national arbitration forum

 

DECISION

 

DatingDirect.com Limited v. none c/o Jerry Williams

Claim Number: FA0702000927792

 

PARTIES

Complainant is DatingDirect.com Limited (“Complainant”), represented by Adam Taylor, of Adlex Solicitors, 76A Belsize Lane, London NW3 5BJ, UK.  Respondent is none c/o Jerry Williams (“Respondent”), 5005 East Texas Ave  #56, Bossier City, LA 71111.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <dating-direct-guide.com> and <direct-dating-guide.com>, registered with Tucows 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.

 

John J. Upchurch as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on February 28, 2007; the National Arbitration Forum received a hard copy of the Complaint on March 1, 2007.

 

On March 1, 2007, Tucows Inc. confirmed by e-mail to the National Arbitration Forum that the <dating-direct-guide.com> and <direct-dating-guide.com> domain names are registered with Tucows Inc. and that Respondent is the current registrant of the names.  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 March 7, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 27, 2007 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@dating-direct-guide.com and postmaster@direct-dating-guide.com by e-mail.

 

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

 

On April 2, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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 names be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <dating-direct-guide.com> and <direct-dating-guide.com> domain names are confusingly similar to Complainant’s DATING DIRECT mark.

 

2.      Respondent does not have any rights or legitimate interests in the <dating-direct-guide.com> and <direct-dating-guide.com> domain names.

 

3.      Respondent registered and used the <dating-direct-guide.com> and <direct-dating-guide.com> domain names in bad faith.

 

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

 

FINDINGS

Complainant, DatingDirect.com Limited, offers a respectable international online dating agency service for singles seeking serious friendships and relationships.  Complainant has over 3 million members to its service and has spent approximately £14.2 million on marketing from 1999 to 2005.  In connection with its dating service, Complainant has registered the DATING DIRECT mark (Reg. No. 2,319,425 issued June 16, 2006, filed December 24, 2002) and the DATINGDIRECT.COM mark (Reg. No. 2,232,175 issued May 11, 2000) with the United Kingdom Patent Office.

 

Respondent registered the <dating-direct-guide.com> domain name on February 15, 2006, and the <direct-dating-guide.com> domain name on March 6, 2006.  Respondent is using the domain names for websites that display a directory of links, including sponsored Google links, to third-party websites including dating services that compete with Complainant.  After Respondent received a cease-and-desist letter from Complainant, Respondent offered to sell both domain names to Complainant for $455.

 

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 established rights in the DATING DIRECT mark pursuant to Policy ¶ 4(a)(i) through its registration with the United Kingdom Patent Office.  See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive."); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).

 

Although Respondent’s registrations of the <dating-direct-guide.com> and <direct-dating-guide.com> domain names predate Complainant’s registration of the mark with the United Kingdom Patent Office, Complainant’s filing date of December 24, 2002, predates Respondent’s February and March 2006 domain name registrations.  See Planetary Soc’y v. Rosillo, D2001-1228 (WIPO Feb. 12, 2002) (holding that the effective date of Complainant’s trademark rights date back to the application’s filing date); see also Thompson v. Zimmer, FA 190625 (Nat. Arb. Forum Oct. 27, 2003) (“As Complainant’s trademark application was subsequently approved by the U.S. Patent and Trademark Office, the relevant date for showing ‘rights’ in the mark for the purposes of Policy ¶ 4(a)(i) dates back to Complainant’s filing date.”).

 

Respondent’s <dating-direct-guide.com> domain name is confusingly similar to Complainant’s DATING DIRECT mark because the domain name incorporates Complainant’s mark in its entirety and merely adds two hyphens, the generic term “guide,” and the top-level domain “.com.”  Incorporating Complainant’s mark in its entirety with the mere addition of hyphens, a generic term, and a top-level domain does not sufficiently distinguish Respondent’s domain name from Complainant’s mark under Policy ¶ 4(a)(i).  See Microsoft Corp. v. Montrose Corp., D2000-1568 (WIPO Jan. 25, 2001) (finding the domain name <ms-office-2000.com> to be confusingly similar even though the mark MICROSOFT is abbreviated); see also Am. Online, Inc. v. Anytime Online Traffic Sch., FA 146930 (Nat. Arb. Forum Apr. 11, 2003) (finding that the respondent’s domain names, which incorporated the complainant’s entire mark and merely added the descriptive terms “traffic school,” “defensive driving,” and “driver improvement” did not add any distinctive features capable of overcoming a claim of confusing similarity).

 

Respondent’s <direct-dating-guide.com> domain name is confusingly similar to Complainant’s DATING DIRECT mark because the domain name merely inverts the two words comprising Complainant’s entire mark and adds two hyphens, the generic term “guide,” and the top-level domain “.com.”  These variations of Complainant’s mark are insufficient to distinguish Respondent’s domain name from Complainant’s mark under Policy ¶ 4(a)(i).  See Toronto Convention & Visitors Ass’n v. This Domain is For Sale, D2001-1463 (WIPO Feb. 25, 2002) (finding that there would be no reason to distinguish between <tourism-toronto.com> and TORONTO TOURISM); see also Reed Elsevier Props. Inc. v. Weekly Publishers, FA 151536 (Nat. Arb. Forum May 5, 2003) (“Inverting or transposing words in a trademark is not sufficient to avoid confusing similarity because the two words create the same commercial impression and meaning.”).

 

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).      

 

Rights or Legitimate Interests

 

Complainant alleges that Respondent has no rights or legitimate interests in the <dating-direct-guide.com> and <direct-dating-guide.com> domain names.  Complainant has the intitial burden of proof in asserting that Respondent has no rights or legitimate interests in the domain names.  Once Complainant makes a prima facie case under Policy ¶ 4(a)(ii), the burden then shifts to Respondent to show that it does have rights or legitimate interests.  See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).

 

Respondent’s failure to answer the Complaint raises a presumption that Respondent has no rights or legitimate interests in the disputed domain names.  See Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.”); see also Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”).  Nevertheless, the Panel will examine the record to determine if Respondent has rights or legitimate interests under Policy ¶ 4(c).

 

Respondent is using the <dating-direct-guide.com> and <direct-dating-guide.com> domain names, which are confusingly similar to Complainant’s DATING DIRECT mark, to divert Internet users to websites that display a directory of links to third-party websites, including dating services that compete with Complainant.  Such use of the disputed domain names does not constitute a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i), or a legitmate noncommercial or fair use of the domain names pursuant to Policy ¶ 4(c)(iii).  See 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.”); see also 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).

 

Complainant asserts that Complainant has no association with Respondent and has not authorized Respondent to use Complainant’s DATING DIRECT mark in any way.  Furthermore, Respondent’s WHOIS information, as well as other information in the record, does not suggest that Respondent is commonly known by the <dating-direct-guide.com> and <direct-dating-guide.com> domain names.  Therefore, the Panel finds that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii).  See Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark); see also Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed domain [name], one can infer that Respondent, Onlyne Corporate Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”).   

 

Moreover, upon receipt of a cease and desist letter, Respondent offered to sell the disputed domain names to Complainant.  The Panel finds this to be further evidence that Respondent lacks rights and legitimate interests in the <dating-direct-guide.com> and <direct-dating-guide.com> domain names under Policy ¶ 4(a)(ii).  See Am. Nat’l Red Cross v. Domains, FA 143684 (Nat. Arb. Forum Mar. 4, 2003) (“Respondent’s lack of rights and legitimate interests in the domain name is further evidenced by Respondent’s attempt to sell its domain name registration to Complainant, the rightful holder of the RED CROSS mark.”); see also Mothers Against Drunk Driving v. Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) (holding that under the circumstances, the respondent’s apparent willingness to dispose of its rights in the disputed domain name suggested that it lacked rights or legitimate interests in the domain name).   

 

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).      

 

Registration and Use in Bad Faith

 

Respondent is using the <dating-direct-guide.com> and <direct-dating-guide.com> domain names, which are confusingly similar to Complainant’s DATING DIRECT mark, to divert Internet users seeking Complainant’s dating service to websites containing sponsored links to competing commercial websites.  The Panel infers that Respondent earns click-through revenues for diverting Internet users to the third-party websites.  Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).  See State Farm Mut. Auto. Ins. Co. v. Northway, FA 95464 (Nat. Arb. Forum Oct. 11, 2000) (finding that the respondent registered the domain name <statefarmnews.com> in bad faith because the respondent intended to use the complainant’s marks to attract the public to the web site without permission from the complainant); see also G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using the confusingly similar domain name to attract Internet users to its commercial website). 

 

Respondent is using domain names that are confusingly similar to Complainant’s DATING DIRECT mark to operate commercial websites featuring sponsored links to competing services.  The Panel finds such use indicates bad faith according to Policy ¶ 4(b)(iii) because it appears that Respondent has registered and is using the <dating-direct-guide.com> and <direct-dating-guide.com> domain names for the primary purpose of disrupting Complainant’s business.  See EBAY, Inc. v. MEOdesigns, D2000-1368 (WIPO Dec. 15, 2000) (finding that the respondent registered and used the domain name <eebay.com> in bad faith where the respondent has used the domain name to promote competing auction sites); see also Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)).

 

Because Respondent offered to sell the disputed domain names to Complainant for $455, which exceeds the costs of registration, the Panel finds this to further support its conclusion that Respondent registered and used domain names featuring Complainant’s mark in bad faith under Policy ¶ 4(b)(i).  See Banca Popolare Friuladria S.p.A. v. Zago, D2000-0793 (WIPO Sept. 3, 2000) (finding bad faith where the respondent offered the domain names for sale); see also Neiman Marcus Group, Inc. v. AchievementTec, Inc., FA 192316 (Nat. Arb. Forum Oct. 15, 2003) (finding the respondent’s offer to sell the domain name for $2,000 sufficient evidence of bad faith registration and use under Policy ¶ 4(b)(i)).

 

The Panel finds that Complainant satisfied Policy ¶ 4(a)(iii).

 

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 <dating-direct-guide.com> and <direct-dating-guide.com> domain names be TRANSFERRED from Respondent to Complainant.

 

 

                                                                                               

 

John J. Upchurch, Panelist

Dated:  April 12, 2007

 

 

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