Tinder.email

The timeline behind tinder.email

Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.

Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.

DECISION Tinder, Inc. v. Giovanni Laporta / Yoyo.Email Claim Number: FA1503001610656 PARTIES Complainant is Tinder, Inc. (“Complainant”), represented by Steven M. Levy, Pennsylvania, USA. Respondent is Giovanni Laporta / yoyo.email (“Respondent”), Michigan, USA. REGISTRAR AND DISPUTED DOMAIN NAME The domain name at issue is <tinder.email>, registered with Godaddy LLC. 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. David E. Sorkin as Panelist. PROCEDURAL HISTORY Complainant submitted a Complaint to the Forum electronically on March 20, 2015; the Forum received payment on March 23, 2015. On March 23, 2015, Godaddy LLC confirmed by email to the Forum that the <tinder.email> domain name is registered with Godaddy LLC and that Respondent is the current registrant of the name. Godaddy LLC has verified that Respondent is bound by the Godaddy LLC 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 (“UDRP” or “Policy”). On March 25, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 14, 2015 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@tinder.email. Also on March 25, 2015, 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 April 13, 2015. On April 20, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David E. Sorkin as Panelist. Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 be transferred from Respondent to Complainant. PARTIES' CONTENTIONS A. Complainant Complainant operates a dating/matchmaking mobile phone app with approximately 50 million users. Complainant uses the TINDER mark for this service, and asserts that the mark has become famous in many countries by virtue of extensive use and promotion. Complainant’s mark is registered in the United States and the European Union. Complainant contends that the disputed domain name <tinder.email> is identical or confusingly similar to its TINDER mark. Complainant further contends that Respondent has no rights or legitimate interests in the disputed domain name, and that the disputed domain name was registered and is being used in bad faith. In support thereof, Complainant states that Respondent intends to use the domain name for an email forwarding service, and notes that previous panels have concluded in other cases involving Respondent that this use does not qualify as a bona fide offering of goods or services under the Policy. Complainant alleges that Respondent registered the domain name knowing that it corresponds to Complainant’s mark. Complainant notes that Respondent has registered thousands of other “.email” domain names corresponding to well-known trademarks, many of which have been the subject of proceedings under the UDRP and the Uniform Rapid Suspension System (“URS”). Nearly all of these proceedings have resulted in findings of bad faith by Respondent. B. Respondent Respondent contends that there is no legitimate basis for transferring the disputed domain name to Complainant. Respondent states that it registered the disputed domain name and other “.email” domain names for a certified email delivery service. Respondent explains that there will be “no public use” of the domain names; they will be used merely “as a backend, non-public email server in order to route emails for the storing of Metadata.” The initial idea is to launch the service as a closed software service which means that users can only send emails via the Respondents software, so initially the service works as a back end service where all emails are directed and documented internally by name. At this point domain names are not seen by the general public, however domain names may be used to forward emails to the respective company (recipient). At this point there can be no confusion as to source and origin as the company (recipient) cannot be confused to who they are. Response at 5. Respondent argues that this is a legitimate fair use, and denies any intention to create confusion with Complainant’s mark. In support of its contentions, Respondent cites a consent judgment entered by a U.S. court in a matter involving one of Respondent’s other “.email” domain names, finding in relevant part as follows: G. Plaintiff’s legitimate purpose seeking to certify the sending and receipt of emails, as described in the Complaint, does not evidence a bad-faith intent to profit from the “registration, use or trafficking” of a domain name. * * * I. Plaintiff’s intended use of <playinnovation.email> as set forth in the Complaint is not trademark use. J. Plaintiff’s intended use of <playinnovation.email> as described in the Complaint is not a violation of the Anti-Cybersquatting Consumer Protection Act (ACPA), 15 U.S.C. § 1125(d) et seq., the Lanham Act, 15 U.S.C. § 1051 et seq., the ICANN URS and UDRP policy or other law. Yoyo.Email, LLC v. Playinnovation, Ltd., No. CV-14-01922, at 3 (D. Ariz. Nov. 5, 2014). FINDINGS The Panel finds that the disputed domain name is identical or confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and has been 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 and/or Confusingly Similar The disputed domain name is identical to Complainant’s registered trademark, but for the addition of the “.email” top-level domain, which is irrelevant for purposes of paragraph 4(a)(i) of the Policy. See, e.g., British Sky Broadcasting Ltd. v. Giovanni Laporta, Yoyo.Email, No. 100878 (Czech Arb. Ct. Apr. 13, 2015) (finding <skyvegas.email> and several other “.email” domain names identical or confusingly similar to SKYVEGAS and other trademarks); Fitness Int’l, LLC v. Yoyo.Email, D2015-0175 (WIPO Apr. 6, 2015) (finding <lafitness.email> identical or confusingly similar to LA FITNESS); MySQL AB v. Giovanni Laporta / Yoyo.Email, FA 1595391 (Nat. Arb. Forum Jan. 26, 2015) (finding <mysql.email> confusingly similar to MYSQL). The Panel finds that the disputed domain name is identical or confusingly similar to Complainant’s mark. Rights or Legitimate Interests Under section 4(a)(ii) of the Policy, the Complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). The question here is whether Respondent’s intended use of the disputed domain name gives rise to rights or legitimate interests, either as “a bona fide offering of goods or services” (Policy paragraph 4(c)(i)), or “a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue” (paragraph 4(c)(iii)). An infringing or dilutive use is not bona fide, so under either of these provisions of the Policy Respondent’s use would need to qualify as a fair use for Respondent to prevail. As this Panelist noted in a concurring opinion in Statoil ASA v. Giovanni Laporta, Yoyo.Email Ltd., D2014-0637 (WIPO July 16, 2014), Respondent’s proposed service fails to qualify as either a nominative or descriptive fair use under current law. The Panel has reviewed the consent judgment in Yoyo.Email, LLC v. Playinnovation, Ltd., supra. However, that judgment is not binding in this proceeding. See MySQL AB v. Giovanni Laporta / Yoyo.Email, FA 1595391 (Nat. Arb. Forum Jan. 26, 2015). As the judgment contains no supporting factual analysis and appears to be merely the product of a settlement between the parties, this Panel considers it to have little or no persuasive weight here. Accordingly, the Panel finds that Complainant has sustained its burden under paragraph 4(a)(ii) of the Policy. Registration and Use in Bad Faith Finally, Complainant must show that the disputed domain name was registered and has been used in bad faith. Under paragraph 4(b)(iv) of the Policy, bad faith may be shown by evidence that “by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent’s] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [Respondent’s] web site or location or of a product or service on [Respondent’s] web site or location.” Based upon the description of Respondent’s certified email delivery service submitted by Respondent in this proceeding, the Panel is of the view that Respondent’s use of the disputed domain name will almost certainly create confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s service. The Panel therefore concludes that the domain name was registered and is being used in bad faith. DECISION Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED. Accordingly, it is Ordered that the <tinder.email> domain name be TRANSFERRED from Respondent to Complainant. David E. Sorkin, Panelist Dated: April 29, 2015 Click Here to return to the main Domain Decisions Page. Click Here to return to our Home Page

Source of record: FORUM . Reproduced for research; FORUM is the authoritative source.