DatingDirect.com Limited v. Private Registrations Aktien Gesellschaft c/o Domain Admin
Claim Number: FA0810001227747
Complainant is DatingDirect.com Limited (“Complainant”), represented by Adam
Taylor, of Adlex Solicitors,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <searchdatingdirect.com>, registered with Answerable.Com (I) Pvt. Ltd.
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 electronically October 3, 2008; the National Arbitration Forum received a hard copy of the Complaint October 3, 2008.
On October
8, 2008, Answerable.Com (I) Pvt. Ltd.
confirmed by e-mail to the National Arbitration Forum that the <searchdatingdirect.com>
domain name is registered with Answerable.Com
(I) Pvt. Ltd. and that Respondent is the current registrant of the
name. Answerable.Com
(I) Pvt. Ltd. verified that Respondent is bound by the Answerable.Com (I) Pvt. Ltd. registration
agreement and thereby has agreed to resolve domain-name disputes brought by
third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution
Policy (the "Policy").
On October
14, 2008, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
November 3, 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 postmaster@searchdatingdirect.com
by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 10, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 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. The domain name that Respondent registered, <searchdatingdirect.com>, is confusingly similar to Complainant’s DATING DIRECT mark.
2. Respondent has no rights to or legitimate interests in the <searchdatingdirect.com> domain name.
3. Respondent registered and used the <searchdatingdirect.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, DatingDirect.com
Limited, offers an international online dating service. Complainant has conducted business under the
DATING DIRECT and DATINGDIRECT.COM marks since 1999 when it launched its
website <datingdirect.com>.
Complainant holds a registration of its DATING DIRECT mark with the
United Kingdom Patent Office (Reg. No. 2319425 issued June 16, 2006).
Respondent registered the <searchdatingdirect.com> domain name March 28, 2007. The <searchdatingdirect.com> domain name resolves to a website that displays hyperlinks to third-party websites, some which are in direct competition with Complainant.
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."
Given 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. 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 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.
The Panel finds that Complainant established rights in the DATING DIRECT mark under Policy ¶ 4(a)(i) because it holds a registration of the mark with United Kingdom Patent Office. See 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); see also 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.").
Respondent’s disputed domain name, <searchdatingdirect.com>, contains Complainant’s
entire mark and merely adds the generic term “search” and the “.com” suffix. The Panel finds that adding the generic term and
the suffix to Complainant’s mark do not distinguish the disputed domain name
from Complainant’s mark for the purposes of confusing similarity under Policy ¶
4(a)(i). See Oki Data Ams., Inc. v. ASD, Inc., D2001-0903
(WIPO Nov. 6, 2001) (“[T]he fact that a domain name wholly incorporates a
Complainant’s registered mark is sufficient to establish identity [sic] or
confusing similarity for purposes of the Policy despite the addition of other
words to such marks”); see also Am. Online, Inc. v. Anytime Online Traffic Sch.,
FA 146930 (Nat. Arb. Forum Apr. 11, 2003) (finding that the respondent’s domain
names, which incorporated the
complainant’s entire mark and merely added the descriptive terms “traffic
school,” “defensive driving,” and “driver improvement” did not add any
distinctive features capable of overcoming a claim of confusing similarity); 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).
The Panel finds that
Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Complainant must make a prima facie showing that Respondent lacks rights and legitimate interests in the <searchdatingdirect.com> domain name. Once Complainant does so, the burden shifts to Respondent and Respondent must establish that it has rights or legitimate interests in the disputed domain name. The Panel finds that Complainant made its prima facie showing under Policy ¶ 4(a)(ii). See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”).
Where Respondent does not file a Response, the Panel looks
to the submission to determine if the record suggests that Respondent has
possible rights in the domain name before making that determination. Respondent
is using this confusingly similar domain name by having it resolve to a website
that contains hyperlinks to third-party websites, some of which are in direct
competition with Complainant.
Accordingly, the Panel infers that Respondent receives click-through
fees for these hyperlinks. The Panel
finds that this diversion of Internet users to Complainant’s competitors’
websites for a fee is not a bona fide
offering of goods or services under Policy ¶ 4(c)(i)
and is not 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).”); see also Seiko Kabushiki Kaisha v. CS into Tech,
FA 198795 (Nat. Arb. Forum Dec. 6, 2003) (“Diverting customers, who are looking
for products relating to the famous SEIKO mark, to a website unrelated to the
mark is not a bona fide offering of goods or services under Policy ¶ 4(c)(i),
nor does it represent a noncommercial or fair use under Policy ¶ 4(c)(iii).”).
Furthermore, Respondent’s WHOIS information does not indicate that it is commonly known by the <searchdatingdirect.com> domain name and Respondent has not provided any evidence to suggest otherwise. The Panel finds that Respondent is not commonly known by the <searchdatingdirect.com> domain name pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); 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").
The Panel finds that Complainant satisfied the elements of
ICANN Policy ¶ 4(a)(ii).
Respondent’s
confusingly similar <searchdatingdirect.com>
domain name
and its corresponding website divert Internet users through the use of the
aforementioned hyperlinks to Complainant’s competitors. The Panel finds this diversion is calculated
to and does disrupt Complainant’s business and is evidence of bad faith
registration and use under Policy ¶ 4(b)(iii).
See Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent
registered a domain name confusingly similar to Complainant's mark to divert
Internet users to a competitor's website. It is a reasonable inference that
Respondent's purpose of registration and use was to either disrupt or create
confusion for Complainant's business in bad faith pursuant to Policy ¶¶
4(b)(iii) [and] (iv).”); see also Travant Solutions, Inc. v. Cole,
FA 203177 (Nat. Arb. Forum Dec. 6, 2003) (“Respondent registered and used the
domain name in bad faith, pursuant to Policy ¶ 4(b)(iii), because it is
operating on behalf of a competitor of Complainant . . .”).
In addition, Respondent, through
the use of the above-described hyperlinks, receives fees for diverting Internet
users to the websites of Complainant’s competitors. Accordingly, the Panel finds this commercial
benefit from the use of the confusingly similar <searchdatingdirect.com> domain name is evidence of bad faith registration and use under Policy ¶
4(b)(iv).
The Panel finds that Complainant satisfied the elements of ICANN 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 <searchdatingdirect.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: November 24, 2008.
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