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Generic Top Level Domain Name (gTLD) Decisions |
DatingDirect.com Limited v. Michael
Turner
Claim Number: FA0410000349013
PARTIES
Complainant is DatingDirect.com Limited (“Complainant”), represented by Adam Taylor, of Adlex Solicitors, 76A Belsize Lane, London NW3 5BJ,
United Kingdom. Respondent is Michael
Turner (“Respondent”), P.O. Box 21587, Carson City, NV 89706.
REGISTRAR AND
DISPUTED DOMAIN NAME
The domain name at issue is <internetdatingdirect.com>,
registered with Go Daddy Software, 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.
Fernando Triana, Esq., as Panelist.
PROCEDURAL
HISTORY
Complainant submitted a Complaint to
the National Arbitration Forum electronically on October 22, 2004; the National
Arbitration Forum
received a hard copy of the Complaint on October 25, 2004.
On October 22, 2004, Go Daddy
Software, Inc. confirmed by e-mail to the National Arbitration Forum that the
domain name <internetdatingdirect.com>
is registered with Go Daddy Software, Inc. and that the Respondent is the
current registrant of the name. Go
Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy
Software, 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 October 29, 2004, a Notification
of Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”),
setting a deadline of November 18, 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@internetdatingdirect.com by e-mail.
A timely Response was received and
determined to be complete on November 18, 2004.
A timely Additional Submission was
received from Complainant and was determined to be complete on November 23,
2004.
Respondent did not file an
Additional Submission.
On December 3,
2004, pursuant to Complainant’s request to have the dispute decided by a single-member
Panel, the Forum appointed Fernando Triana,
Esq., as Panelist.
RELIEF SOUGHT
Complainant requests that the domain
name be transferred from Respondent to Complainant.
PARTIES’
CONTENTIONS
A. Complainant
According to the Complaint,
Complainant, DatingDirect.com Limited, is a corporation devoted to providing,
through its website, respectable
international online dating agency services
for singles seeking serious friendships and relationships. Complainant states
that ever
since it launched its website, at the <datingdirect.com> domain
name in 1999, it has traded under the names of DATING DIRECT
and
DATINGDIRECT.COM.
From several documents attached to
the Complaint that evidence the expenditures Complainant has incurred, as well
as its ambitious
advertisement campaigns, Complainant seeks to prove its
success and popularity. For instance, enclosed with the Complaint are extracts
from Complainant’s annual accounts from 2000 through 2002, letters from
Complainant’s auditor regarding the 2003 financial year,
press cuttings, etc.
According to Complainant, Respondent
registered the <internetdatingdirect.com>
domain name on May 29, 2003, and Complainant became aware of its existence on
early September 2004. The website at the domain is
headed “Internet Dating
Direct,” where users can place personal ads to locate other people with the
same interests.
Complainant asserts to have sent a
cease and desist letter to Respondent on September 14, 2004. On the same day,
Complainant sent
a communication of the same nature to the email address listed
under the administrative contact information on the Whois for the
domain name.
This email was returned with the message that the host was unknown.
Complainant then conveyed a second
cease and desist letter to Respondent by recorded delivery. According to
Complainant, the recorded
delivery receipt was never returned nor answered by
Respondent.
Complainant alleges that it
registered in the United Kingdom the trademark registration DATINGDIRECT.COM
covering services of International
class 42, granted on May 11, 2000, and
applied for the trademark DATING DIRECT, to cover services of International
class 45, filed
on December 24, 2002. Moreover, Complainant relies on its
common law rights, by virtue of the substantial reputation and goodwill
that
the names DATING DIRECT and DATINGDIRECT.COM have acquired, such that they are
recognized by the public as distinctive of Complainant’s
online dating
services.
Complainant
cites precedents from several National Arbitration Forum cases, namely, DatingDirect.com
Ltd. v. Swan, FA 156717, DatingDirect.com Ltd. v. Koryakin, FA
250764, DatingDirect.com Ltd. v. Toney, FA 314347, among others, to
evidence Complainant´s trademark and common law rights.
Complainant
asserts that Respondent´s domain name is confusingly similar to Complainant´s
trademarks. According to Complainant, the
<internetdatingdirect.com> domain name
differs only by inclusion of the generic word “Internet” before Complainant’s
name and trademark, DATING DIRECT. Complainant
emphasizes that the word “Internet” is generic, and therefore, lacks
distinctiveness.
Complainant
affirms that Respondent should be considered as having no rights or legitimate
interests in the <internetdatingdirect.com> domain name and that the burden of
proof now shifts to Respondent. In addition, Complainant states that it never authorized or licensed Respondent to use
its trademarks. According to Complainant, Respondent clearly
used the domain
name and Complainant´s trademarks to attract and profit from Internet users
seeking Complainant.
Complainant
sets forth that there is no evidence that Respondent has been commonly known by
the names comprised in the domain name.
Moreover, it seems evident to
Complainant that the reason Respondent failed to offer an explanation for its
registration of the domain
name is due to the fact that Respondent can give no
genuine motive for registering its domain name, or else it would have responded
accordingly.
In any
case, Complainant states that it would not have been credible if Respondent had
denied knowledge of Complainant, given its
choice of the domain name and that
Complainant is a major player in international online dating.
B. Respondent
According to the Response,
Respondent, Michael Turner, has been the registrant of <internetdatingdirect.com> the domain name since May 29,
2003. Respondent asserts that it never received a cease and desist letter, and
if this would have been
the case, Respondent would have answered it. However,
since Respondent is an American citizen, Respondent claims that Respondent
will
not answer any communication from any foreign company.
Respondent denies
taking advantage of Complainant´s prestige, as Respondent had absolutly no
knowledge of the existence of Complainant.
Moreover, Respondent states that
Respondent’s reason for registering the disputed domain name was because
Respondent was looking
for a means to increase Respondent’s family´s income.
According to Respondent, Respondent’s market is not and was never conceived
to
be in the United Kingdom, thus, there is no infringement.
It is stated in the Response that,
according to Respondent, the most serious of Complainant’s accusations is that
Respondent is disrupting
Complainant’s business. Respondent asserts that there
is no proof of the above, as Respondent is not proceeding in that manner.
Respondent reiterates its
unwillingness to provide any kind of explanations to foreign companies, and
affirms that arbitration is
the correct way to settle disputes.
Respondent underlines one of the
annexes enclosed in the Complaint, namely, a printout of a Google search, which
displays Complainant’s
popularity. In this regard, Respondent states that
Respondent’s website is not listed by Google, thus, it is not stealing any
clients
from Complainant. In connection with this point, Respondent notes the
existence of the website Dating.com, and under the same line
of reasoning used
for Respondent’s case, concludes that Complainant is stealing clientele from
Dating.com, as the latter web page
was registered a year before Complainant
registered the <datingdirect.com> domain name.
Regarding this point, Respondent affirms that a possible
reason for why Dating.com abstains from accusing Complainant of infringement
–
as has been Respondent’s case before Complainant’s, for the same motives – is
because Dating.com recognizes that there is no infringement,
due to the fact
that Dating.com operates in the United States and Complainant operates in the
United Kingdom. Respondent concludes
that to avoid an infringement action on
behalf of Dating.com, Complainant did not apply for the registration of its
trademarks in
the United States of America.
Respondent also emphasizes that although Complainant cites
several other cases, Complainant does not attach the complete decisions
and
therefore, this act may be intended to hide the complete story. Moreover,
Respondent states that Respondent would be very much
interested in knowing of
any cases Complainant has lost.
Respondent also states that since the words “Internet,”
“dating,” and “direct” are generic, they must be made available to be used
in
various combinations, or else there could only be one dating site, which would
only be Dating.com.
C. Additional Submissions
·
Complainant
The Additional Submission of
Complainant was timely filed, responding to the assertions made by Respondent
in its Response.
Complainant states that it is
sceptical of Respondent’s claim that Respondent did not receive the cease and
desist letters sent by
Complainant, as Complainant has proof of delivery to the
Whois address and Respondent has not said that this address was incorrect.
Complainant states that it cannot seriously consider
Respondent’s extraordinary suggestion that Respondent will not answer any
communication
sent by any foreign company. According to Complainant, this
statement confirms that Respondent did indeed receive the cease and desist
letter.
Complainant
affirms that Respondent´s claim that Respondent did not know of the existence
of Complainant is not credible, as Respondent
is a sophisticated Internet
operator who is familiar with Internet dating, and has likewise misused other
trademarks. Moreover, Complainant
states that although Respondent implies that
Respondent is a part-time Internet amateur, Respondent actually owns many other
websites,
including, <usaadultfriendfinder.com>,
<usaadultfriendfinder.net>, and <thesinglesplace.net>, among others.
Complainant
asserts that not only does it have customers in the United Kingdom, as
Respondent affirms, but in fact, it had 334,353
members in the United States as
of November 24, 2004.
According
to Complainant, the term “Dating Direct” is not a common combination of words.
In fact, Complainant states that there is
no obvious reason to use these words
together other than in reference to Complainant.
In
connection with Respondent´s affirmation that Respondent has not infringed upon
Complainant´s foreign trademark, since Respondent’s
market is not in the United
Kingdom, Complainant asserts that it is not concerned with trademark
infringement. In fact, Complainant
states that under the UDRP, Complainant can
establish trademark rights anywhere, thus, Respondent cannot evade the UDRP by
claiming
that Respondent’s market is not in the United Kingdom.
Complainant
states that the fact that Respondent´s domain name is not listed in Google is
absolutely irrelevant to the question of
Respondent´s purpose in registering
the domain name. Complainant affirms that this search was attached as evidence
of Complainant´s
rights in the DATING DIRECT mark, showing that its website is
the top sponsored link for the word “dating” on <google.com>.
Complainant
further argues that Respondent was confused when Respondent referred to the
business at dating.com, as this business cannot
prevent others from using the
word “dating,” nor does Complainant seek to do so.
FINDINGS AND DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name
Dispute Resolution Policy (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.”
Likewise,
paragraph 10(d) of the Rules for Uniform Domain Name Dispute Resolution Policy,
provides that: “[t]he Panel shall determine the admissibility,
relevance, materiality and weight of the evidence.”
The
Panel, wants to make special emphasis to the evidence filed by the parties to
prove their assertions, which has been thoroughly
studied in order to determine
its relevance and weight in arriving to a decision. The Panel wishes to clarify
that the statements
that have been accompanied by evidence have been given more
importance than the mere statements made by the parties without further
demonstration to its existence.
The
Panel when a arriving to a Decision, also considered Paragraph 4(a) of the
Policy, which requires that the 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 the Respondent is identical or confusingly similar to a
trademark or service mark in which the Complainant
has rights;
(2)
the
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 evidenced that it has the following
trademark registrations and/or applications with the United Kingdom Patent
Office:
|
TRADEMARK |
INTERNATIONAL CLASS AND CERTIFICATE
NUMBER |
|
DatingDirect.com |
International
Class 42. Certificate Registration No. 2,232,175 |
|
DatingDirect, datingdirect,
datingdirect Dating Direct, DATINGDIRECT |
International
Class 45. Pending Registration. Filed before the T.O. on December 24, 2002. |
Moreover Complainant contends that it has established common
law rights in the DATINGDIRECT.COM mark through continuous and widespread
use
of the mark since the year 1999, as it is clearly shown from the accounting
filed in the Complaint and the advertisement by which
Complainant pursues to
show that it has publicly used its trademark and also the recognition that
DatingDirect.com Limited has in
the market. To the contrary, Respondent alleges
that the fact that it has added the generic word, “Internet,” and used generic
words
such as “dating” and “direct” does not give grounds for Complainant to
allege that its domain name is confusingly similar to the
DATINGDIRECT.COM
trademark.
It
is the Panel’s task to determine whether or not Complainant holds any rights to
the DATINGDIRECT.COM mark. The definition of a trademark involves the
concept of distinctive force as the most relevant element. This distinctive
force gives
a mark the capability to identify the products or services of its
owner and differentiate them from the products or services of other
participants in the market. A mark can
lack sufficient distinctive force when it is generic, confusingly similar to a
previous trademark, or descriptive, among
other reasons.
In
the case of generic and descriptive terms, such a condition must be analyzed in
connection with the kind of products or services
that are identified with the
mark. Taking into account that the
DATINGDIRECT.COM mark is meant to identify a service of providing information
on the Internet on dating
services, arranging personal introductions,
preparations of curricula vitae and personality profiles among others.
When
a mark is registered as a trademark with a trademark office, it is surrounded
by a presumption of existence of sufficient distinctive
force. The mere act of
registration is recognition of the distinctiveness of the mark, so that the
owner is granted an exclusive
right over the trademark, which entitles the
registrant to prevent any third party from using the registered mark or any
other mark
confusingly similar to it.
Conversely,
when a mark is not registered, such a presumption of distinctiveness is not
present, and the trademark owner has the burden
to demonstrate that it has
achieved common law rights over the mark. Common law rights arise out of the
use of a mark in commerce
in connection with goods or services, and might only
exist in jurisdictions that acknowledge the existence of such rights. The Panel
will not address the aforementioned, as it has been evidenced that Complainant
has a registered trademark.[1]
Before
establishing whether or not the disputed domain name is confusingly similar to
Complainant’s registered trademark, the Panel
wants to point out that the
addition of generic top-level domains (gTLD), i.e., “.com,” “.biz,” “.edu,”
“.org,” cannot be taken into
consideration when determining if the registered
domain name is confusingly similar to the registered trademark. Neither the
addition
of country code top-level domains (ccTLD), i.e., .co., .de, .cr, .es,
nor the insertion of a gTLD have a distinctive function.
As
it has been repeatedly accepted by UDRP Panels the existence of the “.com”
(gTLD), in the disputed domain name is not a factor
in determining whether a
disputed domain name is identical or confusingly similar to the mark in which
Complainant asserts rights.
Several
Panels have addressed the aforementioned. In the case Wal-Mart Stores, Inc.
v. Walsucks[2], the Panel
stated in this regard that: “[t]he addition of the generic top-level domain
(gTLD) name ‘.com’ is without legal significance since use of a gTLD is
required of
domain name registrants, ‘.com’ is one of only several such gTLDs,
and ‘.com’ does not serve to identify a specific enterprise as
a source of
goods or services.”
Accordingly,
in the case Lumena s-ka zo.o. v. Express Ventures Ltd.[3],
the Panel stated that: “In the strictest sense, the domain name
lumena.com is not identical to the trademark Lumena. The former includes a top
level domain
‘.com’ while the word Lumena stands alone in the latter. However,
where the addition of it top-level domain is the only difference,
the top-level
domain that appeared in the domain name was the one that most closely described
that nature of the trademark (i.e.;
‘.com’
representing a commercial enterprise). The virtual identicality seemed
sufficient to satisfy the first element of paragraph 4 (a)(i)
of the Policy.”
Therefore,
this Panel will not take into consideration the gTLD “.com” in the <internetdatingdirect.com>
domain name when determining the similarity between the disputed domain name
and the registered trademark.
Pursuant
to the above mentioned, the Panel acknowledges that when making the study of
similarity of trademarks, they should be considered
as a whole. In that order
of ideas, when the trademarks subject of study contain words and graphic
features, the Panel wishes to
point out that generally the words included in
the registered trademark should prevail over its graphic features, as it turns
to
be the usual point of reference by the consumer public.
The
Panel considers that although the graphic features contained in a trademark are
part of the same, the graphic is often ambiguous
and lacks of sufficient
elements to make them easy to refer to, when the consumer public is seeking for
a determined good and/or
service. Therefore, the phonetic expression of the
trademark usually ends up being the way a consumer searches for a specific good
and/or service, outweighing the graphic.
Bearing the aforementioned in mind, the
Panel considers that even though the trademark registered by Complainant
includes both words
and graphic features, the predominant expression in the
mark would be the phonetical element, i.e. datingdirect.
Moreover
the Panel considers that when determining similarity between the trademark and
domain name, there are several criteria that
have to be considered. Some of
these criteria are, for example, likelihood in the orthography or typing of the
registered mark and
the disputed domain name. The fact that only minor written
differences exist between a mark and a domain name, i.e., spelling mistakes
that any ordinary Internet user would make when searching the web, evidence a
domain name that is confusingly similar to the registered
trademark. Also, the
fact that there is a visual similarity between the mark and the registered
domain name can create likelihood
of confusion between the mark and the domain
name. Finally, the fact that the disputed domain name offers services in the
same industry
as a registered mark, would irrefutably lead the web surfer to
believe that he is accessing a web page of the owner of the trademark,
i.e.,
domain name bearing the expression “datingdirect,” when searching for dating
services on the Internet.
In
this regard, the Panel finds that in the present case the combination and use
of the words “datingdirect” as a whole are the predominant
expression in the
reviewed marks context, as it is by this expression that the consumer public
identifies and differentiates the
same services offered in the market by
different industries, i.e. dating sector.
When
the public is searching the Internet, it does not have the opportunity to make
a visual comparison of the graphic features that
accompany the trademark, i.e.,
the letter font and colors. Therefore, in regard to domain names, the predominant
valuation is the
orthographical similarity, as it is on these grounds that the
user will be diverted from its original search, misbelieving that there
is a
connection between one and another.
In the case of Telstra Corp. Ltd v.
Lombardo[4], the Panel
stated that:
“It is clear that
the Domain Names incorporate, as their first part, the word TELSTRA. Given the
finding above the question arises
whether the addition of a descriptive or
generic element to the trade mark is sufficient to render it distinguishable.
The complainant
refers to the previous WIPO decision Quixstart Investments Inc.
v Dennis Hoffman, WIPO D2000-0253 where the panel found that the
addition of
generic words to Complainant’s mark was not sufficient to escape the finding of
similarity. Likewise, the complainant
referred to the WIPO decision Cherno
Communications Inc. v Jonathan Dennis Kimball, WIPO D2000-0119, that the
placement of hyphens
is also irrelevant in determining confusing similarity.”
In
a very similar case held between Trump v. Sports Mgmt.[5],
the Panel stated:
“Complainant, through registration and
use has established that it has rights in the TRUMP PLAZA mark. Furthermore, Respondent's <trumpplazasportsbook.com>
domain name is confusingly
similar to Complainant's mark because it incorporates the entirety of
Complainant's mark and merely adds the descriptive
term "sports
book." The use of a descriptive
term with a famous mark does not create a mark capable of overcoming a claim of
confusing similarity.”(Emphasis
added).
The word “Internet” in the disputed
domain name does not grant sufficient distinctiveness to the same, as the word
“Internet” is generic
for all services placed on the web, and therefore the
fact that the same has been added before a registered trademark, still gives
grounds to generate likelihood of confusion amongst the web surfers. Moreover,
if it is considered that the registered trademarks
by Complainant bear “.com,”
which can be associated with the Internet, as the average web surfer can immediately
relate it to the
cyberspace and the services and goods offered through the
world wide web.
Therefore Complainant’s assertion in
regard to the fact that the disputed domain name <internetdatingdirect.com>
is confusingly similar to DatingDirect Limited’s registered trademark has been
evidenced, and therefore Complainant has succeeded
according to Paragraph
4(a)(i) of the Policy.
Paragraph
4 (c) of the Policy, determines that the following circumstances, in particular
but without limitation, if found by the
Panel to be present, shall demonstrate
Respondent’s rights or legitimate interests to the domain name:
(i)
Before any
notice to Respondent of the dispute, it has used or made demonstrable
preparations to use the domain name or a name corresponding
to the domain name
in connection with a bona fide offering of goods or services; or
(ii)
Respondent
(as an individual, business, or other organization) has been commonly known by
the domain name, even if he has acquired
no trademark or service mark rights;
or
(iii)
Respondent
is making a legitimate noncommercial or fair use of the domain name, without
intent for commercial gain to misleadingly
divert consumers or to tarnish the
trademark or service mark at issue.
Moreover
it is alleged by Complainant that Respondent has profited from its domain name
because it offers its services for compensation
and therefore: “it is
difficult to conceive that the Respondent would register and use the Domain for
a non commercial purpose.”
In
this regard Respondent has not contested Complainant’s allegations, and
therefore lacks evidence that it has rights or legitimate
interests in the
disputed domain name.
According
to the evidence filed by Complainant, Respondent registered the <internetdatingdirect.com>
domain name solely for the purpose of misappropriating the goodwill of
Complainant’s trademark. Respondent deliberately decided to
register and use
the conflicting domain name in connection with an offering of services that
cannot be considered as a bona fide use. Moreover, the Panel considers
that the fact that Respondent decided to include Complainant’s trademark in its
domain name, adding
the word “Internet,” can be considered to cause confusion
among Complainant’s clients, who seek DatingDirect.com Limited services
online.
It
has been clearly established from the evidence filed by Complainant that the
services rendered by Respondent’s web page are the
same as the ones offered by
DatingDirect.com Limited’s web pages, i.e., dating services, arranging personal
introductions from a
computer database provided on-line, among others.
The
fact that Respondent lacks any trademark or service mark registration in any
jurisdiction of the world, that entitles Respondent
to use the expression <internetdatingdirect.com>,
evidences that Respondent lacks rights and legitimate interests in the disputed
domain name. Additionally the fact that the
activity developed by Respondent
through the domain name is a commercial activity, as explained above, hence, it
could not be accepted
that Respondent is carrying out a non-commercial or fair
use of the domain name.
On the
other hand, the Panel considers after reviewing the parties’ contentions and
evidence filed, that it has been proven that Respondent
is not known by the
domain name, moreover bearing in mind that as it has been confessed by Mr.
Turner, that Respondent is involved
in registering domain names in bulk for
commercial use, and due to the numerous domain name registrations owned by
Respondent, i.e.,
<internettraveldirect.com>,
<internetpharmacydirect.com>, and <internetdatingdirect.com>, it is
not likely that
Respondent is known by the consumer public by such domain
names.
In
the case of Conzorzio del Formaggio Parmiggiano Reggiano v., La Casa del
Latte di Bubilic Adriano[6],
this issue was addressed by the Panel stating that:
“In addition,
the Respondent is not commonly known by the domain name, has not acquired a trademark
registration and has not submitted
convincing evidence of the Respondent’s
intentions to make a legitimate, non-commercial or fair use of the domain name
without intent
for commercial gain to misleadingly divert consumers or to
tarnish the trademark.”
Also
the fact that there is not a disclaimer on the web page for the <internetdatingdirect.com>
domain name in order to warn visitors from the fact that the Internet page they
are visiting does not correspond to the page of Complainant,
leads this Panel
to believe that Respondent is trying to take advantage of Complainant’s
goodwill.
Complainant
sent a cease and desist letter to Respondent requiring that the same cease and
desist from using the disputed domain name.
The same was sent via e-mail and by
post. Complainant filed evidence that proved that the cease and desist letter
was received by
Respondent as the recorded delivery receipt was never
returned nor answered by Respondent.
Mr. Turner did not rebut this evidence.
Additionally,
Respondent did not answer the cease and desist letter, even when aware of
Complainant’s trademark rights, and failing
to comply with its demands of
ceasing and desisting in the use of the trademark and transferring the domain
name, whilst continuing
to commercialize its products, cannot be considered by
the Panel to be a bona fide offering of services by Respondent. It is
important to point out that the fact that Respondent contested in its Response
that: “as an American citizen I do not answer to foreign companies” is
considered to be a confession that Respondent did receive the cease and desist
letter, according to the evidence filed, but refused
to answer based on the
grounds that Complainant was a foreign company.
It
is noteworthy that the legitimacy in using a domain name bearing a registered
trademark, without any evidence of authority to do
so has been addressed by
previous panels. In the case Pivotal Corp. v. Discovery Street Trading Co.
Ltd.[7],
the panel addressed the aforementioned, stating that:
“The Respondent
is not a licensee of Complainant, nor has he received any permission or consent
to use the trademark from the Complainant
who has prior rights in that
trademark which preceded Respondent’s registration of the [domain name].”
Finally
there is no evidence that leads the Panel to believe that Respondent chose the
<internetdatingdirect.com> domain name by mere coincidence, taking
into consideration that Complainant has proved thoroughly the registration of
its trademark
DATINGDIRECT.COM and the recognition and goodwill of the same.
Therefore,
the Panel considers that being none of the contentions made by Complainant were
refuted with sufficient proof, and after
reviewing the evidence attached to the
present case, it has been proven that there is no right or legitimate interest
in the disputed
domain name by Respondent, and Respondent does not meet
Paragraph 4(a)(ii) of the Policy.
Complainant
alleges that Respondent has acted in bad faith. The Panel has considered the
fact that Respondent has failed to evidence
its legitimate rights or interests
in the disputed domain name. Notwithstanding the aforementioned, the Panel will
evaluate Complainant’s
assertions and evidence regarding Respondent’s bad faith
in the usage and registration of the <internetdatingdirect.com>
domain name.
According
to paragraph 4(b) of the Policy, the following circumstances, in particular but
without limitation, if found by the Panel
to be present, shall be evidence of
the registration and use of a domain name in bad faith:
(i)
Circumstances
indicating that Respondent has registered or has acquired the domain name
primarily for the purpose of selling, renting,
or otherwise transferring the
domain name registration to the complainant who is the owner of the trademark
or service mark or to
a competitor of that complainant, for valuable
consideration in excess of Respondent’s documented out-of-pocket costs directly
related
to the domain name; or
(ii)
Circumstances
indicating that Respondent has registered the domain name in order to prevent
the owner of the trademark or service
mark from reflecting the mark in a
corresponding domain name, provided that Respondent has engaged in a pattern of
such conduct;
or
(iii)
Circumstances
indicating that Respondent has registered the domain name primarily for the
purpose of disrupting the business of a
competitor; or
(iv)
Circumstances
indicating that, by using the domain name, Respondent has intentionally
attempted to attract, for commercial gain, Internet
users to its web site or other
on-line location, by creating a likelihood of confusion with the complainant's
mark as to the source,
sponsorship, affiliation, or endorsement of its web site
or location or of a product or service on its web site or location.
The Panel has considered Complainant’s
goodwill in the dating on-line industry, taking into consideration the usage
that it has given
of its trademark and the well-advertised services in the
market of the same.
Moreover, the fact that Complainant has
registered its trademark DATINGDIRECT.COM in different International Classes
for services
and is a proprietor of different domain names such as
<datingdirect.com>, <freedatingdirect.com>,
<freedatingdirect.net>,
<datindirect.com>, <datindirect.net>,
<datindirect.org>, <datindirect.info>, <datindirect.biz>,
<worlddatingdirect.com>,
<worlddatingdirect.net> and
<online-dating-direct.com>, which bear different combinations of the
registered trademark,
are sufficient evidence for this Panel that Complainant
is well-known and identifiable in the market by its trademark.
Additionally Complainant stated that that
Respondent owns the registrations for the following domain names:
<usaadultfriendfinder.com>,
<usadultfriendfinder.net>,
<thesinglesplae.net>, <bydad.com>, <paragonsterling.com>, <grandcanyononhosting.com>
<carsoncityhosting.com>, <tropicalgoldcasino.com> and
<eroticladycasino.com>, amongst others. This fact was not
refuted by
Respondent.
The aforementioned leads the Panel to
believe that Respondent is a cybersquatter as the numerous registered domain
names, bearing
registered trademarks, i.e., “friend finder” owned by
Friendfinder, Inc., are an act of bad faith.
The Panel considers it difficult to believe that these registrations
were a mere act of creativity.
The Panel finds a clear pattern of
conduct in this behavior, as it has been evidenced that Mr. Turner has
registered several domain
names, bearing registered trademarks, and none of the
trademarks registered belong to him. This can be considered as evidence of
Respondent’s intention of taking advantage of a third party’s goodwill in order
to divert and mislead the web surfer to its web pages
and services.
In the case Sony Kabushiki Kaisha
(also trading as Sony Corporation) v. Inja, Kil[8],
the Panel addressed this issue asserting that:
“In relation to each of the nineteen
disputed domain names, the registration of the other eighteen provides
sufficient evidence of
a pattern of such conduct. There is further evidence of
such a pattern: on the same days as the respondent registered the disputed
domain names, he also registered other domain names incorporating the
well-known trademarks of others, including AOL, CNN, NBC, PGA,
BBC and CBS.
Similar cases have been held to be classic cases of cybersquatting: Sanrio
Company, Ltd and Sanrio, Inc. v. Neric Lau,
(D2000-0172) and Stanley Works and
Stanley Logistics, Inc v. Cam Creek. Co., Inc, (D2000-0113).”
Addressing a similar issue, the
Administrative Panel in Playboy Enters. v. Movie name Co.[9]
stated that:
“However
there are some 18 domain names at issue here, all of which clearly include or
misspell Complainant’s Marks. This is not ‘mere
coincidence’ and the sheer
number of similar registrations here, alone, are sufficient evidence of bad
faith under Policy Paragraph
4(b)(iv) as Respondent is clearly using these
numerous registrations to re-route traffic to its commercial websites.”
Notwithstanding the above mentioned, the
Panel has considered the fact that Respondent registered the <internetdatingdirect.com>
domain name, adding to Complainant’s trademark the word “Internet,” which is
almost identical to the latter trademarks.
The fact that the web surfers are attracted to its domain name in a
false belief that they might be reaching Complainant’s web page
or to be able
to access Complainant’s services has to be considered as an act of bad faith.
The circumstances set out in Paragraph
4(b) of the Policy are not limiting factors of how bad faith can be
established, but serve
merely as basic parameters for the panel when
determining bad faith of Respondent. Bearing that in mind the fact that
Respondent
refused to answer the cease and desist letter, and ignored the
request of ceasing and desisting from the unauthorized and illegitimate
use of
the domain name, has also been addressed by other administrative panels. For
instance, the panel appointed in the case of
eBay Inc v. Sunho Hong[10],
considered that:
“Respondent
has ignored Complainant’s request to transfer ownership of the domain name.
Failure to positively respond to a complainant’s
efforts to make contact
provides ‘strong support for a determination of bad faith and registration and
use.’”
The Panel agrees, with the aforementioned
opinions and considers that the confession made by Respondent to refuse to
answer to a foreign
corporation alleging Respondent’s citizenship, evidences
the use and registration in bad faith of the domain name by Respondent.
Likewise, it has been evidenced that
Respondent is preventing Complainant from registering the <internetdatingdirect.com>
domain name. The disputed domain name
is a variation of Complainant’s registered trademark. It cannot be an obstacle
for Complainant the fact that
it owns various domain names bearing the
trademark or its combinations, in the purpose of considering whether it is capable
of registering
the disputed domain name. It does not entitle Respondent to be
vested with any rights to register a confusingly similar expression
of
Complainant’s mark as a domain name.
This issue has been addressed by other
administrative panels, where the fact that a party has various domain names
bearing a trademark
is not a sufficient reason for preventing it from being
able to register a confusingly similar variation of the mark. Regarding this
issue, the panel in Focus Do It All Groups and others v. Athanasios
Sermbizis[11], stated
that:
“There is almost always some other
variant of a mark, which is still available to be turned into a proximate
Domain Name. The mark
owner is entitled to ‘reflect’ the mark in all domain
names, which are confusingly similar to the mark, once he has demonstrated
the
scope of his right to the mark. Any
registration which is undertaken in order to prevent him obtaining any one of
those variants is made in bad faith, if there is
also evidence of a pattern
conduct.” (Emphasis added.)
The
Panel considers that after evaluating the evidence attached to the Complaint,
the facts are: (i) Respondent did not contend or
rebut any of Complainant’s
assertions; (ii) it has been determined that the domain name is confusingly
similar to the registered
trademarks owned by Complainant; (iii) there was no
evidence of legitimacy or rights of Respondent in registering the disputed
domain
name; (iv) there can be diversion of potential client’s and tarnishing
in Complainant’s interests by Respondent’s use of the domain
name, and finally;
(v) Respondent’s behavior can be catalogued as cybersquatting, considering the
fact that the web surfers are attracted
to its domain name in a false belief
that they might be reaching Complainant’s services and goods. These are reasonable facts for this Panel to
conclude that there is sufficient proof of bad faith in Respondent’s behavior.
Therefore,
after reviewing the evidence filed by Complainant, which was not contested
and/or refuted by Respondent, this Panel to
believes that Mr. Turner registered
the disputed domain name in order to disrupt Complainant’s market and profit
from the latter’s
goodwill.
Therefore,
taking into consideration the study made by this Panel, it is considered that
Complainant has met the requirements of Paragraph
4(a)(iii) of the Policy, in
demonstrating Respondent’s bad faith in registration and use of the <internetdatinngdirect.com>
domain name.
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 <internetdatingdirect.com>
domain name be TRANSFERRED from Respondent to Complainant.
Fernando Triana,
Esq. Panelist
Dated: December 16, 2004
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