WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Tinder, Inc. v. Emil A. Halilov

Case No. D2017-0867

1. The Parties

The Complainant is Tinder, Inc. of Dallas, Texas, United States of America, represented by D L LEGAL, LLP, United States of America.

The Respondent is Emil A. Halilov of Bransk, Bryanskaya oblast, Russian Federation.

2. The Domain Name and Registrar

The disputed domain name <tinderadult.com> is registered with RU-CENTER-MSK (Regional Network Information Center, JSC dba RU-CENTER) (the "Registrar").

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 Registrar a request for registrar verification in connection with the disputed domain name. On May 1, 2017, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that the Complaint together with the amendment to the Complaint/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 18, 2017. In accordance with the Rules, paragraph 5, the due date for Response was June 7, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 13, 2017.

The Center appointed Ladislav Jakl as the sole panelist in this matter on June 26, 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 Tinder, Inc. ("Tinder") is in the business of providing online dating services. In particular, and since at least as early as 2012, Tinder has engaged in the online dating services business by using its unique designation, TINDER, as a service mark and trade name for its online and mobile application products.

The Complainant is a holder of the following U.S. Trademark Registrations: 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; and No. 4,976,225 for TINDER, registered on June 14, 2016 for "Dating services; Internet-based social networking, introduction and dating services" in Class 44 (Annexes 4 and 5 to the Complaint).

The disputed domain name <tinderadult.com> was registered on September 16, 2016. The disputed domain name resolves to a website that leads the consumer through a series of 301 and 302 (permanent and temporary) redirects to "www.AdultFriendFinder.com", where visitors are prompted to complete a form for membership to a web service containing adult material.

5. Parties' Contentions

A. Complainant

The Complainant essentially contends that the disputed domain name <tinderadult.com> is identical or confusingly similar to its trademarks TINDER, that the Respondent has no rights or legitimate interests in respect to the disputed domain name and that the disputed domain name was registered and is being used in bad faith.

The Complainant states that the disputed domain name <tinderadult.com> incorporates the Complainant's trademarks TINDER in its entirety and that the addition of a generic Top-Level Domain ("gTLD") ".com" and the generic term "adult" does not sufficiently distinguish the disputed domain name from trademarks of the Complainant. The addition of the generic term "adult" does not sufficiently distinguish the disputed domain name from the Complainant's trademarks. The Respondent's use of the word "adult" in the disputed domain name is intended to relate directly to the dating services offered by the Complainant. The addition of this word to the Complainant's protected trademarks does nothing to differentiate the disputed domain name from the TINDER trademarks (F. Hoffmann-La Roche AG v. Med2shop, Thomas Donald Stenzel, WIPO Case No. D2013-2120). Additionally, the Respondent's registration of the disputed domain name as a gTLD suffix ".com" does nothing to distinguish the disputed domain name from the TINDER trademarks (Prudent Publishing Co., v. TRFCN, Inc., WIPO Case No. D2006-1325; Microsoft Corp. v. Charilaos Chrisochoou, WIPO Case No. D2004-0186). The Complainant concludes that disputed domain name is confusingly similar to the Complainant's trademarks TINDER in which the Complainant has registered rights.

As to rights or legitimate interests, in respect of the disputed domain name, the Complainant essentially contends that TINDER trademarks marks were registered long before the disputed domain (Annexes 4 and 5 and 7 to the Complaint). The Complainant is the owner of the registered TINDER trademarks as used in connection with Tinder's website, the Tinder App, and the online dating services Tinder provides (Annexes 4 and 5 to the Complaint). As such, the trademark registrations owned by the Complainant for the TINDER trademarks entitle the Complainant to the presumption that the TINDER trademarks are inherently distinctive and that he has the exclusive right to use the TINDER marks (15 U.S.C. § 1115(a); Men's Wearhouse, Inc. v. Wick, Claim No. FA 117861; Marvel Characters, Inc. v.superherosquad.com Private Registrant, DreamHost Web Hosting, WIPO Case No. D2008-0504; Sanofiaventis v. Dan Myers, WIPO Case No. D2008-1024.

The Respondent is not affiliated with the Complainant in any way, and the Respondent's continued use of the TINDER marks will cause to the Complainant irreparable damage through loss of its goodwill in the trademarks. The Policy provides that certain circumstances demonstrate a domain name holder's rights or legitimate interests to the domain name (Policy 4(c)). The Complainant concludes that the Respondent cannotdemonstrate any of those circumstances identified in paragraph 4(c) of the Policy, and therefore the Respondent has no rights or legitimate interest in the disputed domain name.

The Complainant further contends that the Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services. Rather than making a bona fide use, the Respondent has used the disputed domain name to leverage the Complainant's popularity and trade on the Complainant's goodwill. Specifically, the Respondent lures consumers to the disputed domain name with a confusingly similar web address, where visitors are prompted to complete a form for membership to a web service containing adult material, where upon they are redirected to the disputed domain name (Annex 8 and 9 to the Complaint). The Respondent is likely to continue this impropriety of deceitfully luring consumers to the adult-oriented website, evoking a negative connotation that is harmful to the Complainant and its service. Consequently, the Respondent cannot demonstrate that it has been using the disputed domain name in connection with a bona fide offering of goods or services. Rather, the facts reveal that the Respondent's use of the disputed domain name has been primarily to misappropriate the goodwill of the Complainant.

Moreover the Complainant argues that the Respondent has never been authorized by the Complainant to use any of the TINDER trademarks, as a trademark or as part of a domain name. Thus, the Respondent cannot establish that it has rights or any legitimate interests in the disputed domain name (Nilfisk-Advance A/S v. Leong Tak Lang, WIPO Case No. D2000-1299; Guerlain S.A. v. SL, Blancel Web, WIPO Case No. D2000-1191). In such cases, even where the Respondent did use the domain name to provide goods or services to consumers, UDRP panels have found that such use is not "legitimate" (Peter Frampton v. Frampton Enterprises, Inc., WIPO Case No. D2002-0141). Thus, the Respondent's use of the disputed domain name has been primarily to misappropriate the goodwill of the Complainant and to falsely and deceivingly suggest that the Respondent is connected or associated with, or endorsed by the Complainant (Neteller plc v. Prostoprom, WIPO Case No. D2007-1713). There is no evidence that the Respondent was commonly known by "tinderadult" as of September 16, 2016, when the disputed domain name was registered. Further, because the Respondent has registered and is using the disputed domain name in bad faith, the Complainant has clearly made out a prima facie case that the Respondent has no rights or legitimate interest in the disputed domain name (World Natural Bodybuilding Federation, Inc. v. Daniel Jones TheDotCafe, WIPO Case No. D2008-0642).

Finally, the Complainant argues that the Respondent registered the disputed domain name several years after the Complainant's inception and first registration of the TINDER trademark. The Respondent has therefore knowingly made unfair use of the disputed domain name to deceitfully associate adult-oriented websites with Tinder and, in turn, drive traffic to the disputed domain name at the expense of the Complainant. In this respect, the Respondent leverages Tinder's goodwill and extreme popularity for its own gain, and simultaneously diminishes the value of the Complainant's dating services.

The Complainant concludes that the Respondent cannot demonstrate any rights or legitimate interests in the disputed domain name.

Furthermore the Complainant argues that the disputed domain name is also being used in bad faith, as at the time of its registration the Respondent knew or should have known of the registration and use of the Complainant's trademarks prior to the Respondent registering the disputed domain name and that the registration of a trademark as a domain name is a clear indication of bad faith itself, even without considering other elements. The Complainant has used its TINDER trademarks in connection with its dating services since at least as early as 2012, and Tinder's <gotinder.com> domain name was registered on June 22, 2012, over four years before the Respondent registered the disputed domain name (Annexes 1 and 7 to the Complaint). The Complainant obtained its first registration for the TINDER trademark on the Principal Register of the U.S. Patent and Trademark Office (USPTO) on February 4, 2014, also long before the Respondent's registration of the disputed domain name (Annexes 1 and 4 to the Complaint). The Respondent literally incorporates the Complainant's entire registered trademark into the disputed domain name, driving consumers to a website that undermines the Complainant's legitimate commercial interests (DFDS A/S v. NOLDC, Inc., WIPO Case No. D2006-1070). Therefore, there can be no doubt that the Respondent intendeds to misappropriate the Complainant's trademark in order to deceive consumers and draw an improper association with the Complainant. The Respondent deliberately attempts to attract users by creating confusion with the Complainant's trademarks as to the source, sponsorship, affiliation or endorsement of the disputed domain name. Further, the Complainant's customers and prospective customers are likely to be deceived into accessing the Respondent's disputed domain name believing that they are dealing with the Complainant or believing that the disputed domain name is affiliated with or somehow endorsed by the Complainant. Accordingly, the Respondent's registration and continued use of the disputed domain name was, and continues to be, in bad faith.

In accordance with paragraph 4(i) of the Policy, for the described reasons, the Complainant requests, that the disputed domain name <tinderadult.com> be transferred to the Complainant.

B. Respondent

The Respondent did not reply to the Complainant's contentions.

6. Discussion and Findings

In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements is satisfied:

(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.

Paragraph 4(a) of the Policy states that the burden of proving that all three elements are present lies with the Complainant.

A. Identical or Confusingly Similar

There is no doubt that disputed domain name <tinderadult.com> incorporates the Complainant's trademarks TINDER. The addition of a generic gTLD ".com" and the generic word "adult" does not sufficiently distinguish the disputed domain name from trademarks of the Complainant. The generic term "adult" does not distinguish the disputed domain name from the Complainant's trademarks as it relates directly to the dating services offered by the Complainant. The addition of this word to the Complainant's protected trademarks does nothing to differentiate the disputed domain name from the TINDER trademarks (F. Hoffmann-La Roche AG v. Med2shop, Thomas Donald Stenzel, WIPO Case No. D2013-2120). Addition of ".com" does nothing to distinguish the disputed domain name from the TINDER trademarks (Prudent Publishing Co. v. TRFCN, Inc., supra; Microsoft Corp. v. Charilaos Chrisochoou, supra).

For all the above cited reasons, the Panel concludes that disputed domain name is confusingly similar to the Complainant's trademarks TINDER in which the Complainant has ( rights), and therefore the condition of paragraph 4(a)(i) of the Policy is fulfilled.

B. Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, the Complainant must prove that the Respondent has no rights or legitimate interests in the disputed domain name. Any of the following circumstances, as indicated in paragraph 4(c) of the Policy, in particular but without limitation shall demonstrate rights or legitimate interests:

(i) before the Respondent obtained any notice of the dispute, he has used or has made 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 individual, business, or other organization) has been commonly known by the disputed domain name, even if he has acquired no trademark or service mark rights; or

(iii) the Respondent was 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.

There is no evidence that before the Respondent obtained any notice of the dispute, he has used or has made 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. The Panel accepts the arguments of the Complainant that the Respondent has no rights or legitimate interests in the disputed domain name, as the Complainant has exclusive rights for TINDER trademarks and that no license or authorization was granted to the Respondent to use the TINDER trademarks in the disputed domain name. A mere registration of a domain name does not give the owner a right or a legitimate interest in the domain name itself (Terroni Inc. v. Gioacchino Zerbo, WIPO Case No. D2008-0666; St Andrews Links Ltd. v. Refresh Design, WIPO Case No. D2009-0601; Gibson, LLC v. Jeanette Valencia, WIPO Case No. D2010-0490). The Respondent has never been authorized by the Complainant to use any of the TINDER trademarks, including as a trademark or as part of a domain name. Therefore, the Respondent cannot establish that it has rights or any legitimate interest in the disputed domain name (Nilfisk-Advance A/S v. Leong Tak Lang, WIPO Case No. D2000-1299; Guerlain S.A. v. SL, Blancel Web, WIPO Case No. D2000-1191). The Respondent has not used the disputed domain name in connection with a bona fide offering of goods, has never been commonly known by the disputed domain name and that the Respondent's commercial use of the Complainant's trademark is not protected by the fair use doctrine. The Respondent is using the Complainant's trademarks in order to divert Internet users from the Complainant's website by capitalizing on the public recognition of the TINDER trademarks. The Respondent has no connection with or affiliation to the Complainant and has not received any express or implied license or authorization to use TINDER trademarks in a domain name or in any other manner. Moreover the Respondent cannot demonstrate a legitimate noncommercial or fair use of the disputed domain name. The Respondent registered and has used, and intends to further use, the disputed domain name to mislead and redirect users and potential users of Complainant's dating services to the disputed domain name to facilitate Respondent's own gain at Complainant's expense (Amanresorts Ltd., Amanresorts International Pte Ltd v. Scott B. Myer, WIPO Case No. D2007-1354).

For the above cited reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name, and that the requirements of paragraph 4(a)(ii) of the Policy are therefore fulfilled.

C. Registered and Used in Bad Faith

Under paragraph 4(a)(iii) of the Policy, the Complainant must prove that the disputed domain name was registered and is being used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances which, in particular, but without limitation, are to be construed as evidence of both:

(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the 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 his website or other online location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of his website or of a product or service on that website or location.

The Complainant has submitted evidence, unchallenged by the Respondent, that the Respondent has registered the disputed domain name in bad faith as he knew or should have known of the registration and use of the Complainant's trademarks prior to registering the disputed domain name. The Complainant has used its TINDER trademarks in connection with its dating services since at least as early as 2012, and Tinder's <gotinder.com> domain name was registered on June 22, 2012, over four years before the Respondent registered the disputed domain name (Annexes 1 and 7 to the Complaint). The Complainant obtained its first registration for the TINDER trademark on the (USPTO) on February 4, 2014, also long before the Respondent's registration of the disputed domain name (Annexes 1 and 4 to the Complaint). That registration of a well-known trademark as a domain name is a clear indication of bad faith (Intel Corporation v. The Pentium Group, WIPO Case No. D2009-0273). Moreover, by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent's website by creating a likelihood of confusion with Complainant's trademarks as to source, sponsorship, affiliation, or endorsement of his website (Popular Enterprises.LLC v. American Consumers First et al., WIPO Case No. D2003-0742). In such a way the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor. The disputed domain name is being used in bad faith, as the Respondent at the time of registering a disputed domain name had knowledge of the Complainant's rights in the TINDER trademarks (Lance Armstrong Foundation v. CSA Marketing, supra). In addition the Complainant alleges and the Respondent has not refuted that the Respondent's use of the disputed domain name and the Respondent's website allows consumers to download purportedly illegal copies of the Complainant's software products. The Respondent literally incorporates the Complainant's entire registered trademarks into the disputed domain name, driving consumers to a website that undermines the Complainant's legitimate commercial interests (DFDS A/S v. NOLDC, Inc., WIPO Case No. D2006-1070). Therefore, there can be no doubt that the Respondent intended to misappropriate Complainant' trademarks in order to deceive consumers and draw an improper association with the Complainant. The Respondent deliberately attempts to attract users by creating confusion with the Complainant's trademarks as to the source, sponsorship, affiliation or endorsement of the disputed domain name. Such commercial activity trading on the goodwill associated with the Complainant's mark is indicative of the Respondent's bad faith in registering and using the disputed domain name. The Respondent, by using the disputed domain name, is intentionally misleading the consumers and confusing them by making them believe that links on the website are associated or recommended by the Complainant.

For the above cited reasons the Panel finds that the disputed domain name was registered and is being used in bad faith. Considering all the facts and evidence, the Panel finds that the requirements of paragraph 4(a)(iii) of the Policy are also fulfilled in this case.

7. Decision

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 <tinderadult.com> be transferred to the Complainant.

Ladislav Jakl
Sole Panelist
Date: July 2, 2017