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Single Concepts, Inc. v. Top Deck Internet [2005] GENDND 1290 (20 July 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Single Concepts, Inc. v. Top Deck Internet

Case No. D2005-0507

1. The Parties

The Complainant is Single Concepts, Inc., of Decatur, Georgia, United States of America, (“the Complainant”) represented by Michael Brown, United States of America.

The Respondent is Top Deck Internet, of Moncton, Canada, (“the Respondent”) represented by Dann, Dorfman, Herrell & Skillman, PC, United States of America.

2. The Domain Name and Registrar

The disputed domain name <blacksingle.com> (“the Domain Name”) is registered with Intercosmos Media Group d/b/a directNIC.com (“the Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 10, 2005. On May 10, 2005, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On the same day, 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.

On May 12, 2005, the Center notified the Complainant that no email version of the Complaint had been received. This deficiency was rectified the same day. 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 May 13, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was June 2, 2005. The Response was filed with the Center on June 2, 2005.

The Center appointed Tony Willoughby, James Bridgeman and Irving H. Perluss as panelists in this matter on June 29, 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 Complainant is a US company having its principal place of business in Wilmington, Delaware.

The Complainant claims (and the Respondent does not dispute) that the Complainant and its predecessor in title, BlackSingles.com of Atlanta, Georgia, have continuously provided an online singles dating service under the name BlackSingles.com since May 1998.

Michael Brown, the Complainant’s authorised representative in this proceeding and the founder of the BlackSingles.com business is the registered proprietor of the following US service mark registration:

US Registration Number 2,853,581, BLACKSINGLES.COM (typed drawing) in Class 45 for providing online dating services via an Internet website. The mark was applied for on January 21, 2003, and matured into a registration on June 15, 2004. The date of first use in commerce is claimed to be July 17, 1998.

BlackSingles.com, the Complainant’s predecessor in title, is the proprietor of Georgia State service mark registration number S19790 dated February  22, 2002 BLACKSINGLES (word and design) with a claimed date of first use in Georgia of August 1, 1998. The mark is registered for an Internet personal dating service.

The Respondent is a Canadian company. It registered the Domain Name on August 14, 1999.

The Respondent claims (and the Panel accepts the claim as fact) that the Respondent registered the Domain Name with the intention that it be used to connect to a website acting as a referral website to other singles internet dating services such as AmericanSingles.com and BlackSinglesConnection.com.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the Domain Name is identical or confusingly similar to a trademark or service mark in which it has rights. It refers to the trade/service mark registrations referred to above and contends that the omission of the ‘S’ at the second level of the Domain Name does not obviate the likelihood of confusion.

The Complainant also contends that it has common law rights in respect of the name BlackSingles.com. It produces by way of supporting evidence press articles making reference to the Complainant and its founder from US national and local publications dating back to February 2000.

The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. It contends that the Respondent is not a licensee of the Complainant and that the Respondent is not commonly known by the name BlackSingle.com or anything similar. The Complainant observes that the Respondent uses the Domain Name to redirect traffic to other websites competing directly with the Complainant’s website.

The Complainant further contends that the Domain Name is registered and is being used in bad faith. The Complainant’s arguments in this regard are not presented conveniently in any one place within the Complaint. However, the Panel lists them as follows:

1. The Respondent registered the Domain Name knowing of the Complainant’s well-known dating service provided under the name BlackSingles.com and with a view to deriving profit from the Domain Name by forwarding visitors to the Respondent’s website to other dating service websites competing with the Complainant’s website. In so doing, the Respondent is effectively renting out the Domain Name to a competitor or competitors of the Complainant for sums in excess of the Respondent’s out of pocket expenses.

2. By its registration and use of the Domain Name, the Respondent has prevented the Complainant from using the Domain Name in connection with its services; and

3. In doing what it has done, the Respondent has deliberately disrupted the Complainant’s business in its online ventures to prevent the Complainant from making use of its own marks and in an unlawful attempt to mislead internet users as to the source sponsorship affiliation or endorsement of the Respondent’s website by means of initial interest confusion.

B. Respondent

The Respondent accepts that the Domain Name is similar to the Complainant’s trade/service marks. However, the Respondent mounts a major attack on the validity of those registrations claiming that if the Complainant had disclosed to the relevant trade mark registries, the existence of other users of names featuring the terms “Black Single” and “Black Singles”, the registries would not have allowed the applications through to registration.

The Respondent further observes that the Complainant’s Trademark applications and registrations both post date by some years the Respondent’s registration of the Domain Name.

As to the Complainant’s claimed common law rights in respect of the name BlackSingles.com, the Respondent points out that the evidence in support of the alleged common law rights only dates back to the year 2000, the year following the year in which the Respondent registered the Domain Name. Moreover, the Respondent observes that the expression “BlackSingle” is simply a generic term to describe a single person of a particular ancestry.

The Respondent denies the allegation that it has no rights or legitimate interests in respect of the Domain Name. It points out that for nearly five years it has been using the descriptive term “Black Single” as part of a domain name in affiliation with dating sites. The Respondent claims to have “in 2000 enrolled in an affiliate programme with AmericanSingles.com to provide referral traffic on the basis of the descriptive value of the term and its interest to single persons of African ancestry”. Subsequently, it has entered into a similar referral arrangement with Blacksinglesconnection.com. The Respondent claims that such uses are perfectly legitimate and claims that the first of them pre-dates any time by which the Complainant could have acquired rights in the name BlackSingles.com.

In summary, the Respondent claims that it is making legitimate good faith use of a descriptive term and has been doing so for many years and in advance of the date by which the Complainant can have acquired any rights in its name.

For similar reasons, the Respondent denies that it registered the Domain Name in bad faith or was using it in bad faith. “The Respondent here registered the Domain Name in the manifest belief that it would be useful as a Black Singles site”. The Respondent states that it has not sought to pass itself off as the Complainant nor has it attempted to sell the Domain Name nor has it exhibited any of the other usual indicia of bad faith.

The Respondent poses the issue for the Panel as follows:

“What the Panel should consider “under bad faith” is whether the Respondent had reason to believe in 1999 that “Black Single” was anything other than a descriptive term”.

6. Discussion and Findings

According to paragraph 4(a) of the Policy, 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.

A. Identical or Confusingly Similar

It is not in dispute that the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights and the Panel so finds.

The trade/service mark rights in question are:

(a) The trade/service mark registrations referred to above which are in the names of the Complainant’s founder (and authorised representative) and predecessor in title respectively; and

(b) Common law rights built up by the Complainant trading under the name “Blacksingles.com” since 1998.

As to the trade/service mark registrations, while they are not in the name of the Complainant, the Panel accepts that directly or indirectly the Complainant will have rights in them. The Panel notes the Respondent’s attack on the validity of those registrations, but the Panel does not regard itself as competent to go behind registrations, which appear on their face to be valid. For the purposes of this administrative proceeding, the Panel accepts them as being valid.

As to the common law rights, the Complainant has produced independent evidence mainly in the form of journal articles to suggest that by the year 2000 it had built up a substantial reputation and goodwill in its particular field of operation under and by reference to the name “Blacksingles.com” and operating via its website at “www.blacksingles.com”. As will be seen below, while the majority of Panelists are ready to accept on the balance of probabilities that by August 1999 (the date that the Respondent registered the Domain Name and some six months prior to the first of the exhibited journal articles) the Complainant had acquired a goodwill under the name sufficient to constitute common law rights in respect of the name, it is true that there is no direct evidence before the Panel to that effect. The dissenting Panelist, James Bridgeman, is not prepared to accept in the absence of direct evidence that the relevant goodwill existed as at August 1999. He points not only to the absence of evidence, but also to the descriptive nature of the Domain Name.

The issue as to when the Complainant had acquired rights in respect of its name is not relevant to paragraphs 4(a)(i) of the Policy. For the purposes of that paragraph, it is only necessary for the Complainant to demonstrate the existence of rights. However, for paragraph 4(a)(iii) of the Policy, the date of acquisition of the relevant rights may well be critical. Generally, if the respondent registered the domain name prior to the acquisition of any protectable rights by the complainant, a bad faith claim under paragraph 4(a)(iii) of the Policy will fail.

B. Rights or Legitimate Interests

To prove a negative of this kind, namely that the respondent has no rights or legitimate interests in respect of a domain name can be a very difficult thing for a complainant to prove. After all, the complainant may have no knowledge of the respondent beyond what appears in the relevant registrar’s Whois database.

It is now broadly acknowledged among panelists that what a complainant is required to do is to make out a prima facie case and it is then for the respondent to answer that case.

Here, the Complainant has demonstrated that at the time of filing of the Complaint the Respondent was not named Black Single or anything similar. Nor has the Complainant granted the Respondent any licence to use its trademark for this or indeed any other purpose. The Respondent has been using the Domain Name for a referral website, forwarding visitors on to singles websites competing with the Complainant and, it is to be inferred, deriving an income from the referrals. The Complainant claims that the Respondent embarked upon this endeavour in the full knowledge of the Complainant’s business being conducted from 1998 under a very similar name to the Domain Name.

The Panel has found the issue a difficult one to resolve. On the one hand, the Complainant has claimed that by the time the Domain Name was registered the Complainant had already built up a reputation and goodwill in respect of the BlackSingles.com name; on the other hand, as the Respondent correctly points out, the supporting evidence only goes back to February 2000 and the name ‘black single’ is a descriptive term apt to describe an unmarried person of native African descent.

Nonetheless, the Panel (by a majority) has come to the conclusion that the Complainant has done just enough to prove that the Respondent has no rights or legitimate interests in respect of the Domain Name. While it is certainly true that the Complainant’s evidence is nothing like as complete as it could have been, the Respondent’s position is weak.

When embarking on its business, the Respondent would naturally have selected for its domain name <blacksingles.com> rather than the Domain Name. All the singles sites to which it refers in the Response, including the two businesses with which it has at one time or another concluded referral arrangements (i.e. <americansingles.com> and <blacksinglesconnection.com>), feature ‘singles’ in the plural. The domain name, <blacksingles.com> was not available to the Respondent because the Complainant had got there first. In the view of the majority members of the Panel, it is very likely that the Respondent will have investigated the Complainant’s domain name and the Complainant’s online business conducted under that name before registering the Domain Name.

Moreover, the press articles exhibited by the Complainant demonstrate that the Complainant and its online business was well known in its field of activity in February 2000, the date of the earliest of the exhibited articles. The majority members of the Panel are ready to accept on the balance of probability that the reputation and goodwill of the Complainant will have extended back at least a further 6 months to a date prior to registration of the Domain Name.

Accordingly, while the Respondent has indeed been conducting a referral business under the Domain Name for the last 5 years, it is a business, which, in the view of the majority, has been knowingly developed by the Respondent on the back of the Complainant’s pre-existing reputation and goodwill. Such a business cannot constitute a bona fide offering of services such as to demonstrate rights and legitimate interests for the purposes of paragraph 4(c)(i) of the Policy. It is to be noted that the Respondent does not deny knowledge of the Complainant’s business and domain name at the time of registration of the Domain Name. It must have been obvious to the Respondent that its site would receive visitors intending to reach the Complainant’s website.

The Panel (by a majority) is of the view that when registering the Domain Name the Respondent was well aware of the Complainant’s business being conducted under the domain name, <blacksingles.com>, and was also well aware of the inevitability of confusion among Internet users resulting from the similarity of the names.

The Panel (by a majority) finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.

C. Registered and Used in Bad Faith

By the same reasoning the Panel finds (by a majority) that the Respondent registered the Domain Name in bad faith and is using it in bad faith.

In the Response, the Respondent states that the key question for the Panel to address under ‘bad faith’ is “whether the Respondent had reason to believe in 1999 that “Black Single” was anything other than a descriptive term”. The Panel disagrees. In the view of the Panel, the key question is whether the Respondent had reason at that time to believe that the name “BlackSingles.com” was anything other than a descriptive term.

The dissenting Panelist, James Bridgeman, takes the view that the Complainant has failed to establish that it had a protectable reputation in what is essentially the combination of two descriptive words and the generic domain suffix on the date on which the Domain Name was registered. The Complainant’s US service mark registration number 2,853,581, BLACKSINGLES.COM was not applied for until January 21, 2003, maturing into a registration on June 15, 2004. The date of first use in commerce is claimed to be July 17, 1998. The Georgia State service mark registration number S19790 is dated February 22, 2002, BLACKSINGLES (word and design) with a claimed date of first use in Georgia of August 1, 1998. The Complainant has not furnished any evidence of use going back before the registration of the Domain Name.

The majority Panelists acknowledge the reasoning of the dissenting Panelist, however, they point to the fact that one of the articles exhibited to the Complaint was published in the online journal, Ebony, in February 2000 and referred to the Complainant’s business in terms which suggest that it was by then well-established having 20,000 registered members. If true, it seems more than likely that the business was sufficiently well-known in the field in question under the name BlackSingles.com six months earlier, at the date that the Domain Name was registered. While, to an extent, the article may have relied upon what it was being told by the Complainant, there is nothing before the Panel to suggest that the information is other than accurate.

The Panel (by a majority) finds that the Respondent registered the Domain Name knowing that by entering into referral arrangements with competitors of the Complainant the Respondent would derive a profit well in excess of its out-of-pocket expenses in registering the Domain Name, a significant proportion of the referrals coming from Internet users intending to visit the Complainant’s website. In so doing, the Respondent has effectively rented the Domain Name out to the Complainant’s competitors at a profit (paragraph 4(b)(i) of the Policy).

Inevitably this also constitutes bad faith registration and use within the meaning of paragraph 4(b)(iv) of the Policy in that the Respondent is using the Domain Name for commercial gain, relying to a significant degree upon Internet users visiting the Respondent’s site by mistake. When they are forwarded, as they are currently, to the Black Singles Connection site, the predominant name they see is ‘Black Singles’, the word ‘Connection’ appearing in much smaller letters. Visitors intending to visit the Complainant’s site are most unlikely to be alerted to their mistake.

Accordingly, the Panel finds (by a majority) that the Respondent registered the Domain Name in bad faith and is using it in bad faith within the meaning of paragraphs 4(a)(iii) and 4(b)(i) and (iv) of the Policy.

7. Decision

In light of the foregoing findings, the Panel directs (by a majority) that the Domain Name, <blacksingle.com>, be transferred to the Complainant.

Dated: July 20, 2005