WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Tinder, Incorporated v. Filorgy Interactive, Filorgy Dating Service
Case No. DPH2017-0003
1. The Parties
The Complainant is Tinder, Incorporated of Dallas, Texas, United States of America (“United States”), represented by Locke Lord LLP., United States.
The Respondent is Filorgy Interactive, Filorgy Dating Service of Malay, Aklan, Philippines.
2. The Domain Name and Registrar
The disputed domain name <tinder.ph> (“the Domain Name”) is registered with DotPH (the “Registry”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 28, 2017. On May 1, 2017, the Center transmitted by email to the Registry a request for registrar verification in connection with the Domain Name. On May 2, 2017, the Registry transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a clarification requested by the Center, the Complainant filed an amendment to the Complaint on May 14, 2017.
The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the .PH Uniform Domain Name Dispute Resolution Policy (“phDRP” or the Policy”), the Rules for .PH Uniform Dispute Resolution Implementation Rules (the Rules”), and the WIPO Supplemental Rules (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 19, 2017. In accordance with the Rules, paragraph 5(a), the due date for Response was June 8, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 9, 2017.
The Center appointed Karen Fong as the sole panelist in this matter on June 16, 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
The Complainant is in the business of providing online dating services since 2012. These services are provided under the trade mark TINDER which is used online and on its mobile application products.
The trade mark is registered in the United States under the following:
- United States Trademark Registration No. 4,479,131 for TINDER, registered on February 4, 2014 for “downloadable software in the nature of a mobile application for Internet-based dating and matchmaking; downloadable software in the nature of a mobile application in the field of social media, namely, for sending status updates to subscribers of web feeds, uploading and downloading electronic files to share with others” in Class 9;
- United States Trademark Registration No. 4,976,225 for TINDER, registered on June 14, 2016 for “Dating services; internet-based social networking, introduction and dating services” in Class 45;
- United States Trademark Registration No 5,067,595 for TINDER (Stylised), registered on October 25, 2016 for “Dating services; Internet-based social networking, introduction and dating services” in Class 45;
- United States Trademark Registration No. 5,067,593 for TINDER (Stylised), registered on October 25, 2016 for “Downloadable software in the nature of a mobile application for Internet-based dating and matchmaking; downloadable software in the nature of a mobile application in the field of social media, namely, for sending status updates to subscribers of web feeds, uploading and downloading electronic files to share with others” in Class 9.
(referred individually and collective as “the Trade Mark”)
The Complainant’s website at “www.gotinder.com,” is interactive, allowing users to, among other things, download the Complainant’s iOS or Android mobile application (the “Tinder App”). The Tinder App provides the bulk of Tinder’s dating services, as it allows a user to discover potential relationship candidates within a certain distance of the Tinder App user. The Tinder App has been downloaded over 100 million times and had an estimated 50 million active users as of March 2, 2015, with sixty (60) percent of those users coming from outside North America.
The Respondent registered the Domain Name on July 15, 2015. The Domain Name resolves to an online dating website (“the Website”). The landing page of the Website states prominently: “Find romantic or casual relationship in the Philippines”. It then states “Tinder PH is tailored for Filipinos. It is safe, secure, and has the most innovative and realistic approach to Online Dating, Hookups and Alternative Lifestyle.”
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 is 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 is 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 and unregistered 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 distinctive trade mark TINDER in its entirety.
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 Top-Level Domain (“TLD”) as it is viewed as a standard registration requirement.
The Panel finds that the Domain Names is identical 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 to or legitimate interests in the 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 trademark 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.
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 the 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 in the domain name. 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 some allegations of evidence of relevant rights or legitimate interests, the panel weighs all the evidence, with the burden of proof always remaining on the complainant.
The standard of proof required under the UDRP is “on balance”. An asserting party needs to establish that it is more likely than not that the claimed fact is true.
The Respondent is not affiliated to the Complainant in any way nor has he been authorised by the Complainant to register and use the Domain Name. It has no independent right to the Domain Name. In this case, the Website provides identical services to those of the Complainant although it would appear through different means. Whilst the evidence submitted shows that the Complainant has an extensive reputation globally, it is not clear whether the Complainant’s Tinder App is used in the Philippines where the Respondent is based and where the Website is targeting. The Complainant’s website does not appear to have this information. Nevertheless, the Panel is satisfied that TINDER is a well-known trade mark of the Complainant and it would be impossible for the Respondent to develop a legitimate activity in connection with the Domain Name without authorisation particularly in the area of online dating where typing in TINDER on any search engine would have revealed the Trade Mark. The use of the Domain Name is to associate its services with the Complainant so as to drive Internet traffic to the Website. Such use cannot be regarded as bona fide commercial use. The Respondent is not commonly known by the Domain Name. Further it has not shown that it is making legitimate noncommercial or fair use of the Domain Name. The Website has clearly been set up and is used for commercial gain.
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, a 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 well known TINDER trade mark when it registered the Domain Name. It is implausible that it was unaware of the Complainant when it registered the Domain Name. Since its launch in 2012, the Complainant’s website and Tinder App has gained global recognition. Whilst the word “tinder” has an ordinary meaning of dry materials that burn easily and can be used to start a fire. It also has developed a secondary meaning in urban culture as a reference to the Complainant’s trade mark and company name. In the WIPO Overview 3.0, section 3.2.2 states as follows:
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 identical 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 all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, <tinder.ph>, be transferred to the Complainant.
Date: July 3, 2017