5th Dec 2005
WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Giga Pty Limited v. Elena Sadkovaya
Case No. D2005-0976
1. The Parties
The Complainant is Giga Pty Limited of Darling Harbour, Australia (“the Complainant”), represented by Leigh Adams, Lawyers, Australia.
The Respondent is Elena Sadkovaya of Moscow, Russian Federation (the “Respondent”), represented by Ari Goldberger, United States of America.
2. The Domain Name and Registrar
The disputed domain name, <adultmatchmaker.com> (the “Domain Name”), is registered with Go Daddy Software (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 13, 2005. On September 13, 2005, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 14, 2005, 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 for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint exceeded the 5000 word limit, the Complainant filed an amended Complaint on September 22, 2005. The Center verified that the Complaint (as amended) 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 on October 6, 2005 . In accordance with the Rules, paragraph 5(a), the due date for the Response was originally October 26, 2005, but this was extended to October 30, 2005, following a request for an extension by the Respondent’s representative. The Response was filed with the Center on October 27, 2005.
The Center appointed Tony Willoughby, James A. Barker and David E. Sorkin as panelists in this matter on November 24, 2005. 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
The Domain Name was first registered on October 5, 1997.
From a Web Archive report produced in evidence by the Respondent it is apparent that on March 3, 2000, the Domain Name was connected to an online adult dating service website operated by GoGoMedia Inc.
Since February 2002, the Complainant has traded as an online supplier of match making services under the name of Adult Match Maker. It provides its services by way of a website connected to the domain name <adultmatchmaker.com.au>.
From another Web Archive report produced in evidence by the Respondent it is apparent that on November 23, 2002, the Domain Name was connected to what appears to have been another online adult services website.
In August 2004, the Respondent acquired the Domain Name and the website to which it was then connected.
On March 15, 2005, the Complainant entered into an ‘affiliate agreement’ with one Mikhail Doubinski whereby for a fee Mr. Doubinski agreed to feature on his websites links to the Complainant’s websites.
In March 2005, Mr. Doubinski approached the Respondent seeking advertising space on the respondent’s website. Mr. Doubinski and the Respondent then entered into an agreement whereby for a fee the respondent would feature on her website links to various dating websites including inter alia the Complainant’s website at “www.adultmatchmaker.com.au”.
On June 8, 2005, the Complainant’s representatives wrote to Mr. Doubinski drawing attention to the fact that he had arranged for a link to the Complainant’s website to appear on the Respondent’s website and alleging that this constituted a breach of the affiliate agreement. The letter went on to threaten legal proceedings if a settlement proposal offered by the Complainant was not accepted. The correspondence ended with what appears to have been a complete breakdown of the relationship between the Complainant and Mr. Doubinski.
On June 20, 2005, the Complainant wrote to the Respondent accusing her of cybersquatting and offering her $10,000 for the Domain Name. The letter went on to threaten her with proceedings under the Policy if the Complainant’s terms were not accepted. Over the ensuing weeks the correspondence continued with the Complainant raising its offer to purchase the Domain Name by a further $5,000 and then a further $10,000 and the Respondent denying the allegation of cybersquatting and declining all offers to purchase.
5. Parties’ Contentions
The Complainant contends that the Respondent acquired the Domain Name with knowledge of the Complainant’s rights in the name Adult Match Maker and its services provided via its website at “www.adultmatchmaker.com.au”. The Complainant contends that the Respondent did so with a view to disrupting the Complainant’s business and exploiting the Complainant’s trade mark for her own commercial gain.
The allegation is that in acquiring and using the Domain Name for her dating service portal site the Respondent is attracting Internet users to her website for commercial gain, the Internet users in question comprising to a substantial degree people intending to visit the Complainant’s website.
The Complainant contends therefore that the Domain Name is identical to its common law trade mark, Adult Match Maker, and that the Respondent has no rights or legitimate interests in respect of the Domain Name (none of the circumstances set out in paragraph 4(c) of the Policy being applicable) and that the Respondent acquired and is using the Domain Name in bad faith within the meaning of sub-paragraphs 4(b)(iii) and (iv) of the Policy
The Respondent denies the Complainant’s contentions claiming that she acquired the Domain Name and its associated website in good faith from its previous owner for the purpose of developing a dating service site. She says that she regarded the Domain Name simply as a generic term covering the service she intended to provide and that until she was approached by Mr. Doubinski she had never heard of the Complainant or its service. She understood Mr. Doubinski to be an authorized affiliate of the Complainant and dealt with him on that basis.
In so contending she claims to have rights and legitimate interests in respect of the Domain Name and denies that she acquired the Domain Name with the bad faith intentions ascribed to her by the Complainant. She also denies that the Complainant can have any trade mark or service mark rights in respect of a name as descriptive as Adult Match Maker.
The Respondent claims that the Complainant is guilty of reverse domain name hijacking on the basis that when it filed the Complaint it should have known that it could not prove that the Domain Name was registered in bad faith.
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 that
(i) The 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 Domain Name; and
(iii) The Domain Name has been registered in bad faith and is being used in bad faith.
If the Complaint fails, the Panel has to have regard to paragraph 15(e) of the Rules and in particular the following sentence namely:
“If after considering the submissions the Panel finds that the Complaint was brought in bad faith, for example in an attempt at reverse domain name hijacking or was brought primarily to harass the domain name holder, the Panel shall declare in its Decision that the Complaint was brought in bad faith and constitutes and abuse of the Administrative Proceeding.”
Reverse Domain Name Hijacking is defined in paragraph 1 of the Rules as meaning “using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name.”
A. Identical or Confusingly Similar
The Domain Name is identical to the Complainant’s domain name save for the absence of the generic ‘.au’ suffix. Moreover, if one ignores, as the Panel must for this purpose, the generic ‘.com’ domain suffix in the Domain Name and the absence of any spaces in the Domain Name, the Domain Name is identical to the Complainant’s trading name Adult Match Maker.
That is of no assistance to the Complainant unless “Adult Match Maker” is a trademark or service mark in which it has rights. While the Panel has some sympathy with the Respondent in this regard, descriptive names are capable of acquiring secondary meaning and for the purposes of this decision the Panel is satisfied on the evidence put forward by the Complainant that in Australia it has common law rights in respect of its trading name. In other words Adult Match Maker is a trade mark or service mark in which the Complainant has rights.
Accordingly, the Panel finds that the Domain Name is identical to a trade mark or service mark in which the Complainant has rights.
B. Rights or Legitimate Interests
Whether the provision of a portal site and directory links to websites providing adult match-making services can be enough to give to the Respondent rights or legitimate interests in respect of a domain name such as the Domain Name is arguable. However, this is not an issue upon which the Panel needs to come to a decision in light of its finding under the next heading.
C. Registered and Used in Bad Faith
For the Complainant to succeed in this Complaint, the Complainant needs to establish, as it contends, that when the Respondent acquired the Domain Name she did so with knowledge of the Complainant and its adult match-making services.
The Respondent states categorically that until she was approached by Mr. Doubinski in March 2005 (some seven or eight months after she acquired the Domain Name) she was unaware of the existence of the Complainant. She further asserts that prior to March 2005 her website contained no link to the Complainant’s website.
There is nothing before the Panel to suggest that the Respondent is not telling the truth. The Domain Name is highly descriptive and the Complainant’s rights in that name on the evidence of the Complainant are restricted to Australia. The value of the Domain Name as a name to connect to an online dating service website was clearly appreciated by previous owners of the Domain Name a matter of years before the Complainant started trading in 2002. It was first registered in 1997 and on the evidence of the Respondent was in use by a predecessor of the Respondent in 2000.
The Complainant has failed to establish to the satisfaction of the Panel that the Domain Name was registered or acquired or is being used in bad faith.
For all the foregoing reasons, the Complaint is denied.
8. Reverse Domain Name Hijacking
The correspondence between the Complainant and both Mr. Doubinski and the Respondent demonstrates beyond doubt that, however misconceived the Complaint might have been, the Complainant launched this proceeding genuinely believing that the Complaint was entitled to succeed. The Panel does not believe that the Complainant acted in bad faith.
James A. Barker
David E. Sorkin
Dated: December 5, 2005