4th Aug 2003

 

 

DECISION

 

Matchnet PLC v. Josh Joffe

Claim Number: FA0305000159456

 

PARTIES

Complainant is Matchnet PLC, Beverly Hills, CA (“Complainant”) represented by Victor T. Fu, of Richardson & Patel LLP. Respondent is Josh Joffe, Riverdale, NY (“Respondent”) represented by Ari Goldberger, of ESQwire.com Law Firm.

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <americasingle.com>, registered with Register.Com.

 

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

 

Judge Irving H. Perluss (Retired) is the Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on May 28, 2003; the Forum received a hard copy of the Complaint on May 30, 2003.

 

On May 28, 2003, Register.Com confirmed by e-mail to the Forum that the domain name <americasingle.com> is registered with Register.Com and that the Respondent is the current registrant of the name. Register.Com has verified that Respondent is bound by the Register.Com registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On June 2, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 23, 2003 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@americasingle.com by e-mail.

 

Respondent was granted an extension until July 14, 2003 to respond. A timely Response was received and determined to be complete on July 14, 2003.

 

On July 22, 2003, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Judge Irving H. Perluss (Retired) as Panelist.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

A. Complainant

            1.            Complainant MatchNet plc (“MatchNet”) is an English public limited company with its principal place of business in London, England. MatchNet also has offices in Beverly Hills, California and Frankfurt, Germany. MatchNet is engaged in the provision of online dating services via eight distinct websites in over 236 countries, including the United States of America, and in four different languages. MatchNet is a leader in online dating and related services and has over eight million members. One of MatchNet’s most prominent websites is <AmericanSingles.com.> which has been in operation since June 1999.

 

            2.            MatchNet is the owner of U.S. Trademark Registration No. 2608475, for the mark AMERICAN SINGLES in Class 042 for computer services, providing a website (<AmericanSingles.com>) for facilitating the introduction of individuals.  The AMERICAN SINGLES trademark was registered on the Principal Register on August 20, 2002. The registration was based on an application filed in the U.S. Patent and Trademark Office on August 26, 1999. Since June 1999, and up to the present time, MatchNet has continuously utilized the AMERICAN SINGLES trademark in connection with its operation of the online dating website at <americansingles.com>.

 

            3.            In connection with its registration of the mark and its operation of the website at <americansingles.com>, MatchNet has advertised, promoted, and developed its AMERICAN SINGLES trademark, spending substantial funds each year. As a result of MatchNet’s extensive promotion of its AMERICAN SINGLES trademark, the mark has become recognizable through the United States and certain foreign countries as a symbol of premier online dating services. MatchNet has established substantial goodwill in its mark and consumers of online dating services throughout the United States and the world associate AMERICAN SINGLES trademark with MatchNet.

 

            4.            MatchNet alleges that Respondent, on May 30, 2000, with actual notice of MatchNet’s ownership of the AMERICAN SINGLES mark and MatchNet’s operation of its official website at <americansingles.com>, registered the disputed domain name <americasingle.com>, which comprises MatchNet’s AMERICAN SINGLES mark except with the “n” removed from the first term and the “s” removed from the second term. Respondent registered the disputed domain name <americasingle.com> knowing that the registration and the manner in which it was intended to be used would directly or indirectly infringe the legal rights of MatchNet, and that Respondent’s registration of the disputed domain name <americasingle.com> is confusingly similar to the MatchNet’s AMERICAN SINGLES trademark.

 

            5.            Since June 1, 1999, MatchNet has been involved in the sale of online dating services from <www.americansingles.com > which are of an identical nature to Respondent’s services. Respondent has no rights or legitimate interest with respect to the domain name <americasingle.com> and is using the domain name in bad faith. The domain name <americasingle.com> was registered by Respondent for the sole purpose of commercial gain by creating confusing with MatchNet and its AMERICAN SINGLES mark. Respondent is not commonly known by the domain name and has not acquired any trademark or service mark rights in the domain name. Respondent has not used and has no intention of using the domain name in connection with a bona fide offering of goods and services. Respondent was not authorized to use MatchNet’s AMERICAN SINGLES mark for any of the periods during which he has registered the domain name at issue and he has no legitimate, non-commercial or fair use of the domain name. MatchNet will be damaged by the continued operation of Respondent’s website at <americasingle.com> in that it creates the potential for substantial dilution and consumer deception and confusion because Internet users will be deceived into believing that Respondent’s website is sponsored by, affiliated with, or approved by MatchNet and AMERICAN SINGLES.

 

B. Respondent

            1.            Complainant’s mark is a generic term containing the words “AMERICAN” and “SINGLES,” which are commonly used in the online personals business (hereinafter “online dating”) in which both Complainant and Respondent are engaged. The term describes both the target end user for the online dating business, as well as what such end user would expect to find at the site: namely, “singles” (i.e., unmarried people, or those not in a relationship) living in “America.” Accordingly, Complainant has no enforceable trademark rights under the Policy, notwithstanding its registered trademark. In addition, the registration date for Complainant’s mark is subsequent to the registration date of the disputed domain name, which was registered by Respondent more than two years before the trademark registration date. Thus, Complainant does not have enforceable trademark rights for purposes of this proceeding.

 

2.            Respondent has rights and a legitimate interest to the disputed domain name because Respondent has been using the geographically descriptive domain name <americasingle.com> to offer online dating services. The use of this geographically descriptive term is consistent with Respondent’s overall marketing strategy, which owns over 200 other geographically, ethnically, and other topically descriptive online dating domain names, including the term “single” or “singles.” Complainant, itself, has engaged in a business relationship with Respondent and is estopped from claiming that Respondent is not engaged in the bona fide offering of services in connection with the disputed domain name.

 

            3.            Respondent did not register, and has not used, the disputed domain name in bad faith. The disputed domain name incorporates the term “America Single” which is entirely appropriate to use for online dating services marketed to singles living in America. Under the Policy, anyone is entitled to use a descriptive term domain name to promote a service it describes. Complainant has not demonstrated that the dispute domain name was acquired primarily for the purpose of selling, renting or transferring it to Complainant; to prevent Complainant from reflecting its trademark in a domain name; or to disrupt Complainant’s business or attract customers seeking to purchase its products. The descriptive term “American single” has widespread third-party use and Complainant does not have exclusive rights to it.

 

FINDINGS AND DETERMINATIONS

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

 

Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

 

(1)    the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2)    the Respondent has no rights or legitimate interests in respect of the domain name; and

(3)    the domain name has been registered and is being used in bad faith.

 

Identical and/or Confusingly Similar

 

It is evident that the disputed domain name is confusingly similar to Complainant’s AMERICAN SINGLES mark. This is because Respondent has merely removed the “n” from “American” and the “s” from “singles.” It has been held that the omission of letters from a mark is not sufficient to avoid a finding under Policy ¶4(a)(i). See State Farm Mut. Auto. Ins. Co. v. Try Harder & Co., FA 94730 (Nat. Arb. Forum June 15, 2000) (finding that the domain name <statfarm.com> is confusingly similar to Complainant’s STATE FARM mark); see also Compaq Info. Techs. Group, L.P. v. Seocho, FA 103879 (Nat. Arb. Forum Feb. 25, 2002) (finding that the domain name <compq.com> is confusingly similar to Complainant’s COMPAQ mark because the omission of the letter “a” in the domain name does not significantly change the overall impression of the mark).

 

The first prong of Complainant’s required proof has been established, but, as we shall see, the second and third required prongs under the Policy cannot be.

 

Rights or Legitimate Interests

 

Professor McCarthy in his treatise Trademarks and Unfair Competition (Update 3/2003) teaches us at section 12.1 (page 12-5):

 

A mark answers the buyer’s questions ‘Who are you? Where do you come from?’ ‘Who vouches for you?’ But the name of the product answers the question ‘What are you.’ Many competitive products will give the same answer, regardless of source of origin – e.g., a personal computer, a type of restaurant, a bar of soap. Such generic designations tell the buyer what the product is, not where it came from. If the public chooses to call a product a ‘Thermos’ bottle rather than a ‘THERMOS brand vacuum-insulated bottle,’ then ‘Thermos’ is not serving as a mark – it is used as a generic name, regardless of the producer’s intentions.

 

An analogy is to the case where a person is asked ‘Who are you?’ If he answers, ‘I am a human, homo sapiens,’ he is not telling the questioner who he is, but what he is. He has answered by giving his generic identification – not a name by which he can be identified and distinguished from all other human beings within that genus. So it is with the buyer who unconsciously asks the product, ‘Who are you?’

 

The concepts of ‘generic name’ and ‘trademark’ are mutually exclusive. Thus, if, in fact, a given term is ‘generic,’ it can never function as a mark to identify and distinguish the products of only one seller. (Footnotes omitted; emphasis in original.)

 

And, at section 12.2 (page 12-7), it is said:

 

Generic names are regarded by the law as free for all to use. They are in the public domain. As the U.S. Supreme Court stated: ‘Sharing in the goodwill of an article unprotected by patent or trademark is the exercise of a right possessed by all – and in the free exercise of which the consuming public is deeply interested.’ To grant an exclusive right to one firm of use of the generic name of a product would be equivalent to creating a monopoly in that particular product, something that the trademark laws were never intended to accomplish. (Footnotes omitted.)

 

Thus, it is vital to determine whether Complainant’s mark is generic and unprotectible.[1]

 

Genericness is a question of fact.[2] However, when the mark owner has a federal registration, there is a presumption that the term is not generic, and the challenger bears the burden of rebutting the presumption.[3]

 

The Panelist finds and determines that Respondent has carried his required burden of proof in establishing that Complainant’s mark is generic.

 

The terms “American” and “single” are generic. The first definition of the adjective “single” at page 1100 of Webster’s Ninth New Collegiate Dictionary (1983) is “not married.”

 

Clearly, then, the Panelist believes that in the public mind, the mark will be regarded as generic, meaning an American who is unmarried, and on the Internet providing a place for unmarried Americans to meet.

 

This finding and determination is enhanced because Respondent has registered domain names containing the “singles” term to communities across the globe by nationally, ethnicity, religion, interest groups, etc., in comprehensive fashion. Respondent’s “singles” branding strategy was in place long before Respondent registered the disputed domain name <americasingle.com> in May 2000, beginning as early as August 1997 when Respondent registered <Jewishsingles.net>. To date, Respondent has registered, and is using, over 200 descriptive “singles” domain names.

 

As further evidence of the public perception of the term “American singles,” it appears there is extensive third-party use of the term. An advanced <google.com> search for the term “American singles,” and “American Single,” excluding “MatchNet” (to eliminate results related to Complainant) yielded over 95,000 combined third-party uses respectively of the descriptive terms (61,700 for “American singles” and 34,900 for “American single”).

 

The Panelist, accordingly, finds and determines that Respondent has rights and a legitimate interest in the disputed domain name because Complainant’s mark is generic.[4]

Registration and Use in Bad Faith

 

Having found and determined that Complainant’s mark is generic, it must follow that Respondent did not register nor is he using the disputed domain name in bad faith.[5]

 

Respondent has charged Complainant with attempting to reverse hijack the disputed domain name.[6]

 

The Panelist declines to so find because Complainant’s mark was federally registered and, thus, presumptively valid.

 

This, in the Panelist’s view, is demonstrable evidence of Complainant’s good faith and justification.

 

DECISION

Having failed to establish all three elements required under ICANN Policy, the Panel concludes that relief sought by Complainant shall be DENIED.

 

 

 

 

JUDGE IRVING H. PERLUSS (Retired), Panelist
Dated: August 4, 2003



[1] See Rollerblade, Inc. v. CBNO, D2000-0427 (WIPO Aug. 24, 2000) (finding that “genericness, if established, will defeat a claim of trademark rights, even in a mark which is the subject of an incontestable registration”).

[2] See Dan Robbins & Associates, Inc. v. Questor Corp., 599 F.2d 1009, 202 U.S.P.Q. 100 (C.C.P.A. 1979); In re Northland Aluminum Products, Inc., 777 F.2d 1556, 227 U.S.P.Q. 961 (Fed. Cir. 1985) (whether a term is a generic name is a question of fact; evidence of public understanding of the term may be obtained from “any competent source, such as consumer surveys, dictionaries, newspapers and other publications”).

[3] See Filipino Yellow Pages, Inc. v. Asian Journal Publications, Inc., 198 F.3d 1143, 53 U.S.P.Q.2d (9th Cir. 1999) (“In cases involving properly registered marks, a presumption of validity places the burden of proving genericness upon the defendant.”).

[4] See Tough Traveler, Ltd. v. Kelty Pack, Inc., D2000-0783 (WIPO Sept. 28, 2000) (finding that Respondent had a legitimate interest in the domain name <kidcarrier.com>, as a generic term for a class of products that Respondent sells).

[5] See Successful Money Mgmt. Seminars, Inc. v. Direct Mail Express, FA 96457 (Nat. Arb. Forum Mar. 7, 2001) (finding the domain name <seminarsuccess.com> to be generic and that Respondent registered and used the domain name in good faith “because Respondent selected the name in good faith for its web site, and was offering services under the domain name prior to initiation of the dispute:”); see also Lumena s-ka zo.o. v. Express Ventures LTD., FA 94375 (Nat. Arb. Forum May 11, 2000) (finding no bad faith where the domain name involves a generic term, and there is no direct evidence that Respondent registered the domain name with the intent of capitalizing on Complainant’s trademark interest); see also Canned Foods, Inc. v. Ult. Search, Inc., FA 96320 (Nat. Arb. Forum Feb. 13, 2001) (holding that where the domain name is a generic term, it is difficult to conclude that there was a deliberate attempt to confuse on behalf of Respondent, and stating that “[i]t is precisely because generic words are incapable of distinguishing one provider from another that trademark protection is denied them”).

[6] See Aspen Grove, Inc. v. Aspen Grove, D2001-0798 (WIPO Oct. 5, 2001) (finding that when Complainant knows it has no rights in the mark but brings a Complaint, Complainant has acted in bad faith and attempted reverse domain name hijacking).