Mark owner meets its match in domain name dispute

International

In Match.com LP v Zag, a World Intellectual Property Organization (WIPO) panellist has refused to order the transfer of nine domain names featuring the word 'match' to the complainant - the owner of a MATCH.COM mark.

Match.com operates an internet dating business and uses the domain name 'match.com'. It filed a complaint against Bill Zag and an entity called NWLAWS.ORG following the registration of the domain names 'flowersmatch.com', 'insurematch.com', 'plasticsurgerymatch.com', 'safematch.com', 'scholarsmatch.com', 'schoolingmatch.com', 'selectmatch.com', 'sonicmatch.com' and '1800match.com'. Match.com stated that:

  • all the domain names were confusingly similar to its MATCH.COM mark;

  • the domain name 'safematch.com' was being used for an online dating service; and

  • eight of the domain names had been offered for sale on the Internet.

Pursuant to Paragraph 4(a) of the Uniform Domain Name Dispute Resolution Policy, WIPO panellist M Scott Donahey determined that the mark MATCH.COM was contained within the domain names at issue and, accordingly, they were confusingly similar to that mark. However, he held that the registration of a common word such as 'match' as a trademark does not preclude another party from using that term in a domain name, unless that party has registered it in bad faith.

According to Donahey, the registering and offering for sale of a domain name does not constitute bad faith, provided that the seller is not attempting to capitalize on the trademark value inherent in the name by registering the name primarily for the purposes of selling it to the mark owner or its competitors. Where the domain name registrant is not seeking to profit from the trademark value in a domain name, then use or an offer for sale is bona fide. Donahey found that none of the combinations registered by Zag implicitly suggested Match.com's trademark and there was no evidence that he was attempting to profit from the goodwill associated with that mark.

Accordingly, Donahey dismissed the complaint.

Mark A Lubbock, Ashurst, London

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