DatingDirect.com Limited v. Andrey
Koryakin
Claim
Number: FA0404000250764
Complainant is DatingDirect.com Limited (“Complainant”),
represented by Adam Taylor, of Adlex Solicitors,
76A Belsize Lane, London, NW3 5BJ, UK.
Respondent is Andrey Koryakin (“Respondent”),
2 – 8 – 18, Luchegorsk, Promorskiy kray, 692001 Russia.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <dating-direct.info>, registered with iHoldings.com,
Inc. d/b/a DotRegistrar.com.
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.
Sandra
Franklin as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on April 2, 2004; the Forum received a hard copy of the
Complaint on April 5, 2004.
On
April 14, 2004, iHoldings.com, Inc. d/b/a DotRegistrar.com confirmed by e-mail
to the Forum that the domain name <dating-direct.info> is
registered with iHoldings.com, Inc. d/b/a DotRegistrar.com and that Respondent
is the current registrant of the name. iHoldings.com, Inc. d/b/a
DotRegistrar.com has verified that Respondent is bound by the iHoldings.com,
Inc. d/b/a DotRegistrar.com 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 14, 2004, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
May 4, 2004 by which Respondent could file a Response to the Complaint, was
transmitted to Respondent via e-mail, post and fax, to all entities and persons
listed on Respondent's registration as technical, administrative and billing
contacts, and to postmaster@dating‑direct.info by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the Forum transmitted
to the parties a Notification of Respondent Default.
On
May 21, 2004, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the Forum appointed Sandra Franklin 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."
Therefore, the Panel may issue its decision based on the documents
submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's
Supplemental Rules and any rules and principles of law that the Panel deems
applicable, without the benefit of any Response from Respondent.
Complainant
requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <dating-direct.info>
domain name is confusingly similar to Complainant’s DATINGDIRECT.COM and DATING
DIRECT marks.
2. Respondent does not have any rights or
legitimate interests in the <dating-direct.info> domain name.
3. Respondent registered and used the <dating-direct.info>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
DatingDirect.com Limited, offers an international online dating agency service
“for singles seeking serious friendships and relationships.” Complainant’s lifetime revenues approximate
£9.1 million, with £5.3 million in 2003 alone.
Complainant registered the DATINGDIRECT.COM mark (No. 2,232,175) with
the UK Patent Office on May 11, 2000.
Complainant has also submitted an application for the DATING DIRECT mark
(No, 2,319,425), filing on December 24, 2002.
Respondent
registered the <dating-direct.info> domain name on August 23,
2003. The disputed domain name refers
traffic to <adultfriendfinder.com>, which describes itself as “the
world’s largest sex and swinger personals site.”
Complainant
sent a cease and desist email to Respondent, alexusaw@hotmail.com, on February
26, 2004. Respondent’s reply read as
follows: “$9900 (only for you.) Kind
regards Alexus PS This 2 words are your property?”
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."
In view of
Respondent's failure to submit a Response, the Panel shall decide this
administrative proceeding on the basis of Complainant's undisputed
representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and
draw such inferences it considers appropriate pursuant to paragraph 14(b) of
the Rules.
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.
The Panel finds
that Complainant has established rights in the DATINGDIRECT.COM mark by its
registration with the UK Patent Office, and its use in commerce. See
Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept.
16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that
they are inherently distinctive and have acquired secondary meaning.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5,
2002) finding that Panel decisions have held that registration of a mark is prima facie evidence of validity, which
creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this
assumption.
The Panel finds
that Complainant has established rights in the DATING DIRECT mark as
established by its filing of a trademark registration application with the UK
Patent Office. In addition, the Panel
concludes that Complainant has demonstrated secondary meaning in its evidence
of its large revenues. See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13,
2000) finding that the Rules do not require that Complainant's trademark or
service mark be registered by a government authority or agency for such rights
to exist. Rights in the mark can be
established by pending trademark applications; see also Tuxedos
By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) finding common
law rights in a mark where its use was continuous and ongoing, and secondary
meaning was established.
Respondent’s <dating-direct.info>
domain name is confusingly similar to Complainant’s marks. The only difference is the addition of a
hyphen, which does not significantly distinguish the domain name from the
mark. See Nintendo Of Am.
Inc. v. This Domain Is For Sale, D2000-1197 (WIPO Nov. 1, 2000) finding
<game-boy.com> identical and confusingly similar Complainant’s GAME BOY
mark, even though the domain name is a combination of two descriptive words
divided by a hyphen; see also InfoSpace.com v. Tenenbaum Ofer,
D2000-0075 (WIPO Apr. 27, 2000) (“The domain name ‘info-space.com’ is identical
to Complainant’s INFOSPACE trademark. The addition of a hyphen and .com are not
distinguishing features.”).
The Panel finds
that Complainant has established Policy ¶ 4(a)(i).
Respondent has
not filed a Response. In light of the
absence of a Response, the Panel may accept any reasonable assertions by
Complainant as true. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000)
finding that failing to respond allows a presumption that Complainant’s
allegations are true unless clearly contradicted by the evidence; see also Vertical Solutions Mgmt., Inc.
v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000)
holding that Respondent’s failure to respond allows all reasonable inferences
of fact in the allegations of Complainant to be deemed true.
Respondent has
appropriated Complainant’s mark to link to a website that offers competing
services—relationships. The Panel finds
that this is not a bona fide offering of services, pursuant to Policy ¶
4(c)(i), or a legitimate noncommercial or fair use of the domain name, pursuant
to Policy ¶ 4(c)(iii). See
Yahoo! Inc. v. Web Master, FA 127717 (Nat. Arb. Forum Nov. 27,
2002) finding that Respondent’s use of a confusingly similar domain name to
operate a pay-per-click search engine, in competition with Complainant, was not
a bona fide offering of goods or services; see also Ameritrade Holdings Corp. v. Polanski, FA 102715
(Nat. Arb. Forum Jan. 11, 2002) finding that Respondent’s use of the disputed
domain name to redirect Internet users to a financial services website, which
competed with Complainant, was not a bona fide offering of goods or services.
Nothing in the
record, including the WHOIS domain name registration, demonstrates that
Respondent is otherwise known by the disputed domain name, pursuant to Policy ¶
4(c)(ii). See Tercent Inc. v. Yi, FA 139720
(Nat. Arb. Forum Feb. 10, 2003) stating “nothing in Respondent’s WHOIS
information implies that Respondent is ‘commonly known by’ the disputed domain
name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply; see also Gallup
Inc. v. Amish Country Store,
FA 96209 (Nat. Arb. Forum Jan. 23, 2001) finding that Respondent does not have
rights in a domain name when Respondent is not known by the mark.
The Panel finds
that Complainant has established Policy ¶ 4(a)(ii).
Respondent
solicited $9,900 from Complainant to transfer the domain name
registration. Respondent’s comments,
“only for you,” indicate that it made this offer specifically to Complainant. There is nothing in the record to suggest
$9,900 is the going rate for domain names in either the UK or Russia. The Panel infers that Respondent has
registered the disputed domain primarily for the purpose of selling it for
valuable consideration in excess of its out-of-pocket costs, pursuant to Policy
¶ 4(b)(i). See Pocatello Idaho
Auditorium Dist. v. CES Marketing Group, Inc., FA 103186 (Nat. Arb. Forum
Feb. 21, 2002) ("What makes an offer to sell a domain [name] bad faith is
some accompanying evidence that the domain name was registered because of its
value that is in some way dependent on the trademark of another, and then an
offer to sell it to the trademark owner or a competitor of the trademark
owner."); see also Little
Six, Inc v. Domain For Sale, FA 96967 (Nat. Arb. Forum Apr. 30, 2001)
(finding Respondent's offer to sell the domain name at issue to Complainant was
evidence of bad faith).
Respondent is
also appropriating Complainant’s mark to offer competing services. This is evidence of bad faith registration
and use, pursuant to Policy ¶ 4(b)(iii). See Surface Protection Indus., Inc. v.
Webposters, D2000-1613 (WIPO Feb. 5, 2001) finding that, given the
competitive relationship between Complainant and Respondent, Respondent likely
registered the contested domain name with the intent to disrupt Complainant's
business and create user confusion; see
also SR Motorsports v.
Rotary Performance, FA 95859 (Nat. Arb. Forum Jan. 4, 2001) finding it
"obvious" that the domain names were registered for the primary
purpose of disrupting the competitor's business when the parties are part of
the same, highly specialized field.
The Panel finds
that Complainant has established Policy ¶ 4(a)(iii).
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <dating-direct.info> domain name be TRANSFERRED
from Respondent to Complainant.
Sandra Franklin, Panelist
Dated:
June 4, 2004
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