WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

DatingDirect.com Limited v. Ho Nim

Case No. D2010-1120

1. The Parties

The Complainant is DatingDirect.com Limited of London, United Kingdom of Great Britain and Northern Ireland.

The Respondent is Ho Nim of Shanghai, People’s Republic of China.

2. The Domain Name and Registrar

The disputed domain name <datingdirectaffinaty.com> is registered with Above.com, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 7, 2010. On July 7, 2010, the Center transmitted by email to Above.com, Inc. a request for registrar verification in connection with the disputed domain name. On July 9, 2010, Above.com, Inc. 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” or “UDRP”), 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 July 13, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was August 2, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 3, 2010.

The Center appointed Miguel B. O'Farrell as the sole panelist in this matter on August 10, 2010. 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 company offering international online dating and matchmaking services for singles seeking serious friendships and relationships.

The Complainant owns a CTM trademark registration for DATINGDIRECTAFFINITY.COM, registered on June 17, 2009, in classes 35, 38, 39, 43 and 45 (including online dating services).

The disputed domain name <datingdirectaffinaty.com> was registered on December 12, 2009.

5. Parties’ Contentions

A. Complainant

The Complainant contends the following:

That the Complainant offers international online dating and matchmaking services for singles seeking serious friendships and relationships.

In that connection, the Complainant contends that it has traded under the names DATING DIRECT and DATINGDIRECT.COM since it launched the website “www.datingdirect.com” in 1999, and also under the name DATINGDIRECTAFFINITY since October 2008, when it launched its website “www.datingdirectaffinity.com”. In that respect, it contends that its websites “www.datingdirect.com” and “datingdirectaffinity.com” have a total annual audience of approximately 4.8 million Internet users.

The Complainant also contends that it owns a CTM trademark registration for DATINGDIRECTAFFINITY.COM, registered on June 17, 2009, in classes 35, 38, 39, 43 and 45 (including online dating services).

Moreover, the Complainant contends that its marketing expenditure has included advertising in national magazines and newspapers as well as specialized magazines; TV; national and local radio advertising; poster and leaflet campaigns in health clubs; and outdoor advertising.

Furthermore, the Complainant contends that its trademarks DATING DIRECT and DATING DIRECT AFFINITY are well recognized by the public.

The Complainant also contends that the Respondent registered and uses the disputed domain name <datingdirectaffinaty.com> in bad faith. In that connection, the Complainant contends that as of January 13, 2010, the disputed domain name resolved to a website with pay-per-links redirecting to other online dating websites which offered services competing to those rendered by the Complainant, including one link to the Complainant’s own website.

For that reason, the Complainant contends that on February 11, 2010, it sent the Respondent a cease and desist communication, to which it received no reply.

Moreover, the Complainant contends that the disputed domain name <datingdirectaffinaty.com> incorporates the Complainant’s trademark DATING DIRECT AFFINITY in its entirety, with the only difference that term “affinity” has been misspelled as “affinaty”, and therefore, that the disputed domain name is confusingly similar to a trademark on which the Complainant has rights.

Furthermore, the Complainant asserts that it has made a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and that the burden of proof has been shifted to the Respondent.

In that connection, the Complainant contends that it has no association with the Respondent and has never authorized or licensed the Respondent to use its trademarks.

Moreover, the Complainant contends that the Respondent has registered and is using the disputed domain name in bad faith.

In that connection, the Complainant contends that by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website and other on-line location, by creating a likelihood of confusion with the Complainant's trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.

For all the above-mentioned, the Complainant requests that the disputed domain name be transferred to the Complainant.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

For the Complaint to succeed in a UDRP proceeding, under paragraph 4(a) of the Policy, the Complainant must prove that:

(i) The disputed domain name is 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 disputed domain name; and

(iii) The disputed domain name has been registered and is being used in bad faith.

In accordance with paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.

A. Identical or Confusingly Similar

The Complainant has filed relevant evidence showing that it owns a CTM trademark registration for DATINGDIRECTAFFINITY.COM.

The disputed domain name <datingdirectaffinaty.com> incorporates the trademark DATINGDIRECTAFFINITY.COM in its entirety, with the exception that the term “affinity” has been misspelled as ”affinaty”, evidencing what is called a typo-squatting.

The misspelling of the word “affinity” in the disputed domain name does not avoid the risk of confusion with the Complainant's mark.

In view of the foregoing, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights, and therefore, the Complainant has succeeded on this first element under the Policy.

B. Rights or Legitimate Interests

According to paragraph 4(a)(ii), the second element that the Complainant must prove is that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Policy in its paragraph 4(c) sets out various ways in which a respondent may demonstrate rights or legitimate interests in a domain name.

Although the Policy states that the complainant must prove each of the elements in paragraph 4(a), it is often observed that it is difficult for a complainant to prove a negative, i.e., that a respondent has no rights or legitimate interests in respect of a domain name. It has therefore become generally accepted under the Policy that, once a complainant has presented a clear prima facie showing of a respondent's lack of rights or legitimate interests in a domain name, the burden of submitting evidence therefore shifts to the respondent. The respondent must then by concrete evidence demonstrate its rights or legitimate interests in the domain name in order to refute the prima facie case.

The Panel finds that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests and so the burden of demonstrating rights or legitmate interests have effectively been shifted to the Respondent, who did not reply to the Complainant's contentions and, therefore, has not made such showing.

Furthermore, the Complainant has submitted relevant evidence showing that the Respondent has not made a bona fide offering of goods or services.

The Complainant has presented evidence that the website to which the disputed domain name resolves contains pay-per-click links that redirect users to other online locations offering competing or strongly related services to those offered by the Complainant.

In the terms of the Policy, such use in the present circumstances does not appear to be a fair use of the domain name and, therefore, the Panel finds that the Respondent is trying to misleadingly divert consumers to the website to which the disputed domain name resolves. Moreover, the Panel finds that the Respondent is attracting Internet users to its website and to the Complainant's competitors' websites, for commercial gain. Such use cannot be considered a bona fide use, or fair or noncommercial use.

Additionally, there is no evidence that the Respondent is commonly known as or identified by “datingdirectaffinaty”. Furthermore, there is no evidence showing that the Respondent operates a business or any other organization under the disputed domain name.

For these reasons, and in the absence of a plausible explanation from the Respondent, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

According to paragraph 4(a)(iii) of the Policy, the third element that a complainant must prove is that the domain name has been registered and is being used in bad faith.

The Policy in paragraph 4(b) sets out various circumstances, which may be treated by the Panel as evidence of the registration and use of a domain name in bad faith.

The Complainant has identified itself as a company offering international online dating and matchmaking services for singles seeking serious friendships and relationships, which was further proved by the evidence submitted.

Moreover, the Complainant has proved to the Panel's satisfaction that it owns a CTM trademark registration for DATINGDIRECTAFFINITY.COM, registered on June 17, 2009, in classes 35, 38, 39, 43 and 45 (including online dating services).

Furthermore, the Complainant has proved to the Panel’s satisfaction that the website to which the disputed domain name resolved had pay-per-links redirecting to other online dating websites, including a link to the Complainant’s own website.

The disputed domain name <datingdirectaffinaty.com> was registered on December 12, 2009¹.

In view of the foregoing, and in the absence of a rebuttal from the Respondent, the Panel finds that the Respondent in all likelihood was aware or must have been aware of the trademark DATINGDIRECTAFFINITY.COM before registering the disputed domain name, which evidences bad faith registration.

Moreover, as stated by the Complainant and on the basis of the printouts of the website to which the disputed domain name resolves, and in the absence of a rebuttal by the Respondent, the Panel finds that by using the disputed domain name the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line locations, by creating a likelihood of confusion with the Complainant's trademark as to the source, sponsorship, affiliation, or endorsement.

For these reasons, the Panel finds that the Respondent both registered and is using the disputed domain name in bad faith and that the Complainant has therefore made out the third element of its case.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <datingdirectaffinaty.com> be transferred to the Complainant.

Miguel B. O'Farrell
Sole Panelist
Dated: August 24, 2010

¹ The Respondent may have been assigned the disputed domain name on February 11, 2010, in response to a cease-and-desist letter sent by the Complainant to the initial registrant of the domain name. Whether there was an actual change in registrant, rather than a mere alteration made to the WhoIs records by the Respondent, is unclear. However, in the terms of the Policy, the transfer of a domain name to a third party does amount to a new registration and registration in bad faith must occur at the time the current registrant took possession of the domain name (WIPO Overview of WIPO Panel Views on Selected UDRP Questions 3.7).