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NATIONAL ARBITRATION FORUM DECISION Romantic Tours, Inc. V. Ilia Zavialov Claim Number: FA0906001268898 PARTIES Complainant is Romantic Tours, Inc. (Complainant), represented by Joseph J. Weissman, of Johnson, Pope, Bokor, Ruppel, & Burns, LLP, Florida, USA. Respondent is Ilia Zavialov (Respondent), California, USA. REGISTRAR AND DISPUTED DOMAIN NAME The domain name at issue is, registered with Godaddy.com, Inc. PANEL The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding. Judge Ralph Yachnin as Panelist. PROCEDURAL HISTORY Complainant submitted a Complaint to the National Arbitration Forum electronically on June 17; the National Arbitration Forum received a hard copy of the Complaint on June 19. On June 18, Godaddy.com, Inc. Confirmed by e-mail to the National Arbitration Forum that the domain name is registered with Godaddy.com, Inc. And that Respondent is the current registrant of the name. Godaddy.com, Inc. Has verified that Respondent is bound by the Godaddy.com, Inc. Registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy"). On June 24, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 14 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to [email protected] by e-mail. Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default. On July 16, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Ralph Yachnin as Panelist. Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2 (a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent. RELIEF SOUGHT Complainant requests that the domain name be transferred from Respondent to Complainant. Parties' contentions a. Complainant makes the following assertions: 1. Respondents domain name is confusingly similar to Complainants HOT RUSSIAN BRIDES mark. 2. Respondent does not have any rights or legitimate interests in the domain name. 3. Respondent registered and used the domain name in bad faith. B. Respondent failed to submit a Response in this proceeding. FINDINGS Complainant, Romantic Tours, Inc., specializes in introducing men to Russian and Ukrainian women for dating and possible marriage through the domain name and the resolving website. Complainant is the owner of the HOT RUSSIAN BRIDES mark, registered with the United States Patent and Trademark Office (USPTO) (Reg. No. 3,159, 522 issued October 17). Since Complainant has served over 135,000 customers and has introduced thousands of individuals under its HOT RUSSIAN BRIDES mark, making Complainant one of the premier introduction websites for Russian brides. Respondent registered the domain name on January 12. The disputed domain name currently resolves to a website with the message Server Default page. Previously, Respondents domain name resolved to a website that displayed click-through links that further resolved to the websites of Complainants competitors. Some of the links that were previously listed on the resolving website included Bridals & Wedding, Dating Russian Ladies, Russian Marriage, and Russian Girls. DISCUSSION Paragraph 15 (a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable." In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5 (e), 14 (a) and 15 (a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14 (b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. V. Webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31) (holding that the respondents failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. V. Robertson, D0009 (WIPO Feb. 29) (In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.). Paragraph 4 (a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred: (1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (2) 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. Identical and/or Confusingly Similar The Panel finds that Complainants registration of the HOT RUSSIAN BRIDES mark with the USPTO confers sufficient rights in the mark upon Complainant pursuant to Policy 4 (a) (i). See Paisley Park Enters. V. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy 4 (a) (i) through registration of the mark with the USPTO); see also Reebok Intl Ltd. V. Santos, FA 565685 (Nat. Arb. Forum Dec. 21) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy 4 (a) (i). Respondents domain name differs from Complainants mark only in that it removes an s from the word RUSSIAN, uses the singular term BRIDE instead of BRIDES, and adds the generic top-level domain.com. The Panel finds that Respondents alterations fail to sufficiently distinguish the disputed domain name from Complainants HOT RUSSIAN BRIDES mark.instead, Respondents disputed domain name merely creates a misspelling of Complainants mark. Thus, the Panel finds that Respondents domain name is confusingly similar to Complainants HOT RUSSIAN BRIDES mark under Policy 4 (a) (i). See The Royal Bank of Scotland Grp. Plc et al. V. Demand Domains, FA 714952 (Nat. Arb. Forum Aug. 2) (The Panel finds that merely by misspelling Complainants mark, Respondent has not sufficiently differentiated the domain name from the PRIVILEGE mark under Policy 4 (a) (i).); see also Keystone Publg., Inc. V. UtahBrides.com, D0725 (WIPO Nov. 17) (finding that the domain name was confusingly similar to the complainants UTAHWEDDINGS.com mark because the domain name simply lacked the letter s); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5) (finding that the mere addition of the generic top-level domain.com is insufficient to differentiate a disputed domain name from a mark). Complainant has satisfied Policy 4 (a) (i). Rights or Legitimate Interests Complainant contends that Respondent does not have any rights or legitimate interests in the disputed domain name. Once a prima facie case has been established by Complainant, the burden then shifts to Respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy 4 (c). The Panel finds that Complainant has adequately established a prima facie case in these proceedings. Since Respondent has failed to respond to the allegations against it, the Panel may assume that Respondent lacks any rights or legitimate interests in the disputed domain name. See Intel Corp. V. Macare, FA 660685 (Nat. Arb. Forum Apr. 26) (finding the complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy 4 (a) (ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.); see also Am. Express Co. V. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30) ([B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.). The Panel resolves to examine the record to determine whether Respondent has any relevant rights or legitimate interests in the disputed domain name pursuant to Policy 4 (c). Complainant contends that Respondent is not authorized to use Complainants HOT RUSSIAN BRIDES mark, and that Respondent is not commonly known by the domain name. The WHOIS information lists the registrant as Ilia Zavialov and there is no evidence in the record to suggest otherwise. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy 4 (c) (ii). See Braun Corp. V. Loney, FA 699652 (Nat. Arb. Forum July 7) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17) (concluding that the respondent was not commonly known by the domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name). Respondents domain name previously resolved to a website that featured click-through links and advertisements for Complainants competitors. The Panel finds that Respondents previous use of the domain name to redirect Internet users to Complainants competitors, presumably for financial gain, did not constitute a bona fide offering of goods or services pursuant to Policy 4 (c) (i) or a legitimate noncommercial or fair use pursuant to Policy 4 (c) (iii). See Expedia, Inc. V. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30) (finding that the respondents use of the domain name to redirect Internet users to a website featuring links to travel services that competed with the complainant was not a bona fide offering of goods or services pursuant to Policy 4 (c) (i) or a legitimate noncommercial or fair use pursuant to Policy 4 (c) (iii); see also Metro. Life Ins.Co. V. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16) (concluding that using a confusingly similar domain name to divert Internet users to competing websites does not represent a bona fide offering of goods or services under Policy 4 (c) (i) or a legitimate noncommercial or fair use under Policy 4 (c) (iii). Currently, the disputed domain name does not resolve to an active website. The only message displayed at the resolving website from the domain name is, Server Default page. The Panel finds that Respondent has failed to use the disputed domain name in connection with substantive content and that such use does not constitute a bona fide offering of goods or services pursuant to Policy 4 (c) (i) or a legitimate noncommercial or fair use pursuant to Policy 4 (c) (iii). See Broadcom Corp. V. Wirth, FA 102713 (Nat. Arb. Forum Jan. 11) (finding that the respondents use of the disputed domain name to display an under construction page did not constitute a legitimate noncommercial or fair use pursuant to Policy 4 (c) (iii); see also Thermo Electron Corp. V. Xu, FA 713851 (Nat. Arb. Forum July 12) (finding that the respondents non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy 4 (c) (i) or a legitimate noncommercial or fair use pursuant to Policy 4 (c) (iii). Furthermore, Complainant contends that Respondent has engaged in the practice of typosquatting. Respondent is taking advantage of Internet users that are attempting to reach Complainant, but mistakenly misspelling Complainants HOT RUSSIAN BRIDES mark. The Panel finds that Respondents engagement in the practice of typosquatting is evidence that Respondent lacks rights and legitimate interests in the domain name under Policy 4 (a) (ii). See LTD Commodities LLC v. Party Night, Inc., FA 165155 (Nat. Arb. Forum Aug. 14) (finding that the, and domain names were intentional misspellings of Complainant's LTD COMMODITIES mark and this typosquatting is evidence that Respondent lacks rights or legitimate interests in the disputed domain names); see also Microsoft Corp. V. Domain Registration Philippines, FA 877979 (Nat. Arb. Forum Feb. 20) (concluding that by registering the domain name, the respondent had engaged in typosquatting, which provides additional evidence that [the] respondent lacks rights and legitimate interests in the disputed domain name under Policy 4 (a) (ii).). Complainant has satisfied Policy 4 (a) (ii). Registration and Use in Bad Faith Complainant contends that Respondents previous use of the domain name, diverting Internet users to the websites of Complainants competitors, presumably disrupted Complainants business. The Panel finds that Respondent registered and has used the disputed domain name in bad faith under Policy 4 (b) (iii). See Tesco Pers. Fin. Ltd. V. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainants competitors represents bad faith registration and use under Policy 4 (b) (iii); see also David Hall Rare Coins v. Tex.intl Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy 4 (b) (iii) because respondent used the disputed domain name to advertise goods and services of complainants competitors, thereby disrupting the complainants business). The Panel finds that Respondent also engaged in bad faith registration and use under Policy 4 (b) (iv) by intentionally creating a likelihood of confusion for commercial gain as to Complainants affiliation with Respondents confusingly similar domain name and the prior resolving website. See Zee TV USA, Inc. V. Siddiqi, FA 721969 (Nat. Arb. Forum July 18) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainants mark to offer links to third-party websites that offered services similar to those offered by the complainant); see also AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy 4 (b) (iv) because the respondent was commercially gaining from the likelihood of confusion between the complainants AIM mark and the competing instant messaging products and services advertised on the respondents website which resolved from the disputed domain name). Complainant contends that Respondent is currently using the disputed domain name in bad faith based on Respondents failure to make an active use of the disputed domain name. The Panel concludes that Respondents passive holding of the domain name is evidence of bad faith registration and use under Policy 4 (a) (iii). See dci s.A.V. Link Commercial Corp., D1232 (WIPO Dec. 7) (concluding that the respondents [failure to make an active use] of the domain name satisfies the requirement of 4 (a) (iii) of the Policy); see also Clerical Med.inv. Group Ltd. V. Clericalmedical.com, D1228 (WIPO Nov. 28) (finding that merely holding an infringing domain name without active use can constitute use in bad faith). Finally, Complainant alleges that typosquatting is itself evidence of bad faith registration and use under Policy 4 (a) (iii). The Panel agrees and finds that Respondents domain name is merely a typosquatted version of Complainants HOT RUSSIAN BRIDES mark, and that such typosquatting constitutes bad faith registration and use under Policy 4 (a) (iii). See Microsoft Corp. V. Domain Registration Philippines, FA 877979 (Nat. Arb. Forum Feb. 20) (finding bad faith registration and use of the domain name as it merely misspelled the complainants MICROSOFT mark); see also Natl Assn of Profl Baseball League, Inc. V. Zuccarini, D1011 (WIPO Jan. 21) (Typosquatting is the intentional misspelling of words with [the] intent to intercept and siphon off traffic from its intended destination, by preying on Internauts who make common typing errors. Typosquatting is inherently parasitic and of itself evidence of bad faith.). Complainant has satisfied Policy 4 (a) (iii). DECISION Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED. Accordingly, it is Ordered that the domain name be TRANSFERRED from Respondent to Complainant. Hon. Ralph Yachnin, Panelist Justice, Supreme Court, NY (Ret.) Dated: July 30 Click Here to return to the main Domain Decisions Page. Click Here to return to our Home Page
Romantic Tours Inc. Wins HotRusianBride.com posted: Monday 03 August by Tavis J. Hampton in: Domain Sales Intellectual Property
In the past, domains that are descriptive rather than actual proper names were not awarded to the complainants. What then is so special about Hot Russian Brides? The difference is that the United States Patent and Trademark Office (USPTO) awarded Romantic Tours, Inc. A trademark for Hot Russian Brides. If there is blame to be handed out, it should be handed to the USPTO, not the National Arbitration Forum. The respondent, Ilia Zavialov registered hotrusianbride.com, omitting one s from Russian and the sat the end of Brides. Like many other cybersquatting sites, the domain resolved to a website of click-through ad links, some of which linked to competitors. The Forum ruled that Zavialov had violated Romantic Tours trademark and registered the domain in bad faith. Now all of those men who think they are getting hot Russian brides when the accidentally misspell Russian will still get their dream girls. Unfortunately, no hot Russian brides were available for comment. Source: National Arbitration Forum
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