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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> DatingDirect.com Ltd -v- Keepmajor Ltd [2003] DRS 1022 (28 July 2003) URL: http://www.bailii.org/uk/cases/DRS/2003/1022.html Cite as: [2003] DRS 1022 |
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Nominet UK Dispute Resolution Service
DRS 1022/1023/1024
DatingDirect.com Limited –v- Keepmajor Limited/ World Dating Direct / Robert Swan
Decision of Independent Expert
1. Parties:
Complainant: DatingDirect.com Limited
Country: GB
Respondent: Keepmajor Limited / World Dating Direct / Robert Swan
Country: GB GB
2. Domain Names:
DATINDIRECT.CO.UK; DATINDIRECT.ORG.UK; DATINDIRECT.ME.UK; FREEDATINGDIRECT.CO.UK; WORLDDATINGDIRECT.CO.UK
3. Procedural Background:
The Complaint was lodged with Nominet on 30th May 2003. Nominet validated the Complaint and notified the Respondent of the Complaint on 30th May 2003 and informed each Respondent that it had 15 days within which to lodge a Response.
No response was received from any of the Respondents.
Accordingly the dispute was referred for a decision by an Independent Expert following payment by the Complainant of the required fee for a decision of an Expert pursuant to paragraph 6 of the Nominet UK Dispute Resolution Service Policy (“the Policy”).
David Flint, the undersigned, (“the Expert”) confirmed to Nominet that he knew of no reason why he could not properly accept the invitation to act as expert in this case and further confirmed that he knew of no matters which ought to be drawn to the attention of the parties, which might appear to call into question his independence and/or impartiality.
4. Outstanding Formal/Procedural Issues (if any):
None
5. The Facts:
Complainant:
The Domain Names in issue are DATINDIRECT.CO.UK; DATINDIRECT.ORG.UK; DATINDIRECT.ME.UK; FREEDATINGDIRECT.CO.UK; WORLDDATINGDIRECT.CO.UK.
The Complainant offers a respectable online dating agency service for singles seeking serious friendships and relationships and has done so since March 1999. It has been the registrant of DATINGDIRECT.COM, DATINGDIRECT.CO.UK since 1999.
The Complainant has produced evidence that it has spent substantial sums (in excess of £2.5M) on marketing its activities and now has some two million registrations in total; approximately 550,000 of whom are active members ie they have a profile and have used the site within the last three months. This year the Complainant has gained about 2500 new members per day.
There is a dating website registered to the Respondents at FREEDATINGDIRECT.COM. Eight DATINDIRECT domains (including those which are the subject of this complaint are directed to that site . All other FREEDATINGDIRECT and WORLDDATINGDIRECT domains of the Respondents divert to the same “UK Reg” parking page except for WORLDDATINGDIRECT.COM which brings up an error message.
Robert Swan is a director of Keepmajor Limited which specifies its business as “sale of motor vehicles”.
“World Dating Direct” is clearly a name used by Robert Swan. Its Kirkcaldy address on the FREEDATINGDIRECT.CO.UK whois is the same one used for Keepmajor Limited as well as Scothosts (the agent) on other domains. Indeed, FREEDATINGDIRECT.CO.UK is directed to the same parking page as three other domains owned by Robert Swan / Keep Major Limited.
The Complainant sent a cease and desist letter to the Respondents on 3 February 2003 and chased by special delivery on 7 March. No response has been received.
The Complainant owns UK trade mark 2232175 dated 11 May 2000: series of device / word marks for DATINGDIRECT.COM in class 42 – dating and online dating services.
The Complainant applied (no 2319425) on 24 December 2002 for a UK trade mark for the words DATING DIRECT in class 45 - dating and online dating services. A trade mark application can constitute rights.
The Complainant has acquired substantial reputation and goodwill in the Names such that they are recognised by the public as distinctive of the Complainant’s services. The Complainant relies on its extensive marketing activities, outlined above.
The Complainant is commonly referred to as “Dating Direct”, as well as “DatingDirect.com” (with slight variations). Even where the latter is used, the context tends to be such (eg “DatingDirect.com” or use with distinctive branding) that the reference is clearly to a specific company.
6. The Parties’ Contentions:
Complainant:
The substance of each Complaint is short and reads as follows: -
The Domain Name in dispute is identical or similar to a name or mark in which the Complainant has Rights.
The Complainant confirms that the Domain Name in the hands of the Respondent is an Abusive Registration.
Respondent:
No response was received from any Respondent.
7. Discussion and Findings:
General
To succeed in this Complaint the Complainant has to prove to the Expert pursuant to paragraph 2 of the Policy on the balance of probabilities, first, that it has rights (as defined in paragraph 1 of the Policy) in respect of a name or mark identical or similar to the Domain Name and, secondly, that the Domain Name, in the hands of the Respondent, is an Abusive Registration (as defined in paragraph 1 of the Policy).
Complainant’s Rights
In this case the first limb of that task is straightforward. The Complainant is the proprietor of rights in the name DatingDirect. Two of the Domain name comprise the name DatingDirect combined with the suffix <.co.uk> together with the prefix “Free” or “World”. The other three domain names comprise a misspelling of the name “DatingDirect” (the letter “g” is omitted) combined with a suffix <.co.uk>, <org.uk> and <me.uk>.
In assessing whether or not a name or mark is identical or similar to a domain name, it is appropriate to discount the domain suffix, which is of no relevant significance and wholly generic.
The Complainant has a registered trademark for DatingDirect.com, an application for Dating Direct and substantial goodwill in the name Dating Direct as evidenced by its marketing activities, subscriber base and prominence on search engine searches.
Accordingly, the Expert finds that the Complainant has rights in respect of a name or mark, which is identical or similar to each Domain Name.
Abusive Registration
This leaves the second limb. Is the Domain Name, in the hands of the Respondent, an Abusive Registration? Paragraph 1 of the Policy defines “Abusive Registration” as:-
“a Domain Name which either:
i. was registered or otherwise acquired in a manner, which at the time when the registration or acquisition took place, took unfair advantage of or was unfairly detrimental to the Complainant’s Rights; OR
ii. has been used in a manner, which took unfair advantage of or was unfairly detrimental to the Complainant’s Rights.”
A non-exhaustive list of factors, which may be evidence that the Domain Name is an Abusive Registration is set out in paragraph 3a of the Policy.
There is a suggestion by the Complainant that the Respondent has engaged in a pattern of making Abusive Registrations (although the Expert has no evidence of any finding to that effect in the .uk Top Level Domain or its subdomains). The finding of bad faith registration under the UDRP, does not, in the opinion of this Expert, meet that test. Accordingly, the Expert does not consider that the test required by paragraph 3 a iii to be met. There being no suggestion that the Respondent has given to Nominet false contact details, the only potentially relevant ‘factors’ in paragraph 3 a are to be found in subparagraphs i and ii, which read as follows:
i “Circumstances indicating that the Respondent has registered or otherwise acquired the Domain Name:
A. primarily for the purposes of selling, renting or otherwise transferring the Domain Name to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly associated with acquiring or using the Domain Name;
B. as a blocking registration against a name or mark in which the Complainant has Rights; or
C. primarily for the purpose of unfairly disrupting the business of the Complainant;”
ii “Circumstances indicating that the Respondent is using the Domain Name in a way which has confused people or businesses into believing that the Domain Name is registered to, operated or authorised by, or otherwise connected with the Complainant.”
The Expert interprets “as” in sub-paragraph i. B as being synonymous with “for the purpose of”. Were it to be interpreted otherwise all domain name registrations would inevitably constitute “blocking registrations” for any later arrival wishing to use the name in question.
As far as the Domain Names DATINDIRECT.CO.UK; DATINDIRECT.ORG.UK; DATINDIRECT.ME.UK are concerned, the Expert finds that each of those Domain Names is an Abusive Registration within the definition of that term in paragraph 1 of the Policy on the basis that it was registered in a manner which, at the time when the registration took place, took unfair advantage of the Complainant’s rights. In this regard it is to be noted that each of the Respondents’ said Domain Names resolves to a site the <TITLE> tag for which reads “Dating Direct – the Internet’s only free dating agency”. As at the date of this Decision none of the said Domain Names actually resolves to a website as the FREEDATINGDIRECT.COM website which is mentioned in the source for the home page, was transferred to the Complainant as the result of a decision of 9th June 2003 in a proceeding under the UDRP (DatingDirect.com Limited v. Robert Swan c/o Keep Major/Keep Major Limited Claim Number: FA0305000156717).
In respect of the Domain Names FREEDATINGDIRECT.CO.UK; WORLDDATINGDIRECT.CO.UK, there is no evidence to suggest that either Domain Name has ever resolved or will ever resolve to a website which will evidence an abusive registration of such Domain Name, although the Complainant is justifiably fearful thereof.
Despite the view of the Panellist in the UDRP Decision above referred to, this Expert does not consider that the passive holding of domain names, which are not identical to a name in which a complainant has rights, without any other activity in respect thereof is sufficient to evidence an abusive registration under the Policy. Should the Respondents (or any other party) make abusive use of either Domain Name in the future it is open to the Complainants to seek redress at that time, although it may be that the use will be non-abusive given the quasi-generic nature of these Domain Names.
Applicable remedies
Reference is made in the Complaint to the two existing Decisions in the .me.uk SLD. In in DRS 292 the Expert ordered the transfer of a .me.uk domain to a corporate entity whereas the Expert in DRS 669 felt that such a transfer was ultra vires and suspended the domain.
The Specific Rules for the .me.uk SLD http://www.nominet.org.uk/ ReferenceDocuments/Rules/SpecificRulesForThemeukSld/ state:
“2. Charter
The .me.uk SLD is intended to provide a personal namespace within the .uk Top Level Domain. It is anticipated that registrants will be natural persons who have an association with the UK..
3. Abusive registrations
There shall, without exclusion, be a sufficient demonstration of an abusive registration if the registrant is not a natural person and cannot demonstrate that they have registered the domain name with the agreement at the time of a specific natural person and that the domain name was a reasonably faithful representation of that person’s legal name.”
It appears to this Expert that, whilst the .me.uk SLD was intended for natural persons, there is no prohibition on others registering therein. The only issue is the additional grounds for abuse being found under paragraph 3 of the Policy as supplemented by rule 3 for the me.uk SLD.
In these circumstances the Expert considers that it is open to him to order transfer of the Domain Name DATINDIRECT.ME.UK to the Complainant, albeit that should some natural person emerge with the name “Datindirect”, that person could secure the transfer of that Domain Name to him. In order for such a registration to be abusive, it seems to the Expert that there must be some party who is able to claim that his rights are being infringed; the abuse cannot exist in abstract.
8. Decision:
In light of the foregoing findings, namely that:
1. the Complainant has rights in respect of a name or mark which is similar to the Domain Names DATINDIRECT.CO.UK, DATINDIRECT.ORG.UK, DATINDIRECT.ME.UK FREEDATINGDIRECT.CO.UK and WORLDDATINGDIRECT.CO.UK; and
2. the Domain Names DATINDIRECT.CO.UK, DATINDIRECT.ORG.UK and DATINDIRECT.ME.UK, in the hands of the Respondent, are each an Abusive Registration,
3. the Domain Names FREEDATINGDIRECT.CO.UK and WORLDDATINGDIRECT.CO.UK are each not an Abusive Registration within the definition of that term in paragraph 1 of the Policy,
the Expert directs that the Domain Names, DATINDIRECT.CO.UK, DATINDIRECT.ORG.UK and DATINDIRECT.ME.UK, be transferred to the Complainant
but that in respect of the Domain Names FREEDATINGDIRECT.CO.UK and WORLDDATINGDIRECT.CO.UK the Expert refuses the request for transfer of said names.
David Flint
Date: 28 July 2003