Generic Top Level Domain Name (gTLD) Decisions

Interactive Media Group (Canada) Limited
COMPLAINANT,

vs.

Café au Lait
RESPONDENT.

DECISION
Claim Number: FA0005000094893

PARTIES

The complainant is Interactive Media Group (Canada) Limited, (“Complainant”). The respondent is Café au Lait, New York, NY ("Respondent").

REGISTRAR AND DISPUTED DOMAIN NAME(s) 

The domain name at issue is " TELEPERSONALS.NET", registered with Network Solutions, Inc. (“NSI”).

PANELIST(s)  Honorable Carolyn Marks Johnson, Arbitrator as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (“The Forum”) electronically on 05/24/2000.  The Forum received a hard copy of the Complaint on 05/24/2000.  

On 05/30/2000, NSI confirmed by e-mail to The Forum that the domain name "TELEPERSONALS.NET” is registered with NSI and that the Respondent is the current registrant of the name.  NSI has verified that Respondent is bound by the Network Solutions Service Agreement Version 5.0 and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s UDRP.

On 05/24/2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of 06/13/2000 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via email, post and fax, and to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts by email.

On 06/13/2000, having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, The Forum transmitted to the parties a Notification of Respondent Default.

On 06/16/2000, pursuant to Complainant’s request to have the dispute decided by a Single Member panel, The Forum appointed the Honorable Carolyn Marks Johnson as Panelist.

Having reviewed the communications records in the case file, the Administrative Panel (the "Panel") finds that The Forum has discharged its responsibility under Paragraph 2(a) of the Uniform Rules "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its Decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, The Forum’s Supplemental Rules and any rules and principles of law that the panel deems applicable, without the benefit of any Response from the Respondent.

RELIEF SOUGHT

The Complainant requests that the domain names be transferred from the Respondent to the Complainant.

PARTIES’ CONTENTIONS

A. Complainant

The Complainant contends that the Respondent has registered a domain name that is identical to and confusingly similar to its service mark registered for and in use by the Complainant.  Further, the Complainant contends that the Respondent has no rights or legitimate interests to the domain name, and that the respondent has registered and is using the domain name in bad faith.                   

B. Respondent

The Respondent submitted no response in this matter.

FINDINGS

The Complainant is the owner of the trademark registration for the marks “Telepersonals” and “Telepersonals with design” in connection with providing telephone voice messaging services (recording, transmission, and storage) of personal advertisements.  The Complainant has registered this mark in Canada (No. 399,968; date of first use: December 15, 1987), New Zealand (No. 254110-1; date of first use: September 27, 1995), and the United States (No. 1,992,307; date of first use: April 1990). 

The Complainant’s services provide a way for clients to meet people who share similar interests and allow them to get to know each other before dating.  The Complainant has invested substantial sums of money in developing and marketing its services under its mark. The Complainant utilizes “WEBPERSONALS.COM” to market its services under the “Telepersonals” mark because “TELEPERSONALS.NET” was unavailable when they attempted to register it.      

The Respondent registered the domain name “TELEPERSONALS.NET” on June 27, 1998 with NSI.  This website serves as a portal to a site owned by World Wide Escorts Network.  World Wide’s site arranges escorts in various cities across the United States and contains links to various pornographic sites.

DISCUSSION

Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Policy (“Policy”) directs that the complainant must prove each of the following three elements in order to demonstrate claims 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; and

(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.

The Complainant has offered numerous exhibits in support of its claims, whereas the Respondent has submitted no response in the matter.  The Respondent’s failure to dispute the allegations of the Complainant permits the inference that the use of the Complaint’s mark, TELEPERSONALS, in connection with the World Wide website is confusingly similar to the Complainant’s mark.  Further, the Respondent’s failure to respond leads one to believe that the Respondent knows their web site is misleading and intentionally diverting business from the Complainant.  See Hewlett-Packard Company v. Full System, FA 94637 (Nat. Arb. Forum May 22, 2000).  Applying the Policy to the issue in this case furthers these inferences.   

Identical and/or Confusingly Similar

The Respondent’s domain name is identical to the Complainant’s registered mark except for the addition of the domain name level designation “net”.  When potential clients seek the Complainant’s services on the Internet, the Complainant’s mark is more than likely the first domain name entered.  This association is vital in maintaining a business in today’s e-commerce society.

Rights or Legitimate Interests

The Respondent’s registration of the “TELEPERSONALS.NET” domain name occurred after the date that the Complainant started using and filed for registration of its mark in Canada, New Zealand, and the United States. 

Further, the Respondent has made no legitimate use of the domain name at issue.  The Respondent has not used the domain name in connection with a bona fide offering of goods and services nor is the Respondent commonly known by the domain name, as set forth in the Policy ¶ 4(c)(i) – (iii).  Instead, the Respondent is using the site to divert users to another site.

Bad Faith

The Respondent registered the domain name in bad faith to divert users away from the Complainant’s site, and accordingly, it is not making a legitimate, noncommercial or fair use of the domain name. 

The Respondent registered “TELEPERSONALS.NET” long after the Complainant started using and registered for the mark in Canada, New Zealand, and the United States.  The Respondent should have had knowledge of the Complainant’s prior adoption, usage, and registration of the mark.  See America Online, Inc. v. QTR Corp., FA 92016 (Nat. Arb. Forum May 9, 2000).    

The Respondent is also evading any attempts to resolve this dispute.  Prior to initiating this suit, the Complainant attempted to contact the Respondent seeking a transfer of the domain name in question.  The Complainant’s correspondence was returned.  The Complainant located alternative contact information for the Respondent on the Internet and through the New York State Secretary of State’s Office.   No response was ever received as a result of the Complainant’s attempts to contact the Respondent at these addresses.  The Complainant contends that the information listed in the WHOIS database is inaccurate and purposefully misleading based on the returned mail and intentional disregard of the correspondence in this issue.  Providing incomplete and/or false information in the WHOIS directory is evidence of bad faith in domain name disputes. See America Online, Inc. v. QTR Corp., FA 92016 (Nat. Arb. Forum May 9, 2000). 

The panel may consider only the information provided in the complaint in absence of a response.  ICANN Rules ¶ 14.  It is an accepted rule of law that failure to respond operates as an admission of the truth of well pleaded allegations.  See Board of Regents v. Stinson-Head, Inc., 504 So. 2d 1374, 1375 (Fla. Dist. Ct. App. 1987) (applying this rule in an arbitration case).  The Respondent’s failure to submit a response constitutes an admission to the Complainant’s contentions.

Registering other owner’s trademarked domain names and then evading any sort of contact to resolve the matter, seems to be a pattern of conduct for the Respondent.  The Respondent previously registered “MARRIOTT-HOTEL.COM”.  The Respondent filed no response in the case Marriott International, Inc. v. Café au Lait, FA 93670 (Nat. Arb. Forum May 9, 2000).  The Respondent’s attempts to register trademarked domain names in order to prevent the owners from registering such domain names is evidence of bad faith based on the Policy ¶ 4(a)(ii). 

Further, the Respondent’s attempts to divert users to a competitor’s business (World Wide) and create confusion with the Complainant’s mark reveal bad faith.  See Policy ¶ 4(a)(iii), (iv).

Lastly, the Respondent’s link to World Wide’s site (which contains pornographic advertising and links) shows evidence of bad faith.  See Youtv v. Mr. Erkan Alemdar, FA 94243 (Nat. Arb. Forum April 25, 2000).  Trying to divert users from a site that would help them meet people and form relationships to a site that arranges escorts and advertises pornography constitutes bad faith.

DECISION

Having established all three elements required by the ICANN Policy Rule 4(a), it is the decision of the panelist that the requested relief be granted.  Accordingly, for all of the foregoing reasons, it is ordered that the domain name, “TELEPERSONALS.NET” be transferred from the Respondent to the Complainant. 

Hon. Carolyn Marks Johnson
Dated: June 28, 2000