and 45.
The disputed domain name was registered on January 12, 2011.
As of June 22, 2012, there was a website at the disputed domain name offering online dating services and which also included Amazon.com affiliate advertisements for a range of related goods such as books about dating.
By an email of May 30, 2012, sent in response to the Complainant’s cease and desist letter, the Respondent stated that he registered the disputed domain name before the Complainant had registered its trade mark. He advised the Complainant “to speak to” the websites at “www.plentymorefish.net” and “www.plentymorefish.com”. He offered to move his server to China or Russia so that “when user[s] register that mean they go to china and register not in USA”. Finally, the Respondent offered to sell the disputed domain name for USD 100,000.
The Respondent owns a number of other domain names reflecting well-known third party trade marks such as <appletablets.us>, <kmartstores.net> and <toshibacomputer.us>.
5. Parties’ Contentions
Identical or Confusingly Similar
The disputed domain name fully incorporates the Complainant’s trade marks and it is therefore confusingly similar to those trade marks.
Rights or Legitimate Interests
The Complainant has not licensed or otherwise permitted the Respondent to use its marks.
According to the WhoIs records for the disputed domain name, the Respondent is not commonly known by the term “Plentyoffish” comprised in the disputed domain name. To the best of the Complainant’s knowledge, the Respondent has not applied for any trade mark for that term.
The Respondent is not using the disputed domain name for a bona fide offering of goods of services. Instead the disputed domain name has been and is currently being used to divert Internet users to a website offering online dating services competing with the Complainant, which cannot constitute bona fide use.
The Respondent is not making a legitimate noncommercial use of the disputed domain name. The Respondent presumably earns click-through revenue from the Amazon.com advertisements.
Registered and Used in Bad Faith
The Respondent, by registering the disputed domain name which wholly incorporates the Complainant’s mark, is diverting Internet users to a competing online dating website and disrupting the Complainant’s business. This is bad faith registration and use under paragraph 4(b)(iii) of the Policy. The Respondent is financially benefitting from such use through third party advertisements, evincing bad faith registration and use under paragraph 4(b)(iv) of the Policy.
The Respondent’s demand for USD 100,000, an amount substantially exceeding any out-of-pocket costs, is further evidence of bad faith use and registration.
The Respondent’s registration of domain names which are identical or confusingly similar to other famous marks is a pattern of conduct evincing bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has rights in the term PLENTY OF FISH arising from its registered trade marks.
The disputed domain name is identical to the Complainant’s mark, disregarding the domain name suffix.
The Panel therefore finds that the Complainant has established the first element of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), explains the consensus view concerning the burden of proof regarding lack of rights or legitimate interests in UDRP cases, and is relevant here:
“While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP […] If the respondent does come forward with some allegations or evidence of relevant rights or legitimate interest, the panel then weighs all the evidence, with the burden of proof always remaining on the complainant.”
Here, the Complainant has not licensed or otherwise authorised the Respondent to use its trade mark.
As to paragraph 4(c)(i) of the Policy, the Panel has concluded below that the Respondent has used the disputed domain name to intentionally attempt to attract, confuse and profit from Internet users seeking the Complainant’s services. Such use of the disputed domain name could not be said to be bona fide.
There is no evidence that paragraphs 4(c)(ii) or (iii) of the Policy apply in the circumstances of this case.
The Panel finds that the Complainant has established a prima facie case of lack of rights and legitimate interests and there is no rebuttal by the Respondent.
The Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name and that the Complainant has therefore established the second element of paragraph 4(a) of the Policy.
C. Registered or Used in Bad Faith
While it is likely that the Complainant’s name is derived from the well-known expression “there are plenty of fish in the sea”, it is nonetheless a striking and distinctive name to use for an online dating website. It is obvious to this Panel that the Respondent, a competitor of the Complainant, registered the disputed domain name with the Complainant’s trade mark in mind.
In its email response to the Complainant’s cease and desist letter, the Respondent does not suggest that it was unaware of the Complainant on acquisition of the disputed domain name. It simply claimed that it registered the disputed domain name before the Complainant had registered its trade mark, a statement which is plainly incorrect.
The Respondent has sought to divert the Complainant’s customers or potential customers to its own website offering online dating services competing with the Complainant and as well as Amazon.com affiliated advertisements for related goods. The Respondent’s website is prominently branded “PlentyofFish.us.com”.
The Panel concludes from the foregoing that the Respondent has registered and used the disputed domain name in bad faith in accordance with paragraph 4(b)(iv) of the Policy. The Respondent has intentionally attempted to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant’s trade mark.
The Panel therefore finds that the Complainant has established the third element of paragraph 4(a) of the Policy.
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 <plentyoffish.us.com> be transferred to the Complainant.
Dated: September 5, 2012