Decision 5/11/10 9:49 PM

NATIONAL ARBITRATION FORUM

DECISION

Romantic Tours, Inc. v. Whois Privacy Protection Service, Inc.

Claim Number: FA1003001316557

PARTIES
Complainant is Romantic Tours, Inc. (“Complainant”), represented by Joseph J. Weissman, of
Johnson, Pope, Bokor, Ruppel & Burns, LLP, Florida, USA. Respondent is Whois Privacy
Protection Service, Inc. (“Respondent”), represented by Jim McDonald.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <jimslists.com>, registered with Godaddy.com, Inc.

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

Antonina Pakharenko-Anderson as Panelist.

PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 31,
2010.

On April 1, 2010, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the
<jimslists.com> domain name is registered with Godaddy.com, Inc. and that the Respondent is the
current registrant of the name. Godaddy.com, Inc. has verified that Respondent is bound by the
Godaddy.com, Inc. registration agreement and has thereby agreed to resolve domain-name disputes
brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution
Policy (the “Policy”).

On April 8, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of
the Complaint, setting a deadline of April 28, 2010 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@jimslists.com. Also on April 8, 2010, 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 8, 2010.

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An Additional Submission was received from Complainant on April 13, 2010 and found to be timely
and complete pursuant to the National Arbitration Forum’s Supplemental Rule 7.

On April 14, 2010, pursuant to Complainant’s request to have the dispute decided by a single-
member Panel, the National Arbitration Forum appointed Antonina Pakharenko-Anderson as
Panelist.

An Additional Submission was submitted by Complainant on April 19, 2010 and was determined to
be deficient. The Panel has chosen not to consider this Additional Submission in its Decision.

RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS
A. Complainant

Complainant contends that he is the owner of the federally registered HOT RUSSIAN BRIDES® and
HOTRUSSIANBRIDES.COM® trademarks. Complainant further contends that he operates its
business at its <hotrussianbrides.com> website working with over one-hundred fifty (150) Russian
and Ukrainian placement agencies to facilitate its matchmaking.

Complainant further contends that he first registered the hotrussianbrides.com domain on August 25,
2003 and that since 2004 Complainant has served over 150,000 customers under its HOT RUSSIAN
BRIDES® and HOTRUSSIANBRIDES.COM® trademarks.

Respondent registered the disputed domain <jimslists.com> with a

<jimslists.com/agencies/hotrussianbrides> post-domain on May 4, 2009, which is four-and-a-half
years after the Complainant applied its HOT RUSSIAN BRIDES® trademark for registration and
about six months after the Complainant applied to register its HOTRUSSIANBRIDES.COM®
trademark with the United States Patent and Trademark Office.

Respondent does not operate a genuine business at the <jimslists.com> domain with its
<jimslists.com/agencies/hotrussianbrides> post-domain, but uses its domain and post-domain to
attract those interested in the services under the HOT RUSSIAN BRIDES® trademark in order to
defame Complainant and divert customers to competing websites for the purpose of making profits
from these competing websites.

Based on these contentions, Complainant further alleges that:

1. Respondent’s registered domain name is confusingly similar to the federally-registered trademarks
HOT RUSSIAN BRIDES® and HOTRUSSIANBRIDES.COM®;
2. Respondent has no rights or legitimate interests in its registered <jimslists.com> domain and for
its <jimslists.com/agencies/hotrussianbrides> post-domain.
3. Respondent registered and maintains its domain in bad faith.

B. Respondent

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Respondent contends that his name is Jim and that he has owned the disputed domain for several
years. Respondent further alleges that he is known by name by thousands of men around the world as
the individual owner of jimslists.com.

Complainant is dissatisfied with subpages titled jimslists.com/hotrussianbrides.com.

Respondent contends that he has deleted these pages and removed all references to
“hotrussianbrides” from his website and that he did not make his website in bad faith.

C. Additional Submissions

Complainant filed its Additional Written Statement on April 13, 2010 pursuant to UDRP
Supplemental Rule 7(a).

Complainant contends that the Response filed by Respondent on April 8, 2010 is deficient and
constitutes an additional evidence of bad faith.

FINDINGS

Complainant has established that it has rights in the HOT RUSSIAN BRIDES® and
HOTRUSSIANBRIDES.COM® trademarks based on federal registration with the United States
Patent and Trademark Office. Complainant produced sufficient evidences to confirm registration of
the HOT RUSSIAN BRIDES® trademark (reg. no. 3159522 issued October 17, 2006 filed October 1,
2004) and HOTRUSSIANBRIDES.COM® trademark (reg. no. 3602236 issued April 7, 2009 filed
September 2, 2008) in class 45 for “dating and marriage partner introduction services”. The
evidences submitted by Complainant further show that the date of first use in commerce for both
marks is May 13, 2004.

Based on the provided evidences, Complainant further established that it first registered the
hotrussianbrides.com domain on August 25, 2003.

Complainant further established that the disputed domain <jimslists.com> was registered by
Respondent on May 4, 2009, namely almost six years after Complainant registered its
<hotrussianbrides.com> domain and over five years after Complainant started using its HOT
RUSSIAN BRIDES® and HOTRUSSIANBRIDES.COM® trademarks in commerce.

Complainant contends that Respondent does not operate a genuine business at the <jimslists.com>
domain with its post-domain and, thus, uses its domain and post-domain to attract those interested in
HOT RUSSIAN BRIDES® and its services to spread mistruths about Complainant and attract
customers to its own competing websites that “Jim Personally Recommends”.

Based on the provided evidences, particularly the submitted print-outs of search results from the
google search engine and print-outs of the relevant pages from the webpage
http://jimslists.com/agencies/hotrussianbrides.html, Complainant established that the use of the sign
“hotrussianbrides” within the disputed domain may lead customers interested in HOT RUSSIAN
BRIDES® services to the <jimslists.com> domain. Complainant further established that the contents
of the web pages at the <jimslists.com> domain do not relate to Respondent’s genuine business, but
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of the web pages at the <jimslists.com> domain do not relate to Respondent’s genuine business, but
particularly contains information on HOT RUSSIAN BRIDES® services of defaming character.

Complainant further established that JIMSLISTS.COM is affiliated with competing websites to

include <loveme.com>, <luckylovers.net> and/or <elenasmodels.com> as the evidences show that
the mentioned websites are linked to the <jimslists.com/agencies/hotrussianbrides> post-domain.

Complainant also produced evidences establishing that Respondent contacted him via e-mail,
admitted that his website had caused Complainant monetary losses and requested that Complainant
and other businesses involved make an offer to buy his website.

In its Response submitted on April 8, 2010, which is deficient in light of the requirements of UDRP
Supplemental Rule 5(a) and 5(b), Respondent represents himself as “Jim McDonald” and asserts that
he is known by name by thousands of men around the world as the individual owner of
jimslists.com. No evidences have been provided to support these controversial allegations.

DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a trademark
or service mark in which the Complainant has rights;
(2) the 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

Pursuant to Paragraph 4(a)(i) of the Policy, Complainant established its rights in the HOT RUSSIAN
BRIDES® and HOTRUSSIANBRIDES.COM® trademarks through their registration with the United
States Patent and Trademark Office (USPTO) (Reg. No. 3,159,522 issued October 17, 2006 filed
October 1, 2004 and Reg. No. 3,602,236 issued April 7, 2009 filed September 2, 2008). See Thermo
Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the complainants had
established rights in marks where the marks were registered with a trademark authority); see also
Expedia, Inc. v. Emmerson, FA 873346 (Nat. Arb. Forum Feb. 9, 2007) (Complainant’s trademark
registrations with the USPTO adequately demonstrate its rights in the mark pursuant to Policy
4(a)(i)).

These are the rights on which Complainant relies in claiming trademark infringement and seeking
relief against the use of its registered trademark in the post-domain in question under the UDRP.

The Panelist notes that the UDRP does not offer relief for infringements via use of registered
trademarks in post-domains and that the proceedings under the UDRP may be applied only to
domain names.
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domain names.

The Panelist finds that as none of the elements of the registered “HOT RUSSIAN BRIDES”
trademark is contained within the Respondent’s <jimslists.com> domain name, the said domain
name is neither identical nor similar with the Complainant’s trademark as it bears no resemblance to
Complainant’s mark.

Based on this conclusion, the Panelist finds that the disputed domain name is not confusingly similar
under Policy ¶ 4(a)(i). See Thomas Cook Holdings Ltd. v. Aydin, D2000-0676 (WIPO Sept. 11,
2000) (finding that the domain name, <hot18to30.com>, is neither identical nor confusingly similar
to the complainant’s CLUB 18-30 trademark).

Based on the finding that Complainant has not satisfied Policy ¶ 4(a)(i), the Panelist has declined to
analyze the other two elements of the Policy. See Hugo Daniel Barbaca Bejinha v. Whois Guard
Protected, FA 836538 (Nat. Arb. Forum Dec. 28, 2006) (deciding not to inquire into the respondent’s
rights or legitimate interests or its registration and use in bad faith where the complainant could not
satisfy the requirements of Policy ¶ 4(a)(i)).

DECISION

Based on the above findings and conclusions, it is decided that the Claim of Romantic Tours, Inc. vs.
Whois Privacy Protection Service, Inc. IS HEREBY DISMISSED.

Antonina Pakharenko-Anderson, Panelist

Dated: April 28, 2010

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