DatingDirect.com Limited v. James Foulk
Claim Number: FA0702000928740
Complainant is DatingDirect.com Limited (“Complainant”), represented by Adam
Taylor of Adlex Solicitors, 76A
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <singlesdatingdirect.com>, registered with Direct Information Pvt Ltd d/b/a Publicdomainregistry.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding.
Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically February 28, 2007; the National Arbitration Forum received a hard copy of the Complaint March 1, 2007.
On March 1, 2007, Direct Information Pvt Ltd d/b/a Publicdomainregistry confirmed by e-mail to the National Arbitration Forum that the <singlesdatingdirect.com> domain name is registered with Direct Information Pvt Ltd d/b/a Publicdomainregistry and that Respondent is the current registrant of the name. Direct Information Pvt Ltd d/b/a Publicdomainregistry has verified that Respondent is bound by the Direct Information Pvt Ltd d/b/a Publicdomainregistry registration agreement and thereby has 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 9, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 29, 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@singlesdatingdirect.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 4, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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. The domain name that Respondent registered, <singlesdatingdirect.com>, is confusingly similar to Complainant’s DATING DIRECT mark.
2. Respondent has no rights to or legitimate interests in the <singlesdatingdirect.com> domain name.
3. Respondent registered and used the <singlesdatingdirect.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, DatingDirect.com
Limited, operates an online dating agency service for individuals seeking
friendships and relationships.
Complainant has used the DATING DIRECT mark to advertise its services
since 1999, and Complainant filed a trademark application for the DATING DIRECT
mark with the United Kingdom Patent Office (“UKPO”) December 24, 2002. The application was granted, and the
trademark registration was subsequently issued by the UKPO June 16, 2006 (Reg.
No. 2,319,425).
Respondent, James Foulk, registered the <singlesdatingdirect.com> domain name March 4, 2006. Respondent is using the disputed domain name to offer competing online dating services.
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."
Given 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 will draw such inferences as the Panel 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 Complainant to 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 established with extrinsic proof in this proceeding that it has rights to and legitimate interests in the mark contained in its entirety within the disputed domain name. Under Policy ¶ 4(a)(i), Complainant’s rights in the DATING DIRECT mark date back to the filing date with the UKPO. 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 Nat’l Abortion Fed’n v. Dom 4 Sale, Inc., FA 170643 (Nat. Arb. Forum Sept. 9, 2003) (“As Complainant's filing date for its valid registration of the NAF NATIONAL ABORTION FEDERATION mark on the Principal Register of the U.S. Patent and Trademark Office predates Respondent's registration of the disputed domain name by over a year, this registration is additional evidence of Complainant's rights in the mark.”).
Complainant filed a trademark registration with the UKPO in
2002, which was prior to Respondent’s registration of the <singlesdatingdirect.com> domain name
in 2006. Under the Policy, registration
of a mark with an appropriate governmental authority confers rights in that
mark to a complainant. Complainant’s
registration of its mark with the UKPO is sufficient for these purposes
irrespective of the fact that Respondent operates from the
Respondent’s <singlesdatingdirect.com> domain name adds the generic term “singles,” as well as the generic top-level domain (“gTLD”) “.com,” to Complainant’s DATING DIRECT mark. Complainant’s mark remains the predominant part of the disputed domain name, and the term “singles” has an obvious relationship to Complainant’s online dating services. The addition of a gTLD is without relevance to this analysis because a gTLD is required for all domain name registrations. Therefore, the Panel finds that Respondent’s <singlesdatingdirect.com> domain name is confusingly similar to Complainant’s DATING DIRECT mark pursuant to Policy ¶ 4(a)(i). See Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the respondent’s domain name combines the complainant’s mark with a generic term that has an obvious relationship to the complainant’s business); see also Marriott Int’l, Inc. v. Café au lait, FA 93670, (Nat. Arb. Forum Mar. 13, 2000) (finding that the respondent’s domain name <marriott-hotel.com> is confusingly similar to the complainant’s MARRIOTT mark).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(i).
Complainant established that it has rights to and legitimate interests in the mark contained within the disputed domain name. Complainant also has alleged that Respondent has no such rights or legitimate interests in the <singlesdatingdirect.com> domain name. Once Complainant makes a prima facie case in support of its allegations, the burden then shifts to Respondent to show it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). Because Respondent failed to respond to the Complaint, the Panel assumes that Respondent does not have rights or legitimate interests in the disputed domain name. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that, where the complainant has asserted that respondent does not have rights or legitimate interests with respect to the domain name, it is 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”); 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 does not have rights or legitimate interests is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist). However, the Panel examines the record to determine if the record shows that Respondent has rights or legitimate interests pursuant to Policy ¶ 4(c).
Complainant has alleged that Respondent is not commonly known by the <singlesdatingdirect.com> domain name. The WHOIS information identifies Respondent as “James Foulk,” and no evidence in the record indicates that Respondent is commonly known by the disputed domain name. Therefore, the Panel concludes that Respondent is not commonly known by the <singlesdatingdirect.com> domain name pursuant to Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record); see also Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding without demonstrable evidence to support the assertion that a respondent is commonly known by a domain name, the assertion must be rejected).
Respondent is using the <singlesdatingdirect.com> domain name to offer competing online dating services. Respondent is attempting to commercially benefit from the goodwill associated with Complainant’s DATING DIRECT mark, and such use of the disputed domain name does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i), and it does not qualify as a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that the respondent was not using the domain name within the parameters of Policy ¶ 4(c)(i) or (iii) because the respondent used the domain name to take advantage of the complainant's mark by diverting Internet users to a competing commercial site); 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 Complainant satisfied Policy ¶ 4(a)(ii).
Respondent is using the <singlesdatingdirect.com> domain name to offer competing online dating services. In Spark Networks PLC v. Houlihan, FA 653476 (Nat. Arb. Forum Apr. 18, 2006), the panel held that the respondent’s registration of a domain name confusingly similar to the complainant’s mark in order to operate a competing online dating website supported a finding that the respondent registered and used the domain name to disrupt the complainant’s business under Policy ¶ 4(b)(iii). Similarly, in S. Exposure v. Southern Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000), the panel found that the respondent acted in bad faith under Policy ¶ 4(b)(iii) by attracting Internet users to a website that competed with the complainant’s business. In this case, Respondent’s <singlesdatingdirect.com> domain name competes with Complainant’s online dating services, and is likely to disrupt Complainant’s business by diverting business to Respondent’s competing site. Therefore, the Panel finds that Respondent registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii).
Respondent’s <singlesdatingdirect.com> domain name, which is confusingly similar to Complainant’s DATING DIRECT mark, is likely to cause confusion among customers searching for Complainant’s online dating services. Specifically, customers may become confused as to the affiliation, endorsement, or sponsorship of the services advertised on Respondent’s website. Therefore, the Panel finds that Respondent’s registration and use of the <singlesdatingdirect.com> domain name constitutes bad faith pursuant to Policy ¶ 4(b)(iv). See Metropolitan Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (“The Panel finds such use to constitute bad faith registration and use pursuant to Policy ¶ 4(b)(iv), because Respondent is taking advantage of the confusing similarity between the <metropolitanlife.us> domain name and Complainant’s METLIFE mark in order to profit from the goodwill associated with the mark.”); see also Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where the respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <singlesdatingdirect.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: April 18, 2007.
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