DECISION

DatingDirect.com Limited v. Robert Swan c/o Keep Major/Keep Major Limited

Claim Number:  FA0305000156717

PARTIES

Complainant is DatingDirect.com Limited, Birmingham, GB (“Complainant”), represented by Adam Taylor of Adlex Solicitors. Respondent is Robert Swan c/o Keep Major/Keep Major Limited, Glenrothes, GB (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <freedatingdirect.com>, <freedatingdirect.net>, <datindirect.com>, <datindirect.net>, <datindirect.org>, <datindirect.info>, <datindirect.biz>, <worlddatingdirect.com> and <worlddatingdirect.net>, 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.

The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on May 5, 2003; the Forum received a hard copy of the Complaint on May 5, 2003.

On May 6, 2003, Tucows, Inc. confirmed by e-mail to the Forum that the domain names <freedatingdirect.com>, <freedatingdirect.net>, <datindirect.com>, <datindirect.net>, <datindirect.org>, <datindirect.info>, <datindirect.biz>, <worlddatingdirect.com> and <worlddatingdirect.net> 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 May 7, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 27, 2003 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@freedatingdirect.com, postmaster@freedatingdirect.net, postmaster@datindirect.com, postmaster@datindirect.net, postmaster@datindirect.org, postmaster@datindirect.info, postmaster@datindirect.biz, postmaster@worlddatingdirect.com and postmaster@worlddatingdirect.net by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On June 3, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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 <freedatingdirect.com>, <freedatingdirect.net>, <datindirect.com>, <datindirect.net>, <datindirect.org>, <datindirect.info>, <datindirect.biz>, <worlddatingdirect.com> and <worlddatingdirect.net> domain names are confusingly similar to Complainant’s DATING DIRECT and DATINGDIRECT.COM marks.

2. Respondent does not have any rights or legitimate interests in the disputed domain names.

3. Respondent registered and used the disputed domain names in bad faith.

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

FINDINGS

Complainant, DatingDirect.com Limited, registered the DATINGDIRECT.COM mark in the United Kingdom (Trademark 2,232,175, dated May 11, 2000).  Complainant has a pending trademark application in the United Kingdom for the DATING DIRECT mark (Trademark Application 2,319,425, dated December 24, 2002).  Complainant operates an online dating agency at the <datingdirect.com> domain name. The website was launched in March of 1999 by the owners of Complainant, and Complainant took over the business between November and December of 1999.

Complainant has expended considerable amounts of money promoting and marketing its marks: in 2001 Complainant spent ₤437,000 on marketing, increasaing that amount to ₤1,369,000 in 2002. Complainant advertises in such sources as national magazines, television, and other offline media such as flyers and male models at major train stations. As a result of Complainant’s activities, Complainant’s services and mark have received extensive press coverage and Complainant currently has approximately two million registered users, gaining approximately 2,500 new members per day, with 90% of those members coming from the U.K.

The nine disputed domain names were registered by several different entites or persons. For example, the <freedatingdirect.com> domain name was registered to a Mr. Robert Swan, while the <freedatingdirect.net> domain name was registered to “Keep Major” and the <datindirect.info> domain name was registered to “Robert Swan/Keep Major Ltd.” However, the evidence before the Panel indicates that each Registrant for the disputed domain names is the same person or entity. For several of the domain names registered to “Keep Major,” the Administrative Contact listed in the WHOIS information is Robert Swan, who is also listed as the director of a company known as Keepmajor Limited. Additionally, each of the disputed domain names are strikingly similar to one another, and many re-direct Internet users to the same page, examined below. For these reasons, the Panel finds that each of the disputed domain names in this dispute were registered by the same person or entity, and will refer to the Registrant for each domain name as simply “Respondent.”

Respondent registered the <datindirect.com>, <datindirect.info>, <datindirect.biz>, <datindirect.net> and <datindirect.org> domain names on May 7, 2002, the <freedatingdirect.com> domain name on May 10, 2002, the <worlddatingdirect.com> domain name on May 20, 2002, and the <worlddatingdirect.net> and <freedatingdirect.net> domain names on January 10, 2003. Respondent is not licensed or authorized to use Complainant’s DATING DIRECT marks for any purpose.

The <datindirect.com>, <datindirect.net>, <datindirect.org>, <datindirect.info>, <datindirect.biz> domain names all redirect Internet users to the <freedatingdirect.com> domain name, where Respodent hosts an online dating website. The <freedatingdirect.net> and <worlddatingdirect.net> domain names host a “parking page” sponsored by “UK Reg,” a domain name registration service. Respondent has posted no content at the <worlddatingdirect.com> domain name.

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.

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 through proof of acquiring substantial reputation and goodwill in the marks so that they are recognized by the public as distinctive of Complainant’s online dating service, which is sufficient to grant standing under the UDRP. Complainant has also established rights in the DATINGDIRECT.COM mark through proof of registration and continuous use.

Respondent’s <datindirect.com>, <datindirect.net>, <datindirect.org>, <datindirect.info> and <datindirect.biz> domain names are confusingly similar to Complainant’s DATING DIRECT mark. Each of these domain names are mere misspellings of Complainant’s mark. In omitting the letter “g” from Complainant’s mark, Respondent simply attempts to capitalize on a likely misspelling of Complainant’s mark and domain name. Each of these domain names remains confusingly similar to Complainant’s mark. See State Farm Mut. Auto. Ins. Co. v. Try Harder & Co., FA 94730 (Nat. Arb. Forum June 15, 2000) (finding that the domain name <statfarm.com> is confusingly similar to Complainant’s STATE FARM mark); see also Compaq Info. Techs. Group, L.P. v. Seocho, FA 103879 (Nat. Arb. Forum Feb. 25, 2002) (finding that the domain name <compq.com> is confusingly similar to Complainant’s COMPAQ mark because the omission of the letter “a” in the domain name does not significantly change the overall impression of the mark).

Respondent’s <freedatingdirect.com>, <freedatingdirect.net>, <worlddatingdirect.com> and <worlddatingdirect.net> domain names are also confusingly similar to Complainant’s DATING DIRECT mark. These domain names entirely incorporate Complainant’s mark with the addition of either the generic word “free” or “world.” Neither word disguises the fact that the dominant feature of the domain name is the DATING DIRECT mark, and each 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).  Likewise, Respondent’s <freedatingdirect.com>, and <worlddatingdirect.com> domain names are also confusingly similar to Complainant’s DATINGDIRECT.COM mark.

Accordingly, the Panel finds that the disputed domain names are confusingly similar to Complainant’s DATING DIRECT and DATINGDIRECT.COM marks under Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Respondent failed to respond to the allegations contained in the Complaint. Therefore, if Complainant is able to demonstrate that the “safe harbor” provisions for domain name registrants outlined in Policy ¶¶ 4(c)(i)-(iii) do not apply to Respondent, Complainant is deemed to have made a prima facie case against Respondent. Such a showing shifts Complainant’s burden to Respondent. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that Respondent has no rights or legitimate interests with respect to the domain, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that where Complainant has asserted that Respondent has no 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”).

Respondent uses the <datindirect.com>, <datindirect.net>, <datindirect.org>, <datindirect.info>, <datindirect.biz> domain names to redirect Internet users to the <freedatingdirect.com> domain name, where Respodent hosts an online dating website. This dating service is in direct competition with Complainant’s service. As Respondent’s service is a blatant attempt to capitalize on a misspelling of Complainant’s mark in order to undermine Complainant’s business and dilute Complainant’s mark, it is not an example of a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i). Likewise, it is not a legitimate noncommercial or fair use of the domain names pursuant to Policy ¶ 4(c)(iii), rendering both of these provisions inapplicable to Respondent. See 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”); see also Am. Online Inc. v. Shenzhen JZT Computer Software Co., D2000-0809 (WIPO Sept. 6, 2000) (finding that Respondent’s operation of website offering essentially the same services as Complainant and displaying Complainant’s mark was insufficient for a finding of bona fide offering of goods or services).

Respondent’s <freedatingdirect.net> and <worlddatingdirect.net> domain names host a “parking page” sponsored by “UK Reg,” a domain name registration service, and Respondent posts no content at the <worlddatingdirect.com> domain name. Without any evidence from Respondent to the contrary, Respondent’s failure to use these confusingly similar domain names is not a bona fide offering of goods or services or a legitimate noncommerical or fair use of the domain names pursuant to Policy ¶¶ 4(c)(i) and (iii). See Vestel Elektronik Sanayi ve Ticaret AS v. Kahveci, D2000-1244 (WIPO Nov. 11, 2000) (finding that “merely registering the domain name is not sufficient to establish rights or legitimate interests for purposes of paragraph 4(a)(ii) of the Policy”); see also Boeing Co. v. Bressi, D2000-1164 (WIPO Oct. 23, 2000) (finding no rights or legitimate interests where Respondent has advanced no basis on which the Panel could conclude that it has a right or legitimate interest in the domain names, and no use of the domain names has been established).

Policy ¶ 4(c)(ii) permits a domain name registrant to claim rights or legitimate interests in a domain name if it has been “commonly known by” its domain name registrations. In this dispute there is no evidence before the Panel that Respondent has ever been “commonly known by” the misspelled “datindirect” family of domain names or the <freedatingdirect.com>, <freedatingdirect.net>, <worlddatingdirect.net> or <worlddatingdirect.com> domain names. Thus, Policy ¶ 4(c)(ii) does not apply to Respondent. See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (Interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail").

Accordingly, the Panel finds that Respondent does not have rights or legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Respondent uses the <datindirect.com>, <datindirect.net>, <datindirect.org>, <datindirect.info>, <datindirect.biz> domain names to redirect Internet users to the <freedatingdirect.com> domain name, where Respodent hosts its online dating website in direct competition with Complainant’s website at the <datingdirect.com> domain name. Both services are practically identical, and Respondent offers its services under a simple misspelling of Complainant’s mark. Both Respondent’s use of these domain names in the United Kingdom online dating market and the confusingly similar nature of the domain names themselves creates a likelihood of confusion as to whether Complainant is the source or sponsor of Respondent’s online dating services. Considering that there are several instances on Respondent’s webpage referring to the possibility of upgrading a customer’s account or registering for a “Premium” membership, the Panel infers that Respondent’s use of these disputed domain names capitalizes on a likelihood of confusion with Complainant’s mark for commercial gain. This is evidence of bad faith use and registration pursuant to Policy ¶ 4(b)(iv). See Kmart v. Kahn, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if Respondent profits from its diversionary use of Complainant's mark when the domain name resolves to commercial websites and Respondent fails to contest the Complaint, it may be concluded that Respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)); see also Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with Complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain). 

Respondent’s <freedatingdirect.net> and <worlddatingdirect.net> domain names have not been used since their registration on January 10, 2003, while Respondent’s <worlddatingdirect.com> domain name has not been used by Respondent for over a year. In this dispute, the Panel considers Respondent’s failure to respond to the Complaint and its bad faith conduct with the other disputed domain names in concluding that the Panel need not wait for Respondent to make infringing use of the <freedatingdirect.net>, <worlddatingdirect.net>, and <worlddatingdirect.com> domain names to find that the passive holding of these domain names amounts to bad faith. See Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000) (finding that “it is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith”); see also Body Shop Int’l PLC v. CPIC NET & Hussain, D2000-1214 (Nov. 26, 2000) (finding bad faith where (1) Respondent failed to use the domain name and (2) it is clear that Respondent registered the domain name as an opportunistic attempt to gain from the goodwill of the Complainant); see also Phat Fashions v. Kruger, FA 96193 (Nat. Arb. Forum Dec. 29, 2000) (finding bad faith under Policy ¶ 4(b)(iv) even though Respondent has not used the domain name because “It makes no sense whatever to wait until it actually ‘uses’ the name, when inevitably, when there is such use, it will create the confusion described in the Policy”).

The Panel thus finds that Respondent registered and used the disputed domain names in bad faith, and that Policy ¶ 4(a)(iii) is satisfied.

DECISION

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

Accordingly, it is Ordered that the <freedatingdirect.com>, <freedatingdirect.net>, <datindirect.com>, <datindirect.net>, <datindirect.org>, <datindirect.info>, <datindirect.biz>, <worlddatingdirect.com> and <worlddatingdirect.net> domain names be TRANSFERRED from Respondent to Complainant.

The Honorable Charles K. McCotter, Jr. (Ret.), Panelist

Dated:  June 9, 2003

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