DECISION

DatingDirect.com Limited v. Andrey Koryakin

Claim Number:  FA0404000250764

PARTIES

Complainant is DatingDirect.com Limited (“Complainant”), represented by Adam Taylor, of Adlex Solicitors, 76A Belsize Lane, London, NW3 5BJ, UK.  Respondent is Andrey Koryakin (“Respondent”), 2 – 8 – 18, Luchegorsk, Promorskiy kray, 692001 Russia.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <dating-direct.info>, registered with iHoldings.com, Inc. d/b/a DotRegistrar.com.

PANEL

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.

Sandra Franklin as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on April 2, 2004; the Forum received a hard copy of the Complaint on April 5, 2004.

On April 14, 2004, iHoldings.com, Inc. d/b/a DotRegistrar.com confirmed by e-mail to the Forum that the domain name <dating-direct.info> is registered with iHoldings.com, Inc. d/b/a DotRegistrar.com and that Respondent is the current registrant of the name. iHoldings.com, Inc. d/b/a DotRegistrar.com has verified that Respondent is bound by the iHoldings.com, Inc. d/b/a DotRegistrar.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 April 14, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 4, 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@dating‑direct.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 Forum transmitted to the parties a Notification of Respondent Default.

On May 21, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra Franklin 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.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <dating-direct.info> domain name is confusingly similar to Complainant’s DATINGDIRECT.COM and DATING DIRECT marks.

2. Respondent does not have any rights or legitimate interests in the <dating-direct.info> domain name.

3. Respondent registered and used the <dating-direct.info> domain name in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant, DatingDirect.com Limited, offers an international online dating agency service “for singles seeking serious friendships and relationships.”  Complainant’s lifetime revenues approximate £9.1 million, with £5.3 million in 2003 alone.  Complainant registered the DATINGDIRECT.COM mark (No. 2,232,175) with the UK Patent Office on May 11, 2000.  Complainant has also submitted an application for the DATING DIRECT mark (No, 2,319,425), filing on December 24, 2002.

Respondent registered the <dating-direct.info> domain name on August 23, 2003.  The disputed domain name refers traffic to <adultfriendfinder.com>, which describes itself as “the world’s largest sex and swinger personals site.” 

Complainant sent a cease and desist email to Respondent, alexusaw@hotmail.com, on February 26, 2004.  Respondent’s reply read as follows: “$9900 (only for you.)  Kind regards Alexus PS This 2 words are your property?”

DISCUSSION

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.

Identical and/or Confusingly Similar

The Panel finds that Complainant has established rights in the DATINGDIRECT.COM mark by its registration with the UK Patent Office, and its use in commerce.  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.

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 SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) finding that the Rules do not require that Complainant's trademark or service mark be registered by a government authority or agency for such rights to exist. Rights in the mark can be established by pending trademark applications; see also 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.

Respondent’s <dating-direct.info> domain name is confusingly similar to Complainant’s marks.  The only difference is the addition of a hyphen, which does not significantly distinguish the domain name from the mark.  See Nintendo Of Am. Inc. v. This Domain Is For Sale, D2000-1197 (WIPO Nov. 1, 2000) finding <game-boy.com> identical and confusingly similar Complainant’s GAME BOY mark, even though the domain name is a combination of two descriptive words divided by a hyphen; see also InfoSpace.com v. Tenenbaum Ofer, D2000-0075 (WIPO Apr. 27, 2000) (“The domain name ‘info-space.com’ is identical to Complainant’s INFOSPACE trademark. The addition of a hyphen and .com are not distinguishing features.”).

The Panel finds that Complainant has established Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Respondent has not filed a Response.  In light of the absence of a Response, the Panel may accept any reasonable assertions by Complainant as true.  See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) finding that failing to respond allows a presumption that Complainant’s allegations are true unless clearly contradicted by the evidence; see also Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) holding that Respondent’s failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true.

Respondent has appropriated Complainant’s mark to link to a website that offers competing services—relationships.  The Panel finds that this is not a bona fide offering of 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 Yahoo! Inc. v. Web Master, FA 127717 (Nat. Arb. Forum Nov. 27, 2002) finding that Respondent’s use of a confusingly similar domain name to operate a pay-per-click search engine, in competition with Complainant, was not a bona fide offering of goods or services; 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.

Nothing in the record, including the WHOIS domain name registration, demonstrates that Respondent is otherwise known by the disputed 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 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.

The Panel finds that Complainant has established Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Respondent solicited $9,900 from Complainant to transfer the domain name registration.  Respondent’s comments, “only for you,” indicate that it made this offer specifically to Complainant.  There is nothing in the record to suggest $9,900 is the going rate for domain names in either the UK or Russia.  The Panel infers that Respondent has registered the disputed domain primarily for the purpose of selling it for valuable consideration in excess of its out-of-pocket costs, pursuant to Policy ¶ 4(b)(i).  See Pocatello Idaho Auditorium Dist. v. CES Marketing Group, Inc., FA 103186 (Nat. Arb. Forum Feb. 21, 2002) ("What makes an offer to sell a domain [name] bad faith is some accompanying evidence that the domain name was registered because of its value that is in some way dependent on the trademark of another, and then an offer to sell it to the trademark owner or a competitor of the trademark owner."); see also Little Six, Inc v. Domain For Sale, FA 96967 (Nat. Arb. Forum Apr. 30, 2001) (finding Respondent's offer to sell the domain name at issue to Complainant was evidence of bad faith).

Respondent is also appropriating Complainant’s mark to offer competing services.  This is evidence of bad faith registration and use, pursuant to Policy ¶ 4(b)(iii).   See Surface Protection 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 SR Motorsports v. Rotary Performance, FA 95859 (Nat. Arb. Forum Jan. 4, 2001) finding it "obvious" that the domain names were registered for the primary purpose of disrupting the competitor's business when the parties are part of the same, highly specialized field.

The Panel finds that Complainant has established Policy ¶ 4(a)(iii).

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 <dating-direct.info> domain name be TRANSFERRED from Respondent to Complainant.

Sandra Franklin, Panelist

Dated:  June 4, 2004

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