DatingDirect.com Limited v. WWW Enterprise, Inc.
Claim Number: FA0511000594720
Complainant is DatingDirect.com Limited (“Complainant”), represented by Adam Taylor, of Adlex Solicitors, 76A Belsize Lane, London, NW3 5BJ, United Kingdom. Respondent is WWW Enterprise, Inc. (“Respondent”), P.O. Box 118, 6850 W. 3rd Street, Los Angeles, CA US 90036.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <wwwdatingdirect.net>, registered with Onlinenic, Inc.
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.
James A. Crary as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 11, 2005; the National Arbitration Forum received a hard copy of the Complaint on November 11, 2005.
On November 13, 2005, Onlinenic, Inc. confirmed by e-mail to the National Arbitration Forum that the <wwwdatingdirect.net> domain name is registered with Onlinenic, Inc. and that Respondent is the current registrant of the name. Onlinenic, Inc. has verified that Respondent is bound by the Onlinenic, 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 November 15, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 5, 2005 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@wwwdatingdirect.net by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 13, 2005, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Crary as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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 <wwwdatingdirect.net> domain name is confusingly similar to Complainant’s DATING DIRECT mark.
2. Respondent does not have any rights or legitimate interests in the <wwwdatingdirect.net> domain name.
3. Respondent registered and used the <wwwdatingdirect.net> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, DatingDirect.com Limited, operates a
respectable international online dating service for singles seeking serious
friendships and relationships. Since
launching its website in 1999, Complainant has traded under its DATING DIRECT
and DATING DIRECT.COM marks.
Complainant operates its website at the <datingdirect.com> domain
name.
Complainant owns a trademark registration in the United
Kingdom for its DATING DIRECT.COM mark (Reg. No. 2,232,175 dated May 11,
2000). Complainant spent more than £10
million on marketing from 1999-2004, including advertising in magazines and
newspapters, television, radio, posters and outdoor advertising.
Respondent registered the <wwwdatingdirect.net> domain name on December 11, 2004. The disputed domain name is being used to operate a directory websites that displays links to third-party websites, including many of Complainant’s competitors in the dating services business.
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. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
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’s registration of its DATINGDIRECT.COM mark with the United Kingdom trademark authority is sufficient to establish Complainant’s rights in the mark in connection with Policy ¶ 4(a)(i). See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("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."); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
Furthermore, Complainant has acquired common law rights in the DATING DIRECT mark. Complainant has used the mark since 1999 in associated with its dating services and has spent considerable money advertising under both the DATING DIRECT and DATINGDIRECT.COM marks. Additionally, numerous panels have held that Complainant has established common law rights in the DATING DIRECT mark through secondary meaning. See, e.g., DatingDirect.com Ltd. v. Swan, FA 156717 (Nat. Arb. Forum June 9, 2003) (“Complainant has established rights in the DATING DIRECT mark 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, which is sufficient to grant standing under the UDRP.”); see also DatingDirect.com Ltd. v. Koryakin, FA 250764 (Nat. Arb. Forum June 4, 2004).
The <wwwdatingdirect.net> domain name contains Complainant’s DATING DIRECT mark with the addition of the letters “www” and the generic top-level domain “.net.” Respondent’s addition of the letters “www,” to take advantage of a potential typographical error by Internet users, is considered typosquatting and renders the domain name confusingly similar to Complainant’s mark. See Bank of Am. Corp. v. InterMos, FA 95092 (Nat. Arb. Forum Aug. 1, 2000) (finding that the respondent’s domain name <wwwbankofamerica.com> is confusingly similar to the complainant’s registered trademark BANK OF AMERICA because it “takes advantage of a typing error (eliminating the period between the www and the domain name); see also Marie Claire Album v. Blakely, D2002-1015 (WIPO Dec. 23, 2002) (holding that the letters “www” are not distinct in the “Internet world” and thus the respondent 's <wwwmarieclaire.com> domain name is confusingly similar to the complainant's MARIE CLAIRE trademark).
Complainant has satisfied Policy ¶ 4(a)(i).
The initial burden under Policy ¶ 4(a)(ii) is on Complainant to prove that Respondent does not have rights or legitimate interests in the disputed domain name. Once Complainant has made a prima facie case, the burden then shifts to Respondent to show that it does have rights or legitimate interests pursuant to the directions provided in Policy ¶ 4(c). See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (describing the burden shifting from the complainant to the respondent regarding rights and legitimate interests); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”). The Panel finds that Complainant has presented a prima facie case, and the Panel now chooses to consider whether an evaluation of all the evidence demonstrates rights or legitimate interests for Respondent under Policy ¶ 4(c).
Complainant has provided evidence that Respondent is using the <wwwdatingdirect.net> domain name to operate a website that displays links to third-party websites, including several that compete with Complainant. The Panel does not consider it a bona fide offering of goods or services under Policy ¶ 4(c)(i) where Respondent is using Complainant’s DATING DIRECT mark to operate a website that displays links for the purpose of earning referral fees. Furthermore, such use for Respondent’s commercial gain does not constitute a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii). See Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003) (finding that the respondent’s diversionary use of the complainant’s mark to attract Internet users to its own website, which contained a series of hyperlinks to unrelated websites, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names); see also Black & Decker Corp. v. Clinical Evaluations, FA 112629 (Nat. Arb. Forum June 24, 2002) (holding that the respondent’s use of the disputed domain name to redirect Internet users to commercial websites, unrelated to the complainant and presumably with the purpose of earning a commission or pay-per-click referral fee did not evidence rights or legitimate interests in the domain name); see also TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services).
Furthermore, there is no evidence suggesting that Respondent has ever been commonly known by the <wwwdatingdirect.net> domain name. Additionally, the WHOIS information for the domain name identifies Respondent as “WWW Enterprise, Inc.” Thus, the Panel finds that Respondent has not established rights or legitimate interests in the domain name pursuant to Policy ¶ 4(c)(ii). See Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail").
Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent’s use of the <wwwdatingdirect.net> domain name to divert Internet users searching for Complainant’s services to Respondent’s directory website demonstrates Respondent’s intent to attract Internet users to its website by creating confusion with Complainant’s mark. The registration and use of a domain name containing Complainant’s DATING DIRECT mark to divert Internet users for Respondent’s commercial gain is evidence of bad faith registration and use under Policy ¶ 4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”); see also G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using the confusingly similar domain name to attract Internet users to its commercial website); see also Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if the respondent profits from its diversionary use of the complainant's mark when the domain name resolves to commercial websites and the respondent fails to contest the complaint, it may be concluded that the respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)).
Furthermore, Respondent’s attempts to lead Internet users to its commercial website by taking advantage of a possible typographical error made by Complainant’s consumers trying to reach a website associated with Complainant’s DATING DIRECT mark constitute typosquatting. Use of a typosquatted version of Complainant’s mark is further evidence of bad faith registration and use under the Policy. See Nat’l Ass’n of Prof’l Baseball League, Inc. v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting … is the intentional misspelling of words with [the] intent to intercept and siphon off traffic from its intended destination, by preying on Internauts who make common typing errors. Typosquatting is inherently parasitic and of itself evidence of bad faith.”); see also Black & Decker Corp. v. Khan, FA 137223 (Nat. Arb. Forum Feb. 3, 2003) (finding the <wwwdewalt.com> domain name was registered to “ensnare those individuals who forget to type the period after the ‘www’ portion of [a] web-address,” which was evidence that the domain name was registered and used in bad faith).
Complainant has 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 <wwwdatingdirect.net> domain name be TRANSFERRED from Respondent to Complainant.
James A. Crary, Panelist
Dated: December 27, 2005
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