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QSoft Consulting Limited v. Bernard Lynch D/B/A Rainbow Globe [2004] GENDND 1356 (15 October 2004)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

QSoft Consulting Limited v. Bernard Lynch D/B/A Rainbow Globe

Case No. D2004-0668

1. The Parties

The Complainant is QSoft Consulting Limited, Twickenham, Middlesex, United Kingdom of Great Britain and Northern Ireland, represented by Laytons Solicitors, United Kingdom of Great Britain and Northern Ireland.

The Respondent is Bernard Lynch, trading as Rainbow Globe,Stockwell, London, United Kingdom of Great Britain and Northern Ireland.

2. The Domain Names and Registrar

The disputed domain names are:

Those domain names are all registered with eNom, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 23, 2004. On August 23, 2004, the Center transmitted by email to eNom a request for registrar verification in connection with the domain names at issue. On August 31, 2004, eNom 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. 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 31, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was September 20, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 22, 2004 .

The Center appointed Anthony R. Connerty as the sole panelist in this matter on October 1, 2004. The Panel finds that it was properly constituted. 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 Complainant is the proprietor of Community Trade Mark No. 002 127 264 GAYDAR which was registered on January 9, 2003.

The Respondent registered the domain name <gaydartravel.net> on May 24, 2003. The remaining four disputed domain names, namely, <gaydartravel.com>, <gaydartravel.org>, <gaydartravel.info> and <gaydartravel.biz>, were all registered on February 13, 2004.

On July 7, 2004, the Complainant’s solicitors wrote to the Respondent at the address in Clapham Road, Stockwell, London in relation to the domain name <gaydartravel.com>.

In that letter the solicitors state that their client is the proprietor of the Community Trade Mark GAYDAR. They say that their client operates a valuable business through the use of its registered domain names and has built up a substantial reputation in its mark. They state that a portfolio of their clients sites includes “www.gaydar.co.uk”, “www.gaydagirls.com”, and “www.gaydarradio.com”, all available from the Complainant’s portal website “www.gaydar.com”. They add that their client’s “www.gaydar.co.uk” and “www.mygaydar.com” introduction agency website has close to 1.7 million members worldwide. They say that their client’s events and lifestyle site includes information on travel which is aimed primarily at gay people. They add that, apart from the registered trademarks and domain names registered by QSoft, their client also owns and operates a radio station known as Gaydar Radio which is broadcast on Sky Digital, the UK’s Digital satellite broadcasting station.

They went on to say that Qsoft promotes a broad range of activities using the GAYDAR mark and has spent substantial sums advertising and promoting the GAYDAR brand worldwide. In the circumstances their client enjoys an extensive and widespread goodwill and repute in its trademarks and brands, in particular GAYDAR.

The letter stated that, without authorisation, the Respondent had registered and was using the name <gaydartravel.com> to link to the Respondent’s website at “www.rainbowglobe.com”.

The letter went on to deal with paragraph 4 of the Policy, alleging that the use of the domain name fell within paragraph 4(b)(iv) of the Policy.

The solicitors asked the Respondent to arrange for the transfer of the domain name <gaydartravel.com> to their client.

By a further letter dated August 3, 2004, the Complainants’ s solicitors wrote to the Respondent at the same address, noting that the Respondent had failed to acknowledge receipt of the letter of the July 7. They stated that it had been drawn to their client’s attention that four additional domain names had been registered which were also linked to the “www.rainbowglobe.com” website. In those circumstances they contended that all five domain names had been registered in bad faith, and that in addition to paragraph 4(b)(iv) of the Policy, paragraph 4(b)(ii) was also applicable. They asked that all five domain names be transferred.

5. Parties’ Contentions

A. Complainant

The Complaint states that the Respondent has not responded to the detailed letter of complaint of July 7, 2004 relating to <gaydartravel.com> or to the further letter of August 3, 2004 relating to all five domain names.

The Complaint is supported by documentary evidence contained in a number of Annexes. Those Annexes include the two solicitor’s letters and also show, for example, travel information provided via <gaydartravel.com>.

The Complaint alleges that the Respondent has no rights in the disputed domain names, and uses them to link to its own website “www.rainbow globe.com”.

The Complaint says that the mark and name GAYDAR is specifically referable to the Complainant and that it is well-established in the Complainant’s field of use as referring to the Complainant’s web lifestyle and dating agency business. It is therefore difficult to believe that the Respondent could have registered the domain names without having the Complainant’s business in mind.

The Complaint contends that the domain names could only be used by someone other than the Complainant in a way which would confuse people into believing that the domain names were registered to, or otherwise connected with, the Complainant.

Accordingly, by using the Complainant’s trademark to link to its own website, and having no rights whatsoever in the mark GAYDAR, the Respondent intentionally attempted to attract for commercial gain Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark.

Furthermore, the Complaint argues that the registration of the five domain names was intended to prevent the Complainant from reflecting its mark in a corresponding domain name, and that the registration of the five domain names therefore demonstrates that the Respondent has engaged in a pattern of such conduct.

The Complaint requests that the five domain names be transferred to the Complainant.

B. Respondent

No Response was received from the Respondent.

6. Discussion and Findings

Paragraph 4(a) of the Policy requires the Complainant to prove each of the following three elements:

(i) that the Respondent’ s domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) that the Respondent has no rights or legitimate interests in respect of the domain names; and

(iii) that the Respondent’s domain names have been registered and are being used in bad faith.

Paragraph 4(b) states that, or the purposes of Paragraph 4(a)(iii), various circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. Two of the circumstances, in Paragraphs 4(b)(ii) and (iv), are that:

(ii) the respondent has registered the domain names in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; and

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 its website or location or of a product or service on the respondent `s website or location.

A. Identical or Confusingly Similar

Taking <gaydartravel.com> as an example, what has to be compared is the mark GAYDAR and the domain name <gaydartravel.com>.

First, it is well settled that the addition of the generic top-level domain name (gTLD) “.com” is without significance since use of a gTLD is required of domain name registrants.

Second, the incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to a complainant’s registered mark: see for example Quixtar Investments Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253.

The Panel is satisfied that the Complainant has proved the first element.

B. Rights or Legitimate Interests

In relation to the second element, the Complainant has demonstrated its rights and interests in the mark and in the various domain names registered by the Complainant. The Complainant has persistently asserted that the Respondent lacks rights in the disputed domain names.

Paragraph 4(c) of the Policy lists (without limitation) three circumstances which, if proved, can demonstrate a Respondent’s rights or legitimate interests in disputed domain names.

The Respondent has failed to take the opportunity to submit a Response and in the circumstances the Panel is satisfied that the Complainant has satisfied the Paragraph 4(a)(ii) requirement.

C. Registered and Used in Bad Faith

The third and final element to be proved by the Complainant is the bad faith requirement. The Complainant must prove bad faith in relation both to registration and user.

First, the Complainant relies on Paragraph 4(b)(iv).

The Respondent registered the five disputed domain names after the date on which the Complainant registered the mark GAYDAR.

The Complainant has demonstrated its activities in areas including travel, and has submitted evidence showing that Respondent has used the disputed domain names to provide travel information. The Complainant’s solicitor’s letter of July 7, 2004 claimed that <gaydartravel.com> “is being used in connection with services identical to or similar to those offered by our client and that such use will lead to confusion on the part of the public.”

The Respondent has not sought to dispute the submissions made and the supporting evidence put in by the Complainant’s solicitors, and in all the circumstances the Panel is satisfied that the Complainant has proved the Paragraph 4(b)(iv) ground.

Second, the Complainant relies upon Paragraph 4(b)(ii), and in support of the “pattern of such conduct” requirement points to the registration of the five domain names. One was registered in May, 2003, within a short time of the trademark registration, and the other four were all registered on the same day in February, 2004.

Again, no effort has been made by the Respondent to put forward any explanation. In all the circumstances the Panel is satisfied that the Paragraph 4(b)(ii) ground is proved.

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the following domain names be transferred to the Complainant, namely:

Anthony R. Connerty
Sole Panelist

Date: October 15, 2004