DatingDirect.com, Limited v. Adrian Taylor
Claim Number: FA0909001284561
Complainant is DatingDirect.com, Limited (“Complainant”), represented by Adam
Taylor, of Adlex Solicitors,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <casualdatingdirect.com>, registered with Webair Internet Development, Inc.
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.
Hon. Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 16, 2009; the National Arbitration Forum received a hard copy of the Complaint on September 17, 2009.
On September 16, 2009, Webair Internet Development, Inc. confirmed by e-mail to the National Arbitration Forum that the <casualdatingdirect.com> domain name is registered with Webair Internet Development, Inc. and that Respondent is the current registrant of the name. Webair Internet Development, Inc. has verified that Respondent is bound by the Webair Internet Development, 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 September 22, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 13, 2009 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@casualdatingdirect.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 14, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Karl V. Fink (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 <casualdatingdirect.com> domain name is confusingly similar to Complainant’s DATING DIRECT mark.
2. Respondent does not have any rights or legitimate interests in the <casualdatingdirect.com> domain name.
3. Respondent registered and used the <casualdatingdirect.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 agency service for singles
seeking serious friendships and relationships under the DATING DIRECT mark. Complainant holds several registrations of
the DATING DIRECT mark with the United Kingdom Intellectual Property Office
(“UKIPO”) (e.g., Reg. No. 2,319,425 issued June 16, 2006).
Respondent, Adrian Taylor, registered the <casualdatingdirect.com> domain name on February 27, 2009. The disputed domain name resolves to a website that offers dating services that directly compete with Complainant’s dating service.
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.
Complainant has submitted several registrations of the
DATING DIRECT mark as evidence of rights in the mark (e.g., UKIPO Reg. No. 2,319,425 issued June 16, 2006). The Panel is satisfied with this
showing and finds that Complainant has established rights in the DATING DIRECT
mark under Policy ¶ 4(a)(i). See DatingDirect.com Limited v. Turner,
FA 349013 (Nat. Arb. Forum Dec. 16, 2004) (finding that the panel recognizes
the distinctive nature of the complainant’s DATINGDIRECT.COM mark through
registration with the United Kingdom Patent Office); 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 Patent Office . . . establish Complainant’s rights in the mark pursuant
to Policy ¶4(a)(i).”).
Respondent’s <casualdatingdirect.com> domain name contains Complainant’s entire DATING DIRECT mark, deletes the space within the mark, adds the generic term “casual,” and adds the generic top-level domain “.com.” The Panel finds that none of these alterations to Complainant’s mark sufficiently distinguish the disputed domain name from Complainant’s mark. Therefore, the Panel finds that the <casualdatingdirect.com> domain name is confusingly similar to Complainant’s DATING DIRECT mark 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 Experian Info. Solutions, Inc. v. Credit Research, Inc., D2002-0095 (WIPO May 7, 2002) (finding that several domain names incorporating the complainant’s entire EXPERIAN mark and merely adding the term “credit” were confusingly similar to the complainant’s mark); see also Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i); 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 finds that Policy ¶ 4(a)(i) has been satisfied.
Pursuant to Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Respondent lacks rights and legitimate interests in the disputed domain name. Once Complainant has made a sufficient showing, the burden then shifts to Respondent and Respondent must establish that it has rights or legitimate interests in the disputed domain name. The Panel finds that Complainant has sufficiently made its prima facie showing under Policy ¶ 4(a)(ii) and the burden now shifts to Respondent, from which no response was received. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”); 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).”).
The WHOIS information for the <casualdatingdirect.com> domain name lists “Adrian Taylor” as the registrant, which does not indicate that Respondent is commonly known by the disputed domain name. Respondent has not presented any evidence to the contrary. Moreover, Complainant asserts that it has not authorized or licensed Respondent to use the DATING DIRECT mark. Therefore, the Panel finds that Respondent is not commonly known by the <casualdatingdirect.com> domain name under 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 IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name).
Respondent’s <casualdatingdirect.com>
domain name resolves to a website that offers dating services that directly
compete with Complainant’s dating service.
Accordingly, the Panel finds that Respondent’s use of the disputed
domain name is not 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 Coryn Group, Inc. v. Media Insight,
FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that the respondent was not
using the domain names for a bona fide offering of goods or services nor
a legitimate noncommercial or fair use because the respondent used the names to
divert Internet users to a website that offered services that competed with
those offered by the complainant under its marks); see also Gardens Alive, Inc.
v. D&S Linx, FA 203126 (Nat. Arb. Forum Nov. 20, 2003) (finding
that the respondent used a domain name for commercial benefit by diverting
Internet users to a website that sold goods and services similar to those
offered by the complainant and thus, was not using the name in connection with
a bona fide offering of goods or services nor a legitimate noncommercial
or fair use).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Since Respondent registered the <casualdatingdirect.com> domain name on February 27, 2009, Respondent has been using the disputed domain name to divert Internet users to its competing dating services website. The Panel finds that this diversion disrupts Complainant’s dating service business. The Panel further finds that such a disruption constitutes bad faith registration and use under 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 the 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)).
Furthermore, the Panel finds that Respondent’s use of the confusingly similar <casualdatingdirect.com> domain name to offer competing dating services creates a likelihood of confusion as to Complainant’s affiliation with the disputed domain name. The Panel further finds that Respondent’s attempt to commercially gain from this likelihood of confusion through its competing business constitutes bad faith registration and use under Policy ¶ 4(b)(iv). See AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was commercially gaining from the likelihood of confusion between the complainant’s AIM mark and the competing instant messaging products and services advertised on the respondent’s website which resolved from the disputed domain name); see also Velv, LLC v. AAE, FA 677922 (Nat. Arb. Forum May 25, 2006) (finding that the respondent’s use of the <arizonashuttle.net> domain name, which contained the complainant’s ARIZONA SHUTTLE mark, to attract Internet traffic to the respondent’s website offering competing travel services violated Policy ¶ 4(b)(iv)).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <casualdatingdirect.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.), Panelist
Dated: October 28, 2009
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