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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Online Buddies Inc. v. Domain Capital
Case No. D2007-0541
1. The Parties
The Complainant is Online Buddies Inc., of Cambridge, Massachusetts, United States of America, represented by Wolf, Greenfield & Sacks, P.C., United States of America.
The Respondent is Domain Capital, of Fort Lee, New Jersey, United States of America, represented by ESQwire.com Law Firm, United States of America.
2. The Domain Name and Registrar
The disputed domain name <manhunt.com> (the “Domain Name”) is registered with Moniker Online Services, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 10, 2007. On April 12, 2007, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the Domain Name at issue. On April 25, 2007, Moniker Online Services, LLC transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced May 1, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was May 21, 2007. The parties agreed to extend the deadline for filing the Response until May 31, 2007. The Response was filed with the Center on May 31, 2007.
The Center appointed Harrie R. Samaras, Richard W. Page and David E. Sorkin as panelists in this matter on June 28, 2007. The Panel finds that it was properly constituted. Each member of 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
Complainant offers dating and social networking websites that cater to the gay male community through adult personal advertisements on the internet. Complainant markets its services worldwide and has continuously used the mark MANHUNT (“the Mark”) for promoting and selling them since 2001. Complainant owns U.S. Reg. No. 2,658,343 (issued on December 10, 2002) for the Mark for its use in conjunction with computer dating services via adult personal advertisements on the internet. In addition, Complainant owns trademark registrations throughout the world for the Mark including in Australia, Benelux, Mexico, New Zealand, the United Kingdom and in the European Community.
Complainant also holds domain names for its business. It acquired <manhunt.net> in 2001, which it has used to promote its services since then. Complainant later acquired <manhunt.jp> in 2005, which it has used to provide its services for the Japanese market.
Complainant’s “www.manhunt.net” website contains over 1,000,000 individual male profiles for its online dating service. It adds approximately 13,000 new members every week and receives more than 300,000 visitors daily. In each of the past several years, Complainant has earned millions of dollars in annual sales revenue. In 2006, Complaint’s sales were over $10,000,000.
Complainant has invested millions of dollars in the advertising and promotion of the MANHUNT mark, associated services and “www.manhunt.net” website. In 2006, Complainant invested over $2,000,000. in advertising and promotion. In so doing, Complainant has thereby established significant goodwill in the Mark.
Respondent acquired the Domain Name from a third party sometime between April 2006 and the present.1 Complainant contends that Respondent (actually Crazy Calm Media) is generally in the business of gay dating websites including <bareback.com>. Statements, pictures and advertising on the Domain Name placeholder home page before notice of this dispute indicated that Respondent intends to operate a website for gay men to meet one another.
5. Parties’ Contentions
The Domain Name is identical to Complainant’s registered trademark MANHUNT in its entirety and to Complainant’s highly successful websites at <manhunt.net> and <manhunt.jp>. Complainant operates a successful international, e-commerce website at <manhunt.net> where Complainant offers an online dating service catering to the gay male community through adult personal advertisements. The purported services offered by Respondent at the Domain Name compete directly with Complainant’s services.
Respondent acquired the Domain Name despite prior actual and constructive knowledge of Complainant’s rights in the trademark MANHUNT. Respondent has failed to make any bona fide use of the Domain Name. Respondent deliberately acquired the Domain Name to create a likelihood of confusion with Complainant’s “www.manhunt.net” website and divert Complainant’s customers who accidentally visit Respondent’s “www.manhunt.com” website when they intend to visit Complainant’s “www.manhunt.net” website. There is no plausible legitimate reason for Respondent’s ownership of the Domain Name.
On February 21, 2007, Complainant sent a cease and desist letter to Respondent. The letter informed Respondent that the placeholder home page and website directed to an online meeting place for gay individuals was an infringement of Complainant’s rights. Shortly after receipt of the cease and desist letter, Respondent shut down the “www.manhunt.com” website.
Claimant submits that Respondent’s acts constitute bad faith registration and use of the Domain Name in violation of the Policy.
Respondent contends that the Panel should dismiss the Complaint. Respondent has a legitimate interest in the disputed domain name because “manhunt” is a common word in the dictionary meaning “an intensive search for any person.” It is well-established that anyone has the right to register a domain name incorporating a common dictionary word and the first to register it has a legitimate interest in the domain name. For the same reason, the Domain Name was not registered in bad faith. Complainant does not have exclusive right to use the common word “manhunt”. There is substantial third-party use of this common word. A Google search for “manhunt” resulted in 1.6 million third party results, and “manhunt” is the subject of 3 U.S. registered trademarks.
Respondent is in the business of financing domain names for third parties through lease/buyback agreements. Under the lease/buyback agreement, the lessee controls all aspects of the website content associated with the domain name, including all content and advertising. Respondent registers the leased domain names to secure the lessee’s financial obligations. In this case, Respondent financed the purchase of the Domain Name for a company known as A Workshop. Respondent understood that “manhunt” was a common word that it could lawfully register without violating the Policy or other trademark laws. Respondent does not have control of how the Domain Name is used by A Workshop. Even were the Panel to determine that the use of the Domain Name constitutes bad faith, bad faith registration cannot be established, because once a domain name is registered in good faith, no subsequent fact can render that initial good faith registration bad.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires that a complainant prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(i) the domain name registered by the respondent 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 domain name; and
(iii) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
This element consists of two parts: first, does Complainant have rights in a relevant mark and, second, is the Domain Name identical or confusingly similar to that mark.
The Panel finds that Complainant has established rights in the Mark based on use as well as on its U.S. trademark registration.2 Likewise, Complainant has established rights in their domain names incorporating the MANHUNT mark, such as <manhunt.net> and <manhunt.jp>. See Editora Balcao Ltda v. Infomidia Producoes Ltda, WIPO Case No. D2000-1149 (November 23, 2000) (Panel found that the complainant owned and used the domain name <balcao.com> and held that the disputed domain name <balcao.net>, offering competing services, was confusingly similar to the mark BALCAO.). Complainants’ United States trademark registration is entitled to a presumption of validity, which Respondent has not rebutted. Spencer Douglass, MGA v. Bail Yes Bonding, WIPO Case No. D2004-0261 (June 1, 2004).
The domain name <manhunt.com> is identical to Complainant’s federally registered trademark MANHUNT in all respects except for the “.com” top level domain name, which is not significant in determining whether a domain name is identical or confusingly similar to a trademark. Bradford & Bingley Plc v. Registrant info@fashionID.com 987654321, WIPO Case No. D2002-0499 (August16, 2002) (“When comparing a challenged domain name and a trademark, the addition of the .com suffix is irrelevant for the purpose of determining whether the domain name is identical or confusingly similar to a trademark. Rather, one looks to the second-level domain for such a determination.”); CBS Broadcasting Inc. v. Worldwide Webs, Inc., WIPO Case No. D2000-0834 (September 4, 2000).
For the foregoing reasons, the Panel finds that paragraph 4(a)(i) of the Policy has been satisfied.
B. Rights or Legitimate Interests
Complainant must prove that Respondent has no rights to or legitimate interests in the Domain Name. Once a complainant makes a prima facie showing that a respondent has no legitimate interests or rights in the domain names at issue, the burden of production on this factor shifts to respondent to rebut the showing. The burden of proof, however, remains with Complainant. See Document Technologies, Inc. v. International Electronic Communications, Inc., WIPO Case No. D2000-0270 (June 6, 2000). Pursuant to paragraph 4(c) of the Policy, “[a]ny of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate [Respondents’] rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial 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.
Respondent’s primary argument for asserting that it has rights or legitimate interests in the Domain Name is that the “manhunt” term is “a common dictionary word” that many people use so why can’t it use this expression also. As an initial matter, the Panel notes that Respondent affirmatively stated in its Response that it “takes no position as to the validity of Complainant’s registered or alleged common law trademarks or their enforceability in this proceeding.” Having made such a statement it is surprising that Respondent would base its assertion of legitimate rights on its belief that Complainant’s mark incorporates “a common dictionary word.” In any event, the Panel has taken a position and determined that Complainant established rights in the Mark and its domain names which Respondent failed to rebut. Respondent’s argument must also fail because it is based on the misconceptions that “a common dictionary word” cannot serve as a trademark and that other uses of the term “manhunt” negate Complainant’s rights in the Mark. It appears that Respondent has made certain erroneous general assumptions about Complainant’s rights in the Mark without considering the specific circumstances of use.
Complainant has carried its burden of proving that Respondent has no rights to or legitimate interests in the Domain Name. It is undisputed that Complainant has not licensed or otherwise authorized Respondent or its licensee to use the Mark for any purpose nor has Respondent proffered any evidence that it or its licensee has been commonly known by the Domain Name. In fact, the undisputed evidence supports the conclusion that the use of the Domain Name is not in connection with any bona fide offering of goods or services and with the intent for commercial gain as set forth under paragraphs (i) and (iii) above.
On February 21, 2007, Complainant sent a cease and desist letter to Respondent. The letter informed Respondent that its placeholder home page and website directed to an online meeting place for gay individuals infringed Complainant’s rights in the Mark. Before notice of the dispute, the Domain Name was being use in conjunction with a placeholder home page with the words “Manhunt.com” dominantly displayed across the back of a naked man and images indicating future links to the websites “www.maleescortreview.com” and “www.bareback.com”. Shortly after receipt of the cease and desist letter, Respondent shut down the “www.manhunt.com” website. The current site, as viewed by the Panel, is a page that summarizes where to find gay companions around the world. It states: “Isn't it time you packed your bag and hit the road? Let us help you on your Manhunt! Our travel site will be ready soon! Get ready to blast off into the hottest destinations on the gay globe! The Manhunt.com Team.” Furthermore, Complainant’s Mark is used as a meta tag on the webpage associated with the Domain Name.
It is clear from information relating to and on the former and current home pages associated with the Domain Name that Respondent’s services overlap with those of Complainant. Respondent does not contest this. Thus in using a domain name that is identical to Complainant’s registered mark on services that overlap, Respondent’s use is not a bona fide use and the Panel concludes that it was intended for commercial gain and to divert Internet users to Respondent’s commercial website. As explained in Madonna Ciccone, p/k/a Madonna v. Dan Parisi, WIPO Case No. D2000-0847 (October 12, 2000), “use which intentionally trades on the fame of another can not constitute a bona fide offering of goods or services . . . to conclude otherwise would mean that a Respondent could rely on intentional infringement to demonstrate a legitimate interest, an interpretation that is obviously contrary to the intent of the Policy.” See also, Little Gym International, Inc. v. DomainStuff.com, WIPO Case No. D20003-0466 (Aug. 21, 2003) (“Bona fide use does not exist when the intended use is a deliberate infringement of another’s rights.”); Federal National Mortgage Association, dba Fannie Mae v. DomainStuff.com, FA 0206000114620 (NAF July 29, 2002) (finding DomainStuff.com’s use of “www.fannimae.com” to divert Internet users searching for Complainant’s website was not in connection with a bona fide offering of goods or services nor was it a legitimate noncommercial or fair use of the domain name); Marigny Corp. v. Discount Coffee.com, Inc., WIPO Case No. D2001-0354 (May 17, 2001) (Panel held that respondent’s use of the domain name <standardcoffeeservice.com> as a means of attracting internet users to its site where it sold coffee and related products and services was a deliberate infringement of complainant's rights in the mark Standard Coffee Service Company and lacked any right or legitimate interest in the domain name.).
For the foregoing reasons, the Panel finds that paragraph 4(a)(ii) of the Policy has been satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets forth four criteria that are to be considered as evidence of the registration and use of a domain name in bad faith:
“(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) you have registered the 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product.”
These criteria are not exclusive and the Panel may conclude that Respondent acted in bad faith where other circumstances reveal the bad faith nature of the registration and use of the disputed domain name. This case presents evidence of bad faith based on some of the aforementioned factors and others not enumerated.
Respondent stridently maintains “there is no evidence Respondent had any knowledge of Complainant’s mark when it registered the Domain Name” and that “Respondent registered the domain name in order to secure the financial obligations of a third party borrower, which represented and warranted to Respondent that it would not use the domain name in a way that infringed third-party trademark rights.” None of these assertions will save Respondent here.
It is inconceivable that Respondent did not have actual notice of Complainant’s rights before acquiring the Domain Name considering the facts that (1) Complainant began doing business under the name “manhunt” over six years ago and has substantially advertised and promoted the Mark; and (2) the services offered by the parties overlap. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (Feb. 18, 2000) (the fact that the complainant was “widely known” by its trademarked name contributed to the panel’s conclusion that “it is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate”). Furthermore, Respondent advertises its business as “the first and only financial services company to offer financing to businesses based on the inherent and recognized value of premium domain names.” In fact, Respondent’s General Counsel provided affidavit testimony that “[t]he purchase price for manhunt.com was $72,222.000, of which $43,334.00 was financed by [Respondent] through a lease/buyback agreement with [lessee].” Thus, it strains credulity to believe that Respondent who is in the business of providing financing for “premium domain names” was not aware of the “inherent and recognized value of” the Domain Name when it entered into an agreement to finance over $43,000 for it and when it registered the Domain Name. Respondent’s statements and actions before this proceeding began belie its statements after the fact.
Respondent has also tried to pin its misdeeds on its purported ignorance of its lessee’s use of the Domain Name in connection with the website. In fact the evidence of record strongly contradicts this. Under the lease agreement between Respondent and its lessee, the term “Domain” includes “the domain and URL address” as well as “the website found at the address of the domain (along with related software and documentation.” The following are just some of the lease provisions which indicate a clear connection between Respondent and the website associated with the Domain Name from even before Respondent registered the Domain Name:
1. Under section 5(b) “Operations”: “Lessee will take all necessary steps to protect [Respondent’s] interest in the website, including, but not limited to, giving appropriate notice of [Respondent’s] ownership and related interests.
2. Under section 5(c) “Operations”: “Lessee agrees that the Domain contains copyrighted materials that are proprietary to [Respondent] and/or others.”
3. Under section 7(a) “Ownership and Inspection”: “The Domain shall at all times remain the property of the [Respondent].”
4. Under section 7(d) “Ownership and Inspection”: “[Respondent] and/or its agents shall have free access to the codes for the Domain for the purpose of inspection and for any other purpose contemplated in this Agreement.”
5. Under section 8(a) “Warranties”: “[Respondent] shall, at the request and expense of Lessee, enforce for the benefit of Lessee any rights which [Respondent] shall be entitled to enforce in respect of the Domain.”
Although Respondent changed the site when it received Complainant’s cease and desist letter, it simply replaced it with an interim page of the same ilk, and Respondent does not intend to stop there – it’s advertising a new website for gay men using the Domain Name. Thus, Respondent was involved with and continues to be involved with bad faith use of the Domain Name. See CompuCredit Corporation v. Domain Capital and Aspire Prints, WIPO Case No. D2007-0407 (June 12, 2007) (The panel rejected Domain Capital’s assertion that it cannot be held responsible for its licensee’s use of the domain name stating: “Domain Capital was the named registrant of the Disputed Domain Name when it was used to maintain the website that attracted consumers away from the Complainant’s services. Therefore it is the party that is responsible for the content of the website at that time.”).
Furthermore, it is uncontroverted that Respondent registered and is using a domain name that incorporates Complainant’s entire registered trademark MANHUNT. Such registration and use constitutes bad faith. Cellular One Group v. Brien, WIPO Case No. D2000-0028 (March 10, 2000) (bad faith inferred where the disputed domain name includes the Complainant’s entire trademark); Red Bull GmbH v. Gutch, WIPO Case No. D2000-0766 (September 21, 2000) (“[T]he mere registration of one or more domain names that contains the well-known trademark of others is considered a trademark infringement or an act of unfair competition.”). Respondent’s adoption and the subsequent use of a domain name that is identical to Complainant’s Mark for similar services is clearly for commercial gain. Global Esprit, Inc. v. Living 4, WIPO Case No. D2004-0318 (August 24, 2004) (finding bad faith when competitor is in same industry redirected mark owner’s potential customers to respondent’s own website); Spencer Douglas, MGA v. Boil Yes Bording, WIPO Case No. D2004-0261 (June 1, 2004).
Furthermore, use of a domain name to direct Internet traffic to websites unaffiliated with the trademark holder constitutes bad faith. Respondent’s use of the Domain Name will necessarily result in a likelihood of confusion with Complainant as to source, sponsorship, affiliation or endorsement of Respondent’s website, particularly with the similarity between the parties domain names through the use of “manhunt”. Internet users will be “baited” to Respondent’s site by the use of Complainant’s mark, then potentially “switched” to competitive services. Such conduct has been recognized by the U.S. Courts as an infringement of trademark rights. See Brookfield Communications, Inc. v. West Coast Entertainment, 174 F.3d 1036 (9th Cir. 1999). It is inevitable that a substantial number of users of Respondent’s site are likely to be confused about the source, sponsorship, affiliation or endorsement of the “www.manhunt.com” website.
For the foregoing reasons, the Panel finds that paragraph 4(a)(iii) of the Policy has been satisfied
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 <manhunt.com> be transferred to the Complainant.
Harrie R. Samaras
Richard W. Page
David E. Sorkin
Dated: July 12, 2007
1 Prior to Respondent’s acquisition, the Domain Name was owned by a Gospel Music Group and was not used for dating services.
2 Respondent has taken “no position as to the validity of Complainant’s registered or alleged common law trademarks or their enforceability in this proceeding.”