national arbitration forum

 

DECISION

 

DatingDirect.com Limited v. Wayne Aston

Claim Number:  FA0511000593977

 

PARTIES

Complainant is DatingDirect.com Limited (“Complainant”), represented by Adam Taylor, of Adlex Solicitors, 76A Belsize Lane, London, NW3 5BJ, United Kingdom.  Respondent is Wayne Aston (“Respondent”), 104 Kirkmeadow, Bretton, Peterborough, Cambs PE3 8JJ, United Kingdom.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <sexdatingdirect.com>, registered with Tucows Inc.

 

PANEL

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.

 

Houston Putnam Lowry, Chartered Arbitrator, as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on November 11, 2005; the National Arbitration Forum received a hard copy of the Complaint on November 11, 2005.

 

On November 11, 2005, Tucows Inc. confirmed by e-mail to the National Arbitration Forum that the <sexdatingdirect.com> domain name is registered with Tucows Inc. and that Respondent is the current registrant of the name.  Tucows Inc. has verified that Respondent is bound by the Tucows 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 16, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 6, 2005 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@sexdatingdirect.com by e-mail.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On December 12, 2005, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

[a.] Factual background:

 

(i.) Complainant

 

1.       The Complainant offers a respectable international online dating agency service for singles seeking serious friendships and relationships.

 

2.       The Complainant has traded (initially via a partnership) under the names DATING DIRECT and DATINGDIRECT.COM since launching a website at www.datingdirect.com in 1999.

 

3.       Complainant’s annual accounts from 2000 to 2004 show total turnover of approximately £17 million (approximately $30 million) over that period.

 

4.       Dating Direct spent almost £10 million on marketing during the period 1999 – 2004.

 

5.       The Complainant’s marketing expenditure has included offline promotions such as:

a.       advertising in national magazines and newspapers as well as specialist magazines such as fitness clubs;

b.      TV;

c.       national and local radio advertising;

d.      poster and leaflet campaigns in health clubs;

e.       outdoor advertising.

 

6.       The Complainant has devoted a significant amount of effort and revenue to obtaining high listings on internet search engines and therefore has a high profile on the internet.

 

7.       The Complainant has generated extensive press coverage.

 

8.       The Complainant has received hundreds of emails from customers referring to it as Dating Direct.

 

9.       The following are the figures for the Complainant’s total membership (ie. persons who registered with the Complainant and created a profile) as of the dates given:

 

Date	Membership Figures
31 December 1999	21791
31 December 2000	95258
31 December 2001	328086
31 December 2002	822994
31 December 2003	1840138
8 March 2004	2035148
11 October 2005	3403732

 

(ii.) Respondent

 

10.   The Domain was registered on 27 May 2005.

 

11.   The Complainant first became aware of the Domain in about July 2005.

 

12.   As at 30 June 2005 the website at the Domain featured a dating service offering sex dates.

 

13.   The Complainant’s solicitors sent a cease and desist email, on 12 July 2005, to the Respondent to which the Registrant responded as follows: ”there are many thousands of domain names out there that use 'direct' in there domain names. good bye”.

 

14.   At some point following receipt of the Complainant’s letter, the Respondent removed the websites at the Domain as of 28 July 2005.

 

15.   An updated version of the initial website replaced the above site as of 4 November 2005.

 

[b.] The manner in which the domain names are confusingly similar to a trademark or service mark in which the Complainant has rights. ICANN Rule 3(b)(ix)(1); ICANN Policy ¶4(a)(i).

 

(i.) Rights

 

16.   The Complainant relies on its registered trade mark and trade mark application.

 

17.   The Complainant also relies on common law rights.  By virtue of its extensive trading and marketing activities, the Complainant has acquired substantial reputation and goodwill in the names DATING DIRECT and DATINGDIRECT.COM such that they are recognised by the public as distinctive of the Complainant’s online dating services.

 

18.   The Complainant is commonly referred to as “Dating Direct”, as well as “DatingDirect.com”.  Where Dating Direct uses the name “DatingDirect.com” (to reinforce the location of its website), the words “Dating” and “Direct” are invariably capitalised and in a larger and more prominent font than “.com”.

 

19.   The Complainant’s registered trade mark and common law rights in the term “Dating Direct” have been accepted in numerous UDRP cases as listed below:

 

 

20.   The Complainant also relies on the fact that, as explained below, the Respondent clearly set out to attract business intended for the Complainant. Such activity by the Respondent presupposes that the Complainant’s business was known and identified by its name.

 

(ii.) Confusing similarity

 

21.   The Domain is confusingly similar to the Complainant’s trade marks. 

 

22.   The Domain <sexdatingdirect.com> differs only by the inclusion of the descriptive word SEX before the Complainant’s name and trade mark DATING DIRECT .  This has the potential to cause visual confusion with the Complainant’s trade mark and domain name (<datingdirect.com>).

 

23.   The Domain entirely incorporates Complainant’s mark with the addition of either the descriptive word “sex”. The word does not disguise the fact that the dominant feature of the Domain is the DATING DIRECT mark, and is therefore confusingly similar to that mark. See Arthur Guinness Son & Co. (Dublin) Ltd.  v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the Complainant combined with a generic word or term); 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).

 

24.   See also the seven cases (the Swan Case, the Toney Case, the Shone Case,  the Mutiplex Case, the Top-pile Case, the Turner Case and the Bailey Case) mentioned in paragraph 19 where a descriptive word added to the Complainant’s trade mark did not diminish confusing similarity.   

 

25.   In the Toney Case it was found that the confusing similarity was heightened because both parties were in the same industry (online dating services).  The Complainant submits that this also applies here where the website at the Domain is a dating website.    

 

[c.]  The Respondent has no rights or legitimate interests in respect of the domain name(s) that is/are the subject of the complaint. ICANN Rule 3(b)(ix)(2); ICANN Policy ¶4(a)(ii).

 

26.   The Complainant asserts that, for the reasons stated below, it has made a prima facie case that the Respondent should be considered as having no rights or legitimate interests in the Domain and that the burden now shifts to the Respondent. See G.D. Searle v. Martin Mktg., 118277 (Nat. Arb. Forum, Oct. 23, 2002) (where complainant has asserted that respondent has no rights or legitimate interests it was incumbent on respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”).

 

27.   Dealing with each of the subparagraphs of paragraph 4 (c) of the ICANN policy in turn:

 

(i.) Whether, before any notice to the Respondent of the dispute, Respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name is in connection with a bona fide offering of goods or services.

 

28.   The Complainant has no association with the Respondent and has never authorized or licensed the Respondent to use its trade marks.

 

29.   The Respondent clearly uses the Domain and the Complainant’s trade marks to attract and profit from internet users seeking the Complainant – see the submissions in relation to bad faith below. Such use of the Domain could not be said to be “bona fide”.

 

30.   See also Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that “[I]t would be unconscionable to find a bona fide offering of services in a respondent’s operation of web-site using a domain name which is confusingly similar to the Complainant’s mark and for the same business”). The Complainant submits that that applies here. The Respondent’s website does offer online dating services.

 

(ii.) Whether Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if Respondent has not acquired trademark or service mark rights

 

31.   There is no evidence that the Respondent has been commonly known by the name comprised in the Domain.

 

(iii.) Whether 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.

 

32.   It is clear that the Respondent was out for commercial gain. Indeed it is difficult to conceive that the Respondent would engage in a service such as this for a non commercial purpose. See also the Complainants’ submissions below in relation to 4b (iv) of the Policy.

 

[d.]       The domain name(s) should be considered as having been registered and being used in bad faith.  ICANN Rule 3(b)(ix)(3); ICANN Policy ¶4(a)(iii).

 

33.   The Complainant relies on 4b (iii) and (iv) of the Policy.

 

(i.) 4b(iii): registration of the domain name primarily for the purpose of disrupting the business of a competitor

 

34.   The Respondent registered the Domain for the purpose of unfairly disrupting the business of the Complainant by diverting business intended for the Complainant.  The Respondent is a competitor as it operates a website at the Domain offering dating services.

 

35.   The Respondent declined to offer an explanation for its registration of the Domain in its written response to the Complainant’s cease and desist letter (other than to claim that “there are many thousands of domain names out there that use 'direct' in there domain names”). The Respondent did not deny any of the claims made by the Complainant, and in particular the Respondent did not deny that it was aware of the Complainant and its business when it registered the Domain. 

 

36.   Indeed it would not have been credible if the Respondent, a UK based operator of a dating website, had denied knowledge of the Complainant given that the Complainant is a major player – if not the market leader -  in UK online dating.

 

(ii.) 4b(iv): By using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s 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 Respondent’s web site or location or of a product or service on Respondent’s web site or location.

 

37.   The website at the Domain was essentially adopted by the Respondent to confuse, attract and profit from internet users seeking the Complainant in search engines and in web browsers.

 

38.   As outlined above, the Respondent has not denied the assertion to this effect in the email sent by the Complainant let alone provided a credible alternative explanation.

 

39.   The Respondent clearly had the Complainant in mind when registering and using the Domain.

 

40.   The use of the preceding word “sex” before the Complainant’s trade mark is intended by the Respondent to create a likelihood of confusion in the minds of the public as to an association between the Respondent and the Complainant. Indeed the name “Sex Dating Direct” appears prominently on the top of the home page as well as in the meta title and website text, thereby adding to likely confusion on the part of visitors reaching the site.

 

41.   In the Shone Case as well as the Swan Case and the Toney Case similar behavior by other respondents was held there to be evidence of bad faith use of the relevant domains pursuant to ¶4(b)(iv).

 

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, DatingDirect.com Limited, offers an international online dating agency service for singles seeking serious friendships and relationships.  Complainant began conducting business as “Dating Direct” in 1999, when it launched the DatingDirect.com website.  Complainant has spent almost £10 million on marketing during the period from 1999 to 2004.  Complainant has advertised in national magazines, newspapers, specialty magazines, on television, national and local radio, posters, leaflets in health clubs, and on billboards.  Complainant has also spent considerable money to establish high priority on search engines.

 

Respondent registered the <sexdatingdirect.com> domain name on May 27, 2005.  Respondent’s website features a website offering “sex dates.” 

 

Complainant sent Respondent a cease-and-desist letter on July 12, 2005.  Respondent responded as follows: “there are many thousands of domain names out there that use ‘direct’ in there [sic] domain names.  Good bye.”

 

DISCUSSION

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.

 

Identical and/or Confusingly Similar

 

Complainant has asserted that it has spent almost £10 million on marketing, advertised in national magazines, newspapers, specialty magazines, on television, national and local radio, posters, leaflets in health clubs, and on billboards, and spent considerable money to establish high priority on search engines.  The Panel holds this evidence demonstrates that Complainant has established secondary meaning in its DATING DIRECT mark.  The Panel finds Complainant has established common law rights in its mark pursuant to Policy ¶4(a)(i).  See BroadcastAmerica.com, Inc. v. Quo, DTV2000-0001 (WIPO Oct. 4, 2000) (finding that the complainant has common law rights in BROADCASTAMERICA.COM, given extensive use of that mark to identify the complainant as the source of broadcast services over the Internet, and evidence there is wide recognition with the BROADCASTAMERICA.COM mark among Internet users as to the source of broadcast services); Bibbero Sys., Inc. v. Tseu & Assoc., FA 94416 (Nat. Arb. Forum May 9, 2000) (finding, while the complainant had registered the BIBBERO SYSTEMS, INC. mark, it also had common law rights in the BIBBERO mark because it had developed brand name recognition with the word “bibbero”).

 

Complainant also has acquired rights by registering the DatingDirect.com mark with the United Kingdom Trademark Office.

 

The Panel finds the <sexdatingdirect.com> domain name is confusingly similar to Complainant’s DATING DIRECT mark.  The only difference is the elimination of the spaces between words and the addition of the word “sex,” which does not significantly distinguish the domain name from the mark.  See Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the subject domain name incorporates the VIAGRA mark in its entirety, and deviates only by the addition of the word “bomb,” the domain name is rendered confusingly similar to the complainant’s mark); Westfield Corp. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the <westfieldshopping.com> domain name confusingly similar because the WESTFIELD mark was the dominant element).

 

The Panel finds Policy ¶4(a)(i) is established.

 

Rights or Legitimate Interests

 

Respondent is appropriating Complainant mark to lead Internet users to Respondent’s dating service.  The Panel finds Respondent has appropriated Complainant’s mark to create competition, which is neither a bona fide offering of a good or service pursuant to Policy ¶4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii).  See Yahoo! Inc. v. Web Master, FA 127717 (Nat. Arb. Forum Nov. 27, 2002) (finding the respondent’s use of a confusingly similar domain name to operate a pay-per-click search engine, in competition with the complainant, was not a bona fide offering of goods or services); 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.”).

 

There is nothing in the record, including the WHOIS registration information, which demonstrates Respondent is commonly known by the disputed 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); Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding the respondent does not have rights in a domain name when the respondent is not known by the mark).

 

The Panel finds Policy ¶4(a)(ii) is established.

 

Registration and Use in Bad Faith

 

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 Gen. Media Commc’ns, Inc. v. Vine Ent., FA 96554 (Nat. Arb. Forum Mar. 26, 2001) (finding bad faith where a competitor of the complainant registered and used a domain name confusingly similar to the complainant’s PENTHOUSE mark to host a pornographic web site); 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).”).

 

The Panel infers Respondent is generating revenues from its dating business.  Therefore, the Panel finds Respondent is appropriating Complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).  See Amazon.com, Inc. v. Shafir, FA 196119 (Nat. Arb. Forum Nov. 10, 2003) (“As Respondent is using the domain name at issue in direct competition with Complainant, and giving the impression of being affiliated with or sponsored by Complainant, this circumstance qualifies as bad faith registration and use of the domain name pursuant to Policy ¶4(b)(iv).”); Clelland, FA 198018 (Nat. Arb. Forum Nov. 10, 2003) (“Respondent used <land-cruiser.com> to advertise its business, which sold goods in competition with Complainant. This establishes bad faith as defined in Policy ¶4(b)(iv).”).

 

The Panel finds Policy ¶4(a)(iii) is established.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.

 

Accordingly, it is Ordered that the <sexdatingdirect.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

 

Houston Putnam Lowry, Chartered Arbitrator, Panelist

Dated:  Friday, December 28, 2005

 

 

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