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Generic Top Level Domain Name (gTLD) Decisions |
DatingDirect.com Limited v. William
Bailey
Claim
Number: FA0411000371764
Complainant is DatingDirect.com Limited (“Complainant”),
represented by Adam Taylor, of Adlex Solicitors,
76A Belsize Lane, London NW3 5BJ, UK.
Respondent is William Bailey (“Respondent”),
Nemp, Manchester M1 111, GB, UK.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <adultdatingdirect.info>, registered with Dotster.
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.
Honorable
Paul A. Dorf (Ret.) as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on November
26, 2004; the National Arbitration
Forum received a hard copy of the Complaint
on November 29, 2004.
On
November 29, 2004, Dotster confirmed by e-mail to the National Arbitration
Forum that the domain name <adultdatingdirect.info> is registered
with Dotster and that Respondent is the current registrant of the name. Dotster
has verified that Respondent is bound
by the Dotster 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
December 1, 2004, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"),
setting
a deadline of December 21, 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@adultdatingdirect.info
by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification,
the National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
December 28, 2004, pursuant to Complainant's request to have the dispute
decided by a single-member Panel, the National Arbitration
Forum appointed
Honorable Paul A. Dorf (Ret.) 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.
Complainant
requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <adultdatingdirect.info>
domain name is confusingly similar to Complainant’s DATING DIRECT mark.
2. Respondent does not have any rights or
legitimate interests in the <adultdatingdirect.info> domain name.
3. Respondent registered and used the <adultdatingdirect.info>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
DatingDirect.com Limited, registered the DATINGDIRECT.COM mark (Trademark
2,232,175, dated May 11, 2000) and the DATING
DIRECT mark (Trademark 2,318,425,
dated December 24, 2000) in the United Kingdom. Complainant operates an online dating agency at the
<datingdirect.com> domain name. The website was launched in March of
1999.
Complainant
expended considerable amounts of money promoting and marketing its brand: by
the end of 2003, Complainant had spent almost
₤6 million on marketing. As a result, Complainant’s services and mark
have received extensive press coverage and Complainant currently has approximately
two
million registered users.
Respondent registered the <adultdatingdirect.info> domain
name on October 2, 2004. Respondent’s
domain name originally resolved to a website featuring a list of sponsored
links to competitors of Complainant such as
LoopyLove (a mainstream dating
website) and other dating-related websites.
On or about October 14, 2004, the website at the disputed domain name
changed and contained a message that the “domain is for sale,
contact us here
to make an offer.”
On or about November 3, 2004, the website at the <adultdatingdirect.info>
domain name changed again. At the
time Complainant filed the Complaint, Respondent’s domain name resolved to a
website offering personal services for swingers,
stating that the website has
“600,000 horny singles and couples ads.”
The website also contained the following statement: “This site is not
related to or affiliated to datingdirect in anyway, if you are
here by mistake
click here, this site is not a mainstream dating site and contains profiles
including pictures and text of an adult
nature.”
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.
Complainant
established rights in the DATING DIRECT mark through registration and
continuous use of the mark in commerce since 1999. See 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.”); see also 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.).
Respondent’s <adultdatingdirect.info>
domain name is confusingly similar to Complainant’s DATING DIRECT
mark. The domain name incorporates
Complainant’s mark in its entirety and adds the generic term “adult.” This minor addition does not disguise the
fact that the dominant feature of the domain name is the DATING DIRECT
mark. Thus, the addition of the term
“adult” is insufficient to negate a finding of confusing similarity between
Respondent’s domain name
and Complainant’s mark pursuant to Policy ¶
4(a)(i). See Mattel, Inc. v. Domainsforsalenow@hotmail.com, FA 187609 (Nat. Arb.
Forum Oct. 6, 2003) ("Respondent has
merely added the descriptive word 'porn' to Complainant's registered BARBIE
mark, and the addition of this word
does not create a notable distinction
between Complainant's mark and the domain name currently in dispute."); see
also 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).
Furthermore, the
mere addition of the generic top-level domain “.info” is not enough to prevent
a finding of confusingly similarity
between Respondent’s domain name and
Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Isleworth Land Co. v. Lost in Space, SA, FA 117330
(Nat. Arb. Forum Sept. 27, 2002) (finding it is a “well established principle that generic top-level
domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis”); see
also Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum
May 27, 2003) (“The addition of a top-level domain is irrelevant when
establishing whether or not a mark
is identical or confusingly similar, because
top-level domains are a required element of every domain name.”).
Moreover,
the omission of the space between the words “dating” and “direct” does not
negate the confusing similarity between the domain
name and the mark pursuant
to Policy ¶ 4(a)(i). See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7,
2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as
spaces are impermissible
in domain names and a generic top-level domain such as
‘.com’ or ‘.net’ is required in domain names”); see also Wembley Nat’l Stadium Ltd. v. Thomson,
D2000-1233 (WIPO Nov. 16, 2000) (finding that the domain name
<wembleystadium.net> is identical to the WEMBLEY STADIUM mark).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Respondent has
failed to respond to the Complaint.
Therefore, the Panel accepts all reasonable allegations set forth in the
Complaint as true. See Am. Online, Inc. v. Clowers, FA 199821 (Nat. Arb. Forum Nov. 14,
2003) (finding that the failure to challenge a complainant’s allegations allows
a panel to accept
all of complainant’s reasonable allegations and inferences as
true); see also Wells Fargo & Co. v. Shing, FA 205699 (Nat. Arb. Forum Dec. 8,
2003) (finding that the failure to respond to a complaint allows a panel to
make reasonable inferences
in favor of a complainant and accept complainant’s
allegations as true).
In addition, the
Panel construes Respondent’s failure to respond as an admission that Respondent
lacks rights and legitimate interests
in the disputed domain name. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO
Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as
an admission that they have no
legitimate interest in the domain names); see also Honeywell
Int’l Inc. v. Domain Deluxe, FA 269166 (Nat. Arb. Forum June 29, 2004)
(“The failure of Respondent to respond to the Complaint functions both as an
implicit
admission that Respondent lacks rights to and legitimate interests in
the domain names, as well as a presumption that Complainant’s
reasonable
allegations are true.”).
Furthermore,
nothing in the record establishes that Respondent is commonly known by the
disputed domain name. Moreover,
Respondent is not licensed or authorized to register or use domain names that
incorporate Complainant’s marks.
Therefore, the Panel concludes that Respondent lacks rights and
legitimate interests in the domain name pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. 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 Charles Jourdan Holding AG v.
AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate
interests where (1) Respondent is not a licensee of Complainant;
(2)
Complainant’s prior rights in the mark precede Respondent’s registration; (3)
Respondent is not commonly known by the domain
name in question).
Moreover,
Respondent has used the <adultdatingdirect.info> domain name first
to direct Internet users to competing dating services and later to direct
Internet users to Respondent’s own dating
service. Respondent’s competitive use of a domain name confusingly similar
to Complainant’s mark is not a use in connection with a bona fide
offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate
noncommercial or fair use of the domain name pursuant
to Policy ¶ 4(c)(iii). See Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (“[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
Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11,
2002) (finding that Respondent’s use of the disputed domain name to redirect
Internet users
to a financial services website, which competed with
Complainant, was not a bona fide offering of goods or services).
In addition, the
Panel finds that Respondent’s offer to sell the disputed domain name
registration is evidence that Respondent lacks
rights and legitimate interests
in the domain name pursuant to Policy ¶ 4(a)(ii). See Skipton Bldg.
Soc’y v. Colman, D2000-1217 (WIPO Dec. 1, 2000) (finding no rights in a
domain name where Respondent offered the infringing domain name for sale and
the evidence suggests that anyone approaching this domain name through the
worldwide web would be "misleadingly" diverted
to other sites); see
also Wal-Mart Stores, Inc. v. Stork,
D2000-0628 (WIPO Aug. 11, 2000) (finding Respondent’s conduct purporting to
sell the domain name suggests it has no legitimate use).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent
registered and used the <adultdirectdating.info> domain name in
bad faith pursuant to Policy ¶ 4(b)(i) by posting an offer to sell the domain
name registration on its website. See
Am.
Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000)
(“general offers to sell the domain name, even if no certain price is demanded,
are evidence
of bad faith”); see also Banca Popolare Friuladria S.p.A. v. Zago, D2000-0793 (WIPO Sept. 3,
2000) (finding bad faith where Respondent offered the domain names for sale).
Additionally,
Respondent registered and used the disputed domain name in bad faith pursuant
to Policy ¶ 4(b)(iii) by registering a
domain name that is confusingly similar
to Complainant’s mark and using it first to market other competing dating
services and then
to offer its own competing dating service. See 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); see also 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).
Furthermore,
Respondent is capitalizing on the goodwill of the DATING DIRECT mark by using
the disputed domain name to divert Internet
users to a website featuring links
to competing services. Since the
disputed domain name contains a confusingly similar version of Complainant’s
mark, a consumer searching for Complainant
would become confused as to
Complainant’s affiliation with the resulting website. Therefore, Respondent’s opportunistic use of the disputed domain
name represents bad faith registration and use under Policy ¶ 4(b)(iv). See Kmart v. Khan, 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 Drs.
Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000)
(finding bad faith where Respondent directed Internet users seeking
Complainant’s site
to its own website for commercial gain).
Moreover, the
fact that Respondent posted a disclaimer on its website denying any affiliation
with Complainant does not negate a finding
of bad faith registration and use
pursuant to Policy ¶ 4(a)(iii). See Ciccone v. Parisi (Madonna.com),
D2000-0847 (WIPO Oct. 12, 2000) (“Respondent’s
use of a disclaimer on its website is insufficient to avoid a finding of bad
faith. First, the disclaimer may be
ignored or misunderstood by Internet users.
Second, a disclaimer does nothing to dispel initial interest confusion
that is inevitable from Respondent’s actions.
Such confusion is a basis for finding a violation of Complainant’s
rights.”); see also New
York Times Co. v. New York Internet Servs., D2000-1072 (WIPO Dec. 5, 2001) (ordering the transfer of the domain
name to Complainant even though Respondent had placed a disclaimer
on the
website, stating, “Disclaimers and links directly to the authorized site do not
mitigate matters. The misdirected searcher
is immediately confronted with advertising
that has nothing to do with The New York Times”); see also Thomas & Betts Int’l v. Power Cabling Corp., Inc.,
AF-0274 (eResolution Oct. 23, 2000) (finding bad faith based upon initial
interest confusion despite disclaimer and link to Complainant’s
website on
Respondent’s website).
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <adultdatingdirect.info> domain name be TRANSFERRED
from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated:
January 12, 2005
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