National Arbitration Forum

 

DECISION

 

DatingDirect.com Limited v. Michael Turner

Claim Number: FA0410000349013

PARTIES

Complainant is DatingDirect.com Limited (“Complainant”), represented by Adam Taylor, of Adlex Solicitors, 76A Belsize Lane, London NW3 5BJ, United Kingdom.  Respondent is Michael Turner (“Respondent”), P.O. Box 21587, Carson City, NV 89706.

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <internetdatingdirect.com>, registered with Go Daddy Software, 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.

 

Fernando Triana, Esq., as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on October 22, 2004; the National Arbitration Forum received a hard copy of the Complaint on October 25, 2004.

 

On October 22, 2004, Go Daddy Software, Inc. confirmed by e-mail to the National Arbitration Forum that the domain name <internetdatingdirect.com> is registered with Go Daddy Software, Inc. and that the Respondent is the current registrant of the name.  Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, 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 October 29, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of November 18, 2004 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@internetdatingdirect.com by e-mail.

 

A timely Response was received and determined to be complete on November 18, 2004.

 

A timely Additional Submission was received from Complainant and was determined to be complete on November 23, 2004.

 

Respondent did not file an Additional Submission.

 

On December 3, 2004, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Fernando Triana, Esq., as Panelist.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

A. Complainant

 

According to the Complaint, Complainant, DatingDirect.com Limited, is a corporation devoted to providing, through its website, respectable international online dating agency services for singles seeking serious friendships and relationships. Complainant states that ever since it launched its website, at the <datingdirect.com> domain name in 1999, it has traded under the names of DATING DIRECT and DATINGDIRECT.COM.

 

From several documents attached to the Complaint that evidence the expenditures Complainant has incurred, as well as its ambitious advertisement campaigns, Complainant seeks to prove its success and popularity. For instance, enclosed with the Complaint are extracts from Complainant’s annual accounts from 2000 through 2002, letters from Complainant’s auditor regarding the 2003 financial year, press cuttings, etc.

 

According to Complainant, Respondent registered the <internetdatingdirect.com> domain name on May 29, 2003, and Complainant became aware of its existence on early September 2004. The website at the domain is headed “Internet Dating Direct,” where users can place personal ads to locate other people with the same interests.

 

Complainant asserts to have sent a cease and desist letter to Respondent on September 14, 2004. On the same day, Complainant sent a communication of the same nature to the email address listed under the administrative contact information on the Whois for the domain name. This email was returned with the message that the host was unknown.

 

Complainant then conveyed a second cease and desist letter to Respondent by recorded delivery. According to Complainant, the recorded delivery receipt was never returned nor answered by Respondent.

 

Complainant alleges that it registered in the United Kingdom the trademark registration DATINGDIRECT.COM covering services of International class 42, granted on May 11, 2000, and applied for the trademark DATING DIRECT, to cover services of International class 45, filed on December 24, 2002. Moreover, Complainant relies on its common law rights, by virtue of the substantial reputation and goodwill that the names DATING DIRECT and DATINGDIRECT.COM have acquired, such that they are recognized by the public as distinctive of Complainant’s online dating services.

 

Complainant cites precedents from several National Arbitration Forum cases, namely, DatingDirect.com Ltd. v. Swan, FA 156717, DatingDirect.com Ltd. v. Koryakin, FA 250764, DatingDirect.com Ltd. v. Toney, FA 314347, among others, to evidence Complainant´s trademark and common law rights.

 

Complainant asserts that Respondent´s domain name is confusingly similar to Complainant´s trademarks. According to Complainant, the <internetdatingdirect.com> domain name differs only by inclusion of the generic word “Internet” before Complainant’s name and trademark, DATING DIRECT. Complainant emphasizes that the word “Internet” is generic, and therefore, lacks distinctiveness. 

 

Complainant affirms that Respondent should be considered as having no rights or legitimate interests in the <internetdatingdirect.com> domain name and that the burden of proof now shifts to Respondent. In addition, Complainant states that it never authorized or licensed Respondent to use its trademarks. According to Complainant, Respondent clearly used the domain name and Complainant´s trademarks to attract and profit from Internet users seeking Complainant.

 

Complainant sets forth that there is no evidence that Respondent has been commonly known by the names comprised in the domain name. Moreover, it seems evident to Complainant that the reason Respondent failed to offer an explanation for its registration of the domain name is due to the fact that Respondent can give no genuine motive for registering its domain name, or else it would have responded accordingly.

 

In any case, Complainant states that it would not have been credible if Respondent had denied knowledge of Complainant, given its choice of the domain name and that Complainant is a major player in international online dating.

 

B. Respondent

 

According to the Response, Respondent, Michael Turner, has been the registrant of <internetdatingdirect.com> the domain name since May 29, 2003. Respondent asserts that it never received a cease and desist letter, and if this would have been the case, Respondent would have answered it. However, since Respondent is an American citizen, Respondent claims that Respondent will not answer any communication from any foreign company.

 

Respondent denies taking advantage of Complainant´s prestige, as Respondent had absolutly no knowledge of the existence of Complainant. Moreover, Respondent states that Respondent’s reason for registering the disputed domain name was because Respondent was looking for a means to increase Respondent’s family´s income. According to Respondent, Respondent’s market is not and was never conceived to be in the United Kingdom, thus, there is no infringement.

 

It is stated in the Response that, according to Respondent, the most serious of Complainant’s accusations is that Respondent is disrupting Complainant’s business. Respondent asserts that there is no proof of the above, as Respondent is not proceeding in that manner.

 

Respondent reiterates its unwillingness to provide any kind of explanations to foreign companies, and affirms that arbitration is the correct way to settle disputes.

 

Respondent underlines one of the annexes enclosed in the Complaint, namely, a printout of a Google search, which displays Complainant’s popularity. In this regard, Respondent states that Respondent’s website is not listed by Google, thus, it is not stealing any clients from Complainant. In connection with this point, Respondent notes the existence of the website Dating.com, and under the same line of reasoning used for Respondent’s case, concludes that Complainant is stealing clientele from Dating.com, as the latter web page was registered a year before Complainant registered the <datingdirect.com> domain name.

 

Regarding this point, Respondent affirms that a possible reason for why Dating.com abstains from accusing Complainant of infringement – as has been Respondent’s case before Complainant’s, for the same motives – is because Dating.com recognizes that there is no infringement, due to the fact that Dating.com operates in the United States and Complainant operates in the United Kingdom. Respondent concludes that to avoid an infringement action on behalf of Dating.com, Complainant did not apply for the registration of its trademarks in the United States of America.

 

Respondent also emphasizes that although Complainant cites several other cases, Complainant does not attach the complete decisions and therefore, this act may be intended to hide the complete story. Moreover, Respondent states that Respondent would be very much interested in knowing of any cases Complainant has lost.

 

Respondent also states that since the words “Internet,” “dating,” and “direct” are generic, they must be made available to be used in various combinations, or else there could only be one dating site, which would only be Dating.com.

 

C. Additional Submissions

 

·        Complainant

 

The Additional Submission of Complainant was timely filed, responding to the assertions made by Respondent in its Response.

 

Complainant states that it is sceptical of Respondent’s claim that Respondent did not receive the cease and desist letters sent by Complainant, as Complainant has proof of delivery to the Whois address and Respondent has not said that this address was incorrect.

 

Complainant states that it cannot seriously consider Respondent’s extraordinary suggestion that Respondent will not answer any communication sent by any foreign company. According to Complainant, this statement confirms that Respondent did indeed receive the cease and desist letter.

 

Complainant affirms that Respondent´s claim that Respondent did not know of the existence of Complainant is not credible, as Respondent is a sophisticated Internet operator who is familiar with Internet dating, and has likewise misused other trademarks. Moreover, Complainant states that although Respondent implies that Respondent is a part-time Internet amateur, Respondent actually owns many other websites, including, <usaadultfriendfinder.com>, <usaadultfriendfinder.net>, and <thesinglesplace.net>, among others.

 

Complainant asserts that not only does it have customers in the United Kingdom, as Respondent affirms, but in fact, it had 334,353 members in the United States as of November 24, 2004.

 

According to Complainant, the term “Dating Direct” is not a common combination of words. In fact, Complainant states that there is no obvious reason to use these words together other than in reference to Complainant.

 

In connection with Respondent´s affirmation that Respondent has not infringed upon Complainant´s foreign trademark, since Respondent’s market is not in the United Kingdom, Complainant asserts that it is not concerned with trademark infringement. In fact, Complainant states that under the UDRP, Complainant can establish trademark rights anywhere, thus, Respondent cannot evade the UDRP by claiming that Respondent’s market is not in the United Kingdom.

 

Complainant states that the fact that Respondent´s domain name is not listed in Google is absolutely irrelevant to the question of Respondent´s purpose in registering the domain name. Complainant affirms that this search was attached as evidence of Complainant´s rights in the DATING DIRECT mark, showing that its website is the top sponsored link for the word “dating” on <google.com>.

 

Complainant further argues that Respondent was confused when Respondent referred to the business at dating.com, as this business cannot prevent others from using the word “dating,” nor does Complainant seek to do so.

 

FINDINGS AND 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.”

 

Likewise, paragraph 10(d) of the Rules for Uniform Domain Name Dispute Resolution Policy, provides that: “[t]he Panel shall determine the admissibility, relevance, materiality and weight of the evidence.”

 

The Panel, wants to make special emphasis to the evidence filed by the parties to prove their assertions, which has been thoroughly studied in order to determine its relevance and weight in arriving to a decision. The Panel wishes to clarify that the statements that have been accompanied by evidence have been given more importance than the mere statements made by the parties without further demonstration to its existence.

 

The Panel when a arriving to a Decision, also considered Paragraph 4(a) of the Policy, which 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.

 

Identical and/or Confusingly Similar

 

Complainant has evidenced that it has the following trademark registrations and/or applications with the United Kingdom Patent Office:

 

 

TRADEMARK	INTERNATIONAL CLASS AND CERTIFICATE NUMBER
DatingDirect.com	International Class 42. Certificate Registration No. 2,232,175
DatingDirect, datingdirect, datingdirect Dating Direct, DATINGDIRECT	International Class 45. Pending Registration. Filed before the T.O. on December 24, 2002.

 

Moreover Complainant contends that it has established common law rights in the DATINGDIRECT.COM mark through continuous and widespread use of the mark since the year 1999, as it is clearly shown from the accounting filed in the Complaint and the advertisement by which Complainant pursues to show that it has publicly used its trademark and also the recognition that DatingDirect.com Limited has in the market. To the contrary, Respondent alleges that the fact that it has added the generic word, “Internet,” and used generic words such as “dating” and “direct” does not give grounds for Complainant to allege that its domain name is confusingly similar to the DATINGDIRECT.COM trademark.

 

It is the Panel’s task to determine whether or not Complainant holds any rights to the DATINGDIRECT.COM mark. The definition of a trademark involves the concept of distinctive force as the most relevant element. This distinctive force gives a mark the capability to identify the products or services of its owner and differentiate them from the products or services of other participants in the market.  A mark can lack sufficient distinctive force when it is generic, confusingly similar to a previous trademark, or descriptive, among other reasons.

 

In the case of generic and descriptive terms, such a condition must be analyzed in connection with the kind of products or services that are identified with the mark.  Taking into account that the DATINGDIRECT.COM mark is meant to identify a service of providing information on the Internet on dating services, arranging personal introductions, preparations of curricula vitae and personality profiles among others.

 

When a mark is registered as a trademark with a trademark office, it is surrounded by a presumption of existence of sufficient distinctive force. The mere act of registration is recognition of the distinctiveness of the mark, so that the owner is granted an exclusive right over the trademark, which entitles the registrant to prevent any third party from using the registered mark or any other mark confusingly similar to it.

 

Conversely, when a mark is not registered, such a presumption of distinctiveness is not present, and the trademark owner has the burden to demonstrate that it has achieved common law rights over the mark. Common law rights arise out of the use of a mark in commerce in connection with goods or services, and might only exist in jurisdictions that acknowledge the existence of such rights. The Panel will not address the aforementioned, as it has been evidenced that Complainant has a registered trademark.[1]

 

Before establishing whether or not the disputed domain name is confusingly similar to Complainant’s registered trademark, the Panel wants to point out that the addition of generic top-level domains (gTLD), i.e., “.com,” “.biz,” “.edu,” “.org,” cannot be taken into consideration when determining if the registered domain name is confusingly similar to the registered trademark. Neither the addition of country code top-level domains (ccTLD), i.e., .co., .de, .cr, .es, nor the insertion of a gTLD have a distinctive function.

 

As it has been repeatedly accepted by UDRP Panels the existence of the “.com” (gTLD), in the disputed domain name is not a factor in determining whether a disputed domain name is identical or confusingly similar to the mark in which Complainant asserts rights.

 

Several Panels have addressed the aforementioned. In the case Wal-Mart Stores, Inc. v. Walsucks[2], the Panel stated in this regard that: “[t]he addition of the generic top-level domain (gTLD) name ‘.com’ is without legal significance since use of a gTLD is required of domain name registrants, ‘.com’ is one of only several such gTLDs, and ‘.com’ does not serve to identify a specific enterprise as a source of goods or services.”

 

Accordingly, in the case Lumena s-ka zo.o. v. Express Ventures Ltd.[3], the Panel stated that: “In the strictest sense, the domain name lumena.com is not identical to the trademark Lumena. The former includes a top level domain ‘.com’ while the word Lumena stands alone in the latter. However, where the addition of it top-level domain is the only difference, the top-level domain that appeared in the domain name was the one that most closely described that nature of the trademark (i.e.; ‘.com’  representing a commercial enterprise). The virtual identicality seemed sufficient to satisfy the first element of paragraph 4 (a)(i) of the Policy.”

 

Therefore, this Panel will not take into consideration the gTLD “.com” in the <internetdatingdirect.com> domain name when determining the similarity between the disputed domain name and the registered trademark.

 

Pursuant to the above mentioned, the Panel acknowledges that when making the study of similarity of trademarks, they should be considered as a whole. In that order of ideas, when the trademarks subject of study contain words and graphic features, the Panel wishes to point out that generally the words included in the registered trademark should prevail over its graphic features, as it turns to be the usual point of reference by the consumer public.

 

The Panel considers that although the graphic features contained in a trademark are part of the same, the graphic is often ambiguous and lacks of sufficient elements to make them easy to refer to, when the consumer public is seeking for a determined good and/or service. Therefore, the phonetic expression of the trademark usually ends up being the way a consumer searches for a specific good and/or service, outweighing the graphic.

 

Bearing the aforementioned in mind, the Panel considers that even though the trademark registered by Complainant includes both words and graphic features, the predominant expression in the mark would be the phonetical element, i.e. datingdirect.

 

Moreover the Panel considers that when determining similarity between the trademark and domain name, there are several criteria that have to be considered. Some of these criteria are, for example, likelihood in the orthography or typing of the registered mark and the disputed domain name. The fact that only minor written differences exist between a mark and a domain name, i.e., spelling mistakes that any ordinary Internet user would make when searching the web, evidence a domain name that is confusingly similar to the registered trademark. Also, the fact that there is a visual similarity between the mark and the registered domain name can create likelihood of confusion between the mark and the domain name. Finally, the fact that the disputed domain name offers services in the same industry as a registered mark, would irrefutably lead the web surfer to believe that he is accessing a web page of the owner of the trademark, i.e., domain name bearing the expression “datingdirect,” when searching for dating services on the Internet.

 

In this regard, the Panel finds that in the present case the combination and use of the words “datingdirect” as a whole are the predominant expression in the reviewed marks context, as it is by this expression that the consumer public identifies and differentiates the same services offered in the market by different industries, i.e. dating sector.

 

When the public is searching the Internet, it does not have the opportunity to make a visual comparison of the graphic features that accompany the trademark, i.e., the letter font and colors. Therefore, in regard to domain names, the predominant valuation is the orthographical similarity, as it is on these grounds that the user will be diverted from its original search, misbelieving that there is a connection between one and another.

 

In the case of Telstra Corp. Ltd v. Lombardo[4], the Panel stated that:

 

“It is clear that the Domain Names incorporate, as their first part, the word TELSTRA. Given the finding above the question arises whether the addition of a descriptive or generic element to the trade mark is sufficient to render it distinguishable. The complainant refers to the previous WIPO decision Quixstart Investments Inc. v Dennis Hoffman, WIPO D2000-0253 where the panel found that the addition of generic words to Complainant’s mark was not sufficient to escape the finding of similarity. Likewise, the complainant referred to the WIPO decision Cherno Communications Inc. v Jonathan Dennis Kimball, WIPO D2000-0119, that the placement of hyphens is also irrelevant in determining confusing similarity.”

 

In a very similar case held between Trump v. Sports Mgmt.[5], the Panel stated:

 

“Complainant, through registration and use has established that it has rights in the TRUMP PLAZA mark.  Furthermore, Respondent's <trumpplazasportsbook.com> domain name is confusingly similar to Complainant's mark because it incorporates the entirety of Complainant's mark and merely adds the descriptive term "sports book."  The use of a descriptive term with a famous mark does not create a mark capable of overcoming a claim of confusing similarity.”(Emphasis added).

 

The word “Internet” in the disputed domain name does not grant sufficient distinctiveness to the same, as the word “Internet” is generic for all services placed on the web, and therefore the fact that the same has been added before a registered trademark, still gives grounds to generate likelihood of confusion amongst the web surfers. Moreover, if it is considered that the registered trademarks by Complainant bear “.com,” which can be associated with the Internet, as the average web surfer can immediately relate it to the cyberspace and the services and goods offered through the world wide web.

 

Therefore Complainant’s assertion in regard to the fact that the disputed domain name <internetdatingdirect.com> is confusingly similar to DatingDirect Limited’s registered trademark has been evidenced, and therefore Complainant has succeeded according to Paragraph 4(a)(i) of the Policy.

 

Rights or Legitimate Interests

 

Paragraph 4 (c) of the Policy, determines that the following circumstances, in particular but without limitation, if found by the Panel to be present, shall demonstrate Respondent’s rights or legitimate interests to the domain name:

 

(i)                  Before any notice to Respondent of the dispute, it has used or made demonstrable preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

 

(ii)                Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if he has acquired no trademark or service mark rights; or

 

(iii)              Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

 

Complainant contends that Respondent lacks rights and legitimate interests in the <internetdatingdirect.com> domain name as it has never been authorized or licensed by DatingDirect.com Limited to use its trademark. Additionally it is stated that Respondent has used the domain name: “to attract and profit from the internet users seeking the Complainant.”

 

Moreover it is alleged by Complainant that Respondent has profited from its domain name because it offers its services for compensation and therefore: “it is difficult to conceive that the Respondent would register and use the Domain for a non commercial purpose.”

 

In this regard Respondent has not contested Complainant’s allegations, and therefore lacks evidence that it has rights or legitimate interests in the disputed domain name.

 

According to the evidence filed by Complainant, Respondent registered the <internetdatingdirect.com> domain name solely for the purpose of misappropriating the goodwill of Complainant’s trademark. Respondent deliberately decided to register and use the conflicting domain name in connection with an offering of services that cannot be considered as a bona fide use. Moreover, the Panel considers that the fact that Respondent decided to include Complainant’s trademark in its domain name, adding the word “Internet,” can be considered to cause confusion among Complainant’s clients, who seek DatingDirect.com Limited services online.

 

It has been clearly established from the evidence filed by Complainant that the services rendered by Respondent’s web page are the same as the ones offered by DatingDirect.com Limited’s web pages, i.e., dating services, arranging personal introductions from a computer database provided on-line, among others.

 

The fact that Respondent lacks any trademark or service mark registration in any jurisdiction of the world, that entitles Respondent to use the expression <internetdatingdirect.com>, evidences that Respondent lacks rights and legitimate interests in the disputed domain name. Additionally the fact that the activity developed by Respondent through the domain name is a commercial activity, as explained above, hence, it could not be accepted that Respondent is carrying out a non-commercial or fair use of the domain name.

 

On the other hand, the Panel considers after reviewing the parties’ contentions and evidence filed, that it has been proven that Respondent is not known by the domain name, moreover bearing in mind that as it has been confessed by Mr. Turner, that Respondent is involved in registering domain names in bulk for commercial use, and due to the numerous domain name registrations owned by Respondent, i.e., <internettraveldirect.com>, <internetpharmacydirect.com>, and <internetdatingdirect.com>, it is not likely that Respondent is known by the consumer public by such domain names.

 

In the case of Conzorzio del Formaggio Parmiggiano Reggiano v., La Casa del Latte di Bubilic Adriano[6], this issue was addressed by the Panel stating that:

 

“In addition, the Respondent is not commonly known by the domain name, has not acquired a trademark registration and has not submitted convincing evidence of the Respondent’s intentions to make a legitimate, non-commercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.”

 

Also the fact that there is not a disclaimer on the web page for the <internetdatingdirect.com> domain name in order to warn visitors from the fact that the Internet page they are visiting does not correspond to the page of Complainant, leads this Panel to believe that Respondent is trying to take advantage of Complainant’s goodwill.

 

Complainant sent a cease and desist letter to Respondent requiring that the same cease and desist from using the disputed domain name. The same was sent via e-mail and by post. Complainant filed evidence that proved that the cease and desist letter was received by Respondent as the recorded delivery receipt was never returned nor answered by Respondent. Mr. Turner did not rebut this evidence.

 

Additionally, Respondent did not answer the cease and desist letter, even when aware of Complainant’s trademark rights, and failing to comply with its demands of ceasing and desisting in the use of the trademark and transferring the domain name, whilst continuing to commercialize its products, cannot be considered by the Panel to be a bona fide offering of services by Respondent. It is important to point out that the fact that Respondent contested in its Response that: “as an American citizen I do not answer to foreign companies” is considered to be a confession that Respondent did receive the cease and desist letter, according to the evidence filed, but refused to answer based on the grounds that Complainant was a foreign company.

 

It is noteworthy that the legitimacy in using a domain name bearing a registered trademark, without any evidence of authority to do so has been addressed by previous panels. In the case Pivotal Corp. v. Discovery Street Trading Co. Ltd.[7], the panel addressed the aforementioned, stating that:

 

“The Respondent is not a licensee of Complainant, nor has he received any permission or consent to use the trademark from the Complainant who has prior rights in that trademark which preceded Respondent’s registration of the [domain name].”

 

Finally there is no evidence that leads the Panel to believe that Respondent chose the <internetdatingdirect.com> domain name by mere coincidence, taking into consideration that Complainant has proved thoroughly the registration of its trademark DATINGDIRECT.COM and the recognition and goodwill of the same.

 

Therefore, the Panel considers that being none of the contentions made by Complainant were refuted with sufficient proof, and after reviewing the evidence attached to the present case, it has been proven that there is no right or legitimate interest in the disputed domain name by Respondent, and Respondent does not meet Paragraph 4(a)(ii) of the Policy.

 

Registration and Use in Bad Faith

 

Complainant alleges that Respondent has acted in bad faith. The Panel has considered the fact that Respondent has failed to evidence its legitimate rights or interests in the disputed domain name. Notwithstanding the aforementioned, the Panel will evaluate Complainant’s assertions and evidence regarding Respondent’s bad faith in the usage and registration of the <internetdatingdirect.com> domain name.

 

According to paragraph 4(b) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

 

(i)                  Circumstances indicating that Respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the domain name; or

 

(ii)                Circumstances indicating that Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or

 

(iii)              Circumstances indicating that Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

 

(iv)               Circumstances indicating that, by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of its web site or location or of a product or service on its web site or location.

 

The Panel has considered Complainant’s goodwill in the dating on-line industry, taking into consideration the usage that it has given of its trademark and the well-advertised services in the market of the same.

 

Moreover, the fact that Complainant has registered its trademark DATINGDIRECT.COM in different International Classes for services and is a proprietor of different domain names such as <datingdirect.com>, <freedatingdirect.com>, <freedatingdirect.net>, <datindirect.com>, <datindirect.net>, <datindirect.org>, <datindirect.info>, <datindirect.biz>, <worlddatingdirect.com>, <worlddatingdirect.net> and <online-dating-direct.com>, which bear different combinations of the registered trademark, are sufficient evidence for this Panel that Complainant is well-known and identifiable in the market by its trademark.

 

Additionally Complainant stated that that Respondent owns the registrations for the following domain names: <usaadultfriendfinder.com>, <usadultfriendfinder.net>, <thesinglesplae.net>, <bydad.com>, <paragonsterling.com>, <grandcanyononhosting.com> <carsoncityhosting.com>, <tropicalgoldcasino.com> and <eroticladycasino.com>, amongst others. This fact was not refuted by Respondent.

 

The aforementioned leads the Panel to believe that Respondent is a cybersquatter as the numerous registered domain names, bearing registered trademarks, i.e., “friend finder” owned by Friendfinder, Inc., are an act of bad faith.  The Panel considers it difficult to believe that these registrations were a mere act of creativity.

 

The Panel finds a clear pattern of conduct in this behavior, as it has been evidenced that Mr. Turner has registered several domain names, bearing registered trademarks, and none of the trademarks registered belong to him. This can be considered as evidence of Respondent’s intention of taking advantage of a third party’s goodwill in order to divert and mislead the web surfer to its web pages and services.

 

In the case Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil[8], the Panel addressed this issue asserting that:

 

“In relation to each of the nineteen disputed domain names, the registration of the other eighteen provides sufficient evidence of a pattern of such conduct. There is further evidence of such a pattern: on the same days as the respondent registered the disputed domain names, he also registered other domain names incorporating the well-known trademarks of others, including AOL, CNN, NBC, PGA, BBC and CBS. Similar cases have been held to be classic cases of cybersquatting: Sanrio Company, Ltd and Sanrio, Inc. v. Neric Lau, (D2000-0172) and Stanley Works and Stanley Logistics, Inc v. Cam Creek. Co., Inc, (D2000-0113).”

 

Addressing a similar issue, the Administrative Panel in Playboy Enters. v. Movie name Co.[9] stated that:

 

“However there are some 18 domain names at issue here, all of which clearly include or misspell Complainant’s Marks. This is not ‘mere coincidence’ and the sheer number of similar registrations here, alone, are sufficient evidence of bad faith under Policy Paragraph 4(b)(iv) as Respondent is clearly using these numerous registrations to re-route traffic to its commercial websites.”

 

Notwithstanding the above mentioned, the Panel has considered the fact that Respondent registered the <internetdatingdirect.com> domain name, adding to Complainant’s trademark the word “Internet,” which is almost identical to the latter trademarks.  The fact that the web surfers are attracted to its domain name in a false belief that they might be reaching Complainant’s web page or to be able to access Complainant’s services has to be considered as an act of bad faith.

 

The circumstances set out in Paragraph 4(b) of the Policy are not limiting factors of how bad faith can be established, but serve merely as basic parameters for the panel when determining bad faith of Respondent. Bearing that in mind the fact that Respondent refused to answer the cease and desist letter, and ignored the request of ceasing and desisting from the unauthorized and illegitimate use of the domain name, has also been addressed by other administrative panels. For instance, the panel appointed in the case of eBay Inc v. Sunho Hong[10], considered that:

 

“Respondent has ignored Complainant’s request to transfer ownership of the domain name. Failure to positively respond to a complainant’s efforts to make contact provides ‘strong support for a determination of bad faith and registration and use.’”

 

The Panel agrees, with the aforementioned opinions and considers that the confession made by Respondent to refuse to answer to a foreign corporation alleging Respondent’s citizenship, evidences the use and registration in bad faith of the domain name by Respondent.

 

Likewise, it has been evidenced that Respondent is preventing Complainant from registering the <internetdatingdirect.com> domain name.  The disputed domain name is a variation of Complainant’s registered trademark. It cannot be an obstacle for Complainant the fact that it owns various domain names bearing the trademark or its combinations, in the purpose of considering whether it is capable of registering the disputed domain name. It does not entitle Respondent to be vested with any rights to register a confusingly similar expression of Complainant’s mark as a domain name.

 

This issue has been addressed by other administrative panels, where the fact that a party has various domain names bearing a trademark is not a sufficient reason for preventing it from being able to register a confusingly similar variation of the mark. Regarding this issue, the panel in Focus Do It All Groups and others v. Athanasios Sermbizis[11], stated that:

 

“There is almost always some other variant of a mark, which is still available to be turned into a proximate Domain Name. The mark owner is entitled to ‘reflect’ the mark in all domain names, which are confusingly similar to the mark, once he has demonstrated the scope of his right to the mark.  Any registration which is undertaken in order to prevent him obtaining any one of those variants is made in bad faith, if there is also evidence of a pattern conduct.” (Emphasis added.)

 

            The Panel considers that after evaluating the evidence attached to the Complaint, the facts are: (i) Respondent did not contend or rebut any of Complainant’s assertions; (ii) it has been determined that the domain name is confusingly similar to the registered trademarks owned by Complainant; (iii) there was no evidence of legitimacy or rights of Respondent in registering the disputed domain name; (iv) there can be diversion of potential client’s and tarnishing in Complainant’s interests by Respondent’s use of the domain name, and finally; (v) Respondent’s behavior can be catalogued as cybersquatting, considering the fact that the web surfers are attracted to its domain name in a false belief that they might be reaching Complainant’s services and goods.  These are reasonable facts for this Panel to conclude that there is sufficient proof of bad faith in Respondent’s behavior.

 

            Therefore, after reviewing the evidence filed by Complainant, which was not contested and/or refuted by Respondent, this Panel to believes that Mr. Turner registered the disputed domain name in order to disrupt Complainant’s market and profit from the latter’s goodwill.

 

            Therefore, taking into consideration the study made by this Panel, it is considered that Complainant has met the requirements of Paragraph 4(a)(iii) of the Policy, in demonstrating Respondent’s bad faith in registration and use of the <internetdatinngdirect.com> domain name.

 

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 <internetdatingdirect.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Fernando Triana, Esq. Panelist
Dated: December 16, 2004

 

 

 

 

 

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