DatingDirect.com Limited v.
Peter Steiner
Claim Number: FA0811001235089
PARTIES
Complainant is DatingDirect.com
Limited (“Complainant”), represented
by Adam Taylor, of Adlex Solicitors,
REGISTRAR AND DISPUTED DOMAIN NAME
The Domain Name at issue is <asiandatingdirect.com>,
registered with Godaddy.com, Inc.
PANEL
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.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the
National Arbitration Forum electronically on November
20, 2008; the National Arbitration Forum received a hard copy of the
Complaint on November 20, 2008.
On November
20, 2008, Godaddy.com, Inc.
confirmed by e-mail to the National Arbitration Forum that the <asiandatingdirect.com>
Domain Name is registered with Godaddy.com, Inc.
and that the Respondent is the current Registrant of the name. Godaddy.com,
Inc. has verified that Respondent is bound by the Godaddy.com, 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
25, 2008, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of December
15, 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@asiandatingdirect.com
by e-mail.
An electronic Response was received on December 12, 2008, however, the Forum deemed the
Response deficient pursuant to ICANN Rule 5 because it was not received in hard
copy prior to the Response deadline.
On December 17, 2008, Complainant filed an
Additional Submission with the Forum that was compliant with Supplemental Rule
7.
On December 16, 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.
RELIEF SOUGHT
Complainant requests that the Domain Name be
transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant contends that:
1. it
offers an international online dating agency service for singles seeking friendships and relationships;
2. it has traded under the names DATING DIRECT and
DATINGDIRECT.COM since launching a website at www.datingdirect.com in 1999;
3. it owns the following marks/mark
applications:
MARK
JURISDICTION REGISTRATION
DATE/NUMBER
Dating
Direct
14.07.2006
Class
45
DatingDirect.com
Class
47
Applied
for 11.05.2008
4. it has received from 2000 to 2006
approximately £37 million ($73 million) in income;
5. it spent approximately £19.3 million
($39 million) on marketing during the period 1999-2006;
6. it is commonly referred to as “DATING
DIRECT,” as well as “DATINGDIRECT.COM;”
7. it has devoted a significant amount of
effort and revenue to obtaining high listings on
internet search engines and has a high profile on the internet;
8. it has generated extensive press
coverage;
9. it’s membership has grown from 27,791 in 1999 to 4,876,345
in 2007;
10. it
has the highest unique audience for all dating sites in the
11. Respondent
registered the Domain Name in question on 17 September 2008 through Godaddy.com., Inc.;
12. as of 24 September 2008, there was a parking page available at
the Domain Name comprising a directory of affiliate links to dating websites
competing with Complainant;
13. its Solicitor sent a “cease and desist” communication to
Respondent by recorded delivery on 23 September 2008 and by email on 8 October
2008 to which no response was received;
14. its Registered Trademark and Common Law rights have been
accepted in twenty-eight (successful) UDRP cases;
15. the Domain Name is confusingly similar to Complainants’ DATING DIRECT trade mark, disregarding the Domain Name Suffix;
16. the Domain Name wholly incorporates its trade mark and differs only by addition of the generic word “Asian” which fails to dispel the connection between the Domain Name and the trade mark but enhances the connection because it denotes the Complainant’s dating services targeted towards Asian users.
17. it has made a prima facie case that Respondent should be considered as having no rights or legitimate interests in the Domain Name and that the burden now shifts to the Respondent;
18. it has no association with Respondent and
has never authorized or licensed the Respondent to use its trade marks;
19. Respondent has used the Domain Name and Complainant’s trade marks to attract, confuse and profit from internet users seeking Complainant;
20. Respondent has not been commonly known by the name comprised in the Domain Name;
21. the Domain Name is being
used for commercial gain;
22. Respondent registered the Domain Name for the purpose of unfairly disrupting the business of Complainant by diverting business intended for Complainant. Respondent is a competitor in that its website features links to other sites offering services similar to those of the Complainant;
23. Respondent was aware of Complainant and its business when it registered the Domain Name;
24. the website at the Domain Name is a scheme adopted by Respondent to confuse, attract and profit from internet users who are searching for the Complainant’s business in search engines, web browsers and otherwise on the internet, a fact not been denied by the Respondent;
25. Respondent had the Complainant and its business in mind when registering and using the Domain Name:
a. Respondent has not denied this assertion;
b. the website at the Domain includes links to Complainant’s own website; and
c. Respondent is also based
in the
26. the website is intent
upon commercial gain by means of affiliate / sponsored links and advertising;
27. Respondent has not responded to, let alone denied, the assertions of bad faith in the pre-action communications by Complainant;
28. Respondent’s
claimed rationale for acquiring his Domain Name portfolio (retirement
income) nor his ill-health can justify
registration and use of Domain Names in bad faith;
29. Respondent has produced no evidence in support of his claimed
intention of setting up a website for Asian singles.
30. “DATING DIRECT” has no ordinary generic or descriptive meaning
in the English language.
31. there is no logical reason to use that term other than to
attempt to capitalize on the fame of Complainant’s mark;
32. Respondent is a sophisticated Domain Name operator and
therefore likely to be very well aware of how his Domain Names are being
used.
B. Respondent
Respondent contends that:
1. he
bought the Domain Name on 17/9/08 and was in talks with an IT friend who was
also married to an Asian wife to set up a dating site for Asian singles;
2. none
of his domains resulted in any attempt to demand money from anybody;
3. his
project to establish an Asian dating/friendship service still stands.
FINDINGS
1) Complainant
has 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 or service mark in which Complainant has rights.
2) Complainant
has met its burden to prove by a preponderance of the relevant, admissible evidence that Respondent
has no rights or legitimate interest in respect of the Domain Name.
3) Complainant
has met its burden to prove by a preponderance of the relevant, admissible evidence that Respondent’s Domain
Name has been registered and is being
used in bad faith.
DISCUSSION
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 Alta. 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.”); J.W.
Spear & Sons PLC v. Fun League Mgmt., FA 180628 (Nat. Arb. Forum Oct.
17, 2003) (finding that where the Respondent submitted a timely response
electronically, but failed to submit a hard copy of the response on time, “[t]he Panel is of the view that given the technical nature
of the breach and the need to resolve the real dispute between the parties that
this submission should be allowed and given due weight”).
Complainant 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
Respondent neither denies Complainant’s trademark rights nor submits any contrary evidence. Thus, Complainant has proven that it has rights in a trademark established prior to September 17, 2008, the date of 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 <asiandatingdirect.com> Domain Name is not identical to, but is confusingly similar to Complainant’s DATING DIRECT Mark.
As
this Panel has previously held, “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, N.A.F. Decision FA (780) 001139910 (3/6/08)
[onlinedatingdirect.com [transferred].” DatingDirect.com Limited v. Tabish
Umar Siddiqui, N.A.F. Decision FA 0801001139945 (3/11/08). The Domain Name here, <asiandatingdirect>
is considerably different from the Domain Name involved in that Decision
(directonlinedating.com), wherein transfer was denied.
The Domain Name involved herein is identical
to the Registered Trademark of Complainant except for the addition of the
prefix “asian”. This Panel finds that
the addition of the common geographic/cultural/racial prefix “asian” is
insufficient to distinguish the Domain Name from Complainant’s Registered
Trademark and to dispel the likelihood of confusion. Additions of a
generic word and top-level domain do not sufficiently distinguish Respondent’s
disputed Domain Name from Complainant’s mark pursuant to Policy ¶ 4(a)(i). See
Arthur Guinness Son & Co. (
Under these circumstances, Complainant has
proven that the Domain Name registered by Respondent is confusingly similar to
a Trademark in which Complainant has rights.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed Domain Name pursuant to Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests in the disputed Domain Name. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed Domain Name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a Domain Name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first 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 interests in the subject Domain Names.”).
Complainant contends Respondent is not commonly known by the disputed Domain Name. The WHOIS information lists Respondent as “Peter Steiner,” and Complainant states it has not authorized Respondent to use its DATING DIRECT mark in any manner. Respondent neither denies either contention or submits contrary evidence. The Panel finds Respondent is not commonly known by the <asiandatingdirect.com> Domain Name. See Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that without demonstrable evidence to support the assertion that a respondent is commonly known by a Domain Name, the assertion must be rejected); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
Complainant provides
evidence that Respondent’s disputed Domain Name resolves to a “parked website”,
which displays links to products that compete with Complainant’s dating
services. Respondent is likewise silent
on this contention. The Panel finds
Respondent’s competing use of the disputed Domain Name is not a bona fide offering of goods or services
pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use. See
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); 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.”).
Respondent contends, though not in any sworn
format, that it intends to use the disputed Domain Name to establish a website
for Asian singles. Respondent also has
not submitted any evidence supporting this assertion. The Panel finds Respondent’s failure to
provide evidence of demonstrable preparations to use the disputed Domain Name
is evidence Respondent lacks rights and legitimate interests in the disputed
Domain Name. See Household
Int’l, Inc. v. Cyntom Enters., FA 95784 (Nat. Arb. Forum Nov. 7, 2000)
(finding that the respondent’s “vague and unsupported assertion of ‘plans to
sell household goods, supplies and appliances over the Internet’” was
insufficient to be considered proof of a legitimate business plan); see also Open Sys. Computing AS v. degli Alessandri,
D2000-1393 (WIPO Dec. 11, 2000) (finding that the respondent did not establish
rights and legitimate interests in the Domain Name where the respondent mentioned
that it had a business plan for the website at the time of registration but did
not furnish any evidence in support of this claim).
Respondent’s only response to Complainant’s
Complaint is that he has never demanded money from anyone for his Domain Name
and that he registered intending to establish an Asian dating/friendship
service and still intends to do so. Complainant does not dispute either
contention or submit contrary evidence. Respondent’s claim, however, is not
supported by any Affidavit or other documentation. This Panel is unable to lend credence to
bald, unsupported claims of intent to engage in any particular activity.
Further, because Respondent does not deny any of
the more specific claims of Complainant regarding Respondent’s lack of rights
or legitimate interests in respect of the Domain Name, this Panel finds that
Respondent has no rights or legitimate interests in respect to the Domain Name.
The Panel finds Respondent’s competing use of the disputed Domain Name is evidence of bad faith registration and use. 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 S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business).
The Panel finds Respondent’s actions are an attempt to profit by creating confusion in the minds of Internet consumers as to Complainant’s affiliation with the disputed Domain Name and resolving website. The Panel finds Respondent’s actions are evidence of bad faith registration and use. See Am. Univ. v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a Domain Name that incorporates another's mark with the intent to deceive Internet users in regard to the source or affiliation of the Domain Name is evidence of bad faith.”); see also TM Acquisition Corp. v. Warren, FA 204147 (Nat. Arb. Forum Dec. 8, 2003) (“Although Complainant’s principal website is <century21.com>, many Internet users are likely to use search engines to find Complainant’s website, only to be mislead to Respondent’s website at the <century21realty.biz> Domain Name, which features links for competing real estate websites. Therefore, it is likely that Internet users seeking Complainant’s website, but who end up at Respondent’s website, will be confused as to the source, sponsorship, affiliation or endorsement of Respondent’s website.”).
For these and the same reasons stated in the previous section of this Decision, this Panel likewise finds that the Domain Name has been registered and used in bad faith.
DECISION
Having established all three elements
required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <asiandatingdirect.com> Domain Name be
TRANSFERRED from Respondent to Complainant.
M. KELLY TILLERY, ESQUIRE, Panelist
Dated: January 9, 2009
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