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Generic Top Level Domain Name (gTLD) Decisions |
DatingDirect.com Limited v. Michel Toney
Claim
Number: FA0408000314347
Complainant is DatingDirect.com Limited (“Complainant”),
represented by Adam Taylor, of Adlex Solicitors,
76A Belsize Lane, London, NW3 5BJ, UK. Respondent is Michel Toney (“Respondent”), Pleasant Hill, CA 94523.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <singles-dating-direct.com>, registered
with Direct Information Pvt. Ltd. d/b/a Directi.com.
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.
John
J. Upchurch Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on August 19, 2004; the
Forum received a hard copy of the
Complaint on 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 <singles-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 has 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 26, 2004, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"),
setting a deadline of
September 15, 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@singles-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 22, 2004, pursuant to Complainant's request to have the dispute
decided by a single-member Panel, the Forum appointed
John J. Upchurch 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.
Complainant
requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <singles-dating-direct.com>
domain name is confusingly similar to Complainant’s DATING DIRECT mark.
2. Respondent does not have any rights or
legitimate interests in the <singles-dating-direct.com> domain
name.
3. Respondent registered and used the <singles-dating-direct.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant, DatingDirect.com Limited, offers a
respectable international online dating agency service for singles seeking
serious friendships
and relationships. Complainant has been using the mark
DATING DIRECT since launching its <datingdirect.com> website in 1999.
Complainant has expended substantial time, money and energy in promoting
its DATING DIRECT business and website. Since its inception
through 2003,
Complainant has spent approximately eleven million dollars on marketing and
advertising. Complainant’s total membership
as of March 2004 was 2.03 million
people. Of those members, at least 1.24 million were active users and had used
the website within
the previous three months.
Respondent registered the disputed domain name on April 4, 2004.
Respondent is using the domain name to redirect Internet users to
its own
commercial website that offers dating tips and links to various 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
has established rights in the DATING DIRECT mark through ownership of a common
law mark. A common law mark is established
when a complainant’s goods or
services become distinctive and acquire secondary meaning. Complainant
established that through Complainant’s
long-term, continued use of the mark,
Complainant and Complainant’s related goods and services have acquired
secondary meaning and
become distinctive of Complainant’s goods and services.
Thus, Complainant has established secondary meaning in the DATING DIRECT
mark
through its continued and exclusive use. See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000)
(finding common law rights in a mark where its use was continuous and ongoing,
and secondary
meaning was established); see also Keppel TatLee Bank v. Taylor, D2001-0168 (WIPO Mar. 28, 2001) (“On
account of long and substantial use of the said name [<keppelbank.com>]
in connection
with its banking business, it has acquired rights under the
common law.”); see also BroadcastAmerica.com,
Inc. v. Quo, DTV2000-0001 (WIPO Oct. 4, 2000) (finding that Complainant has
common law rights in BROADCASTAMERICA.COM, given extensive use of
that mark to
identify Complainant as the source of broadcast services over the Internet, and
evidence that there is wide recognition
with the BROADCASTAMERICA.COM mark among
Internet users as to the source of broadcast services).
Furthermore, the
Panel finds that the confusing similarity of Complainant’s mark and
Respondent’s domain name is heightened because
both Respondent and Complainant
are in the same industry, i.e. the provision of online dating services. See Slep-Tone Entm't Corp. v. Sound Choice Disc
Jockeys, Inc., FA 93636 (Nat. Arb. Forum Mar. 13, 2000) (“likelihood of
confusion is further increased by the fact that the Respondent and [Complainant]
operate within the same industry”); see also Vivid Video, Inc. v. Tennaro,
FA 126646 (Nat. Arb. Forum Nov. 14, 2002) (finding that any distinctiveness
resulting from Respondent’s addition of a generic word
to Complainant’s mark in
a domain name is less significant because Respondent and Complainant operate in
the same industry).
The
Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Respondent is
using the <singles-dating-direct.com> domain name to divert
Internet traffic intended for Complainant to Respondent’s commercial website
that provides dating tips and links
to various online dating services, services
similar to those Complainant offers. Respondent’s use of a domain name
confusingly similar
to Complainant’s DATING DIRECT mark to redirect Internet
users interested in Complainant’s services to a commercial website that
offers
links to similar online dating services 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 TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb.
Forum Dec. 31, 2002) (finding that Respondent’s diversionary use of
Complainant’s marks to send Internet users
to a website which displayed a
series of links, some of which linked to competitors of Complainant, was not a
bona fide offering
of goods or services); see also 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 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); see also N. Coast Med., Inc. v. Allegro Med., FA 95541 (Nat. Arb. Forum Oct.
2, 2000) (finding no rights or legitimate interests in a domain name that
diverted Internet users
to Respondent’s competing website through the use of
Complainant’s mark).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent
registered the <singles-dating-direct.com> domain name for its own
commercial gain. Respondent’s domain name diverts Internet users wishing to
search under Complainant’s DIRECT
DATING mark to Respondent’s commercial
website, where Respondent offers links to similar online dating services.
Respondent’s practice
of diversion, motivated by commercial gain, through the use
of a confusingly similar domain name evidences bad faith registration
and use
pursuant to Policy ¶ (b)(iv). See G.D. Searle & Co. v. Celebrex
Drugstore, FA 123933
(Nat. Arb. Forum Nov. 21, 2002) (finding that Respondent registered and used
the domain name in bad faith pursuant to
Policy ¶ 4(b)(iv) because Respondent
was using the confusingly similar domain name to attract Internet users to its
commercial website);
see also 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 Luck's Music
Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000)
(finding that Respondent had engaged in bad faith use and registration by
linking the
domain name to a website that offers services similar to
Complainant’s services, intentionally attempting to attract, for commercial
gain, Internet users to its website by creating a likelihood of confusion with
Complainant’s marks).
Furthermore, the
Panel finds that Respondent registered the <singles-dating-direct.com>
domain name for the primary purpose of disrupting Complainant’s business by
redirecting Internet traffic intended for Complainant
to Respondent’s website,
which directly competes with Complainant by offering links to various online
dating services, many of which
are
Complainant’s competitors. Registration and use of a domain name for the
primary purpose of disrupting the business of a competitor
is evidence of bad
faith registration and use pursuant to Policy ¶ 4(b)(iii). See Surface Prot. Indus., Inc. v. Webposters,
D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the competitive
relationship between Complainant and Respondent, Respondent
likely registered
the contested domain name with the intent to disrupt Complainant's business and
create user confusion); 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); see also Lubbock Radio Paging v. Venture
Tele-Messaging, FA 96102 (Nat. Arb. Forum Dec. 23, 2000) (concluding that
domain names were registered and used in bad faith where Respondent and
Complainant were in the same line of business in the same market area).
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 <singles-dating-direct.com> domain name be TRANSFERRED
from Respondent to Complainant.
John
J. Upchurch, Panelist
Dated: October 6, 2004
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