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eCrush.com, Inc. v. Cox, Davis & Simpsom, LLC, Mr. Ken Cox, Mr. Brian Simpson, Mr. Ron Davis [2004] GENDND 1220 (11 September 2004)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

eCrush.com, Inc. v. Cox, Davis & Simpsom, LLC, Mr. Ken Cox, Mr. Brian Simpson, Mr. Ron Davis

Case No. D2004-0552

1. The Parties

The Complainant is eCrush.com, Inc., a Delaware (USA) corporation based in Chicago, Illinois, United States of America, represented by Timothy Lavender and Stephanie Carter of the law firm Kelley Drye & Warren, LLP, Chicago, Illinois, United States of America.

The Respondents are Cox, Davis & Simpson, LLC , a Missouri (USA) limited liability company based in St. Louis, Missouri, United States of America; and its owners – Ken Cox, an individual residing in St. Ann, Missouri, United States of America; Brian Simpson, an individual residing in Fenton, Missouri, United States of America; and Ron Davis, an individual residing in Ferguson, Missouri, United States of America. Respondents have designated Mr. Davis as their authorized representative.

2. The Domain Name and Registrar

The domain name at issue is <ispinthebottle.com> (the “Disputed Domain Name”). It is registered with Melbourne IT trading as Internet Name Worldwide, Melbourne, Victoria, Australia (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 26, 2004. On July 27, 2004, the Center transmitted by email to the Registrar a request for registrar verification in connection with the domain name at issue. On July 28, 2004, 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 was administratively deficient, the Complainant filed an amendment to the Complaint on July 30, 2004, (email) and August 3, 2004 (hard copy).¹

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 on August 4, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was August 24, 2004. The Response was filed with the Center on August 23, 2004.

The Center appointed Richard G. Lyon as the sole panelist in this matter on August 31, 2004. 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. The Panel finds that it was properly constituted and has jurisdiction over the proceeding.

4. Factual Background

“Spin the bottle” is a parlor game, well known in the United States, in which a bottle is placed on its side in the center of a circular table around which sit a number of men or women. A man (if those around the table are women) or woman (if those around the table are men) spins the bottle. The person at the table to whom the bottle points after rotating grants the spinner a kiss (or other romantic favor). This dispute involves two parties that use the name of this game for websites that provide on-line dating and matchmaking services.

Complainant holds a United States service mark, used in commerce since 1999, and registered in 2002, on the principal register of the United States Patent and Trademark Office, for ESPIN THE BOTTLE, for “dating services; computer services, namely providing social introduction services by means of a website, an electronic database and a global computer network . . .” At its principal website, “www.espinthebottle.com”, Complainant has since 1999, operated a dating service that it describes as “a free and fun way to flirt or make new friends online by posting a profile and matching up with people of similar interests”. Complainant’s targets as its users “young single people, particularly teenagers”. Complainant’s service has over 800,000 registered users, a subscriber base that has generated advertising revenues for Complainants in excess of $1 million per year.

Respondents registered the Disputed Domain Name in October 2003. At about the same time Respondents also registered <wespinthebottle.com> and <youspinthebottle.com>. All three of these domain names resolve to the Disputed Domain Name, where Respondents maintain a website devoted to dating and matchmaking services. Both parties describe Respondent’s site as adult oriented, apparently meaning targeted to individuals older than the “young single people” that Complainant seeks as customers. Complainant does not allege that Respondents’ site was or is pornographic.

The Panel’s examination of the parties’ respective websites on September 9, 2004, confirmed that Respondents are using the Disputed Domain Name for a dating and matchmaking service, and that the site does not contain pornographic content. The format and style, if not the target audience, of both sites are similar, and both have commercial links to third party sites (Respondents’ site to general commercial sites, Complainant’s site to other sites operated by Complainant). This examination also revealed that Respondent has changed the name of its dating service (but not its web address) to “litup.com”.

Complainant’s counsel wrote to Respondents on June 30, 2004, demanding that Respondents cease and desist their use of the Disputed Domain Name. Respondents did not reply to this letter.

Except for the Panel’s observation that the sites are similar in format and style (which Respondent denies), the parties do not contest the foregoing facts. Contested factual allegations and related inferences are set out in the following section.

5. Parties’ Contentions

A. Complainant. The Panel summarizes Complainant’s allegations as follows:

Similarity. The Disputed Domain Name is “legally identical and confusingly similar” to Complainant’s ESPIN THE BOTTLE mark. Not using capital letters, deleting the spaces between the words, and adding a top level domain name suffix are legally irrelevant in considering such identity or similarity. Complainant alleges that actual confusion has occurred and that “Complainant has received emails” from confused consumers. It submits as evidence one such email (Complaint, Annex 4) containing the following inquiry “Is your site related to ‘ispinthebottle.com’? If not, are they violating your brand or copyright?”

Rights or Legitimate Interest. Respondents have never been commonly known by the Disputed Domain Name, and Complainant has never authorized Respondents to use its mark. Under United States trademark law, Respondents have constructive knowledge of Complainant’s registered mark. Because of that constructive knowledge, and because a simple trademark search would have revealed Complainant’s mark, no use of a confusingly similar domain name can be legitimate.

Bad Faith. “Upon information and belief, Respondents have registered the Disputed Domain Name solely for the purpose of attempting to trade upon the fame of Complainant’s mark”; “Respondents are seeking to mislead consumers by directing them to a website through the use of a domain name that is confusingly similar” to that mark, so used “to misleadingly divert consumers or to tarnish” the mark; and Respondents’ website is clearly commercial and in fact a competitor of Complainant. The foregoing, which has created “actual confusion and further likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website”. Had Respondents conducted a trademark search they would have become aware of Complainant’s mark and thereby represented either falsely or intentionally ignorantly, when registering the Disputed Domain Name, that “the registration of the [Disputed Domain Name] will not infringe upon or otherwise violates the rights of any third party”. (Policy, paragraph 2, incorporated in the Registrar’s registration agreement).

B. Respondent. The Panel summarizes Respondents’ contentions as follows:

Similarity. The Disputed Domain Name incorporates “spin the bottle”, a common phrase said to be “inherent to dating,” to the extent Complainant seeks to enforce rights in that phrase, without the prefix “e”, it is descriptive and “not a valid mark.” The content of Respondents’ website differs from Complainants as illustrated by the cover page.² The email Complainant submits as evidence of actual confusion is in fact not from a confused consumer but from one of Respondents’ vendors, who queried Complainant at Respondents’ suggestion. Consumers are in fact not confused, as illustrated by an Alexa statistic indicating that Complainant’s site is not among the top ten sites visited by people who visit Respondents’ site. (Response, Annex 3)

Rights or Legitimate Interest. Respondents have developed their site and have therefore been known by the Disputed Domain Name prior to the commencement of this proceeding. Their use is for a legitimate business and not competitive with the Complainant’s website because of the different target audience and different links.

Bad Faith. Respondents deny bad faith in registration or use. They assert that they selected the spin-the-bottle phrase because of its longtime relationship to dating services. When spinthebottle.com was not available, they asked and received the permission of the owner of that website to establish a disputed domain name and Respondents’ other two web addresses.

6. Applicable Standards

To prevail, Complainant must prove the elements set out in paragraph 4(a) of the Policy. These are:

(i) Respondent’s Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) Respondent has no rights or legitimate interests in respect to the Domain Name; and

(iii) Respondent’s Domain Name has been registered and is being used in bad faith.

Complainant bears the burden of proof on each of these elements.

7. Discussion and Findings

The Disputed Domain Name is not identical, legally or otherwise, to the Complainant’s mark. Except for lower case letters, elimination of the spaces, and addition of a top level domain indicator, all of which Complainant correctly asserts are irrelevant, however, the difference is a single letter.

Changing one letter in a valid mark can often be per se cybersquatting. That is the gist of the typosquatting cases, in which a respondent changes or transposes one or a few letters in a mark, often to nearby letters on a standard computer keyboard. Such obviously intentional imitation of another’s mark has been held to be presumptive, even conclusive, evidence of all three elements of the Policy.

For similar reasons, the addition of a common word or words to a valid mark (for example, “store” or “online”) has also regularly been held not to obviate any confusion created in the minds of consumers seeking the mark owner. The rationale for this almost uniform rule of decision is that the complainant’s mark is the operative or dominant component of the disputed domain name and that the Respondent intentionally incorporated the mark in order to attract consumers seeking the mark owner. The Panel refers to these cases as the “dominant feature” cases.

The facts in this proceeding differ from typosquatting and dominant feature cases in significant respects. The one-letter change is not a misspelling of Complainant’s mark that results in an otherwise nonsensical word or phrase; on the contrary, the Disputed Domain Name and Respondent’s other domain names are everyday phrases incorporating the name of the parlor game. Complainant’s mark is not the common phrase “spin the bottle” and arguably depends upon inclusion of the letter “e”, used in its commonly identifiable form as shorthand for “electronic”, to identify Complainant’s services. Stated differently, it may be that Complainant’s mark requires both the letter “e” and the spin the bottle phrase to identify Complainant’s services; “spin the bottle” is not the mark and not the only dominant feature of the mark. “Spin the bottle” is suggestive of Complainant’s services, so Complainant’s rights in that phrase are weaker than in a distinctive phrase or famous mark.³

The single-letter difference may in fact confuse some Internet users. Does that possibility alone, or even that fact alone (if fact it be) suffice to establish the Policy’s first element? In proving confusion in a trademark infringement action, the answer would be “no”. Even if the legal or evidentiary standard differs under the Policy, the Panel believes that a single-letter difference does not automatically prove confusing similarity under paragraph 4(a)(i) of the Policy.

The parties’ evidence of confusion is conflicting, with Respondent’s Alexa submission considerably more persuasive than Complainant’s evidence (as opposed to broader conclusionary allegations). Respondent’s challenge to Complainant’s evidence is entirely credible. The Panel would have no difficulty finding the Disputed Domain Name confusingly similar to “spin the bottle”, but much more difficulty finding a proper sentence confusingly similar to Complainant’s partially distinctive mark.

Similarity and confusion thus depend to some extent upon disputed factual issues. In this proceeding the Panel has no means of cross-examining either party, independently obtaining evidence, or reviewing and evaluating evidence submitted by the parties.

The limited evidentiary record necessarily present in a dispute under the Policy and the Panel’s restricted fact-finding ability similarly complicate evaluation of evidence related to the requirements of paragraphs 4(a)(ii) and 4(a)(iii) of the Policy. Neither Complainant’s “constructive notice” theory nor Respondents’ failure to conduct a trademark search creates an absolute and inflexible rule establishing illegitimacy or bad faith. Complainant’s “information and belief” factual assertions and related conclusions may appear on the surface more believable than Respondents’ version of events, but this is not a case in which Complainant’s version is the only credible conclusion. Respondents are not frequent cybersquatters, have not provided false contact information, have not warehoused the Disputed Domain Name, have not tried to sell the Disputed Domain Name to the mark owner, and have appeared in this proceeding with evidence of what is at least a reasonable explanation.

Complainant bears the burden of proof on each element of the Policy. In a close case, the panel should lean toward the Respondents’ view of things. Interstate National Dealer Services, Inc. v. Selwyn Colley, WIPO Case No. D2003-0934; Rug Doctor, L.P. v. Barry Bourdage, WIPO Case No. DTV2003-0002. On the record in this proceeding the Panel finds that Complainant has not met its evidentiary burden under paragraph 4(a) of the Policy.

A final consideration supports the Panel’s denial of the Complaint. Respondents are identifiable and subject to jurisdiction in a United States court. When several elements of this proceeding turn on credibility and the fact-finder’s decision on which party’s version to believe, litigation is a far more suitable means of resolving Respondents’ entitlement (or not) to the Disputed Domain Name. Greyson International, Inc. v. William Loncar, WIPO Case No. D2003-0805.

8. Decision

For the foregoing reasons, the Complaint is denied.

Richard G. Lyon
Sole Panelist

Dated: September 11, 2004

¹ The amendment is irrelevant to the merits of the proceeding. For convenience the Panel refers to the complaint as amended as the “Complaint”.

² Respondents submit samples of the cover pages of each party’s site.

³ This is not to suggest that Complainant's mark is in any way invalid. A panel under the Policy may ignore a valid service mark only in the most compelling circumstances. See Classmates Online, Inc. v. John Zuccarini, individually and dba Rave Club Berlin, WIPO Case No. D2002-0635.