WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Match Group, LLC. v. Whois Privacy, Private by Design, LLC / Domain Administrator, See PrivacyGuardian.org / Ghassan Hedhli / Alicia Silverston
Case No. D2020-1085
1. The Parties
The Complainant is Match Group, LLC., United States of America (“US”), represented internally.
The Respondent is Whois Privacy, Private by Design, LLC, US / Domain Administrator, See PrivacyGuardian.org, US / Ghassan Hedhli, Qatar and Tunisia / Alicia Silverston, Tunisia.
2. The Domain Name and Registrar
The disputed domain names <threenderapp.net>, <tinder-site.com>, and <3nderapp.net> are registered with GoDaddy.com, LLC (the “First Registrar”); the disputed domain names <threender.net> and <tinderrencontre.net> are registered with Porkbun LLC (the “Second Registrar”); the disputed domain name <3nderapp.org> is registered with NameSilo, LLC (the “Third Registrar”). The disputed domain names are referred to collectively in this decision as the “Disputed Domain Names” and each individually as a “Disputed Domain Name”.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 1, 2020. On May 4, 2020, the Center transmitted by email to the First, Second, and Third Registrar a request for registrar verification in connection with the disputed domain names. On May 4 and 5, 2020, the First, Second and Third Registrar respectively transmitted by email to the Center their verification responses disclosing registrant and contact information for the Disputed Domain Names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on May 8, 2020 providing the registrant and contact information disclosed by the First and Second Registrars, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on May 11, 2020.
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 May 19, 2020. In accordance with the Rules, paragraph 5, the due date for Response was June 8, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 9, 2020.
The Center appointed Nick J. Gardner as the sole panelist in this matter on June 17, 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 has been in the business of providing online social networking, dating and match-making services since 2012 and operates a popular dating service under its TINDER trademarks (see below). The Complainant engages in substantial marketing activities of these services year on year. The Complainant owns and operates the websites “www.gotinder.com” and “www.tinder.com” to facilitate its services. On the “Tinder” branded website users may create personal accounts, search and view member profiles, contribute to discussion boards, and read the official “Tinder” blog.
The Complainant reaches consumers worldwide via its popular “Tinder” dating and social networking mobile applications for Android and iOS mobile platforms. The Android version has reached over 100 million installs since inception in July 2013 and over 10 billion dating matches since 2012.
The Complainant holds a variety of registered trademarks for both figurative and word marks in respect of the term TINDER including, for example, United States registered trademark no. 4479131 for the word mark TINDER, registered on February 4, 2014 and EU registration No. 012278396 for the word mark TINDER registered on March 31, 2014. These trademarks are referred to as the “TINDER trademark” in this decision.
The Disputed Domain Names were registered as follows:
<tinder-site.com>: October 25, 2016
<threenderapp.net>: May 26, 2016
<threender.net>: April 9, 2016
<3nderapp.org>: April 12, 2015
<tinderrencontre.net>: April 8, 2016
<3nderapp.net>: December 7, 2014
According to the evidence provided by the Complainant, at the time of filing of the Complaint, the Disputed Domain Name <threenderapp.net> resolved to a registrar parking page, and the rest of the Disputed Domain Names were each linked to third party dating websites.
Previous UDRP proceedings have been brought by Tinder, Inc. - a predecessor of the Complainant - against the Respondent “Ghassan Hedhli”. There the WIPO UDRP panel found it proper to consolidate fourteen disputed domain names owned by “Ghassan Hedhli” and other aliases using the same email addresses. The panel found in favour of the complainant - see Tinder, Inc. v. Ghassan Hedhli, Betsy Adams, Alison Britsson, Peter North, Alonzo Fredy, WIPO Case No. D2017-0154.
The Respondent “Ghassan Hedhli” is also responsible for the registration of various other domain names, not the subject of this Complaint which incorporate the TINDER trademark as follows <tindersex.net>, <tinder-site.net>, <tinderdatingsite.co>, <tinderforpc.net>, <tinderdownload.net>, and <tinder.asia>.
5. Parties’ Contentions
The Complainant’s contentions are straightforward. Numerous previous WIPO UDRP decisions are relied upon by the Complainant. It is not necessary to repeat those here – where relevant they are addressed in the Panel’s discussion below. The Complainant’s contentions can be summarized as follows.
Each of the Disputed Domain Names is confusingly similar to the TINDER Trademark. Each incorporates the word TINDER in its entirety.
The Respondent has no rights or legitimate interests in the term “TINDER”.
In consequence the Complainant alleges that the Disputed Domain Names were registered and are being used in bad faith. The Complainant says the Disputed Domain Names are being used to redirect traffic to third party websites which provide competing services and the Respondent in doing so earns revenue. The Complainant says the Respondent is engaged in this activity as part of a concerted business practice and relies on the previous UDRP proceedings against the Respondent (see above) and the other domain names he has registered involving the TINDER trademark (see above).
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Procedural Issues – no Response
The Panel notes that no communication has been received from the Respondent. However given the Complaint and Written Notice were sent to the relevant addresses disclosed by the Registrar then the Panel considers that this satisfies the requirement in paragraph 2(a) of the UDRP Rules to “employ reasonably available means calculated to achieve actual notice”. Accordingly, the Panel considers it is able to proceed to determine this Complaint and to draw inferences from the Respondent’s failure to file any Response. While the Respondent’s failure to file a response does not automatically result in a decision in favor of the Complainant, the Panel may draw appropriate inferences from the Respondent’s default (see e.g. Verner Panton Design v. Fontana di Luce Corp, WIPO Case No. D2012-1909).
Procedural Issues – privacy services
The Panel also notes this is a case where two of the Respondents (Whois Privacy, Private by Design, LLC and Domain Administrator, See PrivacyGuardian.org) appear to be a privacy or proxy registration service while the other Respondents (Ghassan Hedhli / Alicia Silverston) appear to be the substantive Respondents. The Panel in this case adopts the approach of most UDRP panels, as outlined in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at section 4.4.5, as follows:
In all cases involving a privacy or proxy service and irrespective of the disclosure of any underlying registrant, the appointed panel retains discretion to determine the respondent against which the case should proceed.
Depending on the facts and circumstances of a particular case, e.g., where a timely disclosure is made, and there is no indication of a relationship beyond the provision of privacy or proxy registration services, a panel may find it appropriate to apply its discretion to record only the underlying registrant as the named respondent. On the other hand, e.g., where there is no clear disclosure, or there is some indication that the privacy or proxy provider is somehow related to the underlying registrant or use of the particular domain name, a panel may find it appropriate to record both the privacy or proxy service and any nominally underlying registrant as the named respondent”.
In the present case the Panel finds for reasons discussed below that Alicia Silverston is likely to be an alias for Ghassan Hedhi and in the absence of any explanation from the Respondent the Panel proceeds on the basis that the substantive Respondent is Ghassan Hedhi, and references to “the Respondent” are to that person.
Procedural Issues – multiple domain names and respondents
Paragraph 3(c) of the Rules provides that a complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder. In the present case following provision of information by the relevant Registrar it is clear all of the Disputed Domain Names apart from <3nderapp.net> are registered in the name of the Respondent and accordingly it is appropriate for the Complaint to proceed in respect of those Disputed Domain Names. <3nderapp.net> is registered to “Alicia Silverston” but the registrant email address is identical to the tech-contact email address for <threenderapp.net> and this email address is a trivial variation of the same email address used currently and in the past on the other Disputed Domain Names. The Panel concludes it is more likely than not that Alicia Silverston is an alias for the Respondent. Accordingly the Panel considers the Complaint can properly proceed in respect of all the Disputed Domain Names.
A. Identical or Confusingly Similar
The Panel considers the Disputed Domain Names <tinder-site.com> and <tinderrencontre.net> are each confusingly similar to the Complainant’s TINDER trademark. It is established that the addition of a generic or descriptive term (such as here “site”, and “rencontre” – which is French for “meeting”) to the disputed domain name has little, if any, effect on a determination of legal identity between the domain name and the mark (Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253); furthermore, mere addition of a generic or descriptive term does not exclude the confusing similarity (PRL USA Holdings, Inc. v. Spiral Matrix, WIPO Case No. D2006‑0189).
The position is not so straightforward with regard to <threenderapp.net>, <threender.net>, <3nderapp.org> and <3nderapp.net>. These each involve combining the word or figure three with the second half of the Complainant’s TINDER trademark. Contrary to the Complainant’s submission they do not in the Panel’s view incorporate the TINDER trademark in its entirety. The resulting domain names are as a matter of language rather clumsy and difficult to pronounce. The Panel considers it debatable whether to a human observer these domain names could be said to be confusingly similar to the TINDER trademark. The Panel does not know how search algorithms would assess these names. However, it seems to the Panel the Respondent has more likely than not chosen them as part of his activities in targeting the Complainant and its TINDER trademark and has done so because he anticipates they will in some way be confusingly similar to the TINDER trademark. In this case the Panel adopts the approach explained in WIPO Overview 3.0 at section 1.7: “In specific limited instances, while not a replacement as such for the typical side-by-side comparison, where a panel would benefit from affirmation as to confusing similarity with the complainant’s mark, the broader case context such as website content trading off the complainant’s reputation, or a pattern of multiple respondent domain names targeting the complainant’s mark within the same proceeding, may support a finding of confusing similarity.” Here the Respondent is clearly seeking to target the Complainant and has done so on a large scale. The evidence establishes these domain names are part of that effort and the Panel on balance concludes they are confusingly similar to the Complainant’s TINDER trademark.
It is also well established that the generic Top-Level Domain (“gTLD”), in this case “.com,.org or .net”, does not affect the disputed domain name for the purpose of determining whether it is identical or confusingly similar – see for example Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429.
Accordingly the Panel finds that each of the Disputed Domain Names is confusingly similar to the Complainant’s trademark and hence the first condition of paragraph 4(a) of the Policy has been fulfilled.
B. Rights or Legitimate Interests
The Panel finds “Tinder” is a term in which Complainant has developed a substantial reputation and is extremely well known.
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a domain name:
(i) before any notice to the respondent of the dispute, 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 the respondent has acquired no trade mark or service mark rights; or
(iii) the respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
None of these apply in the present circumstances. The Complainant has not authorised, licensed, or permitted the Respondent to register or use the Disputed Domain Name or to use the TINDER trademark. The Complainant has prior rights in the TINDER trademark which precede the Respondent’s registration of the Disputed Domain Names. The Complainant has therefore established a prima facie case that the Respondent does not have any rights or legitimate interests in the Disputed Domain Names and thereby the burden of production shifts to the Respondent to produce evidence demonstrating rights or legitimate interests in respect of the Disputed Domain Names (see for example Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
The Panel finds that the Respondent has failed to produce any evidence to establish its rights or legitimate interests in the Disputed Domain Names. Accordingly the Panel finds the Respondent has no rights or any legitimate interests in the Disputed Domain Names and the second condition of paragraph 4(a) of the Policy has been fulfilled.
C. Registered and Used in Bad Faith
In the present circumstances, the distinctive nature of the TINDER trademark, and the evidence as to the extent of the reputation the Complainant enjoys in the TINDER trademark, and the Respondent’s conduct in registering multiple domain names incorporating the TINDER trademark, and the lack of any explanation from the Respondent as to why it registered the Disputed Domain Names lead the Panel to conclude the registration and use was in bad faith.
The Respondent is clearly engaged in a business practice of seeking to divert traffic to third party websites and no doubt earn revenue as a result. He does so using domain names including the Disputed Domain Names which are confusingly similar to the Complainant’s TINDER trademark. Under the Policy paragraph 4b(iv) evidence of registration and use in bad faith is established where “by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 web site or location or of a product or service on your web site or location”.
In the present case, that is exactly what the Respondent has done. The Panel infers he selected the Disputed Domain Names because of their similarity to the Complainant’s trademarks and used them to attract customers to competing businesses by creating a likelihood of confusion. In the circumstances the Panel concludes that paragraph 4(b)(iv) applies.
Further the Panel notes that the Respondent has not filed a Response and hence has not availed himself of the opportunity to present any case of good faith that it might have. The Panel infers that none exists.
As a result the Panel finds that the Disputed Domain Names have each been registered and are being used in bad faith. Accordingly the third condition of paragraph 4(a) of the Policy has been fulfilled.
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 names <threenderapp.net>, <threender.net>, <tinderrencontre.net>, <tinder-site.com>, <3nderapp.net>, and <3nderapp.org> be transferred to the Complainant.
Nick J. Gardner
Date: July 1, 2020