WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Helpful Things, LLC v. Domain Administrator d/b/a privacy.cloudns.net, Cloud DNS Ltd
Case No. D2020-0626
1. The Parties
The Complainant is Helpful Things, LLC, United States of America (“United States”), represented by SafeNames Ltd., United Kingdom.
The Respondent is Domain Administrator d/b/a privacy.cloudns.net, Cloud DNS Ltd, Bulgaria.
2. The Domain Name and Registrar
The disputed domain name <edoublelist.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 13, 2020. On March 13, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 14, 2020, the Registrar transmitted by email to the Center its verification response:
(a) it is the Registrar for the disputed domain name;
(b) disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint;
(c) the Respondent registered the disputed domain name on October 7, 2019;
(d) the language of the registration agreement is English;
(e) the disputed domain name was registered subject to the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), and the UDRP applies to the disputed domain name.
The Center sent an email communication to the Complainant on March 16, 2020, 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 March 18, 2020.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Policy, 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 March 24, 2020. In accordance with the Rules, paragraph 5, the due date for Response was April 13, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 14, 2020.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on April 22, 2020. 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 established and operates an online platform where (as it describes its services in the Complaint) “individuals are enabled to have fun and connect with each other within a safe area”. It appears to be in effect an online meeting service. On its website, the Complainant states “Doublelist is for the straight, gay, bi and curious looking to connect locally”.
The service started operating in about March 2018. Its services are accessed via <doublelist.com>; “Doublelist” being the name and sign under which it has operated since then.
Since it started operating, there have been over 7.7 billion page views of its website. Initially, its website generated approximately USD 10,000 in revenues from advertising per month. The business has greatly expanded since Craigslist.com stopped including personal ads so that, by June 2019, advertising revenues had increased to USD 95,000 per month.
The Complainant is the owner of a registered trademark in the United States, Trademark No. 5,926,633, DOUBLELIST (the “Trademark”) in respect of essentially dating services in International Class 45. The Complainant filed the trademark application on May 30, 2019, claiming a first use in commerce on March 24, 2018. The Trademark was registered on December 3, 2019.
According to the Registrar, the disputed domain name was registered to the Respondent on October 7, 2019. It resolves to a website headed “Double”, “The Adult Version of Doublelist Personals” and “When you just want to get laid without all the BS”.
According to the Complaint, if one registers and logs in, one is redirected to a website at the domain name <megahook-up.com>. It appears that, after a free two day trial, one may pay a monthly membership fee. Amongst the services available are “LocalDates” which, at least in the materials annexed to the Complaint, allows one to browse a “menu” of scantily clad young ladies.
5. Discussion and Findings
No response has been filed. The Complaint has been sent, however, to the Respondent at the physical and electronic coordinates confirmed as correct by the Registrar in accordance with paragraph 2(a) of the Rules. Bearing in mind the duty of the holder of a domain name to provide and keep up to date correct WhoIs details, therefore, the Panel finds that the Respondent has been given a fair opportunity to present its case.
When a respondent has defaulted, paragraph 14(a) of the Rules requires the Panel to proceed to a decision on the Complaint in the absence of exceptional circumstances. Accordingly, paragraph 15(a) of the Rules requires the Panel to decide the dispute on the basis of the statements and documents that have been submitted and any rules and principles of law deemed applicable.
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The Panel notes that the Registrar has specified that English is the language of the registration agreement. In accordance with paragraph 11 of the Rules, therefore, English is the language of proceeding unless there is good reason for the Panel to determine otherwise.
A. Identical or Confusingly Similar
The first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant’s trademark rights.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.
The Complainant has proven ownership of the registered trademark DOUBLELIST identified in section 4 above. It appears likely that the Complainant also has rights at common law in that term as an unregistered trademark. Indeed, the strapline on the Respondent’s website, “The Adult Version of Doublelist Personals”, would not have much, if any, point otherwise.
The second stage of this inquiry simply requires a visual and aural comparison of the disputed domain name to the proven trademarks. In undertaking that comparison, it is permissible in the present circumstances to disregard the generic Top-Level Domain (“gTLD”) component as a functional aspect of the domain name system. Questions such as the scope of the trademark rights, the geographical location of the respective parties and other considerations that may be relevant to an assessment of infringement under trademark law are not relevant at this stage. Such matters, if relevant, may fall for consideration under the other elements of the Policy. e.g. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), sections 1.7 and 1.11.
Apart from the gTLD, “.com”, the disputed domain name differs from the Complainant’s trademark solely by the addition of the letter “e” as a prefix.
That is, the disputed domain name contains the whole of the Complainant’s trademark in a clearly recognisable form. Use of the letter “e” in this form is a common technique to indicate the digital or electronic nature of the services in question, and, in any case, it does not prevent a finding of confusing similarity between the Trademark and the disputed domain name.
Accordingly, the Panel finds that the Complainant has established that the disputed domain name is confusingly similar to the Complainant’s trademarks and the requirement under the first limb of the Policy is satisfied.
B. Rights or Legitimate Interests
The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or
(ii) [the Respondent] (as an individual, business, or other organization) has been commonly known by the [disputed] domain name, even if [the Respondent] has acquired no trademark or service mark rights; or
(iii) [the Respondent] is making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the Complainant. Previous UDRP panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. See e.g., WIPO Overview 3.0, section 2.1.
The Complainant states that it has not authorised the Respondent to use the disputed domain name. Nor is the Respondent affiliated with it in any way.
The disputed domain name is plainly not derived from the Respondent’s own name. Insofar as the Respondent is operating a service under the name “Double”, there is no evidence nor any claim to suggest that this name was adopted by the Respondent before the Complainant’s service started or without notice of the Complainant’s service.
As described above, it appears that the Respondent’s service requires payment of fees after an initial, free two day trial period. It cannot therefore be described as a noncommercial usage. Merely adding the prefix “e” to the Complainant’s trademark suggests some sort of affiliation or sponsorship or endorsement with the trademark owner is unlikely to qualify as fair use under the Policy. See e.g. WIPO Overview 3.0, section 2.5.1.
In essence, the Respondent’s service appears to operate in competition to the Complainant. Whatever the legitimacy of the service itself, the use of the disputed domain name in this manner does not qualify under the Policy as an offering of goods or services in good faith.
Although the Respondent registered the disputed domain name before the Complainant’s trademark was registered, the disputed domain name was registered well after the Complainant started using its trademark and had developed a reputation in it. Indeed, the tag line on the Respondent’s website seeks to take advantage of the Complainant’s reputation in its trademark.
These matters, taken together, are sufficient to establish a prima facie case under the Policy that the Respondent has no rights or legitimate interests in the disputed domain name. The basis on which the Respondent has adopted the disputed domain name, therefore, calls for explanation or justification. The Respondent, however, has not sought to rebut that prima facie case or advance any claimed entitlement. Accordingly, the Panel finds the Complainant has established the second requirement under the Policy also.
C. Registered and Used in Bad Faith
Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and used in bad faith by the Respondent. These are conjunctive requirements; both must be satisfied for a successful complaint: see e.g. Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd, WIPO Case No. D2010-0470.
Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant.
The Panel notes that the Complainant’s trademark claims a first use in commerce on March 24, 2018, the rapid growth of the Complainant (providing services at <doublelist.com>), the similarities between the Complainant’s domain name and the disputed domain name, and the Respondent using it for services competing with the Complainant.
It appears clear from the nature of the Respondent’s website including the resemblance of the disputed domain name to the Complainant’s name DOUBLELIST and, in particular, the tag line, “The Adult Version of Doublelist Personals”, on the Respondent’s website that the Respondent was well aware of the Complainant and the Complainant’s services when it registered and started using the disputed domain name. In these circumstances, the Panel infers that the Respondent was aware of the Complainant at the time of the registration of the disputed domain name, registering it to unfairly benefit from its similarity with the Complainant’s trademark. See e.g. WIPO Overview 3.0, section 3.8.2. Accordingly, the Panel finds the Respondent has registered and used it in bad faith.
The Complainant has established all three requirements under 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 <edoublelist.com> be transferred to the Complainant.
Warwick A. Rothnie
Date: May 11, 2020