WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Plentyoffish Media ULC v. Whois Agent, Domain Protection Services, Inc. and Domain Administrator, See PrivacyGuardian.org / Pramualsin Kerdngam, Pramualsin

Case No. D2017-0592

1. The Parties

Complainant is Plentyoffish Media ULC of Vancouver, British Columbia, Canada, represented by Locke Lord LLP, United States of America (“United States”).

Respondent is Whois Agent, Domain Protection Services, Inc. of Denver, Colorado, United States; Domain Administrator, See PrivacyGuardian.org of Phoenix, Arizona, United States; and Pramualsin Kerdngam of Muang, Chantaburi, Thailand.

2. The Domain Names and Registrars

The disputed domain names <plentyfish.org> and <poffree.com> (the “Domain Names”) are registered respectively with Name.com, Inc. and NameSilo, LLC (the “Registrars”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 23, 2017. On March 23, 2017, the Center transmitted by email to the Registrars a request for registrar verification in connection with the Domain Names. On March 23, 2017, and March 24, 2017, the Registrars transmitted by email to the Center their verification responses disclosing registrant and contact information for the Domain Names which differed from the named Respondents and contact information in the Complaint. The Center sent an email communication to Complainant on April 3, 2017, 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 April 4, 2017.

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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on April 5, 2017. In accordance with the Rules, paragraph 5, the due date for Response was April 25, 2017. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 26, 2017.

The Center appointed Clive L. Elliott QC as the sole panelist in this matter on May 2, 2017. 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 provides online dating services and is the owner of, inter alia, the following trade mark registrations:

- United States Trade Mark Registration No. 3302508 PLENTY OF FISH, registered on October 2, 2007;

- United States Trade Mark Registration No. 3251639 PLENTYOFFISH, registered on June 12, 2007; and

- United States Trade Mark Registration No. 3251640 POF, registered on June 12, 2007.

According to the information provided by the Registrars in reply to the Center’s request for registrar verification, the Domain Names were registered as follows:

- <plentyfish.org> − January 21, 2013;

- <poffree.com> − July 22, 2015

The Domain Names resolve to websites which provides online dating services.

5. Parties’ Contentions

A. Complainant

Complainant states that since May 2001, it has provided online dating services from its website “www.plentyoffish.com” (“Complainant’s Website”), and that it and its affiliates also own and operate a dating and social networking mobile app “POF − Free Dating App” together with website “www.pof.com”. Complainant advises that its website “www.plentyoffish.com” redirects to “www.pof.com”. Complainant also states that it owns trade marks, PLENTY OF FISH, registered October 2, 2007, PLENTYOFFISH and POF, both registered June 12, 2007 (collectively, “the PLENTYOFFISH Marks”).

Complainant contends that Complainant’s Website provides services to over 3 million active users daily, and is interactive, allowing users to, among other things, contribute to discussion boards and read the PlentyOfFish’s blog.

Complainant advises that through the substantial annual advertising and promotion of its dating services, and its continuous use of the PLENTYOFFISH Marks, it has developed substantial rights and goodwill in the PLENTYOFFISH Marks.

Complainant claims that the Domain Names are both virtually identical in appearance to the registered PLENTYOFFISH and POF marks, differing only by the absence of the preposition “of” in the first instance and the addition of the word “free” in the second instance, and contends that these minor differences are not sufficient to differentiate the Domain Names from the PLENTYOFFISH and POF marks. Complainant further contends that the addition of the word “free” to Complainant’s POF mark does nothing to differentiate the <poffree.com> Domain Name from the POF trade mark, but feels the added word actually strengthens the perceived connection to Complainant by suggesting Complainant offers its dating services for free at the <poffree.com> Domain Name.

Complainant also claims that Respondent’s registration of the Domain Names using the generic Top-Level Domains (“gTLDs”) “.org” and “.com” does not distinguish the Domain Names from the PLENTYOFFISH MARKS and further that the Domain Names are nearly identical, or at least confusingly similar, to the PLENTYOFFISH Marks.

Complainant points out that as Respondent is not affiliated with Complainant, Respondent’s continued use of the Domain Names will cause Complainant to suffer irreparable damage through loss of goodwill in the PLENTYOFFISH Marks. Complainant goes on to claim that Respondent has not used the Domain Names in connection with a bona fide offering of goods or services and it has used the Domain Names to leverage on Complainant’s popularity and trade on its goodwill.

Complainant claims that Respondent lures consumers to the Domain Names with confusingly similar web addresses and websites. The landing pages of the Domain Names are very similar, and purport to offer the same services. The website at the <plentyfish.org> Domain Name prominently displays the words “PLENTY FISH DATING” and proclaims: “Join one of the best free online dating site among other dating sites and meet attractive single men and women from any part of World.” In addition, the landing page provides links to competing online dating websites, including “www.theseniordating.com”, “www.singlecougar.com”, and “www.filipinocupid.com”. There is a hyperlink titled “POF Plenty of Fish” shown below the advertisement for “www.singlecougar.com”, which leads to the <poffree.com> Domain Name.

The <poffree.com> Domain Name similarly displays the words “POF FREE 100% FREE ONLINE DATING”, and “JOIN FOR FREE 100% FREE SINGLES DATING SITE”. In addition, this landing page alsoprovides links to competing online dating websites, including the “www.filipinocupid.com” website.

Complainant states that it has never authorized Respondent to use any of the PLENTYOFFISH Marks, nor any mark confusingly similar thereto, as a mark or as part of a domain name. On information and belief, Complainant suggests that Respondent has registered and continues to use the Domain Names to mislead users and potential users of Complainant’s dating services, at Complainant’s expense and for Respondent’s profit.

Respondents registered the Domain Names over ten yearsafter Complainant’s first use of the PLENTYOFFISH Marks and Complainant’s registration of its official <plentyoffish.com> and <pof.com> Domain Names. Complainant contends that Respondent has therefore made unfair use of the Domain Names to deceitfully associate its services with Complainant and, in turn, drive traffic to the Domain Names and even competitors at the expense of Complainant. Accordingly, it submits that registration and continued use of the Domain Names was, and continues to be, in bad faith.

B. Respondent

Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

Complainant has established that it is the owner of the above-mentioned trade marks PLENTY OF FISH, registered October 2, 2007, PLENTYOFFISH and POF, both registered June 12, 2007. Such rights date back to at least 2007, which is well before the date of registration of the Domain Names, which is 2013 and 2015 respectively.

Complainant contends that the Domain Names are both virtually identical in appearance to the PLENTYOFFISH Marks, differing only by the absence of the preposition “of” in the first instance and the addition of the word “free” in the second instance. On this basis, Complainant argues that these minor differences are not sufficient to differentiate the Domain Names from the PLENTYOFFISH Marks. This contention has merit and is not challenged by Respondent.

On this basis, it is found that:

a) Complainant has rights in respect of the PLENTYOFFISH Marks.

b) The Domain Names are not identical to but confusingly similar to the PLENTYOFFISH Marks.

Accordingly, the Panel is satisfied that the first element of the Policy has been met.

B. Rights or Legitimate Interests

Complainant contends that Respondent is using the Domain Names in connection with one or more websites that contain landing pages which are very similar, and purport to offer the same or similar services, namely online dating services.

Complainant contends that Respondent has not demonstrated any rights or legitimate interests with respect to the Domain Names, and access to the said websites shows that it is providing competing online dating services.

It is apparent that by virtue of its trade mark rights and online business interests that an unrelated entity using a similar domain names is likely to lead to members of the public being confused and deceived.

It is reasonable to infer that Respondent’s online business activities allow Respondent to generate revenue by using a deliberately similar version of the PLENTYOFFISH Marks and Complainant’s goodwill or reputation to attract Internet traffic. As before, these assertions are not disputed by Respondent.

The Panel is of the view that the Domain Names are being employed as a means of diverting Internet customers. In those circumstances, it is difficult to see how Respondent’s conduct could be characterized as legitimate.

On this basis, it is found that Respondent has no rights or legitimate interests in the Domain Names.

The Panel is satisfied that the second element of the Policy has been met.

C. Registered and Used in Bad Faith

The Panel concludes that Respondent has intentionally attempted to attract for commercial gain Internet users to its websites or other online locations not related to Complainant and thereby creating a likelihood of confusion with Complainant and/or the PLENTYOFFISH Marks.

The Panel finds that Respondent registered and is using the Domain Names to take bad faith advantage of Internet users who may wish to access Complainant’s website and that these Internet users are likely to be attracted to Respondent’s websites or other online presence and be misled as to their origins, sponsorship or association.

The Panel thus finds that the third limb of the Policy has been met.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names <plentyfish.org> and <poffree.com> be transferred to Complainant.

Clive L. Elliott QC
Sole Panelist
Date: May 17, 2017