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Generic Top Level Domain Name (gTLD) Decisions |
DatingDirect.com Limited v. Multiplex
Media Ltd
Claim
Number: FA0410000341278
Complainant is DatingDirect.com Limited (“Complainant”),
represented by Adam Taylor of Adlex Solicitors,
76A Belsize Lane, London, NW3 5BJ, United Kingdom. Respondent is Multiplex
Media Ltd (“Respondent”), Grosvenor House, 25-27 School Lane, Bushey,
Watford WD23 1SS, United Kingdom.
REGISTRAR
AND DISPUTED DOMAIN NAMES
The
domain name at issue is <russiandatingdirect.com> and <mmsdatingdirect.com>,
registered with Tucows Inc.
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 as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on October
14, 2004; the National Arbitration Forum
received a hard copy of the Complaint
on October 14, 2004.
On
October 19, 2004, Tucows Inc. confirmed by e-mail to the National Arbitration
Forum that the domain names <russiandatingdirect.com> and <mmsdatingdirect.com>
are registered with Tucows Inc. and that Respondent is the current registrant
of the names. Tucows Inc. has verified that Respondent
is bound by the Tucows
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 20, 2004, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"),
setting
a deadline of November 9, 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@russiandatingdirect.com and
postmaster@mmsdatingdirect.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
November 22, 2004, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the National Arbitration
Forum appointed John J.
Upchurch 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 <russiandatingdirect.com>
and <mmsdatingdirect.com> domain names are confusingly similar
to Complainant’s DATINGDIRECT.COM mark.
2. Respondent does not have any rights or
legitimate interests in the <russiandatingdirect.com> and <mmsdatingdirect.com>
domain names.
3. Respondent registered and used the <russiandatingdirect.com>
and <mmsdatingdirect.com> domain names in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant, DatingDirect.com Limited, offers an
international online dating agency service for singles seeking serious
friendships and relationships.
Complainant owns a trademark registration with the United Kingdom Patent
Office for the DATING DIRECT.COM mark (No. 2232175 dated
May 11, 2000). Complainant submitted a trademark
application to the United Kingdom Patent Office on December 24, 2002 (No.
2319425) for the DATING
DIRECT mark.
Complainant has traded under the DATING DIRECT.COM and DATING DIRECT
marks (“DATING DIRECT marks”) since 1999 when Complainant launched
its website
at the <datingdirect.com> domain name.
Complainant’s revenues total approximately £9.1 million, including £5.1
million in 2003. As of the end of 2003,
Complainant had spent nearly £6 million on marketing, including advertising in
national magazines and newspapers,
television, national and local radio, poster
and leaflet campaigns in health clubs, and singles and speed dating events
organized
by Complainant. Complainant
has also spent a large amount of effort and revenue obtaining high listings on
Internet search engines, and Complainant’s
website is the top sponsored link in
a search for the term “dating” on Google.
Complainant had a total membership of 1.84 million as of the end of 2003,
which had risen to 2.03 million by March 8, 2004. Of that number, 1.24 million were active members, meaning that
they had used the site within the past three months. Additionally, the Nielsen/NetRatings results for July 2004 show
that Complainant had the highest unique audience and page views for
all dating
websites in the United Kingdom at that time.
Respondent is the owner of the <internationaldates.co.uk> domain
name registration, which is the website for a dating service
for men seeking
Russian women. Internet users can
browse photographs and short summaries of women and can purchase the contact
details of women that interest them.
The website states that it is “in association with barbarakelly.co.uk,”
which is a website owned and maintained by Respondent.
Respondent registered the <russiandatingdirect.com> domain name on
August 20, 2003 and the <mmsdatingdirect.com> domain name on
December 19, 2003. As of September 13,
2004, Respondent was using the <russiandatingidrect.com> domain name to
divert Internet users to the website at the <internationaldates.co.uk>
domain name. At that time, Respondent
was using the <mmsdatingdirect.com> domain name to
link Internet users to a holding page for “a new Barbara Kelly domain,” which
displayed links to various adult dating
websites owned by Respondent.
On September 16, 2004, Complainant sent a cease and desist e-mail and letter,
and Respondent responded to the e-mail that same day. Following receipt of the cease and desist e-mail, Respondent
changed the websites at both the disputed domain names. As of September 28, 2004, Respondent was
using the <russiandatingdirect.com> and <mmsdatingdirect.com> domain names
to divert Internet users to a gaming website owned and maintained by Respondent
at the <thepbc.co.uk> domain name
entitled “The Prize Bank
Consortium.” The website offers rewards
and annual draws for prizes and features advertisements for gambling 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 in this proceeding that it has rights in the DATINGDIRECT.COM mark
through registration in the United
Kingdom Patent Office. 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).
Furthermore,
Complainant has rights in the DATING DIRECT mark through its filing of a
trademark application and establishing secondary
meaning in the mark. See DatingDirect.com Ltd. v.
Koryakin, FA 250764 (Nat. Arb. Forum June 4, 2004) (“The Panel finds that
Complainant has established rights in the DATING DIRECT mark as
established by
its filing of a trademark registration application with the UK Patent
Office. In addition, the Panel concludes
that Complainant has demonstrated secondary meaning in its evidence of its
large revenues.”); see also DatingDirect.com Ltd. v. Swan, FA
156717 (Nat. Arb. Forum June 29, 2003) (“Complainant has established rights in
the DATING DIRECT mark 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, which is sufficient to grant standing
under the UDRP.”).
The <russiandatingdirect.com>
and <mmsdatingdirect.com> domain names registered by
Respondent are confusingly similar to Complainant’s DATING DIRECT marks because
the domain names incorporate
Complainant’s marks in their entirety adding only
the geographic term “Russian” or the three-letter combination “mms.” The addition of a geographic term or
additional letters to Complainant’s marks does not negate the confusing
similarity of the domain
name pursuant to Policy ¶ 4(a)(i). See Wal-Mart Stores, Inc. v. Walmarket Canada,
D2000-0150 (WIPO May 2, 2000) (finding that the domain name, <walmartcanada.com>
is confusingly similar to Complainant’s famous
mark); see also Kelson Physician Partners, Inc. v. Mason,
CPR003 (CPR 2000) (finding that <kelsonmd.com> is identical or
confusingly similar to Complainant’s federally registered service
mark,
“Kelson”).
Accordingly, the
Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has
alleged that Respondent does not have rights or legitimate interests in the <russiandatingdirect.com>
and <mmsdatingdirect.com> domain names. Respondent failed to respond to the
Complaint and, therefore, the Panel assumes that Respondent lacks rights and
legitimate interests
in the disputed domain names. Once Complainant makes a prima facie case in support of
its allegations, the burden shifts to Respondent to show that it does have
rights 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 Do The
Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that
once Complainant asserts that Respondent has no rights or legitimate interests
with
respect to the domain, the burden shifts to Respondent to provide credible
evidence that substantiates its claim of rights and legitimate
interests in the
domain name).
Furthermore,
Complainant has made a prima facie showing on this issue and Respondent
failed to respond, so the Panel is entitled to 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 Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In
the absence of a response, it is appropriate to accept as true all allegations
of the Complaint”).
Respondent
initially used the <russiandatingdirect.com> domain name to
redirect Internet users to Respondent’s dating website at
<internationaldates.co.uk>, which featured a dating
service for men
seeking Russian women. The <mmsdatingdirect.com>
domain name first diverted Internet users to a holding page for “a new Barbara
Kelly domain,” which displayed links to adult dating
websites owned by
Respondent. Respondent’s use of domain
names confusingly similar to Complainant’s DATING DIRECT marks to divert
Internet users seeking Complainant’s
products and services to Respondent’s
competing websites 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 names pursuant
to Policy ¶
4(c)(iii). See 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 Clear Channel Communications, Inc. v.
Beaty Enters., FA 135008 (Nat. Arb. Forum Jan. 2, 2003) (finding that
Respondent, as a competitor of Complainant, had no rights or legitimate
interests
in a domain name that utilized Complainant’s mark for its competing
website); see also Avery Dennison Corp. v. Steele, FA 133626
(Nat. Arb. Forum Jan 10, 2003) (finding that Respondent had no rights or
legitimate interests in the disputed domain name
where it used Complainant’s
mark, without authorization, to attract Internet users to its business, which
competed with Complainant).
Following its
response to Complainant’s cease and desist letter, Respondent began using both
the <russiandatingdirect.com> and <mmsdatingdirect.com>
domain names to redirect Internet users to a prize website at the
<thepbc.co.uk> domain name that features links and advertisements
to
gambling websites and various products and services. Respondent’s use of domain names confusingly similar to Complainant’s
DATING DIRECT marks to divert Internet users seeking Complainant’s
products and
services to a gaming website 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 pursuant to Policy ¶ 4(c)(iii). See Imation Corp. v. Streut,
FA 125759 (Nat. Arb. Forum Nov. 8, 2002) (finding no rights or legitimate
interest where Respondent used the disputed domain name
to redirect Internet
users to an online casino); see also Oly
Holigan, L.P. v. Private, FA 95940 (Nat. Arb. Forum Dec. 4, 2000) (finding
no rights or legitimate interest in a misspelled domain name as Respondent was
merely using it to redirect Internet users to, inter alia, an online
casino).
Moreover,
Complainant argues that Respondent is not commonly known by the <russiandatingdirect.com>
and <mmsdatingdirect.com> domain names, and there is no
evidence to suggest that Respondent is commonly known by the disputed domain
names. Furthermore, Complainant has not
given Respondent permission to use Complainant’s DATING DIRECT marks. Thus, Respondent does not have rights or
legitimate interests in the disputed domain names 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
RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting
Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known
by the domain name prior to registration of the domain name to prevail").
Thus, the Panel
finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant is
in the business of offering online dating services. Respondent used the <russiandatingdirect.com> and <mmsdatingdirect.com>
domain names to divert Internet users to Internet dating websites. Respondent’s use of domain names confusingly
similar to Complainant’s marks to divert Internet users to websites offering
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 Gen. Media
Communications, Inc. v. Vine Ent., FA 96554 (Nat. Arb. Forum Mar. 26, 2001)
(finding bad faith where a competitor of Complainant registered and used a
domain name
confusingly similar to Complainant’s PENTHOUSE mark to host a
pornographic web site).
Respondent has
used the <russiandatingdirect.com> and <mmsdatingdirect.com>
domain names to attract Internet users interested in Complainant’s DATING
DIRECT goods and services to Respondent’s commercial websites. Respondent has used domain names confusingly
similar to Complainant’s marks to create a likelihood of confusion between the
marks
and Respondent’s commercial websites.
Respondent’s practice of diversion for commercial gain is evidence of
bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Encyclopaedia
Britannica Inc. v. Shedon.com, D2000-0753 (WIPO Sept. 6, 2000) (finding
that Respondent violated Policy ¶ 4(b)(iv) by using the domain name
<britannnica.com>
to hyperlink to a gambling site); 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).
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 <russiandatingdirect.com> and <mmsdatingdirect.com>
domain names be TRANSFERRED from Respondent to Complainant.
John
J. Upchurch, Panelist
Dated: December 6, 2004
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URL: http://www.worldlii.org/int/other/GENDND/2004/1583.html