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eHarmony, Inc. v. Kay Jackson

Claim Number: FA1202001428645

PARTIES

I have had a good experience with eharmony so far but they are the first dating site I have ever joined. Their matches for the most part seem excellent but I am having some problems contacting the people. Maybe only about half the ones I send a message to ever write me back. One of the major factors that affect your forum with a certain member is the amount of app you lay down on your discount. As previously mentioned, eHarmony takes pride in making eharmony that all newcomers answer the registration questions. The app from the reviews and questionnaires you took is reflected on your forum.

Complainant is eHarmony, Inc. (“Complainant”), represented by Lisa Greenwarld-Swire of Fish & Richardson P.C., California, USA. Respondent is Kay Jackson (“Respondent”), Texas, USA.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <global-e-harmony.com>, registered with Go Daddy.

PANEL

The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.

Carol Stoner, Esq., as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on February 7, 2012; the National Arbitration Forum received payment on February 9, 2012.

On February 8, 2012, Go Daddy confirmed by e-mail to the National Arbitration Forum that the <global-e-harmony.com> domain name is registered with Go Daddy and that Respondent is the current registrant of the name. Go Daddy has verified that Respondent is bound by the Go Daddy registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

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On February 17, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 8, 2012 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@global-e-harmony.com. Also on February 17, 2012, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.

A timely Response was received and determined to be complete on March 7, 2012.

On March 16, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Carol Stoner, Esq., 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' through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.

RELIEF SOUGHT

Complainant requests that the domain name <global-e-harmony.com> be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A. Complainant

Complainant alleges that eHarmony, Inc. (“eHarmony” or “Complainant”) is widely recognized as America’s #1 trusted relationship service, and was founded by one of the country’s most well-known relationship experts, best-selling author and clinical psychologist, Dr. Neil Clark Warren. eHarmony has grown into one of the Internet’s top provider’s of online dating and relationship services, and had over 33 million registered users from all 50 states and from more than 200 countries, since 1999. In the past decade, eHarmony has developed substantial fame and recognition as a dating site that uses extensively researched scientific methods to identify the key dimensions of personality that tend to predict compatibility and the potential for long-term relationship success. According to a recent survey, an average of 542 eHarmony singles marry every single day in the U.S., accounting for nearly 5% of new U.S. marriages.

eHarmony is the owner of U.S. Federal Trademark Registrations Nos. 2,764,705 (September 16, 2003); 3,422,967 (May 6, 2008); and 3,911,586 (January 25, 2011); for the word mark EHARMONY, with commercial use of the marks beginning as early as January, 1999. Registrations are for the following goods and services: online retail store services featuring books and other media on the subject of interpersonal relationships in Class 35; providing online chat rooms etc., for registered users, in Class 38; computer services, etc., in Class 42; and dating services and counseling in Class 45.

eHarmony also owns numerous foreign registrations for the EHARMONY mark, including, by way of examples, registrations in the European Union, and in Australia, Brazil, Canada, China, Hong Kong, Indonesia, Israel, Japan, South Korea, Mexico, Malaysia, Norway, New Zealand, Russia, Taiwan and South Africa.

eHarmony is also the owner of the domain name <eharmony.com>, which was registered on December 24, 1998 and has been used by the Company since as early as January, 1999 in conjunction with online dating services. Other domain names owned by eHarmony include <e-harmony.com>; <eharmonyalternatives.com>; <eharmonychat.com>; <eharmonydate.com>; <eharmonylabs.com>; <eharmonymobile.com>; and <eharmony.ca>, as well as, numerous domain names with country-specific domain extensions.

eHarmony has made it a priority to aggressively acquire a substantial number of domain names which incorporate its famous EHARMONY trademark, both through proactive acquisition and registration efforts, as well as through legal enforcement. In total, eHarmony currently owns over 600 domain names throughout the world.

eHarmony has spent considerable time, money and effort promoting and developing customer recognition and goodwill in its EHARMONY trademark and domain name, nationwide and abroad.

Claimant contends that the domain name registered by Respondent is identical and/or confusingly similar to a mark in which eHarmony has rights for the following reasons.

eHarmony is the owner of three U.S. trademark registrations for EHARMONY, and Registration No. 2,764,705 for EHARMONY in Class 42 has become incontestable. An incontestable registration serves as, “conclusive evidence of the validity of the registered mark and/or registration of the mark, of the registrant’s ownership of the mark, and of the registrant’s exclusive right to use the registered mark in commerce.” See 15 U.S.C. §1115(b).

eHarmony is also the owner of common law rights in the EHARMONY trademark, based upon its long and continuous use of the mark in connection with various services in the online dating and relationship field. eHarmony has been offering services in connection with EHARMONY for over ten years, long before Respondent registered the domain name <global-e-harmony.com> on May 13, 2011.

Claimant alleges that the disputed domain name is comprised of eHarmony’s famous and distinctive EHARMONY trademark along with two dashes separating the “e” between the generic term “global” and “harmony,” and the addition of the top-level domain “.com” and thus, is confusingly similar to their trademark.

Claimant avers that a domain name comprised of a trademark, along with a generic term related to the Complainant’s business, is considered to be confusingly similar to the incorporated trademark, pursuant to Policy ¶4(a)(i).

Claimant contends that Respondent has no rights or legitimate interests in the disputed domain name for the following reasons.

Respondent’s use of a domain name confusingly similar to Complainant’s trademark, for the purpose of offering services in direct competition with Complainant’s services, is not a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial fair use under Policy ¶ 4(c)(iii).

Claimant states that Respondent is not authorized or licensed by eHarmony to use its famous mark and trade name, or any other of its trademarks.

Respondent has provided no evidence that Respondent is commonly known by the disputed domain name or that is has any rights in Complainant’s protected mark. Respondent’s Whois information lists the registrant of the domain name as “Kay Jackson.”

Claimant alleges that Respondent registered and is using the disputed domain name in bad faith for the following reasons.

At the time that Respondent registered the disputed domain name, Claimant owned numerous worldwide registrations for the EHARMONY mark and had already been using this mark for over ten years, in many jurisdictions. These trademark registrations gave Respondent constructive notice of eHarmony’s trademark rights, prior to Respondent’s registration of the disputed domain name.

Claimant alleges that it was not an accident that Respondent chose to incorporate and register the famous EHARMONY mark in Respondent’s <global-

e-harmony.com> domain name, in light of eHarmony’s development of massive customer brand recognition and goodwill in its mark, through promotion of its mark on the internet, television, radio, publications and on eHarmony’s website at eharmony.com. eHarmony has achieved tremendous commercial success with over 33 million registered users from all 50 states and more than 200 countries.

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Further, Respondent admitted to Complainant’s Counsel that she was aware of eHarmony and its dating services when she registered the domain name.

Claimant alleges that Respondent used the mark in bad faith by offering online dating services substantially similar to Claimant’s offerings. Respondent intended to confuse Internet users, who sought Complainant’s services, regarding a possible affiliation between the services provided by Complainant and those provided by espondent. Respondent sought to take advantage of the similarity between the disputed domain name and the EHARMONY mark in order to attract users to its site and to profit from the unauthorized use of Complainant’s famous mark.

Claimant also alleges that Respondent used the mark in bad faith, as Claimant did not cease use of the disputed domain name, despite her agreement to do so, as a result of July, 2011 telephone conversation between Respondent and Claimant’s Counsel.

B. Respondent

Respondent alleges that she did not tell Claimant’s attorney that she would transfer her site, nor did she ever ask Complainant for money for the site.

Respondent states that she was aware that eHarmony existed, but that she was not aware that she was in violation of any trademarks, since her site was a variation that did not appear to be trademarked.

Respondent alleges that she agreed to change the name of the site when she could afford to. It was a small site and she had not made a single penny from it.

She stated that Claimant told her the amount of money that eHarmony had spent on their site and that her site would harm them. Respondent replied that she had spent considerable time and money to establish her own site, to which Claimant replied “We don’t pay.”

Respondent contends that she was in disbelief that Claimant would sue a person who was disabled on a fixed income over a website, to which Claimant replied that, “It’s not a lawsuit, it’s just a letter.”

Respondent believes that eHarmony wants the actual site, rather than a name change, because of its late recognition that “we are now a global community.”

Respondent states that the only reason she set up the site was to raise money for her grandson’s education. She would like to know why she was even allowed to register a name that violated some laws.

Respondent states that she will abide by whatever decision the Forum makes

regarding a name change of the site, and that the site was not built to hurt eHarmony. Respondent concludes with:

“Frankly, it was just a name that popped into my head. I put it in search, it was not taken and I registered it. Something, I now feel strongly I should not have been able to do.”

FINDINGS

(1)The domain name <global-e-harmony.com> 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.

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.'

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 or Confusingly Similar: Policy ¶ 4(a)(i).

The Panel has reviewed Claimant’s Exhibit 5, showing eHarmony’s Certificates of Registration and TARR printouts for Registration Nos., 2,764,705, 3,422,967 and 3,911,586 and has concluded that these registrations establish Claimant’s rights in the mark EHARMONY, under Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Enter. Rent-A-Car Co. v. David Mizer Enters., Inc., FA 622122 (Nat. Arb. Forum Apr. 14, 2006) (finding that the complainant’s registration of the ENTERPRISE, ENTERPRISE RENT-A-CAR, and ENTERPRISE CAR SALES marks with the USPTO satisfied the requirement of demonstrating rights in the mark under consideration pursuant to Policy ¶ 4(a)(i)).

Moreover, Claimant’s registration for 2,764,705 for eHarmony in Class 42 has become incontestable, which constitutes conclusive evidence of the registrant’s exclusive right to use the mark. See Reed Elsevier Inc. v. Domain Deluxe, FA 234414 (Nat. Arb. Forum March 18, 2004)( finding that incontestable registrations are conclusive evidence of the registrant’s exclusive right to use the mark.). See also 15 U.S.C. §1115(b) (An incontestable registration serves as conclusive evidence of the validity of the registered mark and of the registration of the mark, of the registrant’s ownership of the mark, and of the registrant’s exclusive right to use the mark in commerce.”

The Panel has determined that Claimant has affirmatively established its rights in the mark EHARMONY under Policy ¶ 4(a)(i).

While Respondent’s <global-e-harmony.com> domain name is not identical to Claimant’s mark, it nevertheless satisfies the ICANN Policy ¶ 4(a)(i) of “confusingly similar.” That is, the disputed domain is confusingly similar to Complainant’s EHARMONY mark, in that the disputed domain name includes Claimant’s entire mark, merely adding the generic top-level domain (“gTLD”) “.com,” two hyphens, and the generic term “global.”

Respondent’s variations-without-a-distinction serve as mere “window dressing,” and fail to distinguish the disputed domain for internet passerbys who are in the market for the same services; that is, internet dating services. As such, the Panel finds that Respondent’s “dressed domain” of <global-e-harmony.com> is confusingly similar to a servicemark (EHARMONY) in which Complainant has rights, under Policy ¶ 4(a)(i). See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy); see also Google Inc. v. Xtraplus Corp., D2001-0125 (WIPO Apr. 16, 2001) (finding that the respondent’s domain names were confusingly similar to Complainant’s GOOGLE mark where the respondent merely added common terms such as “buy” or “gear” to the end).

Rights and Legitimate Interests:Policy ¶ 4(a)(ii).

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Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show that it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the

respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).

Complainant has made a prima facie case, as follows, that the Respondent lacks rights and a legitimate interest in the domain name <global-e-harmony.com>.

Complainant states in its Complaint that it has not authorized or licensed Respondent to use its EHARMONY mark.

The WHOIS information for the disputed domain name identifies the registrant as “Kay Jackson.” Thus, this registration does not serve as any evidence indicating that Respondent is commonly known by the <global-e-harmony.com> domain name.

Complainant convincingly argues that Respondent’s use of the <global-e-harmony.com> domain name to operate a competing dating service, under the umbrella of a confusingly similar name, does not comport with the requirement 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). See Yahoo! Inc. v. Web Master, FA 127717 (Nat. Arb.

Forum Nov. 27, 2002) (finding that the respondent’s use of a confusingly similar domain name to operate a pay-per-click search engine, in competition with the complainant, was not a bona fide offering of goods or services); see also Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks).

As Complainant has satisfied its burden of proof that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), the burden then shifts to Respondent to show that she does have rights or legitimate interests in the subject domain name.

Respondent does not meet her corresponding burden to show that she does have rights or legitimate interests in <global-e-harmony.com>.

Respondent offers no response to assert that she does have rights in the name, other than her mere domain name registration. And she even doubts the validity of this registration. She says in her Response that, “I put it (name) in search. It was not taken and I registered it. Something, I now feel strongly I should not have been able to do.”

Respondent has made no showing that she is making a noncommercial fair use of the domain name <global-e-harmony.com>.

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Respondent has failed to offer any evidence to rebut Complainant’s assertions that she is commonly known by the disputed domain name.

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Respondent has not rebutted Complainant’s assertion that her use of the domain name <global-e-harmony.com> is in connection with a bona fide offering of goods or services.

The Panel accordingly holds that Respondent has not met her corresponding burden to prove that she has rights or legitimate interests in respect of the domain name <global-e-harmony.com>, and consequently lacks rights and legitimate interests under Policy ¶ 4(c)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name); see also Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Nat. Arb. Forum Apr. 18, 2007) (concluding that the respondent was not commonly known by the <thirteen.com> domain name based on all evidence in the record, and the respondent did not counter this argument in its response).

Registration and Use in Bad Faith: Policy ¶ 4(a)(iii).

Complainant’s Exhibit 5 evidences eHarmony’s Federal trademark registrations, commencing in 2003, which serves as constructive notice to Respondent of Complainant’s rights in mark EHARMONY, substantially prior to Respondent’s registration of domain name <global-e-harmony.com> in 2011, for identical services.

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Complainant credibly argues that Respondent must have known about Complainant’s mark, prior to her registration of the disputed domain name, due to Complainant’s worldwide commercial success and the long-term use and promotion of its EHARMONY mark. Complainant states in its Complaint that eHarmony has achieved tremendous commercial success, with over 33 million registered users from all 50 states and from more than 200 countries.

Complainant proves its contentions of brand recognition, through its Exhibit 4, which consists of online printouts of commercial use of the EHARMONY mark.

The Panel notes that Respondent admitted in her Response that eHarmony existed

when she registered the disputed domain name. Her defense that she was not aware that she was in violation of any trademark laws is without merit, because her use of a confusingly similar name for the same service cannot but lead to the natural consequence of consumer confusion. Respondent’s stated innocent intention (to raise money for the education of her grandson) does not dispel her responsibility for consumer confusion, invariably generated, through her use of a domain name confusingly similar to a famous servicemark, for an identical service.

While constructive notice is generally regarded as insufficient to support a finding of bad faith, the Panel here concludes that Respondent had actual notice of Complainant’s mark and thus registered the disputed domain name in bad faith according to Policy ¶ 4(a)(iii). See Nat’l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) (“[C]onstructive notice does not support a finding of bad faith registration.”); see also Univision Comm’cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent’s contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant’s rights in the UNIVISION mark when registering the disputed domain name).

Complainant’s Exhibit 6 consists of a screenshot from Respondent’s global-e-harmony website. This screenshot proves that Respondent used a confusingly similar version of Claimant’s registered trademarks for a competing online dating services, purportedly to capitalize on the goodwill of the famous EHARMONY mark. The natural and logical result of Respondent’s actions was to confuse Internet users regarding an affiliation between Complainant and Respondent’s resolving website, for the commercial purpose of profiting from its competing dating service.

The Panel further notes, through review of Complainant’s Exhibit 7 (Declaration of Lisa Greenwald-Swire) that Respondent did not cease her use of the disputed name, as she had agreed to do so, during her conversation with Complainant’s Counsel, following her receipt of Complainant’s cease and desist letter.

The Panel thus determines that Respondent’s activities demonstrate bad faith registration and use of the <global-e-harmony.com> domain name according to Policy ¶ 4(b)(iv). See MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark); see also Busy Body, Inc. v. Fitness Outlet, Inc., D2000-0127 (WIPO Apr. 22, 2000) (finding bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent and the complainant were in the same line of business and the respondent was using a domain name confusingly similar to the complainant’s FITNESS WAREHOUSE mark to attract Internet users to its <efitnesswarehouse.com> domain name).

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 <global-e-harmony.com> domain name be TRANSFERRED from Respondent to Complainant.

Carol Stoner, Esq., Panelist

Dated: March 30, 2012

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