WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
FriendScout24 GmbH v. Protection of Private Person / Besnik Lajqi, L.M.Z Meida Solutions SH.P.K.
Case No. D2018-0531
1. The Parties
The Complainant is FriendScout24 GmbH of Munich, Germany, represented by Nameshield, France.
The Respondent is Protection of Private Person of Moscow, Russian Federation / Besnik Lajqi, L.M.Z Meida Solutions SH.P.K. of Hessen, Offenbach, Germany.
2. The Domain Name and Registrar
The disputed domain name <secret-hot.com> is registered with Registrar of Domain Names REG.RU LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 9, 2018. On March 9, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 12, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on the same day providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. In addition, on the same day, the Center sent an email in regard to the language of proceedings. The Complainant filed an amended Complaint on March 13, 2018 and requested English to be the language of the proceedings. The Respondent did not submit any response on the language of proceedings.
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 in English and Russian, and the proceedings commenced on March 20, 2018. In accordance with the Rules, paragraph 5, the due date for Response was April 9, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 11, 2018.
The Center appointed Torsten Bettinger as the sole panelist in this matter on April 17, 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 a German company headquartered in Munich, Germany.
The Complainant provides various online dating portals under different domain names and among them dating portals in German language under the domain names <secret.de>, <secret.ch> and <secret.at>. The stated goal of these dating portals is to enable people to meet sophisticated women and men for sensual dating and togetherness without obligations (“niveauvolle Frauen und Männer für sinnliche Dates und Zweisamkeit ohne Verpflichtungen”).
The Complainant has provided evidence that it is the registered owner of a European Union Trademark No. 958143, registered on May 16, 2011, for classes 35, 38, 42 and 45. The trademark is a figurative trademark containing the word “Secret” in the following stylized format:
The disputed domain name was registered on December 1, 2016. Respondent used the domain name to redirect Internet users to an online dating portal. The Respondent has registered and employed other domain names consisting of words in German and English that are suggestive of its online dating services such as <fine-love.net>, <lust-zu.com>, <anonym69.com>, <liebes-lounge.com>, <love-moment.com> etc.
On December 19, 2017, the Complainant’s lawyers sent a cease-and-desist letter to the Respondent asserting the Complainant’s trademark rights and requesting the transfer of the disputed domain name to the Complainant.
The Respondent did not reply to the Complainant’s cease-and-desist letter.
5. Parties’ Contentions
The Complainant submits that the disputed domain name is identical to the Complainant’s trademark as it incorporates the mark in its entirety.
With regard to the Respondent having no rights or legitimate interests in the disputed domain name, the Complainant asserts that it has never licensed nor otherwise permitted the Respondent to use the Complainant’s figurative trademark or to use a domain name that incorporates or is similar to its trademark.
Complainant contends that the Respondent is a competitor of the Complainant in the German market and has registered numerous domain names relating to online dating services.
The Complainant argues that the Respondent registered the disputed domain name with the attempt to take advantage of Complainant’s notoriety and to trade upon Complainant’s goodwill.
Finally, with regard to the disputed domain name having been registered and being used in bad faith, the Complainant argues that (1) the Complainant’s long standing use of the domain names <secret.de>, <secret.at> and <secret.ch> indicates that the Respondent was aware of the Complainant’s rights at the time of registration of the disputed domain name; (2) that the Respondent provides online dating services under the disputed domain name which directly compete with those of the Complainant’s, and that (3) the similarity of the disputed domain name and the Complainant’s trademark and the provision of services competing with those of the Complainant result in a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the website available under the disputed domain name.
In addition, the Complainant argues that the Respondent registered and used the disputed domain name to disrupt the Complainant’s business.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant carries the burden of proving:
(i) That the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) That Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) That the disputed domain name has been registered and is being used in bad faith.
The Respondent’s default in the case at hand does not automatically result in a decision in favor of the Complainant, however, paragraph 5(f) of the Rules provides that if the Respondent does not submit a response, in the absence of exceptional circumstances, the Panel may decide the dispute solely based upon the Complaint.
Further, the Panel may draw such inferences as are appropriate from the Respondent’s failure to submit a Response.
A. Language of Proceeding
Paragraph 11 of the Rules states that the language of the proceeding shall be the language of the Registration Agreement unless the Panel determines otherwise. The Registrar has confirmed that the Registration Agreement was in Russian. The Complainant has requested English as the language of proceeding. The Panel notes that the Complainant is located in Germany and has no knowledge of Russian and moreover, the disputed domain name resolves to a website in the German language. The Complainant will incur undue hardship and delay the proceeding if it was required to translate the Complaint into Russian. The Respondent has not objected to the Complainant’s language request. In the present circumstance, the Panel finds it fair to accept the Complainant’s Complaint filed in English, while allowing the Respondent to respond in Russian. Given that the Respondent has not filed any submission, the Panel proceeds to a decision in English.
B. Identical or Confusingly Similar
It is well established that the test of identity or confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone, independent of the products for which the disputed domain name is used or other marketing and use factors usually considered in trademark infringement cases. (See Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic, WIPO Case No. D2000-1698; Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd., WIPO Case No. D2001-0110; Dixons Group Plc v. Mr. Abu Abdullaah, WIPO Case No. D2001-0843; AT&T Corp. v. Amjad Kausar, WIPO Case No. D2003-0327; BWT Brands, Inc and British American Tobacco (Brands), Inc. v. NABR, WIPO Case No. D2001-1480; see also section 1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).
To the extent that design (or figurative/stylized) elements would be incapable of representation in domain names, these elements are largely disregarded for purposes of assessing identity or confusing similarity under the first element. Such design elements may be taken into account in limited circumstances, e.g., when the domain name comprises a spelled-out form of the relevant design element. (See also section 1.2.3 of WIPO Overview 3.0).
Only in cases where design elements comprise the dominant portion of the relevant mark such that they effectively overtake the textual elements in prominence, or where the trademark registration entirely disclaims the textual elements (i.e., the scope of protection afforded to the mark is effectively limited to its stylized elements), UDRP panels may find that the complainant’s trademark registration is insufficient by itself to support standing under the UDRP. However, to the extent the complainant could nevertheless establish UDRP standing on the basis of a mark with design elements, the existence of such elements (or a disclaimer) would be relevant to the panel’s assessment of the second and third elements, e.g., in considering possible legitimate trademark co-existence or scenarios where the textual elements correspond to a dictionary term. (See section 1.2.3 of WIPO Overview 3.0).
Furthermore, it has been long established under the UDRP decisions that the specific generic Top-Level Domain (“gTLD”) designation such as “.com”, “.net” “.org” is typically not to be taken into account when assessing the issue of identity and confusing similarity, except in certain cases where the applicable gTLD suffix may itself form part of the relevant trademark (see section 1.11 of WIPO Overview 3.0).
On this basis, the Panel notes that the Complainant has rights in the figurative trademark which satisfies the requirement that the complainant show “rights in a mark”.
In the case at hand, the word “Secret” is the recognizable and the sole textual element in the figurative mark and the design elements do not as such overtake the textual element in prominence nor are such textual elements disclaimed.
As the disputed domain name incorporates the entirety of the textual elements contained in the trademark the Panel therefore concludes that the disputed domain name is confusingly similar to the Complainant’s trademark
C. Rights or Legitimate Interests
Having regard to the Panel’s conclusion under the next heading, it is unnecessary to make any findings on this issue.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the Respondent has registered or has acquired the disputed domain name primarily for the purpose of selling, renting or otherwise transferring the disputed domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the disputed domain name; or
(ii) The Respondent has registered the disputed domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) The Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 the Respondent’s website or location or of a product or service on the Respondent’s website or location.
In the case at hand, the Complainant argues that the Respondent purposefully registered the disputed domain name, in order to trade on the goodwill of the Complainant’s trademark, to create confusion and to disrupt the Complainant’s business.
The Panel has not found any basis for these contentions. As set out above, the Complainant’s figurative trademark consists of a generic term “secret” in stylized format. The Panel notes that the Complainant has no trademark registrations for “Secret” on its own without stylization. Such figurative mark does not provide the Complainant with registered trademark rights to the word “Secret” on its own.
The Complainant has made a conclusory allegation that it has rights to the word “Secret” without any evidence that supports its claim that the word “Secret” has become a source identifier for Complainant’s online dating services.
The Complainant’s assertion that it has over 24 million registered users refers to the Complainant’s dating services under the domain name <friendscout24.de> but not to Complainant’s activities under the figurative trademark or the domain names <secret.de>, <secret.at> and <secret.ch>.
The Complainant has failed to put forward convincing evidence to establish unregistered rights to the word “Secret” for the purpose of this particular UDRP proceeding. Two press advertisements of May 2018 describing Complainant’s online dating services under these domain names do not permit the conclusion that consumers have come to recognize the word “secret” as a source indicator of the Complainant’s online dating services and that therefore the Complainant has exclusive rights in the word “Secret” in its field of business.
Furthermore, another factor going to the bona fides of the registration of the disputed domain name is the fact that the Respondent registered numerous other domain names that are descriptive or suggestive of the Respondent’s online dating services. It therefore seems to be more likely than not to this Panel that the Respondent selected the disputed domain name as part of a large-scale domain registration operation because of its suggestive meaning in relation to provision of online dating services and not with the intent to target the Complainant. (See Philip Morris USA Inc. v. Borut Bezjak, A Domains Limited, WIPO CaseNo. D2015-1128). The Panel notes in this regard that the website at the disputed domain name does not utilize the Complainant’s stylized mark, but, instead uses a flame design.
Finally, the Panel also has not found any basis that supports Complainant’s claim that it was the Respondent’s intent to disrupt Complainant’s business or to mislead Internet users for commercial gain, creating confusion as to source or affiliation and diverting Internet users to a website offering competing services.
It is the Panel’s finding that, the record suggests that the Respondent is using the disputed domain name for its generic or suggestive value.
The Panel finds, therefore, that the Complainant has not satisfied its burden on paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, the Complaint is denied.
Date: May 15, 2018