FlingPals.com beat Fling mark holders in UDRP

FlingPals.com, a domain registered by a business that promotes “fling” affair opportunities, was challenged via the UDRP process.

The Complainant is Global Personals LLC that operates a similar web site and app, along with the mark FLING. In the filing, Complainant argues that its website is a long-running fixture in the adult dating marketspace and its trademark is notorious, especially as the mark was registered 15 years ago.

Meanwhile, FlingPals.com was registered in 2020.

The Forum (NAF) panelist agreed with the Respondent’s argument that the marks FLING and FLINGPALS are not identical. Final decision: Deny transfer of the domain FlingPals.com to the Complainant, while also denying the Respondent’s request for a finding of Reverse Domain Name Hijacking.

The domain transfer was denied.

Global Personals, LLC v. Daniel Carvallo, Skyloop Digital Ltd

Claim Number: FA2205001995514

PARTIES

Complainant is Global Personals, LLC (“Complainant”), represented by Jason A. Fischer of Fischer Law, P.L., Florida, USA. Respondent is Daniel Carvallo, Skyloop Digital Ltd (“Respondent”), represented by Daniel Berry of Penningtons Manches Cooper LLP, International.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is , registered with NameCheap, 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.

Héctor Ariel Manoff as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on May 9, 2022; the Forum received payment on May 9, 2022.

On May 9, 2022, NameCheap, Inc. confirmed by e-mail to the Forum that the domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. 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”).

On May 10, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 27, 2022 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@flingpals.com. Also on May 10, 2022, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 June 27, 2022.

On July 12 an Additional Submission submitted by Complainant was received.

On July 7, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Héctor Ariel Manoff 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

1- Complainant operates an adult dating service website. Complainant asserts rights in the FLING through its registration of the mark with the United States Patent and Trademark Office (USPTO) (e.g., Reg. No. 3,347,852, registered on December 4, 2007). See Compl. Annex 5.

2- Respondent’s domain name is identical or confusingly similar to Complainant’s FLING mark, as it incorporates the mark in its entirety, only adding the generic term “pals” and the “.com” generic top-level domain (gTLD).

3- Respondent has no rights or legitimate interests in the disputed domain name. 4- Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services or legitimate noncommercial or fair use as the resolving website offers competing services.

5- Respondent registered and uses the domain name in bad faith. Respondent disrupts Complainant’s business by using the confusingly similar domain name to redirect users to competing services.

6- Respondent failed to respond to Complainant’s cease-and-desist letter.

B. Respondent

1- Respondent contends the domain name is not confusingly similar or identical to Complainant’s FLING mark, because FLING is a common and generic word, used often in relation to the business of online dating.

2 – Respondent argues that the scope of protection of Complainant’s trademark is different from the services for which it is used.

3- Respondent argues that there are many domain names which include the term FLING.

4- Respondent asserts Respondent has rights and legitimate commercial interests in the domain name, as Respondent is doing legitimate business under the disputed domain name which offers online adult dating services.

5- Respondent argues Respondent did not register the disputed domain name in bad faith because Respondent has a legitimate commercial business and the domain name is made up of generic terms.

6- Respondent requests a for a ruling of reverse domain name hijacking.

C. Additional Submissions

1- Complainant argues to be the owner of validly issued and enforceable trademark registrations for the mark “FLING”. The USPTO made a determination that the “FLING” mark had inherent distinctiveness.

2- Complainant states that Respondent attempts to overturn the USPTO’s determination by endeavoring to mischaracterize Complainant’s Mark as “generic even though “genericness” is not an issue in this proceeding.

3- Complainant argues that “fling” cannot be considered a generic name for websites providing adult dating services.

4- Complainant argues that the descriptiveness of a particular word does not preclude its use as a trademark and it can properly function as a source identifier for a mark as it happens for more than 15 years.

5- Complainant argues that its website is a long-running fixture in the adult dating marketspace and its trademark is notorious.

FINDINGS

Complainant operates an adult dating service website and has a trademark registration FLING with the United States Patent and Trademark Office (e.g., Reg. No. 3,347,852, registered on December 4, 2007), which covers “providing website(s) featuring information and content in the fields of personal relationships and dating”.

Respondent’s domain name incorporates the mark in its entirety but adding the term “pals” and the “.com” generic top-level domain (gTLD). It was registered on June 25, 2020.

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 Panel finds that Complainant asserts rights in the FLING mark through its registration of the mark with the USPTO (e.g., Reg. No. 3,347,852, registered on December 4, 2007). See Compl. Annex 5. When a complainant registers a mark with the USPTO, it is sufficient to establish rights in the mark. See Recreational Equipment, Inc. v. Liu Chan Yuan, FA 2107001954773 (Forum Aug. 9, 2021) (“Registration of a mark with the USPTO is sufficient to demonstrate rights in the mark per Policy ¶ 4(a)(i)”); see also H-D Michigan, LLC v. Private Whois Service, FA 1006001328876 (Forum July 12, 2010) (finding that “Complainant has sufficiently registered its HARLEY-DAVIDSON mark with the USPTO to prove Complainant’s rights in the mark according to Policy ¶ 4(a)(i), regardless of the fact that Respondent lives or operates outside the United States.”).

However, taking into account that the trademark is compound by a descriptive term (FLING describes the services developed by Complainant) its trademark rights are weak.

This weakness also provides from the fact the specification of goods is very narrow, and in a way to try to avoid rejection by the USPTO based on the descriptiveness.

Complainant has taken care in drafting the specifications of its trade marks in a way to avoid an examiner making a connection between the word “FLING” and its definition (“providing information and content in the fields of personal relationships and dating, including provision of such information and content online over a global information network or via a computer web site”).

This Panel concludes that Complainant’s trademarks are at the very least quasi-descriptive for the services identified by it and it derives in an extremely narrow scope of protection.

In addition, the Respondent’s domain name is comprised not just of the term “FLING” but also the term “PALS”. The Domain Name and the Trade Marks are, therefore, not identical.

The Panel finds that the cited weakness along with the addition of the term PAL by Respondent makes domain name is neither identical nor confusingly similar to a trade mark or service mark in which the Complainant has rights. (“Because the mark is merely descriptive, small differences matter. In the Internet context, consumers are aware that domain names for different websites are often quite similar and that small differences matter. See Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1147 (9th Cir. 2002). The omission of the letter “s” from the mark is one of those small differences that matters in this context. See Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1147 (9th Cir. 2002) and “Tire Discounters, Inc. v. TireDiscounter.com”, Claim Number: FA0604000679485).

Thus this Panel finds that Complainant does not satisfy the requirements of Policy ¶ 4(a)(i)).

Rights or Legitimate Interests

The Panel finds that Complainant has not established a prima facie case in support of its arguments that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii). See High Adventure Ministries v. JOHN TAYLOE / VOICE OF HOPE, FA 1737678 (Forum Aug. 9, 2017) (holding that a complainant’s failure to satisfactorily meet its burden suggests respondent has rights and legitimate interests in the domain name under UDRP ¶ 4(a)(ii)); see also JJ206, LLC v. Erin Hackney, FA 1629288 (Forum Aug. 25, 2015) (finding that a respondent may defeat a complainant’s established case by showing it has made demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services).

The Panel finds that taking into account the weakness of the term FLING described above (it evokes the services related to dating) as well as the narrow specification of goods filed to avoid a rejection, Respondent’s addition of a second term makes its domain name a sufficiently distinctive one.

In this case Respondent has added the term PALS which should not be necessarily considered a generic or common term in this context, specially taking into account the cited weakness of FLING and the coexistence proved by Respondent that there are many domain names which included this generic word.

Past panels have agreed that when a complainant’s mark is composed of a generic term, the respondent does not automatically infringe on complainant’s rights. See Trump v. olegevtushenko, FA 101509 (Forum Dec. 11, 2001) (finding that does not infringe on the complainant’s famous mark TRUMP, since the complainant does not have the exclusive right to use every form of the word “trump”).

Respondent contends and proves that the word “fling” is commonly used for adult online dating for casual dating, as is evidenced by numerous websites using the word “fling” in their domain names, which is what Respondent intended the word to mean when registering the domain name. See Resp. Annexes 1-4.

The Panel agrees the word “fling” is generic and finds Respondent did not infringe on Complainant’s rights in the FLING mark and has rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii).

In addition this Panel agrees that Respondent has legitimate rights and commercial interests in the domain name because Respondent legitimately engages in the business of providing adult online-dating services.

Thus, this Panel finds that Respondent uses the disputed domain name for a bona fide offering of goods and services. See Walsh Bishop Assocs. v. Honggi, Honggi Kim, FA 907521 (Forum Mar. 6, 2007) (“[A] respondent may have a legitimate interest in a domain name if the domain name is used to profit from the generic value of the word, without intending to take advantage of complainant’s rights in that word.”).

In this case, Respondent provides evidence the domain name is associated with the business of adult online dating. See Resp. Annex 7.

The Panel therefore finds Respondent does use the domain name in connection with a corresponding service in compliance with Policy ¶¶ 4(c)(i) and (iii).

Registration and Use in Bad Faith

The Panel finds that Complainant failed to meet the burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii). See Tristar Products, Inc. v. Domain Administrator / Telebrands, Corp., FA 1597388 (Forum Feb. 16, 2015) (“Complainant makes conclusory allegations of bad faith but has adduced no specific evidence that warrants a holding that Respondent proceeded in bad faith at the time it registered the disputed domain name. Mere assertions of bad faith, even when made on multiple grounds, do not prove bad faith.”); see also Chris Pearson v. Domain Admin / Automattic, Inc., FA 1613723 (Forum July 3, 2015) (finding that the complainant could not establish the respondent registered and used the disputed domain name in bad faith because it failed to present evidence that would support such a holding).

The Panel has found that Respondent has rights or legitimate interests in the domain name pursuant to Policy ¶ 4(a)(ii), and so the Panel finds that Respondent did not register or use the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Record Connect, Inc. v. Chung Kit Lam / La-Fame Corporation, FA 1693876 (Forum Nov. 3, 2016) (finding that the issue of bad faith registration and use was moot once the panel found the respondent had rights or legitimate interests in the disputed domain name); see also Sheet Labels, Inc. v. Harnett, Andy, FA 1701423 (Forum Jan. 4, 2017) (finding that because the respondent had rights and legitimate interests in the disputed domain name, its registration of the name was not in bad faith).

The Panel finds that Respondent has not registered or used the domain name in bad faith. Respondent has not violated any of the factors listed in Policy ¶ 4(b) or engaged in any other conduct that would constitute bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Haru Holding Corporation v. Michael Gleissner / NextEngine Ventures LLC, FA 1685263 (Forum Aug. 30, 2016) (finding that where a respondent has not violated any of the factors listed in Policy ¶ 4(b) or engaged in any other conduct that would constitute bad faith, lack of rights or legitimate interests on its own is insufficient to establish bad faith); see also Uhrenholt A/S v. FILLIP NIELSEN, FA 1646444 (Forum Dec. 21, 2015) (finding that mere assertions of bad faith, without evidence, are insufficient for a complainant to establish bad faith under Policy ¶ 4(a)(iii)).

In addition, this Panel finds that despite Complainant’s trademark rights on FLING it is clear that it is a descriptive term with respect to Complainant’s and Respondent’s services of interest. Thus, Respondent could have chosen the word based on that descriptiveness and added a second term PAL to identify its business. The weakness of the term creates the possibility of a coincidence of the choice of the word, as well as it has happened with the other cited domains in the name of third parties. Bad faith has not been proved.

Under Policy ¶ 4(a)(iii), past panels have failed to find bad faith where a Complainant provided insufficient evidence that a Respondent intended to capitalize off of recognition/goodwill in the Complainant’s claimed mark. See Accu-Find Internet Servs. v. AccuFind, FA 94831 (Forum June 19, 2000) (denying the complainant’s request because the complainant’s allegations that the respondent registered the disputed domain name to divert Internet users from the complainant’s business were not sufficiently substantiated under Policy ¶ 4(a)(iii)).

This Panel finds that Complainant failed to prove bad faith in registration. In addition this Panel do not find similarities in both websites (layouts and colors are clearly different) or any other element to make an association with the Complainant’s trademark.

Therefore, the Panel finds Respondent has not registered and/or does not use the disputed domain name in bad faith under Policy ¶ 4(a)(iii).

The Panel finds that Respondent’s rights and legitimate interests in the domain name preclude a finding of bad faith. Under Policy ¶ 4(a)(iii), a finding of rights or legitimate interests under (a)(ii) generally renders bad faith analysis irrelevant and/or moot. See Lee Procurement Solutions Co. v. getLocalNews.com, Inc., FA 366270 (Forum Jan. 7, 2005) (“Respondent’s rights and legitimate interests in the domain name pursuant to Policy ¶ 4(a)(ii), allow a finding that there was no bad faith registration or use under Policy ¶ 4(a)(iii).”).

Reverse Domain Name Hijacking

The Respondent has requested for a ruling of reverse domain name hijacking.

The Panel finds that Complainant has not engaged in reverse domain name hijacking. Complainant may have thought that the identity of the first term of the domain name gives right to claim.

The Panel finds that Complainant’s filing of the Complaint was based on a good faith belief that the use of the domain which share the first term was sufficient to establish bad faith. As such, Complainant’s filing is not an abuse of the UDRP Policy. Even if the Panel should find that Complainant has failed to satisfy its burden under the Policy, this does not necessarily render a finding of reverse domain name hijacking on behalf of Complainant in bringing the instant claim. See ECG European City Guide v. Woodell, FA 183897 (Forum Oct. 14, 2003) (“Although the Panel has found that Complainant failed to satisfy its burden under the Policy, the Panel cannot conclude on that basis alone, that Complainant acted in bad faith.”); see also Church in Houston v. Moran, D2001-0683 (WIPO Aug. 2, 2001) (noting that a finding of reverse domain name hijacking requires bad faith on the complainant’s part, which was not proven because the complainant did not know and should not have known that one of the three elements in Policy ¶ 4(a) was absent).

The Panel cannot conclude that Complainant acted in bad faith.

DECISION

Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

Accordingly, it is Ordered that the domain name REMAIN WITH Respondent.

Héctor Ariel Manoff, Panelist

Dated: July 18, 2022

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