Together Networks Holdings Limited which owns the domain name CheekyLovers.com and a trademark on the term CheekyLovers lost a UDRP to grab the domain CheekyDevil.com
Complainant is an online dating business and operates a number of websites, including one linked to the domain name, <cheekylovers.com>, which was registered on June 13, 2011.
Complainant filed an application on November 10, 2015 for CHEEKYLOVERS as a trademark in the European Union. The mark was registered on February 23, 2016 (European Union Trade Mark (“EUTM”) No. 014775282).
Respondent operates a dating website linked to the Domain Name.
The Domain Name was registered on June 26, 2008.
Respondent has stated it commenced using the Domain Name in the online dating industry in 2014. and has over 440,000 members. Respondent further states that it is ranked as a top 10 dating site, and in June 2016, the Domain Name was visited more than 412,000 times. Based on these facts, Respondent argues that the Domain Name is well-known by the relevant public, in particular, the public that uses Internet dating sites.
Respondent states that on January 26, 2016, Complainant filed EUTM No. 015039589 for the mark CHEEKYDEVIL, which was registered on May 10, 2016. Complainant registered this mark more than a year after Respondent started using the Domain Name for an Internet dating website.
Respondent emphasizes that Complainant has never used the “CheekyDevil” sign, either prior to registering it as a trademark or afterwards.
Due to the fact that Respondent’s Domain Name is well known for the services it provides in the online dating industry, Respondent argues that Complainant was aware of the existence of the Domain Name prior to registering CHEEKYDEVIL as a mark. Because Complainant and Respondent are in the same industry and Complainant has never used the CheekyDevil sign, Respondent argues that Complainant registered the CHEEKYDEVIL mark for the sole purpose of preventing Respondent from using the Domain Name. In response, on July 22, 2016, Respondent filed a request with the European Union Intellectual Property Office (“EUIPO”) to declare Complainant’s CHEEKYDEVIL mark invalid on grounds of bad faith.
The Panel finds that there are serious questions concerning whether the Domain Name, when considered in combination with the content of Respondent’s website and practices used by Respondent, might be considered bad faith use and fail to give rise to any rights or legitimate interest in the Domain Name.
The Panel considers that if an Internet user went to the website linked to the Domain Name and observed that it is used as a dating site and contains a logo similar to Complainant’s graphic design logo, and that the Domain Name shares the word “cheeky” with Complainant’s CHEEKYLOVER mark, this would add weight to the overall potential for confusion, in view of the totality of the circumstances. Further, while Respondent may not have registered the Domain Name in bad faith in 2008, Respondent’s use of the Domain Name for a dating site commencing in 2014, after Complainant’s rights in its CHEEKYLOVERS mark were arguably established, raises serious questions about whether Respondent use of the Domain Name was bad faith use.The Panel finds that the present case appears to raise issues that go beyond the scope of the Policy. Such issues as passing off or disputes relating to trademark validity and/or infringement require a comprehensive examination of evidence, which is not afforded to UDRP panels in an administrative proceeding such as this.The Panel notes that these questions may be better addressed in a court of competent jurisdiction with greater inquisitorial powers to come to a determination as to the abovementioned questions. Based on the available record, the Policy alone does not appear to be the appropriate instrument to resolve the Parties’ dispute
