DatingDirect.com Limited v. Edwin Hyde
Claim Number: FA0801001139938
Complainant is DatingDirect.com Limited (“Complainant”), represented by Adam
Taylor, of Adlex Solicitors,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <yourdatingdirect.com>, registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Bruce E. O’Connor as Panelist.
This decision is being rendered in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the National Arbitration Forum’s UDRP Supplemental Rules (the “Supplemental Rules”).
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 24, 2008; the National Arbitration Forum received a hard copy of the Complaint on January 25, 2008.
On January 24, 2008, Melbourne It, Ltd. d/b/a Internet Names Worldwide confirmed by e-mail to the National Arbitration Forum that the <yourdatingdirect.com> domain name is registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide and that the Respondent is the current registrant of the name. Melbourne It, Ltd. d/b/a Internet Names Worldwide has verified that Respondent is bound by the Melbourne It, Ltd. d/b/a Internet Names Worldwide registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with the Policy.
On January 28, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of February 18, 2008 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 firstname.lastname@example.org by e-mail.
A timely Response was received and determined to be complete on February 8, 2008.
A timely Additional Submission was received from Complainant on February 12, 2008 in accordance with Supplemental Rule 7.
On February 18, 2008, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. O’Connor as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant contends that it owns the following trademarks:
UK Trade Mark Nos. 2,319,425 dated 24 December 2002: word mark for DATING DIRECT and variations class 45 – online dating services and 2232175 dated 11 May 2000: series of device / word marks for DATINGDIRECT.COM class 42 – dating and online dating services;
Common law rights in DATING DIRECT and DATINGDIRECT.COM.
Complainant contends that it offers a respectable international online dating agency service for singles seeking serious friendships and relationships.
Complainant contends that it has traded (initially via a partnership) under the names DATING DIRECT and DATINGDIRECT.COM since launching a website at <datingdirect.com> in 1999. For further information, the Complainant refers to its Web site at <datingdirect.com>.
Complainant submits copies of its UK Trade Marks.
Complainant submits extracts from its annual accounts from 2000 to 2006 showing total turnover of approximately £37 million (approximately $73 million) over that period.
Complainant submits a letter from the its auditor showing that Dating Direct spent approximately £14.2 million (approximately $27 million) on marketing during the period 1999 – 2005. By way of illustration, Complainant submits a summary of its marketing activity and spend via the Mediacom advertising agency over the period 2000 – 2003.
Complainant contends that its marketing expenditure has included offline promotions such as:
i. advertising in national magazines and newspapers as well as specialist magazines such as fitness clubs;
ii. TV (submitting samples / list of campaigns from 2000 to 2002);
iii. national and local radio advertising;
iv. poster and leaflet campaigns in health clubs;
v. outdoor advertising (submitting samples and listings at).
Complainant contends that it is commonly referred to as “Dating Direct”, as well as “DatingDirect.com” – submitting as example press cuttings. Complainant contends that, as is clear from the advertising examples above, where Dating Direct uses the name “DatingDirect.com” (to reinforce the location of its website), the words “Dating” and “Direct” are invariably capitalised and in a larger and more prominent font than “.com”.
Complainant contends that it has devoted a significant amount of effort and revenue to obtaining high listings on Internet search engines and therefore has a high profile on the Internet. Complainant submits as an example a google.com search against ‘Dating’ which shows that Complainant’s website is the top sponsored link and top search result.
Complainant contends that it has generated extensive press coverage, referring again to its submitted sample press cuttings.
Complainant contends that the following are the figures for its total membership (i.e. persons who registered with Complainant and created a profile) as of the dates given:
31 December 1999
31 December 2000
31 December 2001
31 December 2002
31 December 2003
8 March 2004
11 October 2005
19 June 2007
submits Comscore annualized survey results, showing Complainant as having the
highest unique audience for all dating sites in the
Complainant contends that Respondent registered the domain name at issue on 24 August 2007, referring to a submitted WHOIS printout.
Complainant contends that as of 4 October 2007 (submitting a web printout and proof of redirect), the domain name at issue resolved to a website <fling.com> which offers adult relationship services.
Complainant contends that its solicitor sent a submitted cease and desist communication by email on 10 October 2007 to which no response was received. Complainant contends that at some point following the Complainant’s communication of 10 October 2007, Respondent removed the website using the domain name at issue. Complainant submits a screenshot showing the site unavailable as of 18 October 2007.
Complainant contends that its solicitor sent a submitted further communication by email on 1 November 2007, requiring the transfer of the domain name in addition to removal of the site, to which no response was received. On 28 November 2007, Complainant contends that its Complainant’s solicitor sent a submitted further chasing letter to the physical address of Respondent, to which no response was received.
Complainant relies on its registered trademarks. Complainant also relies on common law rights. Complainant contends that by virtue of its extensive trading and marketing activities outlined above, Complainant has acquired substantial reputation and goodwill in the names DATING DIRECT and DATINGDIRECT.COM such that they are recognised by the public as distinctive of the Complainant’s online dating services business.
Complainant contends that its rights in the Trademarks have been accepted in twenty (successful) UDRP cases that are listed in an exhibit to the Complaint.
Complainant contends that the domain name at issue wholly incorporates the Trademarks and differs only by addition of the generic word “your”. Complainant contends that this term fails to dispel the connection between the domain name at issue and the Trademarks because the Trademarks remain the dominant feature of the domain name at issue. Complainant also cites the numerous cases undertaken by it mentioned above where a descriptive word added to the Trademarks did not diminish confusing similarity.
No Legitimate Rights or Interests
Complainant asserts that, for the reasons stated below, it has made a prima facie case that the Respondent should be considered as having no rights or legitimate interests in the Domain and that the burden now shifts to Respondent.
Dealing with Policy ¶ 4(c)(i), Complainant contends that it has no association with Respondent and has never authorised or licensed Respondent to use the Trademarks.
Complainant contends that Respondent has clearly used the domain name at issue and the Trademarks to attract, confuse and profit from Internet users seeking Complainant. Reference by Complainant is made to its submissions in relation to bad faith below. Complainant contends that such use of the Domain could not be said to be “bona fide”.
Dealing with Policy ¶ 4(c)(ii), Complainant contends that here is no evidence that Respondent has been commonly known by the name comprised in the domain name at issue.
Dealing with Policy ¶ 4(c)(iii), Complainant contends that it is clear that Respondent was out for commercial gain. Complainant references its submissions below in relation to ¶ 4(b)(iv) of the Policy.
Bad Faith Registration and Use
Complainant relies on Policy ¶ 4(b)(iii).
Complainant contends that Respondent registered the domain name at issue for the purpose of unfairly disrupting the business of Complainant by diverting business intended for Complainant. Complainant contends that Respondent was a competitor of Complainant in that it made services available at the Web site using the domain name at issue that were related to those of Complainant. Complainant contends, that as explained below, Respondent was clearly aware of Complainant and its business when it registered the domain name at issue.
Complainant relies on Policy ¶ 4(b)(iv).
Complainant contends that the website using the domain name at issue is essentially a scheme adopted by Respondent to confuse, attract and profit from internet users who are searching for Complainant’s business in search engines, web browsers and otherwise on the internet.
Complainant contends that Respondent has not denied this.
Complainant contends that it is clear from the following that Respondent had Complainant and its business in mind when registering and using the domain name at issue:
Respondent has not denied this assertion by Complainant in correspondence;
Complainant is well known as a major international player in online
dating. As mentioned above, as of October 2005 Complainant has some 400,000
members in the
Complainant contends that use of the domain name at issue, which includes the Trademarks, is intended by Respondent to create a likelihood of confusion in the minds of the public as to an association between Respondent and Complainant.
Complainant contends that likelihood of confusion is not diminished by the possibility that at some point users arriving at Respondent’s site might realize that the site is not connected with Complainant. Policy ¶ 4(b)(iv) of the Policy is concerned with the intentional attracting of Internet users. Here, Complainant contends that Respondent used the domain name in dispute to create “initial interest confusion” on the part of Internet users seeking Complainant and in order to profit from at least some of that traffic.
Complainant contends that, at some point after receiving Complainant’s cease and desist communication, Respondent chose to take down the website using the domain name at issue, referring to an exhibit to the Complaint. Complainant submits that this is an admission by Respondent that its previous use was illicit.
Complainant contends that it is obvious that Respondent was intent upon commercial gain as it provides or provided commercial services at the website using the domain name at issue, referring to an exhibit to the Complaint. Complainant contends that it is evident that at least one of Respondent’s purposes was to attract and profit from Internet users seeking Complainant’s website.
Complainant refers to a number of cases from the list of successful UDRP cases mentioned above where similar behaviour by other respondents (adult dating / escort services) was held to constitute bad faith.
Complainant also relies on the fact that Respondent has not responded to, let alone denied, the assertions of bad faith in the pre-action communications by Complainant. Complainant contends that it is reasonable to assume that if Respondent did have legitimate purposes in registering / using the domain name at issue it would have said so.
Respondent objects to the arbitration on the grounds that Respondent has never agreed to arbitration in any agreement and that Respondent is wrongly named and included in this dispute.
Respondent contends that this is a case of identify theft or mistaken identity. In support of this proposition, Respondent submits:
Respondent is not the Edward Hyde who owns or ever owned any domain name;
Respondent suspects that Complainant has either served the wrong Edwin Hyde or that some person has used Respondent’s identity information to register one or more domain names;
The street address of Respondent in the Complaint is Respondent’s, but the e-mail address is not that of Respondent.
The telephone number of Respondent in the Complaint is not that of Respondent.
Respondent responds to the Complaint, without waiving its objection to arbitration.
Respondent repeats its contention of identify theft or mistaken identity.
Respondent denies the contentions in the Complaint relating to Respondent’s registration and use of the domain name at issue, and to the cease and desist communications from Complainant’s solicitor.
Respondent contends that it has insufficient information to affirm or deny the contentions in the Complaint as to the jurisdictional basis for the proceeding, as to the identity of Complainant, as to the disputed domain name and the Trademarks, as to Complainant and its contentions relating to confusing similarity.
Respondent contends its name and street address in the Complaint are correct, but denies that the e-mail address and telephone number of Respondent in the Complaint are or ever were e-mail addresses and telephone numbers of Respondent.
Respondent denies all of the contentions in the Complaint relating to lack of rights or legitimate interest and bad faith registration and use, except that Respondent agrees that Respondent has no rights and never had any rights in the domain name at issue.
Respondent contends that it has no interest in the domain name at issue and has no response to the remedy sought in the Complaint. Respondent contends that it cannot answer for whoever actually registered the domain name at issue.
Respondent contends that it seeks only to be left out of this proceeding, ab initio, or dismissed, or whatever other procedure is appropriate to remove Respondent from this proceeding.
C. Additional Submissions
Complainant contends that it does not have any reason to doubt that Respondent is a victim of identity theft. What is beyond doubt is that Respondent is the registered owner of the domain name in dispute, that it is his address that appears on the WHOIS printout, and that he is the correct Respondent to the proceedings.
Complainant asserts that notwithstanding the fact that Respondent may have been the victim of identity theft, this is no bar to the Panel finding that whoever registered the disputed domain name did so in bad faith. Indeed such activity supports a finding of bad faith.
Complainant contends that what is required is that Complainant establishes that the domain name in dispute was registered and is being used by someone in bad faith.
The issue of how to handle a proceeding under the Policy in the situation of a contended identify theft of a respondent has been the subject of prior decisions.
Bullion Reserve Corp. v. no, FA 155893 (Nat. Arb. Forum June 12, 2003), Wells Fargo & Company v. John Doe as
Holder of Domain Name <wellsfarossl.com>, FA 453727 (Nat. Arb.
Forum May 19, 2005), DHL Operations B.V. &
Deutsche Post AG v. McCarthy, D2007-1431 (WIPO Nov. 7, 2007) and Accor
This Panel believes that the approach of the latter cases is preferable and in accordance with Policy ¶ 4(a), which requires the Complainant to prove the three elements of the Policy (as discussed below). To find estoppel or implied consent on the basis of the disclaimed interest of Respondent, due to his or her identity theft, does not justify disregard of the required ¶ 4(a) analysis. The Panel particularly notes that it does not have the resources to determine if identity theft has actually occurred.
Another point addressed by the prior panels is whether the name of Respondent should be redacted. In the National Westminster Bank plc cases, supra, the panels redacted the name of the respondent “in an attempt to protect the respondents claiming to be victims of identity theft from any further injury.” These cases relied on the Wells Fargo & Company case, supra. That reliance is misplaced – the complainant in the latter case requested that the respondent’s name be redacted. See Wells Fargo & Co. v. John Doe as Holder of Domain Name <wellsfargossl.com>, supra (“Complainant requests that any reference to Respondent … be omitted from all publicly available material in an effort to protect the victim from further injury as a result of the fraud.”).
This Panel believes that the name of Respondent should be listed in the decision. As previously mentioned, the Panel does not have the resources to determine if identity theft has actually occurred. Further, neither Complainant nor Respondent have requested that the name of Respondent be redacted.
The prior panels that proceeded to a ¶ 4(a) analysis did not address the jurisdictional issue. In this case, Respondent has directly challenged the jurisdiction of the Panel.
This Panel believes that it has jurisdiction to hear this case. First, there is personal jurisdiction. The Complaint was transmitted by mail to Respondent’s address. Respondent acknowledged receipt of the Complaint and filed a timely Response. Second, there is subject matter jurisdiction. Someone has registered the domain name in dispute, and undertaken the acts that led to the dispute. If a jurisdictional challenge based on identity theft were to be upheld, a person could easily circumvent the Policy by registering a domain name using the identity of another.
The certification required by ¶ 3(b)(xiv) of the Rules is the minimum to demonstrate the admissibility of the factual contentions made by a complainant, and the certification required by ¶ 5(b)(viii) of the Rules is the minimum to demonstrate the admissibility of the factual contentions made by a respondent. Without certification, a Panel may choose not to consider any factual statements, even in the case of pro se parties.
In this case, Complainant has provided the required ¶ 3(b)(xiv) certification, and additional documents and affidavits. The Panel finds that all of the factual contentions made by Complainant are admissible and will be given weight as appropriate.
Respondent has not provided the required ¶ 5(b)(viii) certification. Respondent has, however, declared that the facts supporting the Response are accurate and correct. Given that Respondent is a pro se party, the Panel finds that all of the factual contentions made by Respondent are admissible and will be given weight as appropriate.
¶ 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.”
¶ 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:
(i) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
The Panel finds that Complainant has established rights in the Trademarks, by reason of its registration for UK No. 2,319,425 for DATING DIRECT and its extensive showing of advertising, use, and recognition for DATING DIRECT and DATINGDIRECT.COM. 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 Gen. Growth Props., Inc. v. Baker Ballantine, D2005-0919 (WIPO Nov. 14, 2005):
It is well established that unregistered trademark rights may be
asserted to justify a complaint under the Policy. The WIPO Overview of WIPO Panel Views on Selected UDRP
Questions (the “WIPO Overview”)
indicates at paragraph 1.6 that in
order to assert such rights successfully the complainant must show that the
name has become a distinctive identifier associated with the complainant or its
goods or services. The Panel has no
hesitation in finding that in relation to the
The Panel finds that the domain name in dispute is confusingly similar to the Trademarks, as neither the addition of the generic term “your” nor the inclusion of the generic top-level domain “.com” sufficiently distinguish the disputed domain name from the mark. 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 the complainant combined with a generic word or term); see also Am. Online Inc. v. Neticq.com Ltd., D2000-1606 (WIPO Feb. 12, 2001) (finding that the addition of the generic word “Net” to the complainant’s ICQ mark, makes the <neticq.com> domain name confusingly similar to the complainant’s mark); see also Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been established that the addition of a generic top-level domain is irrelevant when considering whether a domain name is identical or confusingly similar under the Policy.”).
Respondent makes no contentions as to the rights of Complainant and as to confusing similarity.
The Panel finds that Complainant has met its burden of proof under ¶ 4(a)(i) of the Policy.
Once Complainant makes a case in support of its allegations, the burden of production shifts to Respondent to put forward some evidence to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”).
¶ 4(c) of the Policy lists three circumstances in particular, without limitation, that demonstrate rights or legitimate interest of a domain name registrant to a domain name, for the purposes of ¶ 4(a)(ii) of the Policy:
(i) before any notice of the dispute, the Respondent’s use of, or demonstrable preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods and services; or
(ii) the Respondent, as an individual, business, or other organization, has been commonly known by the domain name, even if no trademark or service mark rights have been acquired; or
(iii) the Respondent is making a legitimate non‑commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant contends that the domain name in dispute previously redirected Internet users to another website. The Panel’s review of the documents submitted with the Complaint show that the domain name in dispute was, prior to notice from Complainant’s solicitor, used to redirect users to a website employing the domain name <fling.com>. At this website, the user was invited to register for free and then accept “an introductory trial offer” to post a personal ad. Many of the personal ads posted were of a pornographic nature. The stated purpose of the business was to “[m]eet swingers, curious adults, sexual deviants, or the guy or girl next door who is looking for some hot sexy action.” Without question, this activity is commercial, and directly competitive with and disparaging to the business of Complainant.
The Panel finds that such use does not indicate that Respondent is using the disputed domain name in connection with either a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's demonstrated intent to divert Internet users seeking Complainant's website to a website of Respondent and for Respondent's benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).
Respondent’s denial of these contentions is not sufficient to overcome the case established by Complainant.
The Panel finds that Complainant has met its burden of proof under ¶ 4(a)(ii) of the Policy.
The circumstances of ¶ 4(b) of the Policy are illustrative but not exhaustive of the circumstances under which bad faith registration and use under ¶ 4(a)(iii) of the Policy can be established.
¶ 4(b) of the Policy reads:
[T]he following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.
Proof of ¶ 4(a)(iii) generally requires more than assertions of bad faith. See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish Policy ¶ 4(a)(iii)); see also Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the panel may conclude that the respondent acted in bad faith). Lack of rights or legitimate interest under Policy ¶ 4(a)(ii) does not automatically translate into a finding of bad faith under Policy ¶ 4(a)(iii).
The Panel does not accept Complainant’s contentions as to ¶ 4(b)(iii). Intent of Respondent to disrupt Complainant’s business has not been established by Complainant and cannot be inferred from Respondent’s website.
The contentions of Complainant as
to ¶ 4(b)(iv) are, however, persuasive. Likelihood of confusion between Respondent’s
website and the Trademarks is apparent, as is the use of the domain name in
dispute for commercial gain. See State Fair of
Respondent’s denial of these contentions is not sufficient to overcome the case established by Complainant.
The Panel finds that Complainant has met its burden of proof under ¶ 4(a)(iii) of the Policy.
Complainant having established all three elements required under the Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <yourdatingdirect.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. O’Connor, Panelist
Dated: March 3, 2008
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Complainant submits screenshots from its
database, showing as at October 2005 Complainant has some 400,000 members in
 The Panel will refer to DATING DIRECT and DATINGDIRECT.COM as the “Trademarks.”
 In the Accor case, as here, the respondent stated that she did not intend to submit to the jurisdiction of the service provider (WIPO) and did not intend to participate in the UDRP proceeding. The panel did not respond to this submission.
 Complainant has not shown that UK Trade Mark No. 2,232,175 has proceeded to registration.