DECISION

DatingDirect.com Limited v. D.D.L.C. c/o Bill Shone

Claim Number:  FA0408000314357

PARTIES

Complainant is DatingDirect.com Limited (“Complainant”), represented by Adam Taylor of Adlex Solicitors, 76A Belsize Lane, London, NW3 5BJ, UK.  Respondent is D.D.L.C. c/o Bill Shone (“Respondent”), 16 Overlea Blvd, Toronto, ON, M4H 1P2 Canada.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <online-dating-direct.com>, registered with Direct Information Pvt. Ltd. d/b/a Directi.com.

PANEL

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.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically August 19, 2004; the Forum received a hard copy of the Complaint August 23, 2004.

On August 21, 2004, Direct Information Pvt. Ltd. d/b/a Directi.com confirmed by e-mail to the Forum that the domain name <online-dating-direct.com> is registered with Direct Information Pvt. Ltd. d/b/a Directi.com and that Respondent is the current registrant of the name.  Direct Information Pvt. Ltd. d/b/a Directi.com verified that Respondent is bound by the Direct Information Pvt. Ltd. d/b/a Directi.com 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 August 27, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 16, 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@online-dating-direct.com 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 September 27, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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:

1. The domain name that Respondent registered, <online-dating-direct.com>, is confusingly similar to Complainant’s DATING DIRECT and DATINGDIRECT.COM marks.

2. Respondent has no rights to or legitimate interests in the <online-dating-direct.com> domain name.

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

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

FINDINGS

Complainant, DatingDirect.com Limited, is in the business of providing online dating services for singles seeking serious friendships and relationships.

Complainant owns a trademark registration  in the United Kingdom for its DATINGDIRECT.COM mark (UK trademark 2232175 dated May 11, 2000).  Additionally, Complainant has applied for trademark registration in the United Kingdom for the DATING DIRECT mark (Application No. 2319425 dated December 24, 2002). 

Complainant has done business under the DATING DIRECT and DATINGDIRECT.COM marks since 1999, when Complainant launched its website at the <datingdirect.com> domain name.  As of March 8, 2004, Complainant’s total membership was 2.03 million with 1.24 million of those members having used the site within the previous three months. 

Complainant’s total revenues as of the end of 2003 totalled approximately $16.6 million, while $9.7 million was from 2003 alone.  As of the end of 2003, Complainant had spent approximately $11 million in advertising through various mediums, including television, radio, posters and leaflets, newspapers and magazines, and various events organized by Complainant.  Additionally, Complainant has spent signifcant time and revenue to obtain high listings on Internet search engines, such as Google, to obtain a high profile on the Internet.  In fact, Complainant’s website is the top sponsored link for a search on Google for the term “dating.”

Respondent registered the <online-dating-direct.com> domain name April 3, 2004.  Respondent is using the disputed domain name to redirect Internet users to a website that offers information and tips for online dating and displays numerous links for Internet dating websites, including websites at the <matchnet.co.uk>, <americansingles.com>, <glimpse.com> and <jdate.com> domain names.  Additionally, Complainant asserts that all of these dating websites are owned and operated by Matchnet PLC, one of Complainant’s primary competitors.        

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 will draw such inferences as the Panel considers appropriate pursuant to paragraph 14(b) of the Rules.

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.

Identical to and/or Confusingly Similar

Complainant established by extrinsic proof in this proceeding that it has rights to and legitimate interests in its DATINGDIRECT.COM mark through registration in the United Kingdom.  See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that 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.  Respondent has the burden of refuting this assumption); see also Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning”).  Furthermore, Complainant brought proof to establish rights in its DATING DIRECT mark through its trademark application in the United Kingdom.  See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that Complainant's trademark or service mark be registered by a government authority or agency for such rights to exist. Rights in the mark can be established by pending trademark applications); see also British Broad. Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting that the Policy "does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names" and applying the Policy to "unregistered trademarks and service marks").

Additionally, Complainant established that it has used its DATING DIRECT marks since at least 1999 to provide online dating services to approximately 2.03 million members.  Complainant has also spent considerable time and money in promoting its marks using several advertising mediums, resulting in millions of dollars in profit.  Thus, the Panel finds that Complainant also established that it has common law rights in its marks by a showing of secondary meaning associating Complainant’s marks with its products and services.  See DatingDirect.com Ltd. v. Koryakin, FA 250764 (Nat. Arb. Forum June 4, 2004) (finding that Complainant established rights in the DATING DIRECT and DATINGDIRECT.COM marks “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”); see also DatingDirect.com v. Swan, FA 156717 (Nat. Arb. Forum June 29, 2003) (holding that Complainant established rights in its DATINGDIRECT.COM and DATING DIRECT marks by demonstrating “secondary meaning in its evidence of its large revenues”); see also S.A. Bendheim Co., Inc. v. Hollander Glass, FA 142318 (Nat. Arb. Forum Mar. 13, 2003) (holding that Complainant established rights in the descriptive RESTORATION GLASS mark through proof of secondary meaning associated with the mark).

The <online-dating-direct.com> domain name registered by Respondent is confusingly similar to Complainant’s DATING DIRECT marks because the domain name incorporates Complainant’s marks in their entirety, adding the generic or descriptive term “online” and hyphens between the terms.  The mere addition of a generic or descriptive term and hyphens to Complainant’s registered marks does not negate the confusing similarity of Respondent’s domain name pursuant to Policy ¶ 4(a)(i).  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 Complainant combined with a generic word or term); see also Chernow Communications, Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (holding “that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark"); see also Pep Boys Manny, Moe, and Jack v. E-Commerce Today, Ltd., AF-0145 (eResolution May 3, 2000) (finding that a hyphen between words of Complainant’s registered mark is confusingly similar).     

Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights to or Legitimate Interests

Complainant showed rights to or legitimate interests in its marks and brought allegations that Respondent has no such rights or legitimate interests in the <online-dating-direct.com> domain name, which contains Complainant’s DATING DIRECT marks in their entirety.  Due to Respondent’s failure to respond to the Complainant, the Panel will assume that Respondent lacks rights and legitimate interests in the disputed domain name.  In fact, once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to show that it does have such rights to or legitimate interests pursuant to Policy ¶ 4(a)(ii).  See 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”); 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 Complainant that Respondent has no right or legitimate interest is sufficient to shift the burden of proof to Respondent to demonstrate that such a right or legitimate interest does exist).

Moreover, where Complainant makes the prima facie showing and Respondent does not respond, the Panel may accept all reasonable allegations and inferences in the Complaint as true.  See Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertion in this regard.”); see also Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that Respondent’s failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true).

Respondent is using the <online-dating-direct.com> domain name to redirect Internet users to a website that contains information and tips for online dating and also displays various links to several online dating sites in direct competition with Complainant’s business.  Respondent’s use of a domain name that is confusingly similar to Complainant’s DATING DIRECT marks to redirect Internet users interested in Complainant’s products to a commercial website that offers competing products and services and links to websites that compete with Complainant is not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).  See Toronto-Dominion Bank v. Karpachev, 188 F.Supp.2d 110, 114 (D. Mass. 2002) (finding that, because Respondent's sole purpose in selecting the domain names was to cause confusion with Complainant's website and marks, its use of the names was not in connection with the offering of goods or services or any other fair use); see also Computerized Sec. Sys., Inc v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (holding that Respondent’s appropriation of Complainant’s mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services); see also Ticketmaster Corp. v. DiscoverNet, Inc., D2001-0252 (WIPO Apr. 9, 2001) (finding no rights or legitimate interests where Respondent generated commercial gain by intentionally and misleadingly diverting users away from Complainant's site to a competing website).

Furthermore, no evidence in the record suggests that Respondent has been commonly known by the <online-dating-direct.com> domain name, and Respondent is not licensed by Complainant to use Complainant’s DATING DIRECT marks.  Thus, Respondent has not established rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii).  See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name).

Thus, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Complainant alleges as well that Respondent registered and used the disputed domain names in bad faith.  Complainant urges that Respondent intentionally registered the <online-dating-direct.com> domain name, containing Complainant’s DATING DIRECT marks in their entirety, for Respondent’s commercial gain.  Through the use of a domain name that is confusingly similar to Complainant’s marks, Internet users seeking Complainant’s DATING DIRECT marks are redirected to Respondent’s commercial website, which offers similar products and services as Complainant.  Furthermore, Respondent is unfairly and opportunistically benefiting from the goodwill associated with Complainant’s DATING DIRECT marks.  Respondent’s practice of diversion, motivated by commercial gain, constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).  See Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that Respondent intentionally attempted to attract Internet users to his website for commercial gain by creating a likelihood of confusion with Complainant’s mark and offering the same chat services via his website as Complainant); see also Identigene, Inc. v. Genetest Lab., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where 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 Complainant is the source of or is sponsoring the services offered at the site); see also Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding bad faith where Respondent attracted users to a website sponsored by Respondent and created confusion with Complainant’s mark as to the source, sponsorship, or affiliation of that website).

Respondent is using the <online-dating-direct.com> domain name to promote and link to online dating services.  Complainant is a provider of online dating services under its DATING DIRECT marks.  Therefore, the Panel finds that, by creating confusion around Complainant’s marks, Respondent is attempting to disrupt the business of a competitor.  Respondent’s use of a domain name confusingly similar to Complainant’s marks to offer goods and services similar to Complainant’s goods and services is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).  See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding Respondent acted in bad faith by attracting Internet users to a website that competes with Complainant’s business); see also EthnicGrocer.com, Inc. v. Unlimited Latin Flavors, Inc., FA 94385 (Nat. Arb. Forum July 7, 2000)  (finding that the minor degree of variation from Complainant's marks suggests that Respondent, Complainant’s competitor, registered the names primarily for the purpose of disrupting Complainant's business).

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 <online-dating-direct.com> domain name be TRANSFERRED from Respondent to Complainant.

Hon. Carolyn Marks Johnson, Panelist

Dated: October 11, 2004

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