WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
QSoft Consulting Limited v. Domain-Holdings.co.uk
Case No. D2007-1278
1. The Parties
The Complainant is QSoft Consulting Limited, of Middlesex, United Kingdom of Great Britain and Northern Ireland, represented by Olswang, United Kingdom of Great Britain and Northern Ireland.
The Respondent is Domain-Holdings.co.uk, of Leeds, West Yorkshire, United Kingdom of Great Britain and Northern Ireland.
2. The Domain Names and Registrar
The disputed domain names, <gaydarfree.com>, <gaydarlinks.com>, <gaydarsexfactor.com>, <gaydarsexfactor.net> and <nowgaydar.com> (together, the “Domain Names”), are all registered with Tucows (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 28, 2007. On August 31, 2007, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On September 4, 2007, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 10, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was September 30, 2007. The Response was filed with the Center on September 30, 2007.
The Center appointed Tony Willoughby as the sole panelist in this matter on October 12, 2007. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The Complainant is a registered United Kingdom company. It is the proprietor of a gay dating website at “www.gaydar.co.uk” and the independent radio station, GaydarRadio, which is to be found at “www.gaydarradio.com”. It commenced business in 1999.
The Complainant is the registered proprietor of various trade mark registrations of or including the word GAYDAR including Community Trade Mark No. 2127264 applied for on March 13, 2001 and registered on January 9, 2003 GAYDAR (word) in classes 35, 38 and 42 in relation promotional, communication, dating agency and website design services.
The Complainant is also the proprietor of a large number of domain name registrations of names featuring the word GAYDAR e.g. <gaydar.co.uk> (registered 1999), <gaydarradio.com> (registered 2000), <my-gaydar.com> (registered 2001).
The registration dates of the Domain Names are as follows: <gaydarfree.com> and <nowgaydar.com> (February 15, 2002), <gaydarsexfactor.com> and <gaydarsexfactor.net> (April 18, 2005) and <gaydarlinks.com> (August 8, 2005).
Currently, the Domain Names are all connected to sites hosted by the Respondent (copyright notices featuring the name of the Respondent appear at the foot of each page). In each case the webpage indicates that the Domain Name in question is for sale and includes a link or links to other gay sites of one kind or another. One of the links is to a gay site at “www.gaydar.com”, the <gaydar.com> domain name having been registered by an individual in the United States of America on May 4, 1998.
5. Parties’ Contentions
The Complainant contends that the Domain Names and each of them are either identical or confusingly similar to trade marks or service marks in which they have rights.
The Complainant contends that it is the largest online gay dating agency in the United Kingdom and that the agency and the Complainant’s radio station, GaydarRadio, are very well-known within the gay community in the United Kingdom. The Complainant states that it has not granted any licence to the Respondent to use its trademark and asserts that the Respondent has no rights or legitimate interests in respect of the Domain Names. It contends that none of the examples of rights and legitimate interests set out in paragraph 4(c) of the Policy is applicable.
Finally, the Complainant contends that the Domain Names were registered and are being used in bad faith. The Complainant has produced evidence to show that the Respondent is closely associated with All Points North Publications Limited, a United Kingdom company, which has operated for many years in business activities targeted at the gay community in the United Kingdom. The Complainant contends that it is inconceivable that the Respondent was not aware of the Complainant and its business activities under the GAYDAR trade marks, when it registered the Domain Names.
The Complainant contends that the Domain Names were registered and are being used in bad faith within the meaning of paragraphs 4(b)(ii), (iii) and (iv) of the Policy.
The Respondent denies the Complainant’s allegations.
The Respondent produces evidence to show that the Respondent is not the only user of the name “Gaydar”. In particular, the Respondent draws attention to the website connected to the domain name, <gaydar.com>, which appears to be operated by a third party. The Respondent also draws attention to a Wikipedia definition of “Gaydar”, which does not refer to the Complainant.
The Respondent also produces evidence to show that the Respondent does not have exclusive rights to the name “Sexfactor”.
The Respondent states that it “acquired these domain names for a potential future project and have not yet used them for any purpose whatsoever”. The Respondent goes on to say that “there is no intent to misleadingly divert consumers away from the Complainant’s business”.
Finally, the Respondent denies that it has used the Domain Names in bad faith. The Respondent recites each of the examples of bad faith registration and use as set out in paragraph 4(b) of the Policy and asserts that none of them is applicable.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Names, the Complainant must prove that:
(i) The Domain Names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Names; and
(iii) The Domain Names have been registered in bad faith and are being used in bad faith.
B. Identical or Confusingly Similar
Each of the Domain Names features as its principal distinctive element the word “gaydar”. None of the additional words in the Domain Names (i.e. “links”, “free”, “now” and “sexfactor”) is anything other than generic or descriptive.
GAYDAR is a registered Community Trade Mark of the Complainant. The Respondent has shown that a third party (not apparently connected with the Complainant) is operating a gay site at a website connected to the domain name, <gaydar.com>. That domain name was registered ahead of the Complainant setting up in business. However, whatever may be the case elsewhere in the world, the Complainant has exclusive rights to the name in the European Union in the classes of services for which the mark is registered.
The Panel finds that the Domain Names and each of them are confusingly similar to a trade mark or service mark in which the Complainant has rights.
C. Rights or Legitimate Interests
The Respondent asserts that it is not using the Domain Names. It asserts that it registered them for a “potential future project”, but does not disclose any details of the project, let alone produce any supporting evidence to demonstrate the preparations that the Respondent has made in that direction. The Respondent acknowledges that it is not in any way associated with the Complainant, nor does it claim to be known by any of the Domain Names.
On that basis none of the examples of rights and legitimate interests set out in paragraph 4(c) of the Policy is applicable.
The Complainant, on the other hand, has produced evidence to show that each of the Domain Names is connected to a website with links to other gay sites (i.e. sites operating in the Complainant’s target market). Indeed, the Panel has visited the sites connected to the Domain Names and there is no scope for doubt in the matter.
The Complainant has made out a prima facie case calling for an answer from the Respondent, but the Respondent has not put in any convincing answer to the Complainant’s allegations.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Names.
D. Registered and Used in Bad Faith
The Complainant asserts that the Respondent registered the Domain Names for one or more of the reasons set out in Paragraphs 4(b)(ii), (iii) and (iv) of the Policy. In support of those allegations, the Complainant produces evidence to demonstrate that anyone connected with the gay community in the United Kingdom will be likely to have heard of the Complainant and one or more of its GAYDAR services.
The Complainant also produces convincing evidence to suggest that the Respondent is connected with a publishing company operating in the gay community in the United Kingdom, which has registered various domain names very similar to the Domain Names. The Panel accepts the Complainant’s claim that it is inconceivable that at the dates of registration of the Domain Names a business targeting the gay community in the United Kingdom cannot have been aware of the Complainant’s website or radio station. The clear inference is that the Respondent has registered the Domain Names for some purpose designed to disrupt the business of the Complainant and/or to take a free ride on the goodwill of the Complainant.
In answer, all that the Respondent has to say is that it is not using the Domain Names to disrupt the Complainant’s business in any way and has “no involvement or beneficial interest in any of the services offered by the Complainant or any other company which targets the gay and lesbian marketplace”.
The Panel was concerned at the existence of the <gaydar.com> domain name and website. There was the possibility that the Respondent’s intentions were directed to that site rather than anything to do with the Complainant. However, that is not an argument that the Respondent has put forward and, given that both parties are domiciled in the United Kingdom, the Panel accepts that the overwhelming probability is that the Respondent is targeting the Complainant.
Another concern of the Panel was that the Respondent’s denial of any use of the Domain Names was so categorical that it might be that the offending sites to which the Domain Names are connected are in fact sites of a service provider rather than the Respondent. However, as indicated above, the copyright notices at the foot of each webpage identify the Respondent as the copyright owner. The Respondent’s bare denials, without further explanation, simply do not stand up.
In these circumstances, the Panel has no alternative but to find that the Respondent’s response is disingenuous and motivated by a desire to fog the issue rather than to clarify it. The Panel is in no position to identify precisely what the Respondent’s motivation is in relation to the Domain Names, however, the Panel is satisfied that when the Domain Names were registered the Respondent:
1. was aware of the Complainant and its ‘Gaydar’ businesses
2. intended to target those businesses
3. intended to cause damage to and/or derive an unfair benefit from the Complainant’s trade mark rights
Accordingly, the Panel finds that the Domain Names were registered and are being used in bad faith within the meaning of one or more of the examples of bad faith registration and use set out in paragraph 4(b) of the Policy.
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names, <gaydarfree.com>, <gaydarlinks.com>, <gaydarsexfactor.com>, <gaydarsexfactor.net> and <nowgaydar.com>, be transferred to the Complainant.
Dated: October 18, 2007