DatingDirect.com Limited v. Andy Woods
Claim Number: FA0807001214945
Complainant is DatingDirect.com Limited (“Complainant”), represented by Adam
Taylor, of Adlex Solicitors,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <swingersdatingdirect.com>, registered with Advantage Interactive Ltd.
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.
Judge Harold Kalina (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 11, 2008; the National Arbitration Forum received a hard copy of the Complaint on July 11, 2008.
On July 16, 2008, Advantage Interactive Ltd confirmed by e-mail to the National Arbitration Forum that the <swingersdatingdirect.com> domain name is registered with Advantage Interactive Ltd and that Respondent is the current registrant of the name. Advantage Interactive Ltd has verified that Respondent is bound by the Advantage Interactive Ltd 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 July 17, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 6, 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 email@example.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 12, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Harold Kalina (Ret.) 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 <swingersdatingdirect.com> domain name is confusingly similar to Complainant’s DATING DIRECT mark.
2. Respondent does not have any rights or legitimate interests in the <swingersdatingdirect.com> domain name.
3. Respondent registered and used the <swingersdatingdirect.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, DatingDirect.com Ltd., is in the business of providing an international online dating agency service for singles. It has registered the DATING DIRECT mark with the United Kingdom Intellectual Property Office (“UKIPO”) for dating services and dating agency services (Reg. No. 2,319,425 issued June 16, 2006).
domain name was registered on January 29, 2008 and currently resolves to a
website providing online adult relationship services. After February 4, 2008, when Complainant sent
a cease-and-desist letter to Respondent, Respondent replied offering to sell
the disputed domain name. Complainant
stated that it offered to buy the disputed domain name for Respondent’s
reasonable out-of-pocket costs.
Respondent replied back on March 10, 2008 asking for
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 has sufficiently established rights in the DATING DIRECT mark through registration with the UKIPO pursuant to Policy ¶ 4(a)(i). See Morgan Stanley v. Fitz-James (CT2341-RSC) Cititrust Group Ltd., FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (“The Panel finds from a preponderance of the evidence that Complainant has registered its mark with national trademark authorities. The Panel has determined that such registrations present a prima facie case of Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i).”); see also The Royal Bank of Scot. Group plc & Nat. Westminster Bank plc v. Soloviov, FA 787983 (Nat. Arb. Forum Nov. 3, 2006) (“Complainant’s trademark registrations for the NATWEST mark with the [United Kingdom Intellectual Property Office] . . . establish Complainant’s rights in the mark pursuant to Policy ¶4(a)(i).”).
The disputed domain name contains Complainant’s DATING DIRECT mark in its entirety followed by the generic top-level domain (“gTLD”) “.com,” and preceded by the word “swingers,” which is an ordinary descriptive word. It is generally accepted that the inclusions of a gTLD and an ordinary descriptive word do nothing to negate a finding of confusing similarity. Accordingly, the Panel finds that the <swingersdatingdirect.com> domain name is confusingly similar to Complainant’s DATING DIRECT mark pursuant to Policy ¶ 4(a)(i). See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to the complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(i).
It is Complainant’s burden that it establishes a prima facie case against Respondent in order for these proceedings to be held. However, once this burden is met, the burden is shifted to Respondent to show that it does have rights or legitimate interests in the disputed domain name. The Panel finds that this preliminary threshold has been met and that it is now incumbent upon Respondent to come forward with evidence demonstrating its rights or legitimate interests in the disputed domain name. See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interest in the subject domain names.”); see also Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant under Policy ¶ 4(c), the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name).
Respondent failed to reply to the Complaint. As a consequence, the Panel may presume that Respondent lacks rights and legitimate interests in the <swingersdatingdirect.com> domain name. See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”). Nonetheless, in order to ensure the validity of Complainant’s Complaint, the Panel will proceed to examine the record in consideration of the elements listed under Policy ¶ 4(c). See Lush LTD v. Lush Environs, FA 96217 (Nat. Arb. Forum Jan. 13, 2001) (finding that even when the respondent does file a response, the complainant must allege facts, which if true, would establish that the respondent does not have any rights or legitimate interests in the disputed domain name).
Complainant asserts that is has never authorized or otherwise granted permission or license to Respondent to use its DATING DIRECT mark in any way. Additionally, the WHOIS information for the disputed domain name lists Respondent as “Andy Woods.” This and nothing else in the record indicates that Respondent is or ever was commonly known by the disputed domain name. Without any contrary information, the Panel finds that Respondent is not commonly known by the <swingersdatingdirect.com> domain name pursuant to Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
The <swingersdatingdirect.com> domain name resolves to a website offering commercial adult relationship services that compete with a part of the market in which Complainant’s mark is often used. The Panel may presume that this website competes with Complainant and to the benefit of Respondent. As a result, the Panel finds that Respondent’s use of the disputed domain name constitutes neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See eBay Inc. v. Hong, D2000-1633 (WIPO Jan. 18, 2001) (stating that the respondent’s use of the complainant’s entire mark in domain names makes it difficult to infer a legitimate use); see also Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”); see also Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that the respondent’s use of the disputed domain name to redirect Internet users to a financial services website, which competed with the complainant, was not a bona fide offering of goods or services).
Additionally, Respondent offered to sell the disputed domain
name for the final amount of
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(ii).
After initially receiving a cease-and-desist letter from
Complainant, Respondent offered to sell the disputed domain name for
The disputed domain name resolves to a commercial website purporting to offer services substantially similar and in competition with those legitimately offered under Complainant’s mark. The Panel determines that the disputed domain name not only incorporates Complainant’s mark, but likewise offers competing services. The Panel finds this competing and disruptive use to be further evidence of Respondent’s bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also Spark Networks PLC v. Houlihan, FA 653476 (Nat. Arb. Forum Apr. 18, 2006) (holding that the respondent’s registration of a domain name substantially similar to Complainant’s AMERICAN SINGLES mark in order to operate a competing online dating website supported a finding that respondent registered and used the domain name to disrupt the complainant’s business under Policy ¶ 4(b)(iii)).
Moreover, since Respondent has failed to reply to this Complaint, and Respondent’s utility of the disputed domain name is competitive, the Panel may presume that Respondent is commercially benefiting from the confusing similarity the disputed domain name maintains with Complainant’s mark. The Panel finds this to be additional evidence of Respondent bad faith registration and use of the <swingersdatingdirect.com> domain name pursuant to Policy ¶ 4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); 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)).
The Panel concludes that 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 <swingersdatingdirect.com> domain name be TRANSFERRED from Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated: August 21, 2008
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