DatingDirect.com Limited v. Tabish Umar Siddiqui
Claim Number: FA0801001139945
Complainant is DatingDirect.com Limited (“Complainant”), represented by Adam
Taylor, of Adlex Solicitors,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <directonlinedating.com>, registered with Direct Information Pvt Ltd d/b/a Publicdomainregistry.
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.
M. Kelly Tillery, Esquire as Panelist.
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, Direct Information Pvt Ltd d/b/a Publicdomainregistry confirmed by e-mail to the National Arbitration Forum that the <directonlinedating.com> domain name is registered with Direct Information Pvt Ltd d/b/a Publicdomainregistry and that the Respondent is the current registrant of the name. Direct Information Pvt Ltd d/b/a Publicdomainregistry has verified that Respondent is bound by the Direct Information Pvt Ltd d/b/a Publicdomainregistry 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 January 31, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of February 20, 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 Response was received on February 20, 2008. The Response was deficient under ICANN Rule 5 as the hard copy of the Response was not received by the Response deadline.
A timely Additional Submission of Complainant was received February 25, 2008.
On February 26, 2008, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed M. Kelly Tillery, Esquire as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant contends that:
1. it owns the registered trade marks: UK trade marks 2319425 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;
2. it offers a respectable international online dating agency service for singles seeking serious friendships and relationships;
3. it has traded under the names DATING DIRECT and DATINGDIRECT.COM since launching a website at <datingdirect.com> in 1999;
4. its annual revenue from 2000 to 2006 was approximately £37 million;
5. it spent approximately £14.2 million on marketing during the period 1999 – 2005;
6. its marketing expenditures have included offline promotions such as: advertising in national magazines and newspapers, as well as specialist magazines such as fitness clubs; TV; national and local radio advertising; poster and leaflet campaigns in health clubs; and outdoor advertising;
7. it is commonly referred to as “Dating Direct,” as well as “DatingDirect.com”;
8. its total membership (i.e., persons who registered with the Complainant and created a profile) as of June 19, 2007 is 4,876,345.
9. it has the highest audience for all dating
sites in the
10. it is also often referred to as “Direct Dating” / “Directdating” / “DirectDating.com”;
11. it uses the domain <directdating.com> (registered 1999) as well as a range of other “directdating” and “direct-dating” domain names;
12. the Domain Name in question was registered on July 22, 2005;
13. as of 22 December 2005, the website at the Domain <directonlinedating.com> consisted of a dating site branded “mateforall.com”;
14. as of 31 January 2006 the branding of the website at <directonlinedating.com> had changed from “mateforall” to “DIRECT ONLINE DATING”;
15. its solicitor sent a ‘cease and desist’ communication regarding the Domain Name by e-mail on 5 January 2006 to which Respondent replied on 6 January 2006 that he would be using the domain for his own dating site;
16. Respondent offered to sell the domain to Complainant on 13 January, 2006;
17. on January 18, 2006, Complainant offered £100 for registration/transfer expenses for both domain names. Respondent rejected that offer in a response of 25 January 2006. Respondent also stated that he had been in the dating business for more than six years and said that the Complainant should come up with a “good offer”;
18. as of 27 April 2006, the site at <directonlinedating.com> had been redesigned;
19. its registered trade mark and common law rights have been accepted in twenty (successful) UDRP cases;
20. the Domain simply inverts the Complainant’s trade mark and interposes the generic word “online”;
21. inverting the terms “DATING” and “DIRECT” creates the same commercial impression and meaning;
22. the generic term “ONLINE” fails to dispel the connection between the Domains and the trade mark;
23. it has no association with Respondent and has never authorized or licensed the Respondent to use its trade marks;
24. Respondent has not been commonly known by the name comprised in the Domain.
Respondent contends that:
1. the Domain Name is merely a combination of three general English words;
2. it is using database and other info of <mate4all.com>, and considers <directonlinedating.com> as a “parking” domain only;
3. <mate4all.com> is its primary website which can be called a “Mother” of many dating sites including <datingcommune.com>, <directonlinedating.com> and <datingindiaonline.com>;
4. <directonlinedating.com> is a part of its dating network;
is a Dating Matrimonial business in
6. it is an Indian company, but anybody from anywhere can register on its site.
C. Additional Submissions
Complainant further contends that:
1. it is prejudiced, because the chaotic nature of Respondent’s submissions provides an unclear picture of exactly what Respondent is saying;
2. it makes no claim to trade mark rights in the term “DATING” alone or the term “DIRECT” alone, only the combination “DATING DIRECT”;
3. while <onlinedatingdirect.com> has not been used for a website, it contends that the registration on the same day as the Domain Name in question is compelling evidence of the Respondent’s lack of bona fide.
Complainant has not met its burden to prove by a preponderance of the relevant, admissible evidence that Respondent’s domain name is identical or confusingly similar to a trademark in which Complainant has rights.
The Panel need not address the two additional requirements.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.”
Paragraph 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:
(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the 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.
Although Respondent’s electronic submission was received in a timely manner, Respondent failed to submit a timely hard copy as required by ICANN Rule 5. Therefore, the Panel has sole discretion as to the amount of weight to give the Response. See Telstra Corp. v. Chu, D2000-0423 (WIPO June 21, 2000) (finding that any weight to be given to the lateness of the response is solely in the discretion of the panelist). The Panel shall accept and consider the Response. See Bd. of Governors of the Univ. of Alberta v. Katz, D2000-0378 (WIPO June 22, 2000) (finding that a panel may consider a response which was one day late, and received before a panelist was appointed and any consideration made); see also Gaiam, Inc. v. Nielsen, FA 112469 (Nat. Arb. Forum July 2, 2002) (“In the interest of having claims decided on the merits and not by default and because Complainant has not been prejudiced in the presentation of its case by the late submission, Respondent’s opposition documents are accepted as timely.”).
asserts rights in its DATING DIRECT mark by virtue of its Trademark Registration
with the United Kingdom Intellectual Property Office (“UKIPO”) (Reg. No.
2,319,425 issued June 16, 2006, filed December 24, 2002). The Panel finds that this Trademark Registration
adequately establishes rights in the mark for the purposes of Policy ¶
4(a)(i). See Royal Bank of Scot. Group plc, Direct Line Ins. plc,
& Privilege Ins. Co. Ltd. v. Demand Domains, FA 714952 (Nat. Arb.
Forum Aug. 2, 2006) (registration of the PRIVILEGE mark with the
The Panel finds that Complainant’s rights in the DATING DIRECT mark date to the Application Date of the Trademark Registration, as the Application was subsequently approved by the UKIPO. This is relevant as the <directonlinedating.com> Domain Name was registered on July 22, 2005, a date between the Filing Date of the Application and its subsequent Registration. See Thompson v. Zimmer, FA 190625 (Nat. Arb. Forum Oct. 27, 2003) (“As Complainant’s trademark application was subsequently approved by the U.S. Patent and Trademark Office, the relevant date for showing ‘rights’ in the mark for the purposes of Policy ¶ 4(a)(i) dates back to Complainant’s filing date.”); see also Planetary Soc’y v. Rosillo, D2001-1228 (WIPO Feb. 12, 2002) (holding that the effective date of Complainant’s trademark rights date back to the application’s filing date).
Thus, Complainant has proven that it has rights in a Trademark established prior to the Registration of the Domain Name at issue. The question now, however, is whether the Domain Name is identical to or confusingly similar to that Mark.
The Panel holds that the <directonlinedating.com> Domain Name is not identical or confusingly similar to Complainant’s DATING DIRECT Mark. The Domain Name is significantly different in that (1) it inverts the words in the mark, and (2) adds a third term between the two words. These variations create a domain name which is not confusingly similar to Complainant’s Mark. Policy ¶ 4(a)(i). See Tire Discounters, Inc. v. TireDiscounter.com, FA 679485 (Nat. Arb. Forum June 14, 2006) (“Because the mark is merely descriptive, small differences matter. In the Internet context, consumers are aware that domain names for different websites are often quite similar and that small differences matter.”); see also Webvan Group, Inc. v. Atwood, D2000-1512 (WIPO Feb. 20, 2001) (“[W]hen a mark is a relatively weak non-distinctive term, courts have found that the scope of protection may be limited to the identical term and that the addition of other descriptive matter may avoid confusion”).
Complainant does not claim exclusive rights to use the words “direct” alone or “dating” alone or even the two in combination, except as the Mark “Dating Direct”. Complainant claims to be also known as “direct dating”, but makes no claim to that as a Trademark. An online dating service, of which there are hundreds, if not thousands, using a domain name or mark which incorporates the words “online dating” is hardly unusual or surprising. The words “online dating” are clearly generic as that is precisely what the service is and does. The question then becomes does the addition of the word “direct” before the generic combination “online dating” make a difference.
In this context, it would seem that the word “direct” is meant to convey “effected or existing without intermediation or intervening agency”, Oxford English Dictionary, 2nd Ed., Vol. II, p. 702 (Clanenton Press, Oxford, 1989). One of the central and revolutionary features of the Internet is its facility for enabling “direct” communication between persons otherwise unable or unlikely to so connect, absent some third-party “intervening agency”.[i] Thus, the use of the word “direct” in a domain name or trademark as an adjective to describe/modify a service is very common, logical and descriptive, if not redundant. There are thousands of domain names in use which begin with the word “direct”.
The use of these three common English words together, in this order, simply cannot reasonably be said to be confusingly similar to Complainant’s Mark which only uses two of the same words, in different order and not separated by a third, five (5) letter word.
The protection for a Mark like Complainant’s two common, descriptive words, is and should be narrow. However, as a valid, registered Mark, it should be and is protected where there truly is confusingly similarity. See, e.g., DatingDirect.com v. Tabish Tabish, FA 1139910 (Nat. Arb. Forum Mar. 6, 2008) (transferring <onlinedatingdirect.com>).
Since the Panel concludes that the disputed Domain Name is sufficiently distinct from Complainant’s Mark under Policy ¶ 4(a)(i), the Panel may and does decline to analyze the other two elements of the Policy. See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary); see also 01059 GmbH v. VARTEX Media Mktg. GmbH/Stefan Heisig, D2004-0541 (WIPO Sept. 10, 2004) (holding that if the complainant does not satisfy Policy ¶ 4(a)(i) by showing it has rights in a mark, the panel need not consider whether the respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) or whether it registered and is using the disputed domain name in bad faith under Policy ¶ 4(a)(iii)).
The Panel need not address this element.
The Panel need not address this element.
Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
M. Kelly Tillery,
Dated: March 11, 2008
[i] In reality, however, there is a third-party operating here – the “matchmaker” dating site.