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Generic Top Level Domain Name (gTLD) Decisions |
DatingDirect.com Limited v. Digi Real
Estate Foundation
Claim
Number: FA0411000371783
Complainant is DatingDirect.com Limited (“Complainant”),
represented by Adam Taylor, of Adlex Solicitors,
76A Belsize Lane, London, NW3 5BJ, UK.
Respondent is Digi Real Estate
Foundatoin (“Respondent”), P.O. Box 7-5324, Panama City, N7 8DJ, PANAMA.
REGISTRAR
AND DISPUTED DOMAIN NAMES
The
domain names at issue are <datingdiret.com> and <datingdiect.com>,
registered with Domainnovations, Incorporated and GET SLD, INC,
respectively.
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.
Hon.
Ralph Yachnin 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, Domainnovations, Incorporated confirmed by e-mail to the
National Arbitration Forum that the domain name <datingdiret.com> is
registered with Domainnovations, Incorporated and that Respondent is the
current registrant of the name. Domainnovations, Incorporated
has verified that
Respondent is bound by the Domainnovations, Incorporated 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 2, 2004, GET SLD, INC confirmed by e-mail to the National Arbitration
Forum that the domain name <datingdiect.com> is registered with GET
SLD, INC and that Respondent is the current registrant of the name. GET SLD,
INC has verified that Respondent
is bound by the GET SLD, 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
December 2, 2004, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"),
setting
a deadline of December 22, 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@datingdiret.com and
postmaster@datingdiect.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 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 Hon.
Ralph Yachnin 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <datingdiret.com>
and <datingdiect.com> domain names are confusingly similar to
Complainant’s DATINGDIRECT.COM mark.
2. Respondent does not have any rights or
legitimate interests in the <datingdiret.com> and <datingdiect.com>
domain names.
3. Respondent registered and used the <datingdiret.com>
and <datingdiect.com> domain names 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
marks have received extensive press coverage and Complainant currently has
approximately two
million registered users.
Respondent registered the <datingdiret.com> and <datingdiect.com>
domain names on August 13, 2004 and August 16, 2004, respectively. Respondent’s domain names resolve to a
website featuring a list of sponsored links to competing dating websites.
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 DATINGDIRECT.COM mark through registration in the
United Kingdom and through 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
domain names are identical to Complainant’s DATINGDIRECT.COM mark, but for the
deletion of one letter. Respondent’s <datingdiret.com>
domain name deletes the letter “c” while Respondent’s <datingdiect.com>
domain name removes the letter “r” from the term “direct” in Complainant’s
mark. Such minor alterations to
Complainant’s DATINGDIRECT.COM mark are insufficient to overcome a finding of
confusing similarity pursuant
to Policy ¶ 4(a)(i). See Reuters Ltd. v.
Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a
domain name which differs by only one letter from a trademark has a greater
tendency
to be confusingly similar to the trademark where the trademark is
highly distinctive); see also Universal
City Studios, Inc. v. HarperStephens, D2000-0716 (WIPO Sept. 5, 2000)
(finding that deleting the letter “s” from Complainant’s UNIVERSAL STUDIOS
STORE mark did not change
the overall impression of the mark and thus made the
disputed domain name confusingly similar to it).
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 names. 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 names. 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 names 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 <datingdiret.com> and <datingdiect.com>
domain names to direct Internet users to competing Internet dating
services. Such competing use of domain
names confusingly similar to Complainant’s DATINGDIRECT.COM 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).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent
registered and used the disputed domain names in bad faith pursuant to Policy ¶
4(b)(iii) by registering domain names that
are confusingly similar to
Complainant’s mark and using them to market competing dating services. 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 DATINGDIRECT.COM mark by
using the disputed domain names to divert
Internet users to a website featuring
links to competing dating services.
Since the disputed domain names contain confusingly similar versions of
Complainant’s mark, a consumer searching for Complainant would
become confused
as to Complainant’s affiliation with the resulting website. The Panel infers that Respondent receives
click-through fees for redirecting Internet users to these competing
websites. Therefore, Respondent’s
opportunistic use of the disputed domain names 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).
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <datingdiret.com> and <datingdiect.com>
domain names be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: January 11, 2005
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