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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Datingagency.com Ltd -v- DatingDirect.com Ltd [2003] DRS 753 (14 February 2003) URL: http://www.bailii.org/uk/cases/DRS/2003/753.html Cite as: [2003] DRS 753 |
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Nominet UK Dispute Resolution Service
DRS 00753
Datingagency.com Ltd v DatingDirect.com Ltd
Decision of Independent Expert
1. Parties
Complainant: Datingagency.com Ltd
Country: UK
Respondent: DatingDirect.com Ltd
Country: UK
2. Domain Names:
DATINGAGENCY.CO.UK
DATING-AGENCY.CO.UK
3. Procedural background:
3.1 The Complaint was lodged with Nominet on December 3rd, 2002. Nominet validated the Complaint and notified the Respondent on December 5th, 2002 and informed the Respondent that it had until December 31st, 2002 within which to lodge a Response. On December 31st, 2002 the Respondent filed a response. On January 2nd, 2003 Nominet forwarded a copy of the Response to and notified the Complainant that it had until January 13th, 2003 to file a Reply. On January 13th, 2003 the Complainant filed a Reply which was copied to the Respondent on January 14th, 2003.
3.2 On January 24th, 2003 Nominet informed the Complainant and the Respondent that it had not been possible to achieve a resolution of the dispute by Informal Mediation..
3.3 On January 24th, 2002 the Complainant paid Nominet the appropriate fee for a decision of an Expert pursuant to paragraph 6 of the Nominet UK Dispute Resolution Service Policy (“the Policy”).
3.4 On January 27th, 2003 Andrew Goodman, 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.
3.5 On January 27th, 2003 Andrew Goodman was appointed as the Expert.
4. Procedural Issues
4.1 On 29th January 2003 the Respondent submitted a Further Submission in opposition to the relief sought by the complaint. I directed that the Complainant might serve a reply to the further submission by February 5th 2003. On that date the Complainant served a Reply to the Respondent’s Further Submission.
4.2 There are, so far as I am aware, no live procedural issues raised by either party which have a bearing upon this decision.
5. The Facts
5.1 On July 1st and 11th 1998 the Domain Names were registered respectively by a Mr Joe Ricotta. Since May 2001 the Complainant has in the UK advertised itself and promoted its business by use of unregistered rights in the Mark “DATING AGENCY” and its domain name registrations which include the Mark, namely datingagency.com, dating-agency.com, datingagency.net, datingagency.org, datingagency.biz, datingagency.info and datingagency.tv.
5.2 In September 2001 the Complainant became aware that the domain name datingagency.co.uk was being used as a link to a hard core pornography site and initiated Nominet’s then dispute resolution service to cancel the domain name registration on the basis that the name was being used in a manner likely to cause confusion to internet users, under Rule 3.5 of the then procedure. On October 31 2001 Nominet issued a decision not to transfer the domain name to the Complainant on the basis that the appearance and content of the respective web sites differed significantly and in the circumstances Nominet was unable to find that current use of the domain name was unlikely to cause confusion to internet users. The complaint was referred to an independent expert, Guy Burkill QC, who issued a decision on 5th December 2001 which supported that of Nominet. I refer below to the substance of that decision, since both parties to the present complaint place reliance upon different parts of it. I do not regard it as binding upon me, but I do treat it as persuasive.
5.3 In May 2002 the domain names became available for sale on the open market and were acquired by the Respondent, a trade rival to the Complainant, who launched websites at the Domains on June 29, 2002. The Complainant asserts that this was an abusive registration and complains of unfair acquisition and unfair use.
6. Materials
6.1 I have perused and considered the Complaint dated December 2nd 2002 which contains detailed submissions and 11 annexures, each of which is preceded by a summary of the documents contained; the Response dated December 30th 2002 which contains 9 annexures, each preceded by a summary which analyses and responds to the Complainant’s evidence; the Reply dated January 13th 2003 containing 3 attachments; the Respondent’s Further Submission dated January 29th 2003; and the Reply to the Respondent’s Further Submission dated February 5th, 2003 to which is attached a further bundle of documents as Attachment A.
6.2 I recognise the cogency and detail of the arguments on both sides and am grateful for the obvious care and consideration which has gone into their preparation, and which has assisted me in the formulation of my decision. Should I not refer to each particular submission in detail or every piece of evidence it should not be taken that I have not received and considered it.
7. Contentions of the Parties
Complainant:
The substance of the Complaint may be set out shortly as follows:
7.1 It is said by the Complainant (i) that it has rights in respect of a Mark which is identical or similar to the Domain Names in dispute; (ii) the Domain Names in the hands of the Respondent constitute Abusive Registrations; (iii) the Respondent does not own a UK trade mark or any other registered Mark in respect of the Mark and makes no use of the Mark, save as forms part of the Complaint (iv) the Respondent acquired the Domain names primarily for the purpose of unfairly disrupting the business of the Complainant contrary to paragraph 3(a)(i)(c) of the Nominet Dispute Resolution Service Policy (“the Policy”); (v) by the Respondent’s use of the Domain Names in relation to the Complainant’s own dating services, people and businesses have been confused into believing that the Domain names are registered to, operated or authorised by, or otherwise connected with the Complainant, contrary to paragraph 3(a)(ii) of the Policy; (vi) that the Respondent is not using the Domain names in connection with a genuine offering of services but merely as a device to divert potential customers of the Complainant, and is thereby not making fair use of the Domain Names.
7.2 By its Reply the Complainant wishes to make clear that the Mark upon which it is relying extends to the forms “DATING AGENCY”, “DATINGAGENCY”“DATING-AGENCY” and “DATINGAGENCY.COM” and the Complainant is claiming rights in respect of each of these. I have given consideration to the Complaint on this basis.
7.3 The Complainant requests that the Domain Names are transferred.
Complainant’s supporting evidence
7.4 In support of its Complaint I have perused a number of documents attached to both Complaint, Reply and Reply to Further Submission which, in my view, establish the following propositions:
(i) the Domain Names are currently registered to the Respondent.
(ii) the Complainant was incorporated on 18th May 2001
(iii) the Complainant has promoted its business through the internet and through a website hosted from the names www.datingagency.com and www.dating-agency.com and the Mark in the form “dating agency.com” is in use prominently at the top of the web pages I have seen
(iv) the Complainant has received the thanks of satisfied members of its services who promote the service to others by word of mouth
(v) the Complainant has promoted its business through online and press advertising and the Mark in the form “datingagency.com” is in use prominently within such advertisements
(vi) descriptive trade marks have in the past and may acquire distinctiveness through use
(vii) in September 2001 the Complainant tried but failed to have cancelled or transferred to it the registration of datingagency.co.uk on the basis that the domain name was being used in a manner likely to cause confusion to internet users
(viii) the Complainant and the Respondent advertise through several of the same search engines
(ix) the Complainant is able to point to a number of similarities in the administration and marketing of the Respondent’s business and its own by reference to their respective websites
(x) there have undoubtedly been a number of instances of confusion in which members or business contacts of the Complainant had associated the domain name datingagency.co.uk with the Complainant but been referred to the Respondent.
(xi) as at December 2002 a Hitwise Report of Immediate Competitors in the On-Line dating industry showed that the Respondent held 9.14% (down from 9.66% in April, 2002) of market share and the Complainant 1% (up from 0.81% in April, 2002) of market share.
7.5 I have no reason to disbelieve the Complainant’s membership analysis set out in the Complaint, its hit/traffic numbers, or either its actual or potential for growth over the last year.
Respondent’s Response:
The Response rejects the Complaint and the evidence supporting it and contends
7.6 the Complainant can have no rights in the term “dating agency” since it is both generic and “wholly descriptive” within the meaning of the definition of “Rights” in the Definitions section of the Policy.
7.7 the Complainant’s assertion that in the context of online dating services the Complainant has built up and now owns a substantial reputation and goodwill in the Mark such that whenever members of the public see it used (online or otherwise) in relation to online dating services they associate the Mark with the Complainant and no other, is untenable. It is asserted that when the public use and recognise the term “dating agency” they associate it with the generic use of the words and not exclusively with the Claimant.
7.8 the use of the Mark in a stylised form on its website (datingagency.com) is irrelevant.
7.9 the Complainant’s comparison of the term “dating agency” with other descriptive marks which have become distinctive is flawed, since the examples given are not of themselves capable, like the present term, of generic use to describe all such businesses within the industry.
7.10 The Respondent rejects the claim that it acquired the Domain Names with the intention of diverting custom from the Complainant and relied upon its own position in the market place as ten times the size of the Complainant.
7.11 Such confusion as may have arisen is at the risk of the Complainant having chosen to adopt words in common use as its trade name.
7.12 In support of its Response the Respondent has served a number of documents, which I have perused and which, in my view, establish the following propositions
(i) the Respondent was incorporated in September, 1999
(ii) the Respondent has approximately ten times the market share of the Complainant
(iii) the Respondent appears to have approximately 15 times more members than the Complainant
(iv) the words “dating agency” are in common usage and the expression is the subject of dictionary definition as an established phrase
(v) the Respondent holds itself out as and is accepted by the public as being a “dating agency”
8. Discussion and Findings:
General
8.1 The complaint is founded on an allegation of abusive registration. Under the Nominet Dispute Resolution Service Policy an abusive registration is defined as
“a Domain Name which
i was registered or otherwise acquired in a manner which, at the time when the registration or acquisition took place, took unfair advantage or was unfairly detrimental to the Complainant’s Rights; or
ii has been used in a manner which took unfair advantage or was unfairly detrimental to the Complainant’s Rights.”
For the purpose of this definition “Rights” includes but is not limited to rights enforceable under English law. However a Complainant will be unable to rely on rights in a name or term which is wholly descriptive of the Complainant’s business. (my italics)
8.2 Part 3 of the Nominet Dispute Resolution Service Policy provides a non-exhaustive list of factors which may be evidence that the Domain Name is an Abusive Registration. I set out the relevant sections as follows:
I Circumstances indicating that the Respondent has registered or otherwise acquired the Domain Name:
A: primarily for the purpose of selling, renting or otherwise transferring the Domain Name to the Complainant or 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.
8.3 Part 4 of the Nominet Dispute Resolution Service Policy provides a non-exhaustive list of factors which may be evidence that the Domain Name is not an Abusive Registration. I set out the relevant sections as follows:
I Before being informed of the Complainant’s dispute, the Respondent has
A: used or made demonstrable preparations to use the Domain Name or a Domain Name which is similar to the Domain Name in connection with a genuine offering of goods and services;
B: been commonly known by the name or legitimately connected with a mark which is identical or similar to the Domain Name;
C: made legitimate non-commercial or fair use of the Domain Name; or
II The Domain Name is generic or descriptive and the Respondent is making fair use of it.
Complainant’s Rights
8.4 To succeed on this complaint the Complainant has to prove pursuant to paragraph 2 of the Policy that on balance of probabilities first that it has Rights as defined in paragraph 1 of the Policy which will be protected in respect of a name 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.
8.5 Notwithstanding the fact that the Complainant has clearly expended considerable time and effort in creating a successful business by use of the Mark, I find it impossible to say that the words “dating agency” are not a name or term which is wholly descriptive of the Complainant’s business and I am not assisted by the development of the Mark into its various forms by the addition of e-commerce suffixes. I consider the words “dating agency” to be both generic and descriptive and notwithstanding the success and development of the Complainant’s business I am not persuaded that the Complainant has acquired a secondary distinctive meaning through the use the Complainant has made of them adequate to give the Complainant sufficient protection as would enable it to have an unfair monopoly of those words. I am supported in this view by the analysis of Guy Burkill QC at paragraphs 22 and 23 of his decision dated 5th December 2001 (Complaint annexure 7) with which I agree.
8.6 While I accept and find as fact that there has been a confusion in the minds of the public as to the use made of the Domain Names by the Respondent, I accept the proposition advanced by the Respondent established by the House of Lords in Office Cleaning Services v Office Cleaning Association (1946) 63 RPC 43 that it is for the Complainant to bear this risk, it having chosen words in common usage as its trading name.
8.7 It follows from this finding that the Complainant does not have Rights upon which it may rely in seeking protection from Abusive Registration under the Policy, and accordingly it is not necessary for me to make any findings in connection with those issues.
9. Decision
9.1 I light of the foregoing findings, namely that the Complainant does not have protectable Rights in respect of a name or mark which is identical to the Domain Names, I direct that the complaint be dismissed.
Andrew Goodman
Date: 14 February 2003