The Complainant is Tinder, Inc. of Dallas, Texas, United States of America, represented by Locke Lord LLP, United States of America.
The Respondent is Edgar Jimenez of Morelos, Mexico.
The disputed domain name <swipebuster.com> is registered with Internet Domain Service BS Corp (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 19, 2016. On April 19, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 20, 2016, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 22, 2016 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on April 27, 2016.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 Respondent of the Complaint, and the proceedings commenced on April 28, 2016. In accordance with the Rules, paragraph 5, the due date for Response was May 18, 2016. On April 27, 2916, the Center received an email communication from a third party. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 19, 2016.
The Center appointed Pablo A. Palazzi as the sole panelist in this matter on May 24, 2016. 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 is in the business of providing online dating services since the year 2012. The Complainant operates a website located at “www.gotinder.com”. The website allows users to download the Tinder mobile application. The app provides dating services allowing a user to discover potential candidates within a certain distance of the user. According to the Complaint, the application has been downloaded 100 million times with sixty percent of Tinder users coming from outside North America.
The Complainant is the owner of the trademark TINDER (U.S. Trademark Registration No. 4,479,131, filed August 2, 2012 and registered on February 4, 2014). The Complainant is also the owner of the trademark SWIPE (U.S. Trademark Registration No. 4.465.926, filed June 5, 2013 and registered on January 14, 2014).
The disputed domain name was created on April 2, 2016.
At the time of filing the Complaint, the Respondent is using the disputed domain name to offer a service consisting of charging people a fee to perform targeted searches for specific Tinder users by using their personal information.
The Complainant states that the disputed domain name plainly incorporates the SWIPE trademark in its entirety and, therefore, the disputed domain name is virtually identical or confusingly similar to the trademark SWIPE.
The Complainant states that it is also clear from the Respondent’s offered services and its use of the word “buster” in the disputed domain name that the disputed domain name is intended to relate in a detrimental manner to the Complainant’s trademark.
With respect to the lack of rights and legitimate interests of the Respondent in the disputed domain name, the Complainant states that:
- The Complainant is not affiliated with the Respondent.
- The Respondent cannot demonstrate any of the circumstances identified in paragraph 4(c) of the Policy and therefore has no rights or legitimate interests to the disputed domain name.
- The Respondent has not been using the disputed domain name in connection with a bona fide offering of goods or services.
- Rather than making a bona fide use, the Respondent has opted for using the disputed domain name to leverage Tinder’s popularity and trade on Tinder’s goodwill to siphon ill-gotten gains from Tinder’s success.
- The disputed domain name charges people a fee to “bust” Tinder users by performing targeted searches for specific Tinder users by using their personal information. Aside from the impropriety of the Respondent’s financial gain at Tinder’s expense, the Respondent’s use of “buster” in the disputed domain name in conjunction with the SWIPE trademark evokes a negative connotation that is harmful to the Complainant. According to the Complaint, “busting” someone for an activity suggests that what the busted party is being “busted” for is something the person should not be doing.
- The Respondent cannot demonstrate that it has been using the disputed domain name in connection with a bona fide offering of goods or services: the facts reveal that the Respondent’s use of the disputed domain name has been primarily to deceive consumers and misappropriate the goodwill of the SWIPE trademark by luring consumers to the disputed domain name, which is used to improperly commercialize the Complainant’s content in violation of the Complainant’s Terms of Use.
- The Respondent cannot demonstrate a legitimate noncommercial or fair use of the disputed domain name.
- The Complainant states that upon information and belief, the Respondent registered and has used, and intends to further use the disputed domain name, to mislead and funnel users and potential users of the Complainant services to the disputed domain name to facilitate the Respondent’s own commercial gain. According to the Complaint, such a use of the disputed domain name by the Respondent does not constitute a legitimate noncommercial or fair use under the provisions of section 4(c)(iii) of the Policy.
- The Respondent registered the disputed domain name on April 2, 2016, several years after the Complainant’s started using the SWIPE trademark and after its registration in the United States Patent and Trademark Office.
-The Respondent has made unfair use of the disputed domain name to improperly associate his website with the Complainant and drive traffic to the disputed domain name and ultimately generate his financial gain. In this respect, the Respondent leverages the Complainant’s goodwill and extreme popularity for his own commercial gain, and simultaneously diminishes and/or tarnishes the reputation and value of Tinder, Tinder’s dating services, and the Tinder App.
With respect to bad faith registration and use, the Complainant states that:
- The Respondent’s registration and use of the disputed domain name has been with constructive and actual notice of Tinder’s exclusive right to the use of the SWIPE trademark. The Complainant obtained its registration for the SWIPE trademark before the Respondent registered the disputed domain name.
- The Respondent’s bad faith is evidenced, in three ways: (i) the Respondent literally uses the entire SWIPE trademark in the disputed domain name for a website that is directed at commercializing Tinder’s proprietary information; (ii) the Respondent provides services at the disputed domain name that are in violation of Tinder’s Terms of Use. Specifically, the Respondent’s unauthorized use of at least an Application Programming Interface (“API”), as well as any scraping, and/or any use, access, copying, and sharing of Tinder’s content is a direct violation of the Terms that govern access to Tinder’s website and the Tinder App; (iii) the Complainant sent the Respondent a cease and desist letter on April 4, 2016 to the original registrant Mr. R. R. Huter. According to the Complaint, the Respondent did not comply with the Complainant’s demands, but rather demanded payment and changed the WhoIs information to the current registrant.
- The inconsistent information provided to the Registrar by the original registrant and current Respondent suggests that the Respondent is attempting to mask himself from his infringing activities. Accordingly, the Respondent’s registration, use, and continued use of the disputed domain name was and is in bad faith.
The Complainant requests the transfer of the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
However, on April 27, 2016, after the filing of the amended Complaint by the Complainant, an email was sent to the Center from a third party using the email address “[…]@swipebuster.com” stating the following: “Our response is based on the original dispute, having received this amendment will cause us to take more time in preparing the new response. Can we respond to the original dispute and then respond to the amended portion? If not, can we respond to both at a time later than May 5th?”.
The Complainant has the burden of proof in showing that each element within paragraph 4(a) of the Policy is present. These are as follows:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
Even when there is a respondent default, as it is the case here, the Complainant must establish and carry the burden of proof on each of the three elements identified above. The Panel proceeds to deal with each of these elements in turn.
This element consists of two parts: first, does the Complainant have rights in a relevant trademark and, second, is the disputed domain name identical or confusingly similar to that trademark.
The Panel finds that the Complainant has sufficiently established trademark rights in the term “swipe”. It is clear to the Panel that the disputed domain name, consisting of the Complainant’s trademark SWIPE with the addition of the term “buster”, is confusingly similar to the Complainant’s trademark SWIPE.
For these reasons, pursuant to the Policy, paragraph 4(a)(i), the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark.
Under the second requirement the Complainant must prove that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy lists certain circumstances in which a respondent may have rights or legitimate interests in a domain name. 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 is 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 the burden of production will shift to the respondent to rebut that prima facie case. See, e.g., paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).
The Complainant states that it has not authorized the Respondent to use the disputed domain name and that the Respondent is not affiliated with the Complainant. The Complainant has not licensed the Respondent to use its trademark. The disputed domain name is plainly not derived from the Respondent’s name. From the available record, the Respondent does not appear to hold any trademarks for the disputed domain name.
In these circumstances, the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. Accordingly, the burden of production on the second element shifts to the Respondent. The Respondent is in default and has not provided any answer or justification for the registration of the disputed domain name.
The Panel finds that the Complainant has established that the Respondent has no rights or legitimate interests in the disputed domain name.
With respect to bad faith registration, the Panel finds that the evidence shows that the Respondent knew of the Complainant’s trademark at the time of registering the disputed domain name.
It is the view of the Panel that it is clear from the record that the Respondent was targeting the Complainant in registering the disputed domain name and creating the content that was addressed to Tinder users.
The Complainant has stated and the Respondent has not denied that at the time of filing this Complaint the disputed domain name is charging people a fee to “bust” Tinder users by performing targeted searches for specific Tinder users by using their personal information. According to the Complaint, this creates a negative connotation that is harmful to the Complainant. The Panel agrees with the Complainant.
In addition, the disputed domain name was initially registered by R. R. Huter. According to the Complaint, the Complainant sent a cease and desist letter to the listed registrant on April 4, 2016. Then, the Complainant filed two Complaints, one related to the domain name <tinderbuster.com> (Tinder, Inc. v. Raimundo Rodriguez Huter, WIPO Case No. D2016-0726) and the present dispute related to the disputed domain name. The Center informed the Complainant of the change in registrant information from R.R. Huter to Edgar Jimenez and the Complainant amended the Complaint to include Edgar Jimenez as the Respondent. However, the content of the website under the disputed domain name and the one involved in Tinder, Inc. v. Raimundo Rodriguez Huter, supra is the same. The Panel finds this change of registrant information, considering the overall circumstances of the case, as a further evidence of bad faith.
At the time of rendering this decision, the Panel visited the disputed domain and was able to check that the disputed domain mane is forwarding to the address “www.swipebuster.se” displaying the offer “Search within Tinder, packages begin at USD 4.99 it’s simple, this is how it works”. Then, the content of the disputed domain name lists the steps that a user has to follow to discover if someone is using the Complainant’s Tinder app. It requires to input name, gender and location of the person, and also the name, email and password of the person requesting the search. It also charges for this service.
The Panel is of the view that the unauthorized use of a trademark in the disputed domain name to perform the activities described above constitutes bad faith under paragraph 4(b)(iv) of the Policy.
Accordingly, the Panel finds that the present record supports a conclusion that the disputed domain name has been registered and is being used in bad faith, and that paragraph 4(a)(iii) of the Policy is satisfied.
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 name <swipebuster.com> be transferred to the Complainant.
Pablo A. Palazzi
Sole Panelist
Date: June 10, 2016