The Complainant is Tinder, Incorporated of Dallas, Texas, United States of America (“United States”), represented by Locke Lord LLP, United States.
The Respondents are Ghassan Hedhli of Bizerte, Tunisia; Betsy Adams of Tunis, Tunisia; Alison Britsson of Nabeul, Tunisia; Peter North of Bizerte, Tunisia; Alonzo Fredy of London, United Kingdom of Great Britain and Northern Ireland.
The disputed domain names <tinderapplication.com>, <tinderdatingapp.com>, <tinderdatingapp.net>, <tinderdatingapp.org>, <tinder-dating.net>, <tinderdatingonline.com>, <tinder-dating.org>, <tinderdatingsite.org>, <tinderdatingwebsite.com>, <tinderdatingwebsite.net>, <tinderdatingwebsite.org>, <tinderwebsite.com>, <tinderwebsite.net> and <tinderwebsite.org> are registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 26, 2017. On January 27, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On January 29, 2017, the Registrar transmitted by email to the Center its verification response confirming that:
(a) it is the Registrar for the disputed domain names;
(b) the disputed domain names are registered in the name of the Respondents identified in the Complaint as the registrant of that particular disputed domain name and the contact details for that Respondent in respect of that disputed domain name are correct;
(c) the registration agreements are in English;
(d) the disputed domain names were registered subject to the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), and the UDRP applies to each disputed domain name.
The Center verified that the Complaint satisfied the formal requirements of 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 and 4, the Center formally notified the Respondents of the Complaint, and the proceedings commenced on February 1, 2017. In accordance with the Rules, paragraph 5, the due date for Response was February 21, 2017. None of the Respondents submitted any response. Accordingly, the Center notified the Respondents’ default on February 22, 2017.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on March 3, 2017. 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.
The Complainant was founded in 2012 and has been providing online dating services through the Tinder App downloadable from its website, “www.gotinder.com”, since about September 2012. Since then, its Tinder App has been downloaded 100 million times; by March 2, 2015, it had an estimated 50 million users; it claims to have had an estimated 10 million daily active users in 2014 and to have made an estimated ten billion “matches”. According to the Complainant, more than 60 percent of its users are located outside of North America.
The Complainant has provided evidence of two registered trademarks in the United States:
(a) registered trademark No. 4,479,131 for TINDER in respect of a range of downloadable computer software in International Class 9, which was registered on February 4, 2014; and
(b) registered trademark No. 4,976,225 for TINDER in respect of a range of dating services in International Class 45, what was registered on June 14, 2016.
According to the Complainant, however, it has been using the trademark TINDER in respect of its software and dating services since it commenced operations.
The disputed domain names were registered at various times between September 20, 2014 and October 25, 2016.
Eight of the disputed domain names resolve to a page which features numerous photographs of different adults and a link to sign up to the services provided by <adultfriendfinder.com>. The website to which <adultfriendfinder.com> resolves appears to provide services similar to those of the Complainant although the Complainant contends that this website contains “lewd and erotic” content so it might be said that <adultfriendfinder.com> operates in what may be called the “adult” part of the market. Each of the Respondents has registered at least one of these disputed domain names. Although four of the Respondents have provided addresses in Tunisia, <adultfriendfinder.com> does not in any way appear to be directed just to Tunisia. If anything, it appears to be directed at Western society.
Three of the remaining disputed domain names appear to have resolved at least initially to the “Hello World” first blog post for a Wordpress blog. These three and two of the remaining disputed domain names do not appear to resolve to active websites at this time.
The final disputed domain name, <tinderdatingwebsite.org>, currently resolves to a website which purports to offer advice about using Tinder App successfully.
Paragraph 4(a) of the Policy provides that in order to divest a Respondent of a disputed domain name, the Complainant must demonstrate each of the following:
(i) the disputed 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 disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
No response has been filed. The Complaint has been served, however, on the physical and electronic coordinates specified in the WhoIs record (and confirmed as correct by the Registrar) in accordance with paragraph 2(a) of the Rules. In a number of cases, it was not possible to serve the Written Notice on the Respondent’s address as the address did not exist. Accordingly, the Panel finds that the Complaint has been properly served on each Respondent.
When a respondent has defaulted, paragraph 14(a) of the Rules requires the Panel to proceed to a decision on the Complaint in the absence of exceptional circumstances. Accordingly, paragraph 15(a) of the Rules requires the Panel to decide the dispute on the basis of the statements and documents that have been submitted and any rules and principles of law deemed applicable.
As the registrants of the disputed domain names are different, the Complainant has requested consolidation of its complaints.
Paragraph 3(c) of the Rules expressly permits a complaint to relate to more than one domain name where all the domain names are registered by the same domain name holder. Notwithstanding this express provision, UDRP panels have frequently held that the panel’s powers under paragraph 10(e) of the Rules may permit consolidation of multiple domain name disputes, subject to satisfaction of the other requirements of the Policy and Rules. In particular, paragraph 10(b) of the Rules requires the panel to ensure that all parties are treated equally and each is given a fair opportunity to present his, her or its case.
In accordance with those requirements, UDRP panels have typically allowed joinder against multiple respondents who have registered different domain names where the domain names in question, or the websites to which they resolve, appear to be under common control and consolidation would be fair and equitable to all parties. The onus of establishing that these requirements have been met falls on the party seeking consolidation. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 4.16.
In the present case, the Panel considers it is appropriate to permit joinder. As noted above, each of the Respondents has registered at least one disputed domain name which resolves to a web page redirecting to <adultfriendfinder.com>. Each of those pages is identical, apart from the resolving disputed domain name.
Next, all of the disputed domain names have provided one of four email addresses for each of the registrant, administrative and technical contacts: bizertino@[ ].com, bizertino3@[ ].com, bizertino5@[ ].com or vpceb36ff@[ ].com. One or the other of these email addresses is used for each of the disputed domain names that link through to <adultfriendfinder.com>.
The Complainant’s disputes with the several Respondents raise a number of common issues and factual questions which it is desirable to ensure are resolved in the same way to avoid inconsistent results. In addition, joinder avoids unnecessary multiplication of time, effort and expense.
None of the Respondents has raised any suggestion that he or she would be prejudiced in any way by joinder.
In these circumstances, the interests of efficiency and convenience powerfully support joinder and there do not appear to be any countervailing reasons of fairness which preclude joinder.
For each of the disputed domain names, the first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant’s trademark rights.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.
The Complainant has proven ownership of the registered trademarks for TINDER identified in section 4 above. In addition, the Panel accepts that the Complainant has established that it has a reputation in TINDER as an unregistered trademark in many parts of the world including the United States.
The second stage of this inquiry simply requires a visual and aural comparison of each disputed domain name to the proven trademarks. In undertaking that comparison, it is permissible in the present circumstances to disregard the generic Top-Level Domain (“gTLD”) component as a functional aspect of the domain name system: WIPO Overview 2.0, paragraph 1.2. Questions such as the scope of the trademark rights, the geographical location of the respective parties and other considerations that may be relevant to an assessment of infringement under trademark law are not relevant at this stage. Such matters, if relevant, may fall for consideration under the other elements of the Policy.
Disregarding the gTLD, each of the disputed domain names comprises the whole of the Complainant’s trademark with the addition of a descriptive term or expression such as “dating app”, “website”, “dating online” or “dating website”. The Complainant’s trademark, TINDER, is the first and prominent part of each disputed domain name. It is the element of the disputed domain name which distinguishes the “dating app” or “website” etc. from other such services. The Complainant’s trademark is plainly recognizable as such within each disputed domain name. In these circumstances (although it is not strictly necessary), the Panel further notes that the addition of such descriptive terms as have been included here does nothing to dispel any association with the Complainant, but rather reinforces it.
Accordingly, the Panel finds that the Complainant has established that the disputed domain name is confusingly similar to the Complainant’s trademarks and the requirement under the first limb of the Policy is satisfied.
The second requirement the Complainant must prove is that each Respondent has no rights or legitimate interests in the disputed domain names he or she has registered.
Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or
(ii) [the Respondent] (as an individual, business, or other organization) has been commonly known by the [disputed] domain name, even if [the Respondent] has acquired no trademark or service mark rights; or
(iii) [the Respondent] is making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the Complainant. UDRP panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case: WIPO Overview 2.0, paragraph 2.1.
The Complainant states that it has not authorised any of the Respondents to use the disputed domain names and none of the Respondents is affiliated with the Complainant. Moreover, the disputed domain names are plainly not derived from any of the Respondents’ names, so far as they are known. The earliest of the disputed domain names was registered in September 2014, some two years after the Complainant’s business had started and by which time it already established a very widespread usage. Finally, as noted above, at least eight of the disputed domain names link through to <adultfriendfinder.com> which provides services which may be regarded as competitive with those of the Complainant, if perhaps at the more “adult” end of the market.
Such use, in the circumstances outlined above, does not qualify as a good faith offering of goods or services for the purposes of paragraph 4(c). Nor does it qualify as a legitimate noncommercial or fair use.
Five of the remaining six disputed domain names currently do not resolve to any website. Three of them initially resolved to a “Hello World” blog page. As there has not been any effective use of these disputed domain names, the Respondents cannot claim the benefits of either paragraph 4(c)(i) or (ii) and there is no material before the Panel to suggest that there are any demonstrable preparations for legitimate use.
The disputed domain name <tinderdatingwebsite.org> does resolve to what purports to be an “advice” website as described above. The Panel notes, however, that this disputed domain name has been registered by the fifth Respondent, Mr. Fredy. The fifth Respondent has also registered the disputed domain name <tinderdatingwebsite.net>, which is one of the eight disputed domain names that resolve to the page which links through to <adultfriendfinder.com>. Mr. Fredy registered both disputed domain names on the same day. Mr. Fredy is also one of the Respondents for whom delivery of the physical copy of the Complaint was not possible because the address he has provided does not exist. There was formerly an Eastminster Abbey located in London on Tower Hill, which would be in the E1 postcode, not the SW19 postcode provided by Mr. Fredy, which is better known to the world as Wimbledon. The Panel notes that the landing page for the disputed domain name <tinderdatingwebsite.org> displays a copyright notice “Copyright © 2017”, which suggests it is of very recent creation. In addition, the other links on the landing page – “About”, “Blog”, “Contact Us” and “Privacy” – resolve to a page “Nothing Found” or which just have the link as the title displayed on the page and appear to be automatically generated by the template used for the website.
In these circumstances and having regard to the widespread fame the Complainant’s trademark had achieved by the date Mr. Fredy registered this disputed domain name, April 2015 (at the same time as he registered <tinderdatingwebsite.net>), the Panel infers that the use made of this disputed domain name is really pretextual and not intended as a legitimate noncommercial use.
Accordingly, the Panel finds the Complainant has established the second requirement under the Policy in respect of each disputed domain name also.
Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and used in bad faith by the Respondent. These are conjunctive requirements; both must be satisfied for a successful complaint: see, e.g., Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd, WIPO Case No. D2010-0470.
Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant.
That unfair use of the Complainant’s trademark is clearly established in the case of the eight disputed domain names which link through to <adultfriendfinder.com>. As the word “tinder” really has significance in relation to dating services only as identifying the Complainant as the trade source of those services and having regard to the extent of the Complainant’s usage around the world when the disputed domain names were registered, the Panel infers that each was registered with knowledge of the Complainant’s trademark and the intention of taking advantage of that trademark to divert potential customers to the <adultfriendfinder.com> service. That is well established as a registration in bad faith under the Policy and, given it is how these disputed domain names are used, use in bad faith.
The remaining disputed domain names were registered by either the first Respondent or the fifth Respondent both of whom, as already noted, had registered other disputed domain names which linked through to <adultfriendfinder.com>. As found in section 5C above, neither Respondent had a right or legitimate interest to register the disputed domain names. Given that, coupled with the Respondents’ knowledge of the Complainant’s trademark when they registered their respective disputed domain names, the Panel finds that each of these disputed domain names was also registered in bad faith. Moreover, the passive or pretextual use which has been made of these disputed domain names constitutes use in bad faith under the Policy: Telstra Corporation Limted v Nuclear Marshmallows, WIPO Case No. D2000-0003.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names, <tinderapplication.com>, <tinderdatingapp.com>, <tinderdatingapp.net>, <tinderdatingapp.org>,<tinder-dating.net>, <tinderdatingonline.com>, <tinder-dating.org>, <tinderdatingsite.org>, <tinderdatingwebsite.com>, <tinderdatingwebsite.net>, <tinderdatingwebsite.org>, <tinderwebsite.com>, <tinderwebsite.net> and <tinderwebsite.org> be transferred to the Complainant.
Warwick A. Rothnie
Sole Panelist
Date: March 17, 2017