1. Parties and Contested Domain Name
The Complainant is MatchNet, PLC of London, England. The Respondent is Valuepay.com of Mumbai, Maharashtra, India. The contested domain names are matchnetindia.com, matchnetasia.com, and matchneteurope.com.
2. Procedural History
The electronic version of the Complaint form was filed on-line through eResolution's Website on August 14, 2001. The hardcopy of the Complaint Form and annexes were received on August 15, 2001. Payment was received on August 16, 2001.
Upon receiving all the required information, eResolution's clerk proceeded to:
- Confirm the identity of the Registrar for the contested Domain Name;
- Verify the Registrar's Whois Database and confirm all the essential contact information for Respondent;
- Verify if the contested Domain Name resolved to an active Web page;
- Verify if the Complaint was administratively compliant.
This inquiry lead the Clerk of eResolution to the following conclusions: the Registrar for Matchnetindia.com is Register.com and the Registrar for Matchnetasia.com is Network Solutions Inc, the Whois database contains all the required contact information, the contested Domain Names resolve to active Web pages and the Complaint is administratively compliant.
An email was sent to the Registrars by eResolution Clerk's Office to obtain confirmation and a copy of the Registration Agreement on August 15, 2001. The requested information was received from Network Solutions Inc. on August 16, 2001 and from Register.com on August 20, 2001.
The Clerk then proceeded to send a copy of the Complaint Form and the required Cover Sheet in accordance with paragraph 2 (a) of the ICANN's Rules for Uniform Domain Name Dispute Resolution Policy. The Clerk's Office fulfilled all its responsibilities under Paragraph 2(a) in forwarding the Complaint to the Respondent, notifying the Complainant, the concerned Registrar and ICANN on August 20, 2001. This date is the official commencement date of the administrative proceeding.
Only the emails to the postmaster@Matchnetindia.com and to postmaster@Matchnetasia.com were returned 'undeliverable'. All the faxes were successful.
The complaint, official notification and all the annexes were sent via registered mail with proof of service, to the respondent. According to the Canada Post tracking system, all were delivered except to Gulshan Bahl, ValuePay.com Inc, 5931 Brick Court, Suite 140, Winter Park, FL 32792.
On September 10, 2001, the Respondent submitted, via eResolution Internet site, his response. The signed version of the response was received on September 18, 2001.
On September 20, 2001, the Clerk's Office contacted Peter Albert, and requested that he acts as panelist in this case.
On September 20, 2001, Peter Albert accepted to act as panelist in this case and filed the necessary Declaration of Independence and Impartiality.
On September 20, 2001, the Clerk's Office forwarded a user name and a password to Peter Albert, allowing him to access the Complaint Form, the Response Form, and the evidence through eResolution's Automated Docket Management System.
On September 20, 2001, the parties were notified that Peter Albert had been appointed and that a decision was to be, save exceptional circumstances, handed down on October 4, 2001.
On September 24, 2001, Complainant requested leave to submit additional material, which was granted by the Panelist.
On September 28, 2001, Complainant submitted its supplemental pleadings and on October 9, 2001, Respondent submitted its response to Complainant's supplement pleadings.
On October 9, 2001, Complainant requested leave to adjoin the domain name matchneteurope.com to the dispute. Panelist granted Complainant's request and Clerks Office determined that the registrar of the matchneteurope.com domain name is Register.com.
On October 19, 2001, Respondent submitted its response to Complainant's adjoinment of the domain name matchneteurope.com.
3. Factual Background
Complainant incorporated in England and Wales under the name MatchNet, PLC on September 3, 1998. Complainant is listed on Germany's Neuer Market Stock Exchange under the symbol MHJG. Complainant provides Internet match-making services through use of a multi-lingual global database. Complainant owns U.S. Trademark Reg. No. 2,445,788 and Community Trademark Reg. No. 001351451 in Europe for the mark MATCHNET. The U.S. registration issued on April 24, 2001 on an application filed on August 26, 1999 claiming a first use date of July 1, 1999 in the U.S. The Community registration issued on May 10, 2001 on an application filed on April 12, 2000 claiming a first use in Europe of October 20, 1999.
Respondent registered the domain names matchnetindia.com, matchnetasia.com, and matchneteurope.com on March 12, 2001, June 28, 2001, and September 10, 2001, respectively. Respondent contends that it began offering offline matrimonial services under the name MatchNetIndia on April 22, 1996 and registered the domain name matchnetindia.com to correspond to its offline business. Respondent also contends that it registered the matchnetasia.com and matchneteurope.com domain names because it plans to expand its business and services into Asia and Europe. After receiving notification of the filing of a complaint by MatchNet, PLC, Respondent filed trademark applications for the marks matchnetindia.com and matchnetasia.com in India.
4. Parties' Contentions
Complainant contends that the domain names matchnetindia.com, matchnetasia.com, and matchneteurope.com are confusingly similar to its MatchNet trademark and that Respondent acted in bad faith in registering the domain names.
Respondent contends that it has a legitimate right and interest in the domain name matchnetindia.com based on its early use of the name MatchNetIndia for its offline business. Respondent contends it plans to expand its MatchNetIndia business into the Asian and European markets establishes its legitimate right and interest in the domain names matchnetasia.com and matchneteurope.com.
5. Discussion and Findings
Paragraph 4(a) of ICANN's Uniform Domain Name Dispute Resolution Policy (UDRP) requires that Complainant prove each of the following:
1) that the domain name at issue is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
2) the respondent has no rights or legitimate interests in respect of the domain name; and
3) the domain name has been registered and is being used in bad faith.
Typically, Complainant attempts to establish that the domain name is confusingly similar to Complainant's trademark and that the domain name was registered and is being used in bad faith by submitting evidence of bad faith with the Complaint. Paragraph 4(b) of the UDRP sets forth four possible circumstances evidencing bad faith. In response, Respondent attempts to establish its rights or legitimate interests in the domain name by submitting evidence with the Response. Paragraph 4(c) of ICANN's Policy sets forth three circumstances for establishing Respondent's rights or legitimate interests in the domain name.
Complainant's trademark is MATCHNET for computer dating services. Respondent's domain names incorporate Complainant's trademark in its entirety. Respondent offers matrimonial services, which it contends are different than Complainant's dating services. However, even if Respondent's matrimonial services are different than Complainant's dating services, the services are related and Respondent's domain names are confusingly similar to Complainant's trademark.
Paragraph 4(b) of ICANN's Policy states that bad faith registration and use can be proven by submitting evidence estabishing:
1) the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of a trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name; or
2) the respondent registered the domain name 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; or
3) the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
4) by using the domain name, the respondent intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent's website or a product or service on the respondent's website.
Complainant alleges that Respondent's registration and use of the domain names at issues prevents Complainant from entering certain markets and constitutes trademark dilution. Complainant further alleges that these acts constitute "cyberpiracy" and cybersquatting."
Paragraph 4(c) of ICANN's Policy states that a Respondent's legitimate rights and interest in a domain name can be proven by submitting evidence establishing:
1) Use or demonstrable preparations to use the domain name or a name corresponding to the domain name by Respondent in connection with a bona fide offering of goods or services; or
2) Respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
3) Respondent is making a legitimate noncommercial or fair use of the domain name, without the intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Respondent claims a legitimate right and interest in the domain names based on its early use of the name MatchNetIndia for its offline business. In fact, the undisputed evidence submitted by Respondent establishes that Respondent began using the name MatchNetIndia, for its offline business, well before Complainant began using the term. Furthermore, the Respondent configured the matchnetindia.com domain name to resolve to its online business, albeit through a "jump page," suggesting that respondent is using or preparing to use the domain name in connection with offering its matrimonial services online. Thus, Respondent has established a legitimate right and interest in the matchnetindia.com domain name.
Respondent's rights in the matchnetasia.com and matchneteurope.com domain names are less clear. The evidence presented by both parties establishes that Respondent registered the domain name matchnetasia.com one day after Complainant revealed to Respondent that Complainant planned to expand into the Asian market and that Complainant was looking for a suitable local partner. The evidence also establishes that Respondent registered the domain name matchneteurope.com almost a month after Complainant initiated this dispute and revealed the extent of its European operations. This evidence suggests that Respondent registered the matchnetasia.com and matchneteurope.com domain names in bad faith to prevent Complainant from doing so.
However, while Respondent's action seem to involve some level of deceit, Respondent's claim to the matchnetasia.com and matchneteurope.com domain names based on its early use of MatchNetIndia is not so tenuous as to be characterized as "cyberpiracy." Complainant's trademark is MatchNet, not MatchNetAsia or MatchNetEurope. Respondent has established a legitimate right to the name MatchNetIndia. As Respondent correctly pointed out, the issue of which party is entitled to the matchnetasia.com and matchneteurope.com domain names is a trademark dispute and not the kind of clear cut "cyberpiracy" that the UDRP was meant to address. Furthermore, after registering the domain names matchnetasia.com and matchneteurope.com, Respondent configured them to resolve to an active Webpage announcing the launch of its MatchNetAsia and MatchNetEurope online matrimonial services businesses. Thus, for the purposes of this dispute, Respondent has established a legitimate right and interest in the matchnetasia.com and matchneteurope.com domain
For the reasons set forth above, this panelist finds that Complainant has not met all of the requirements of the UDRP. Thus, Complainant's request to transfer the matchnetindia.com, matchnetasia.com, and matchneteurope.com domain names to Complainant is DENIED.
(s) G. Peter Albert, Jr
San Diego, CA, USA
November 2nd, 2001