DatingDirect.com Limited v. D.D.L.C. c/o
Bill Shone
Claim
Number: FA0408000314357
Complainant is DatingDirect.com Limited (“Complainant”),
represented by Adam Taylor of Adlex Solicitors,
76A Belsize Lane, London, NW3 5BJ, UK.
Respondent is D.D.L.C. c/o Bill Shone (“Respondent”), 16 Overlea Blvd, Toronto, ON, M4H 1P2
Canada.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <online-dating-direct.com>, registered
with Direct Information Pvt. Ltd. d/b/a Directi.com.
The
undersigned certifies that she has acted independently and impartially and that
to the best of her knowledge she has no known conflict in serving as Panelist
in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically August 19, 2004; the Forum received a hard copy of the Complaint
August 23, 2004.
On
August 21, 2004, Direct Information Pvt. Ltd. d/b/a Directi.com confirmed by
e-mail to the Forum that the domain name <online-dating-direct.com>
is registered with Direct Information Pvt. Ltd. d/b/a Directi.com and that
Respondent is the current registrant of the name. Direct Information Pvt. Ltd. d/b/a Directi.com verified that
Respondent is bound by the Direct Information Pvt. Ltd. d/b/a Directi.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
August 27, 2004, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
September 16, 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@online-dating-direct.com 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
September 27, 2004, pursuant to Complainant's request to have the dispute
decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks
Johnson as Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the Forum 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. The domain name that Respondent
registered, <online-dating-direct.com>, is confusingly similar to
Complainant’s DATING DIRECT and DATINGDIRECT.COM marks.
2. Respondent has no rights to or legitimate
interests in the <online-dating-direct.com> domain name.
3. Respondent registered and used the <online-dating-direct.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant, DatingDirect.com Limited, is in the business
of providing online dating services for singles seeking serious friendships and
relationships.
Complainant owns a trademark registration in the United Kingdom for its DATINGDIRECT.COM mark (UK trademark
2232175 dated May 11, 2000).
Additionally, Complainant has applied for trademark registration in the
United Kingdom for the DATING DIRECT mark (Application No. 2319425 dated
December 24, 2002).
Complainant has done business under the DATING DIRECT and
DATINGDIRECT.COM marks since 1999, when Complainant launched its website at the
<datingdirect.com> domain name.
As of March 8, 2004, Complainant’s total membership was 2.03 million
with 1.24 million of those members having used the site within the previous
three months.
Complainant’s total revenues as of the end of 2003 totalled approximately
$16.6 million, while $9.7 million was from 2003 alone. As of the end of 2003, Complainant had spent
approximately $11 million in advertising through various mediums, including
television, radio, posters and leaflets, newspapers and magazines, and various
events organized by Complainant.
Additionally, Complainant has spent signifcant time and revenue to
obtain high listings on Internet search engines, such as Google, to obtain a
high profile on the Internet. In fact,
Complainant’s website is the top sponsored link for a search on Google for the
term “dating.”
Respondent registered the <online-dating-direct.com> domain name April 3, 2004. Respondent is using the disputed domain name
to redirect Internet users to a website that offers information and tips for
online dating and displays numerous links for Internet dating websites,
including websites at the <matchnet.co.uk>, <americansingles.com>, <glimpse.com>
and <jdate.com> domain names.
Additionally, Complainant asserts that all of these dating websites are
owned and operated by Matchnet PLC, one of Complainant’s primary competitors.
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
will draw such inferences as the Panel considers appropriate pursuant to
paragraph 14(b) of the Rules.
Paragraph 4(a)
of the Policy requires Complainant to 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.
Complainant
established by extrinsic proof in this proceeding that it has rights to and
legitimate interests in its DATINGDIRECT.COM mark through registration in the
United Kingdom. See 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); see also 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”).
Furthermore, Complainant brought proof to establish rights in its DATING
DIRECT mark through its trademark application in the United Kingdom. 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 British
Broad. Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting that the
Policy "does not distinguish between registered and unregistered
trademarks and service marks in the context of abusive registration of domain
names" and applying the Policy to "unregistered trademarks and
service marks").
Additionally,
Complainant established that it has used its DATING DIRECT marks since at least
1999 to provide online dating services to approximately 2.03 million
members. Complainant has also spent
considerable time and money in promoting its marks using several advertising
mediums, resulting in millions of dollars in profit. Thus, the Panel finds that Complainant also established that it
has common law rights in its marks by a showing of secondary meaning
associating Complainant’s marks with its products and services. See DatingDirect.com Ltd. v. Koryakin,
FA 250764 (Nat. Arb. Forum June 4, 2004) (finding that Complainant established
rights in the DATING DIRECT and DATINGDIRECT.COM marks “through proof of
acquiring substantial reputation and goodwill in the marks so that they are
recognized by the public as distinctive of Complainant’s online dating
service”); see also DatingDirect.com v. Swan, FA 156717 (Nat. Arb. Forum
June 29, 2003) (holding that Complainant established rights in its
DATINGDIRECT.COM and DATING DIRECT marks by demonstrating “secondary meaning in
its evidence of its large revenues”); see also S.A. Bendheim Co.,
Inc. v. Hollander Glass, FA 142318 (Nat. Arb. Forum Mar. 13, 2003) (holding
that Complainant established rights in the descriptive RESTORATION GLASS mark
through proof of secondary meaning associated with the mark).
The <online-dating-direct.com>
domain name registered by Respondent is confusingly similar to Complainant’s
DATING DIRECT marks because the domain name incorporates Complainant’s marks in
their entirety, adding the generic or descriptive term “online” and hyphens
between the terms. The mere addition of
a generic or descriptive term and hyphens to Complainant’s registered marks
does not negate the confusing similarity of Respondent’s domain name pursuant
to Policy ¶ 4(a)(i). See Arthur Guinness Son & Co. (Dublin) Ltd.
v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing
similarity where the domain name in dispute contains the identical mark of
Complainant combined with a generic word or term); see also Chernow Communications, Inc. v. Kimball,
D2000-0119 (WIPO May 18, 2000) (holding “that the use or absence of punctuation
marks, such as hyphens, does not alter the fact that a name is identical to a
mark"); see also Pep Boys
Manny, Moe, and Jack v. E-Commerce Today, Ltd., AF-0145 (eResolution May 3,
2000) (finding that a hyphen between words of Complainant’s registered mark is
confusingly similar).
Accordingly, the
Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant
showed rights to or legitimate interests in its marks and brought allegations
that Respondent has no such rights or legitimate interests in the <online-dating-direct.com>
domain name, which contains Complainant’s DATING DIRECT marks in their
entirety. Due to Respondent’s failure
to respond to the Complainant, the Panel will assume that Respondent lacks
rights and legitimate interests in the disputed domain name. In fact, once Complainant makes a prima
facie case in support of its allegations, the burden shifts to Respondent
to show that it does have such rights to or legitimate interests pursuant to
Policy ¶ 4(a)(ii). See G.D.
Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding
that where Complainant has asserted that Respondent has no rights or legitimate
interests with respect to the domain name it is incumbent on Respondent to come
forward with concrete evidence rebutting this assertion because this
information is “uniquely within the knowledge and control of the respondent”); see
also Clerical Med. Inv. Group Ltd. v.
Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that under
certain circumstances the mere assertion by Complainant that Respondent has no
right or legitimate interest is sufficient to shift the burden of proof to
Respondent to demonstrate that such a right or legitimate interest does exist).
Moreover, where
Complainant makes the prima facie showing and Respondent does not
respond, the Panel may accept all reasonable allegations and inferences in the
Complaint as true. See Do the
Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a
respondent to come forward to [contest complainant’s allegations] is tantamount
to admitting the truth of complainant’s assertion in this regard.”); 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 is
using the <online-dating-direct.com> domain name to redirect
Internet users to a website that contains information and tips for online
dating and also displays various links to several online dating sites in direct
competition with Complainant’s business.
Respondent’s use of a domain name that is confusingly similar to
Complainant’s DATING DIRECT marks to redirect Internet users interested in
Complainant’s products to a commercial website that offers competing products
and services and links to websites that compete with Complainant is not a use
in connection with a bona fide offering of goods or services pursuant to
Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the
domain name pursuant to Policy ¶ 4(c)(iii).
See Toronto-Dominion Bank v.
Karpachev, 188 F.Supp.2d 110, 114 (D. Mass. 2002) (finding that, because Respondent's sole
purpose in selecting the domain names was to cause confusion with Complainant's
website and marks, its use of the names was not in connection with the offering
of goods or services or any other fair use); see also Computerized
Sec. Sys., Inc v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (holding
that Respondent’s appropriation of Complainant’s mark to market products that
compete with Complainant’s goods does not constitute a bona fide offering of
goods and services); see also Ticketmaster
Corp. v. DiscoverNet, Inc., D2001-0252 (WIPO Apr. 9, 2001) (finding no
rights or legitimate interests where Respondent generated commercial gain by
intentionally and misleadingly diverting users away from Complainant's site to
a competing website).
Furthermore, no
evidence in the record suggests that Respondent has been commonly known by the <online-dating-direct.com>
domain name, and Respondent is not licensed by Complainant to use Complainant’s
DATING DIRECT marks. Thus, Respondent
has not established rights or legitimate interests in the disputed domain name
pursuant to Policy ¶ 4(c)(ii). See
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); see also
Compagnie de Saint Gobain v. Com-Union
Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate
interest where Respondent was not commonly known by the mark and never applied
for a license or permission from Complainant to use the trademarked name).
Thus, the Panel
finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant alleges
as well that Respondent registered and used the disputed domain names in bad
faith. Complainant urges that
Respondent intentionally registered the <online-dating-direct.com>
domain name, containing Complainant’s DATING DIRECT marks in their entirety,
for Respondent’s commercial gain.
Through the use of a domain name that is confusingly similar to
Complainant’s marks, Internet users seeking Complainant’s DATING DIRECT marks
are redirected to Respondent’s commercial website, which offers similar products
and services as Complainant.
Furthermore, Respondent is unfairly and opportunistically benefiting
from the goodwill associated with Complainant’s DATING DIRECT marks. Respondent’s practice of diversion,
motivated by commercial gain, constitutes bad faith registration and use
pursuant to Policy ¶ 4(b)(iv). See
Am. Online, Inc. v. Fu, D2000-1374
(WIPO Dec. 11, 2000) (finding that Respondent intentionally attempted to
attract Internet users to his website for commercial gain by creating a
likelihood of confusion with Complainant’s mark and offering the same chat
services via his website as Complainant); see also Identigene, Inc. v. Genetest Lab., D2000-1100 (WIPO Nov. 30, 2000)
(finding bad faith where Respondent's use of the domain name at issue to resolve
to a website where similar services are offered to Internet users is likely to
confuse the user into believing that Complainant is the source of or is
sponsoring the services offered at the site); see also Reuters Ltd. v. Global Net 2000, Inc.,
D2000-0441 (WIPO July 13, 2000) (finding bad faith where Respondent attracted
users to a website sponsored by Respondent and created confusion with
Complainant’s mark as to the source, sponsorship, or affiliation of that
website).
Respondent is
using the <online-dating-direct.com> domain name to promote and
link to online dating services.
Complainant is a provider of online dating services under its DATING
DIRECT marks. Therefore, the Panel
finds that, by creating confusion around Complainant’s marks, Respondent is
attempting to disrupt the business of a competitor. Respondent’s use of a domain name confusingly similar to
Complainant’s marks to offer goods and services similar to Complainant’s goods
and services is evidence of bad faith registration and use pursuant to Policy ¶
4(b)(iii). See S. Exposure v.
S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding
Respondent acted in bad faith by attracting Internet users to a website that
competes with Complainant’s business); see also EthnicGrocer.com, Inc. v. Unlimited Latin Flavors, Inc., FA 94385
(Nat. Arb. Forum July 7, 2000) (finding
that the minor degree of variation from Complainant's marks suggests that
Respondent, Complainant’s competitor, registered the names primarily for the
purpose of disrupting Complainant's business).
The Panel finds
that Complainant satisfied 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 <online-dating-direct.com> domain name be TRANSFERRED
from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: October 11, 2004
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