WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The League App, Inc. v. Domain Protection Services, Inc. / Linda Xu
Case No. D2018-0075
1. The Parties
The Complainant is The League App, Inc. of San Francisco, California, United States of America (“United States”), represented by IPLA, United States.
The Respondent is Domain Protection Services, Inc. of Denver, Colorado, United States / Linda Xu of Leshan, Sichuan, China.
2. The Domain Name and Registrar
The disputed domain name <theleague-app.com> (the “Domain Name”) is registered with Name.com, Inc. (Name.com LLC) (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 12, 2018. On January 15, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On January 15, 2018, 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 the Complainant on January 17, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on January 20, 2018.
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 the Respondent of the Complaint, and the proceedings commenced on January 24, 2018. In accordance with the Rules, paragraph 5, the due date for Response was February 13, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 14, 2018.
The Center appointed Karen Fong as the sole panelist in this matter on February 22, 2018. 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 an online dating and matchmaking service. It launched its computer application software product in November 2014 called The League. The Complainant has two trade mark registrations for THE LEAGUE in Class 9 (the “Trade Mark”):
- United States trade mark Registration No 4854183 dated November 17, 2015;
- International trade mark Registration No 1262561 dated June 22, 2015.
The Complainant also owns the following domain names <theleague.com> and <theleagueapp.co>. The Complainant also has an app for The League. The app may be downloaded from Apple iTunes or Google Play.
The Respondent registered the Domain Name on April 12, 2017. The Domain Name is connected to a software application for online dating and matchmaking called “The League App”. It also contains links to the Apple iTunes Store and the Google Play Store.
5. Parties’ Contentions
The Complainant contends that the Domain Name is confusingly similar to the Trade Mark, the Respondent has no rights or legitimate interests with respect to the Domain Name and that the Domain Name was registered and being used in bad faith. The Complainant requests transfer of the Domain Name.
The Respondent did not reply to the Complainant’s contentions.
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 was registered and being used in bad faith.
6.2. Substantive Analysis
A. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has established that it has registered rights to the Trade Mark.
The threshold test for confusing similarity involves the comparison between the trade mark and the domain name itself to determine whether the domain name is confusingly similar to the trade mark. The trade mark would generally be recognizable within the domain name. In this case the Domain Name contains the Complainant’s trade mark THE LEAGUE in its entirety followed by a hyphen and the descriptive word “app”. Neither the punctuation mark nor the addition of the descriptive word “app” does anything to prevent the confusing similarity.
For the purposes of assessing identity or confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the generic Top-Level Domain (“gTLD”) as it is viewed as a standard registration requirement.
The Panel finds that the Domain Name is confusingly similar to a trade mark in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights or legitimate interests in the disputed domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name, even if it has acquired no trade mark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain, to misleadingly divert consumers, or to tarnish the trade mark or service mark at issue.
Although the Policy addresses ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name, it is well established that, as it is put in section 2.1 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) that 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 does come forward with relevant evidence of rights or legitimate interests, the panel weighs all the evidence, with the burden of proof always remaining on the complainant.
The Complainant contends that it is not aware of any trade mark, domain name or any other rights that the Respondent may have in connection with “The League”, “The League App” or “League”.
The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent has not responded and the Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the Domain Name.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
C. Registered and Used in Bad Faith
To succeed under the Policy, the Complainant must show that the Domain Name has been both registered and used in bad faith. It is a double requirement.
The Panel is satisfied that the Respondent must have been aware of the Complainant’s THE LEAGUE trade mark when it registered the Domain Name. It is implausible that she was unaware of the Complainant when she registered the Domain Name. The Complainant has the word “App” as part of its company name as well as having an actual app. THE LEAGUE is not a phrase which one would ordinarily associate with dating or matchmaking. The odds of the Respondent independently choosing a name for her own online dating site are very slim.
“Noting the near instantaneous and global reach of the Internet and search engines, and particularly in circumstances where the complainant’s mark is widely known (including in its sector) or highly specific and a respondent cannot credibly claim to have been unaware of the mark (particularly in the case of domainers), panels have been prepared to infer that the respondent knew, or have found that the respondent should have known, that its registration would be identical or confusingly similar to a complainant’s mark. Further factors including the nature of the domain name, the chosen top-level domain, any use of the domain name, or any respondent pattern, may obviate a respondent’s claim not to have been aware of the complainant’s mark.”
The fact that there is a clear absence of rights or legitimate interests coupled with no credible explanation for the Respondent’s choice of the Domain Name is also a significant factor to consider (as stated in section 3.2.1 of WIPO Overview 3.0). The Domain Name falls into the category stated above and the Panel finds that registration is in bad faith.
The Domain Name is also used in bad faith. The Domain Name is confusingly similar to the Trade Mark used in connection with identical services. There is a likelihood that consumers may be confused that it is linked to the Complainant. By using the Domain Name, the Respondent has intentionally attempted to attract for commercial gain, Internet users to the Website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Website or services on the Website. This amounts to bad faith under paragraph 4(b)(iv) 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 Domain Name <theleague-app.com> be transferred to the Complainant.
Date: February 27, 2018