WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Tradax IP Licensing Limited v. Sergei Tim, Sono RC LP
Case No. D2015-2246
1. The Parties
The Complainant is Tradax IP Licensing Limited of Tortola, British Virgin Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland, represented by Mapa Trademarks SL, Spain.
The Respondent is Sergei Tim, Sono RC LP of Edinburgh, United Kingdom of Great Britain and Northern Ireland ("UK"), represented by The Trademark Company, PLLC, United States of America.
2. The Domain Name and Registrar
The disputed domain name, <easydatenow.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 December 10, 2015. On December 10, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On the same day the Registrar 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" 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 16, 2015. In accordance with the Rules, paragraph 5, the due date for Response was January 5, 2016. The Response was filed with the Center on January 5, 2016.
The Center appointed Tony Willoughby as the sole panelist in this matter on January 13, 2016. 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 is based in the British Virgin Islands and is engaged in providing online dating services directed to mature men and women. It trades online under and by reference to the name "EasyDate" and claims to have been doing so since 2006 using its domain name, <easydate.com>, which it registered in 2000.
The Complainant is the registered proprietor of two Community Trade Mark Registrations, namely:
(a) No. 5614003 dated January 15, 2007 (registered May 27, 2008) EASYDATE (figurative1 ) for various services in classes 35, 38 and 45; and
(b) No. 7406622 dated November 19, 2008 (registered December 24, 2009) EASYDATE (word) for various services in classes 42 and 45.
The Domain Name was registered on November 30, 2009. From investigations conducted by the Panel using the DomainTools.com search facilities, the Domain Name appears to have been held in the name of a privacy service from date of registration to at least mid-February, 2015. In light of the date of incorporation of the Respondent organization, Sono RC LP (see next paragraph), the Panel will assume in the Respondent's favour that to that date the underlying registrant was Respondent Sergei Tim, the Respondent having claimed to have registered the Domain Name and to have used it since date of registration.
The Respondent organization, Sono RC LP was incorporated in Scotland on November 4, 2014. It is based in Edinburgh, UK and is engaged in the provision of online dating services mainly directed to men looking for Ukrainian and Russian brides. When the Complaint was filed those services were being provided through a website connected to the Domain Name, but currently the Domain Name redirects to a website connected to the domain name, <godatenow.com>, and the services are branded "GoDateNow".
On November 2, 2015 the Complainant emailed the Respondent drawing the Respondent's attention to the Complainant's trade mark rights and objecting to the Respondent's use of the Domain Name.
On November 7, 2015 the Respondent replied to the Complainant in the following terms:
"We understood your claims and here is what we suggest. We were not trying to mimic your web service and abuse your reputation because we simply were not aware of you [sic] business and your trademark. But in order to prevent any future misunderstandings we will launch a transfer of our user base to a new domain and re-brand our business to get rid of the easydate wording. It will take us no more than a few months to complete the transfer and after it is done we will put the domain for sale."
On November 12, 2015 the Complainant emailed the Respondent allowing the Respondent a further month in which to rebrand.
On December 1, 2015 the Complainant followed up with another email to the Respondent acknowledging that it had given the Respondent until December 15, 2015 to rebrand, but objecting to the fact that the website connected to the Domain Name had not been disabled and threatening legal action2 .
On December 2, 2015 the Respondent emailed the Complainant stating that as agreed they were transferring their website to another domain name, but that the process had taken rather longer than anticipated. They sought a further two months to complete the exercise, but said that they would be ceasing use of the Domain Name then anyway.
The Complaint was filed on December 10, 20153 .
5. Parties' Contentions
The Complainant contends that the Domain Name is confusingly similar to the Complainant's EASYDATE trade mark, that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the Domain Name was registered and is being used in bad faith.
The Respondent does not dispute the Complainant's contention that the Domain Name is confusingly similar to the Complainant's trade mark, but denies the Complainant's contentions that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the Domain Name was registered and is being used in bad faith.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The 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 Domain Name; and
(iii) The Domain Name has been registered and is being used in bad faith.
B. Identical or Confusingly Similar
As indicated in section 5B above, there is no dispute between the parties that the Domain Name is confusingly similar to the Complainant's EASYDATE registered trade mark; nor could there be. The Domain Name comprises the Complainant's trade mark with the addition of the word "now" and the ".com" generic Top-Level Domain identifier. Neither of these additional features serves to dilute the distinctiveness of the Complainant's trade mark.
The Panel finds that Domain Name is confusingly similar to a trade mark in which the Complainant has rights.
C. Rights or Legitimate Interests
While it is for the Complainant to prove all three elements of paragraph 4(a) of the Policy, in the case of the second element (paragraph 4(a)(ii) of the Policy) it is generally sufficient in the first instance for the Complainant to make out a prima facie case calling for an answer from the Respondent. As this Panel explained in Julian Barnes v. Old Barn Studios Limited, WIPO Case No. D2001-0121,
"While the overall burden of proof is on the Complainant, this element involves the Complainant proving matters, which are peculiarly within the knowledge of the Respondent. It involves the Complainant in the often impossible task of proving a negative. In the Panel's view the correct approach is as follows: the Complainant makes the allegation and puts forward what he can in support (e.g. he has rights to the name, the Respondent has no rights to the name of which he is aware, he has not given any permission to the Respondent). Unless the allegation is manifestly misconceived, the Respondent has a case to answer and that is where paragraph 4(c) of the Policy comes in. If the Respondent then fails to demonstrate his rights or legitimate interests in respect of the Domain Name, the complaint succeeds under this head."
In this case the Complainant has demonstrated by its evidence that by the date of registration of the Domain Name it had been trading for some years under the name "EasyDate" through its <easydate.com> domain name and had achieved trade mark protection for the name. The Complainant contends that the Respondent adopted the Domain Name with knowledge of the Complainant's business and with a view to attracting traffic to its own website connected to the Domain Name offering similar services.
The Panel finds that the Complainant has made out a prima facie case calling for an answer from the Respondent.
The Respondent denies that it was aware of the Complainant and its business when it registered the Domain Name. The Respondent contends that it registered the Domain Name for a legitimate business purpose, namely "to offer dating services to consumers."
Whether or not the Respondent's purpose is a legitimate one depends to a significant degree on the Respondent's motive. If its purpose was to cause confusion, that cannot by any stretch of the imagination be said to be a legitimate purpose.
The Respondent contends that there is no likelihood of confusion and seeks to distinguish the parties' services on the basis that the Complainant's service is directed to mature men and women, whereas the Respondent's service "does not specifically target this class of customer". The Respondent does not address the obvious similarity in names.
In the view of the Panel there is a high likelihood of confusion arising from the Respondent's choice of domain name and regards the Respondent's basis for saying that there is no likelihood of confusion as disingenuous. Even if on visiting the Respondent's website the visitor appreciates that the service provided is a differently targeted dating service, he might very well believe that the service providers are the same or otherwise associated.
In the view of the Panel a service offering provided through a domain name likely to give rise to confusion and selected for that purpose cannot sensibly be regarded as a bona fide service offering for the purposes of paragraph 4(c)(i) of the Policy.
Was the Domain Name "selected for that purpose"? The Respondent denies the allegation, but notwithstanding the certificate of completeness and accuracy at the end of the Response the Panel finds the Respondent's denial difficult to accept. The Panel finds it more likely than not that the Respondent, planning to operate in the same service area and the same geographical area as the Complainant, would have checked out the competition and, in particular, those service providers using names similar to "EasyDateNow". In the view of the Panel the Respondent would also more likely than not have come across the Complainant's trade mark and domain name in its search for and registration of the Domain Name.
Prior knowledge of a complainant's business or trade mark does not necessarily lead to a finding that the respondent has no rights or legitimate interests in respect of a disputed domain name, but it is a likely consequence where there is a serious risk of confusion.
Here there is in the opinion of the Panel a serious risk of confusion. The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
D. Registered and Used in Bad Faith
By the same reasoning the Panel finds that the Domain Name was registered and is being used in bad faith within the meaning of paragraph 4(b)(iv) of the Policy, which reads:
"by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location."
The Panel has found on the balance of probabilities that the Respondent registered the Domain Name knowing it to be confusingly similar to the Complainant's trade mark in use in the same line of business and with a view to attracting visitors to its website.
Currently, as indicated by the Respondent would be the case in the pre-Complaint email correspondence, the Respondent has re-branded. It no longer uses the "EasyDateNow" name. It has re-branded to "GoDateNow" and is operating its "GoDateNow" service through the <godatenow.com> domain name. However, it is using the Domain Name to redirect traffic to that domain name and website. Thus it continues to use the Domain Name for its original purpose, namely to attract business to its dating service by reference to a name confusingly similar to the Complainant's trade mark.
The Panel finds that the Domain Name was registered and is being used in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <easydatenow.com> be transferred to the Complainant.
Date: January 19, 2015
1 While the mark is expressed to be a figurative mark, it comprises for the most part the name "EasyDate"
2 The Panel does not understand why the Complainant did not wait until expiry of its ultimatum, namely December 15, 2015, but the issue is irrelevant to the task facing the Panel and of no consequence in light of the Respondent's continuing use of the Domain Name.
3 Again, prior to expiry of the December 15, 2015 ultimatum.