




(1) Trade mark infringement
Match.com claimed that the defendants’ use of the 'XXXMATCH.COM' and 'EROTICMATCH.COM' names, and of the 'LOVE IS COMPLICATED, SEX IS SIMPLE' tagline, in connection with the provision of online dating services infringed its registered MATCH.COM trade marks under Section 32 of the Lanham Act because such use was likely to cause confusion, mistake, and deception as to the origin of services sold or provided in connection with those names, and it was likely to mislead consumers and potential consumers into believing that such services were somehow affiliated with, or were sponsored, authorised, approved, or sanctioned by, Match.com, or that services sold or provided under the MATCH marks were somehow affiliated with, or were sponsored, authorised, approved, or sanctioned by, the defendants. It also claimed that the defendants’ use of the 'XXXMATCH.COM' and 'EROTICMATCH.COM' names, and of the 'LOVE IS COMPLICATED, SEX IS SIMPLE' tagline, in connection with the provision of online dating services, traded upon the goodwill that Match.com had established in its registered MATCH.COM trade marks.
(2) Unfair competition, false representation, and false designation of origin
Match.com claimed that the defendants’ use of the 'XXXMATCH.COM' and 'EROTICMATCH.COM' names, and of the 'LOVE IS COMPLICATED, SEX IS SIMPLE' tagline, in connection with the provision of online dating services constitutes unfair competition, false representation and false designation of origin under Section 43(a) of the Lanham Act, citing the same long-winded grounds set out in the previous paragraph in relation to Section 32.
(3) Cyberpiracy
Match.com claimed that the defendants’ registration and use of the domain names xxx.match.com and eroticmatch.com in connection with the provision of online dating services constituted cyberpiracy in violation of Section 43(d) of the Lanham Act because the defendants had registered and used those domain names in bad faith and those domains were confusingly similar to Match.com’s registered MATCH.COM trade mark.
Remedies
Match.com sought a very broad injunction restraining the defendants from, inter alia, using the names 'XXXMATCH', 'EROTICMATCH', or 'MATCH' (all with or without domain extensions, such as “.com”), the slogan 'LOVE IS COMPLICATED, SEX IS SIMPLE' or 'LOVE IS COMPLICATED. MATCH.COM IS SIMPLE', or any other reproduction, copy, colourable imitation, or confusingly similar variation of any of the above, as a mark or slogan or as any portion of the mark, slogan or domain name that is to be used in the connection with the sale or provision or any good or service. That last phrase is interesting: it goes beyond those services covered by Match.com's trade mark registrations. Match.com also sought an amount equal to three times the damages, gains, profits, savings, and advantages realised by the defendants as a result of their unlawful activities to be determined by the Court.
Comment
The IPKat cannot find any response by any of the defendants to Match.com's claims. However, except for the breadth of the injunction, on the facts available to him it may be difficult for any of the defendants to mount a counter argument. Again he notes that a domain name issue is being litigated in a trade mark case rather than through WIPO's Uniform Domain Name Dispute Resolution Service.
Merpel notes that Match.com has a number of registered Community trade marks (CTMs) and trade marks in the United Kingdom. These include for a CTM for 'MATCH.COM' (No 000182253) in Class 42 and UK registrations for 'MATCH.COM MAKE LOVE HAPPEN' (Nos 2397984 and 2402191) in Classes 16, 35, 36, 39, 41, 42 and 45. In neither jurisdiction could she see an application or registration for the trade mark 'LIFE IS COMPLICATED, MATCH.COM IS SIMPLE'. She wonders whether this could be because, as in the good old days, the trade mark would have been descriptive if true, deceptive if false ...
Complicated, replicated! Will me-too site be a match for Match.com?
Reviewed by Catherine Lee
on
Wednesday, April 11, 2012
Rating:

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