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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> eharmony.com Inc. v Donavan [2007] DRS 4202 (12 February 2007) URL: http://www.bailii.org/uk/cases/DRS/2007/4202.html Cite as: [2007] DRS 4202

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Nominet UK Dispute Resolution Service DRS 04202 eharmony.com Inc –v- Brett Donavan Decision of Independent Expert

1. Parties:

Complainant: eharmony.com Inc.

Country: US

Respondent: Brett Donavan

Country: UK

2. Domain Name:

eharmony.co.uk ("the Domain Name")

3. Procedural Background:

10/11/2006 Dispute entered into system

14/11/2006 Hardcopies received

15/11/2006 Complaint documents generated and sent to Respondent

06/12/2006 Non-Standard electronic response received: Response made on electronic Reply form. Made contact with Respondent to confirm whether this was his formal response.

11/12/2006 Electronic Response entered into system

11/12/2006 Response hardcopies received

11/12/2006 Response forwarded to Complainant

19/12/2006 Reply entered into system

19/12/2006 Reply hardcopies received

19/12/2006 Initiate mediation documents generated

22/01/2007 End of Mediation documents generated and sent to Parties

25/01/2007 Decision Fee received from Complainant

29/01/2007 Mr Iain M Tolmie selected as expert

3.1. On the 25^th January 2007, I (Iain M. Tolmie, the undersigned, "the Expert") was contacted by the Nominet Dispute Resolution Service and I confirmed to them that:

"I am independent of each of the parties. To the best of my knowledge and belief, there are no facts or circumstances, past or present, or that could arise in the foreseeable future, that need be disclosed as they might be of a such a nature as to call in to question my independence in the eyes of one or both of the parties."

3.2. I was appointed as the Independent Expert for this Case as from 31^st January 2007 to respond on or before 14^th February 2007. This process is governed by the Procedure for the conduct of proceedings under the Dispute Resolution Service ("the Procedure") and the Dispute Resolution Service Policy ("the Policy"). Both of these documents are available for inspection on the Nominet UK website (http://www.nominet.org.uk/disputes/drs).

4. Outstanding Formal/Procedural Issues:

4.1. The Complainant has complained that the Response was received out of time and without any reason. On examining the file from Nominet it is clear that an electronic response was actually received from the Respondent on 6^th January 2007 (in time) but was incorrectly submitted using the electronic Reply form, which is intended for the Complainant to Reply to any Response. The Nominet staff realised this was a mistake and (rightly in my view) took steps to have the Respondent rectify matters. This did indeed result in a delay, but I think a justifiable one. The text of the Respondent's formal Response (as properly submitted) did not differ from that received on 6^th January. I have no information as to whether the Complainant was fully informed of all these steps. Subsequent deadlines were appropriately adjusted and I do not believe that the Complainant was in any way disadvantaged

4.2. In the alternative, I could have been asked to accept the material from the Respondent as a "non-standard" Response, which (under these particular circumstances) I would have agreed to.

4.3. Whilst the Complainant is right to point out the apparent problem, formally and for the record, I dismiss the complaint about missed deadlines and exercise my discretion under the Procedure §12b to admit the Response as finally entered.

5. The Facts:

5.1. I accept as fact the following:

5.2. The Complainant provides both online relationship services and an alternative to marriage counselling. The Complainant began its online relationship service business in 2000 in the United States.

5.3. The Complainant holds a US trade mark for "EHARMONY" which was applied for on 12 May 2000 and granted on 16 September 2003. It also holds a Community Trade Mark - applied for on 11 November 2004 and which was granted on 24 January 2006.

5.4. The Respondent registered the Domain Name on 1 June 2004.

6. The Parties' Contentions:

6.1. Note that the following documents are extracted from electronic submissions and appear unchanged – the emphasis, paragraph layout and numbering are mine.

Complainant

6.2. The Complainant's submissions (made on its behalf by a solicitor) are as follows:

6.2.1. Background Facts The Complainant provides both online relationship services and an alternative to marriage counselling. The Complainant began its online relationship service business in 2000 in the United States. The business was very successful and it is now America's most trusted relationship service with:

6.2.2. • Over 12 million registered users. • Between 8,000-15,000 new registrations every day. • Members from over 200 countries worldwide. • An average of 90 of its members getting married every day. • More than 70,000 registered users in the UK.

6.2.3. The Complainant became aware of the Respondent's registration of the Domain Name through its brand protection monitoring service. A screen capture of how the website at the Domain Name looked around that time (13 June 2006) is attached at Annex 1. The Complainant's lawyers wrote to the Respondent on 26 June 2006 in an attempt to settle this matter without resorting to DRS proceedings. A copy of this letter and the subsequent correspondence is included at Annex 2. In view of the Complainant's commitment to maintaining the reputation and integrity of the EHARMONY brand, the failure of the parties to resolve the matter via correspondence and the importance to its business in protecting its valuable intellectual property, the Complainant therefore decided to prepare and file a complaint in accordance with the Policy.

6.2.4. The Complainant's Rights As set out above, with more than 70,000 registered users in the United Kingdom and such a large global footprint in the online relationship services market generally, the Complainant has developed a substantial reputation and goodwill in the United Kingdom in the "EHARMONY" brand. In particular it has spent a considerable amount on advertising, including advertising on various websites accessible in the United Kingdom. This developed reputation and goodwill is sufficient to give the Complainant rights in passing off in "EHARMONY". Given the success enjoyed by the Complainant, and the fact that an increasing number of its registered users were coming from countries within the European Union, the Complainant recognised the need to seek registered trade mark protection, and it did this via a Community Trade Mark application submitted on 11 November 2004. This application was granted on 24 January 2006. A copy of a print out from the OHIM trade mark database is included at Annex 3. This registered right was in addition to a US trade mark for "EHARMONY" which the Complainant had applied for on 12 May 2000. This application was subsequently granted on 16 September 2003. A copy of the print out from the USPTO trade mark database is included at Annex 4.

6.2.5. The Domain Name is identical to the registered trade marks owned by the Complainant. Further, and as set out above, the Complainant's use of its EHARMONY brand is sufficient to give it rights in passing off in the word "EHARMONY". The Complainant acknowledges that the Domain Name was registered by the Respondent prior to the application of the Complainant's Community Trade Mark, and is aware that in correspondence the Respondent has sought to make much of this fact. On this point the Complainant notes three factors, any one of which would be sufficient for the purpose of establishing Rights in accordance with the Policy:

6.2.5.1. 1. The Complainant's business prior to the registration of the Domain Name was already providing a service to some 4 million customers worldwide. Thousands of these customers were based in the United Kingdom, and at that time the Complainant was spending significant amounts of money on marketing and increasing its profile in the United Kingdom.

6.2.5.2. 2. The definition of Rights in the Policy says "Rights includes, but is not limited to, rights enforceable under English law…" This suggests that Rights includes rights which are not enforceable under English law, such as the Complainant's United States registered trade mark.

6.2.5.3. 3. It has been established in previous expert determinations (such as DRS 03424, ) that the question to be asked when considering the timing of the existence of the Rights is not whether the Complainant had Rights when the domain name was registered, but rather whether the Complainant had those Rights when making their complaint.

6.2.6. On the basis of points 1, 2 and 3, both individually and when taken as a whole, the Complainant has "Rights" as defined in the Policy. The Domain Name The Complainant has Rights in respect of a trade mark which is identical to the Domain Name. The Respondent registered the Domain Name on 1 June 2004. This was prior to the filing of the Complainant's Community Trade Mark application, but some years after the Complainant began trading.

6.2.7. As already set out above, prior to the registration of this trade mark, and indeed prior to the Respondent's registration of the Domain Name, the Complainant had considerable unregistered rights within the United Kingdom, and therefore Rights in accordance with the Policy.

6.2.8. Abusive Registration The Policy defines an 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. The Policy then sets out a non-exhaustive list of factors which may evidence that the Domain Name constitutes an Abusive Registration. The Complainant sets out below how certain of these factors are met. It should be noted that, further to the correspondence between the Complainant's lawyers and the Respondent referred to at Annex 2, the pointing of the Domain Name changed. It is now simply pointing to the registrar's holding page (see the screen capture at Annex 7). The Complainant notes that this alteration to the contents of the website hosted at the Domain Name makes no difference as to whether or not the Domain Name constituted an Abusive Registration at the time of registration, or through its subsequent use.

6.2.9. Paragraph 3(a)(i) The Complainant contends that the reason that the Respondent registered the Domain Name was because the Complainant's business was one of the world's fastest growing and most successful online relationship services. The Respondent became aware of this and wished to make an improper benefit from the association the Domain Name would have with the Complainant's business. As regards this knowledge, it is of note that the Complainant issued a press release on 11 May 2004. This press release was widely reported and announced that the Complainant's business was the internet's fastest growing relationship service having broken through the four million registered members barrier. Furthermore, only six days later on 17 May 2004, the Complainant was granted a US patent for its compatibility matching system. This development was also widely reported. Copies of both press releases are included at Annex 5. The Complainant notes that the Respondent's registration of the Domain Name occurred less than three weeks from the first of these press releases and just over two weeks from the second. The Complainant also notes that the Respondent is a Nominet Tag Holder, having registered over 200 domain names, and is therefore likely to be aware of the significant developments in the online marketplace, such as the successes that the Complainant had been enjoying since it began business some four years before, and indeed the very existence of the Complainant trading under the name EHARMONY. It is of course possible that the Respondent's awareness of the Complainant arose in a different manner, but however this awareness arose, the Complainant contends that the only reason the Domain Name was registered was to make an improper benefit from the Domain Name's clear association with the Complainant's Rights. In this regard it should be noted that EHARMONY is a very distinctive term, rather than a generic dictionary word. The benefit sought by the Respondent could have been financial, as envisaged by paragraph 3(a)(i)(A) of the Policy. This is asserted by the Complainant as the website previously hosted at the Domain Name did include an offer to sell the Domain Name. A screen capture taken from www.archive.org showing the website the Domain Name was pointing to on 24 September 2004 indicates that the Domain Name is for sale (please see Annex 8). The screen capture previously referred to at Annex 1 also indicates that the Domain Name was hosted at Sedo, which enables owners of "unused" domains to gain revenue from click-through commission. An explanation of how this revenue is generated, taken from Sedo's website, is included at Annex 6. The other related factor of which is of concern to the Complainant falls under paragraph 3(a)(i)(C) of the Policy, that of unfairly disrupting the business of the Complainant. The website originally hosted at the Domain Name contained a large number of click-through links to third party websites. The majority of the click-through links shown on the website hosted at the Domain Name appeared to be operating in broadly the same field as that of the Complainant. Screen captures showing some of these click-through websites as they appeared on 13 June 2006 are included at Annex 9. As can be seen, there were some however which referred to themselves as "Marriage Agencies" and yet others which were more "adult" in nature. As a market leader in the provision of online relationship services with an enviable record of successfully placing couples in longstanding relationships, the detriment which the Complainant could suffer by the association of its EHARMONY brand with these types of websites is quite clear.

6.2.10. Paragraph 3(a)(ii) The Complainant contends that circumstances indicate that use of the Domain Name was designed to confuse people into believing that the Domain Name was registered to, or otherwise associated with, the Complainant. The practice of generating click-through revenue by directing customers away from the Complainant's website amounts to taking unfair advantage of, and is unfairly detrimental to, the Rights of the Complainant, and amounts to an abuse of the Complainant's Rights. In this regard, the Complainant refers to the decision (DRS 3305, a copy of which is contained at Annex 10, where the same practice was regarded as an abuse of the Complainant's Rights).

6.2.11. Paragraph 3(a)(iii) The Complainant believes that the Respondent is engaged in a pattern of registration where the Respondent is the registrant of domain names which correspond to well known names or trade marks in which the Respondent has no apparent rights, and that the Domain Name is part of that pattern. A list of the domain names owned by the Respondent is included at Annex 11. Illustrative examples of domain names owned by the Respondent which incorporate or are very closely related to third party registered trade marks include: WHOIS searches for each of these domains are included at Annex 12, together with example trade mark registrations for the above text and screen captures of the websites currently operating at those domains. (There is no website hosted at ). The Complainant's lawyers have conducted a search of the UK and Community trade mark registries, and can confirm that the Respondent has no registered rights to these names.

6.2.12. Summary The Complainant has Rights as defined in the Policy. The Domain Name is an Abusive Registration within both parts (i) and (ii) of the definition of Abusive Registration and falls within the non-exhaustive list of factors tending to indicate an Abusive Registration at paragraphs 3(a)(i), 3(a)(ii) and 3(a)(iii) of the Policy. Furthermore, none of the factors at paragraph 4 that may be used to evidence that the Domain Name is not an Abusive Registration are fulfilled. In particular, using the Domain Name to point to a website containing "click through" links is not a genuine offering of goods and services, and nor it is a legitimate non-commercial or fair use of the Domain Name.

Respondent

6.3. The Respondent's submission is as follows:

6.3.1. Introduction. The complainant is attempting to hijack this legitimately owned domain from the respondent. The respondent points out that at the time of registration, which was 01/06/04, there was no registered trademark in place on part of the complainant. This was not applied for until 11/11/2004. The complainant does not therefore have retrospective rights to the name. Thus the complainant is attempting a "reverse domain name hijacking".

6.3.2. Nominet policy 4(a)i The term eharmony is a generic term and that was the reason behind the registration, as is the common practice of placing before a commonly used English word or phrase. The respondent planned to develop a business related to the music industry around the name. When the respondent registered the name, the respondent had no prior knowledge that the complainant was in existence and the respondnent disputes the fact that the complainant is a well known name in the UK as the respondent had never heard of them until the complainants' initial correspondence with the respondent. In fact the respondent since communication of the DRS from Nominet has failed to find anyone who has heard of let alone used eharmony's services.

6.3.3. Eharmony quote that they have 70,000 registered users but I doubt that these are active concurrent users and therefore I ask the complainant to substantiate their claims for their UK operation. As you will note in the initial contact with the complainant sent to the respondent, the complainant acted in bad faith by trying to assert their retrospective right to the domain name, despite registering their trademark after the respondents registration of the domain name. The complainant has accepted only in the DRS documents that the respondent's registration was before that of their trade mark. However on first contact they attempted to mislead the respondent, asserting their retrospective right to the name. According to Nominet Policy 3(a)(i) and the response from the complainant. The respondent refutes the allegation that he had prior knowledge of the complainants business. The complainant can provide no evidence to suggest that the registration of the name was as a result of a press release or as a result of reading or prior knowledge of complainants business. The registration of the domain name by the respondent was actioned in fact as a result of the innovations in the music industry and any so called correlation between registration of the name and the complainants' press release or 'news worthy' event is purely coincidental. Again I refer to the common practice of placing before commonly used English words and phrases. In fact harmony is more often associated with music rather than dating and hence its appeal for the respondent.

6.3.4. The respondent points out that domain names are often parked while they are in development much as real estate is left dormant until building commences. What the complainant is referring to is one of these parked pages. The respondent often has little or no control over the content of these pages to which the complainant refers. It is clear that any of these 'parking' pages are distinct from those of the complainants and there is no room for confusion with that of the complainant. As for the name being for sale, that is one of the default options and the respondent has made no effort to sell the name to the complainant or in fact any other party.

6.3.5. Paragraph 3(a)(iii) The respondent runs a number of websites providing information and services to customers and, therefore, takes any defamatory allegations about their character very seriously. as the complainant has unfairly tried to portray the respondent as having a pattern of Trade marked or closely trademarked names. Firstly as Nominet will testify I own many hundreds of domains and clearly the names listed by the complainant in regard of Paragraph 3(a)(iii) are not representative of the names within my portfolio. Secondly I refer to a number of sites such as < www.astonmartins.com> which operate not in competition with Aston Martin Lagonda Limited and nor does the respondent.

6.3.6. The complainant has submitted a limited number of registrations that the respondent has made and challenges the fact the respondent is undertaking trade mark infringement and the respondent is more than willing to supply a full list of names to any party. It is clear if one uses an Internet search engine that it is a common practice to express the name of the brand in the domain name as exemplified by the following website < www.smallfordspares.co.uk> which sells Ford parts. In no way can the complainant use these allegations against the respondent. In addition < cahoots.co.uk> is not a trade marked name.

6.3.7. Paragraph 4 The respondent has made fair use of the domain name under section 4(a)(ii) for the domain is descriptive and generic. Summary The complainant is attempting to hijack , having freely admitted that they acquired the trademark of the name AFTER the respondents registration of the domain < eharmony.co.uk>. The complainant has attempted to insinuate, wrongly, that the respondent is engaged in a pattern of abusive registrations. The respondent intends to fully use the name within the music industry and therefore no confusion can occur between the complainant. < eharmony.co.uk> is a generic term and therefore taking the complainants' behaviour one must conclude they are attempting to hijack the name from its rightful owner.

Complainant's Reply

6.4. The Complainant has made a Reply in the following terms:

6.4.1. The Complainant would first draw the Panel's attention to the fact that the deadline for the Response was 7 December 2006, but the Response was filed late on 9 December 2006 with no accompanying explanation.

6.4.2. In the Respondent's Response a number of issues were alleged and points made which the Complainant would like to address or clarify as appropriate.

6.4.3. Domain name "hijacking" It is alleged that the Complainant is "attempting to hijack" the Domain Name and that the Complainant's actions are in bad faith. This is denied. The Complainant initially wrote to the Respondent in an attempt to resolve this matter in a non-contentious manner, but when it became clear that this would not be possible, the Complainant filed a complaint using Nominet's DRS procedure. The attempt to resolve the matter via correspondence and the DRS complaint cannot be said to amount to an attempted "hijacking" of the Domain Name, nor does it involve bad faith.

6.4.4. The Domain Name was registered prior to the Complainant's Community Trade Mark application This is something which has been openly acknowledged by the Complainant both in the Complaint and in the correspondence which preceded it. Contrary to the Respondent's suggestion, this is something which has been made clear from the start, and certainly not something about which the Complainant or their solicitors have tried to mislead the Respondent. The relevant factors here are: (a) whether the Complainant has Rights (as defined in the Policy) at the time the Complaint was filed; and (b) how the Domain Name has been used, ie. is it Abusive (as defined in the Policy) with respect to those Rights. The registration date of the Domain Name is not relevant in this particular case. In any event, as noted by the Complainant in the Complaint, the definition of Rights in the Policy indicates it would include the Rights created by the Complainant's US trade mark registration. This trade mark predates the registration of the Domain Name, as does the worldwide fame of the EHARMONY mark.

6.4.5. The Complainant's Rights The Complainant finds the Respondent's attempt to belittle the breadth of Complainant's popularity most surprising. The Respondent further states that they doubt whether the 70,000 users figure provided in the Complaint amounts to "active concurrent users". It is not clear what this term means. The Complainant can confirm that over 70,000 users have signed up to their services from the UK, and that of these, the majority have completed the Complainant's 436-question questionnaire which is required before a user can be "matched" to another user. Whether or not the Respondent has heard of the Complainant or its EHARMONY brand does not alter these facts.

6.4.6. EHARMONY as a generic term The Respondent states that the term EHARMONY is a generic term. The Complainant does not share this view. The term EHARMONY is a very specific term which relates solely to the well-known services offered by the Complainant. The various trade mark registrations for EHARMONY (including those raised in the Complaint) which the Complainant has been granted also lend weight to the view that EHARMONY is not a generic term, but rather a distinctive term capable of distinguishing the services of the Complainant from those of other parties.

6.4.7. The Respondent's business plans The Respondent states that it registered the Domain Name for the purpose of setting up a website related to the music industry. The Complainant notes that: (a) nothing on the website which was hosted at the Domain Name at the time the Complainant's solicitors contacted the Respondent related to the music industry; (b) nothing on the amended website hosted at the Domain Name since relates to the music industry; and (c) the Respondent has provided no evidence to add credence to its statement regarding these purported business aims (it should be noted that the wording of paragraph 4(a)(i)A of the Policy refers specifically to "demonstrable" preparations). The fact remains that the website which was hosted at the Domain Name when the Complainant approached the Respondent in an attempt to prevent its Rights being abused, contained links which related almost entirely to dating and other more unsavoury "relationship services".

6.4.8. Control over a 'parked' website The Respondent states that 'parked' website owners "often have little or no control" over the content of the website whilst it is parked. It is noted that the Respondent does not state that this was the case in this instance. Sedo, the company which provided the 'parking' facility at the Domain Name, has a number of sponsored advert generation options which work on the basis of selection of certain keywords. These options are as follows: (a) Sedo selects the keywords automatically. (b) Sedo selects the keywords manually. (c) The registrant selects the keyword themselves. The Respondent has provided no information as to which of these options it used to generate the sponsored advertising at the Domain Name, but the Complainant notes that: 1. If Option A were selected, and the various dating and "relationship services" website links were computer generated, this emphasises the huge reputation which the Complainant must enjoy. If this were not the case, the term EHARMONY would not generate links to such services. 2. If Option B were selected, and the sponsored links were human-generated at Sedo, this would demonstrate that they were aware of the Complainant and its well-known brand EHARMONY. If this were not the case the term EHARMONY would not be linked to dating and "relationship services". 3. If Option C were selected, the Respondent would not be able to sustain its argument that it had not heard of the Complainant prior to the Complainant's solicitors making contact with the Respondent earlier in the year. The Complainant does not know which of these three options was selected by the Respondent, but it in any event, this is irrelevant. Once again the fact remains that the Domain Name comprised an identical term to that in which the Complainant had Rights, and the Respondent was using this Domain Name to host a website which pointed to various other businesses and websites in such a way as to benefit the Respondent and cause damage to the Complainant.

6.4.9. A pattern of Abusive Registrations The Respondent has stated that the "Aston Martin" and "Cahoots" domain names it owns are not indicative of a pattern of registering domain names consisting of the Rights of others in which it has no legitimate rights. In support of the Respondent's argument it states that:

6.4.9.1. 1. It is not in competition with Aston Martin The Complainant is not suggesting that the Respondent is a car manufacturer or that it intends to compete on some other industrial basis with the Aston Martin Lagonda Limited ("AML"). What the Complainant is stating is that the Respondent is competing for internet traffic with AML, and is making a financial benefit from doing so. This diversion of traffic and unjust enrichment is to the detriment of AML.

6.4.9.2. 2. It is common practice to include the name of a brand in a domain name The Complainant agrees that this in indeed the case, but it is usually a common practice of the company which owns the brand, rather than of third parties. The Respondent uses by way of example to illustrate 'legitimate' use "www.smallfordspares.co.uk". This is not a helpful example when the domain names in question are not descriptive, but rather are identical to the respective brands, or, in the case of www.cahoots.co.uk, which features the addition of a single letter. Furthermore, as far as the use of a brand name in a domain name is concerned, it is true that certain resellers may be entitled to use such domain names, but only if they can be said to be making a genuine offering of goods and services. It is well established that a genuine offering is only made if the use of the domain name fits certain requirements. These requirements include the actual offering of goods and services at issue, the use of the website to sell only the trade marked goods and the website accurately disclosing the registrant's relationship with the trade mark owner. None of these conditions are fulfilled here.

6.4.9.3. 3. Cahoots.co.uk is not a trade marked term The Complainant notes that "cahoots.co.uk" is not the subject of a trade mark registration, but as demonstrated in Annex 12 of the Complaint, CAHOOT is a registered trade mark. If the Respondent is of the view that hosting a website which is clearly a dedicated financial portal under the mark CAHOOTS does not impinge on the rights of Abbey National plc in their mark CAHOOT, then this is certainly not a view shared by the Complainant..

7. Discussion and Findings:

Registering Domain Names in the ".uk" registry

7.1. For simplicity and for the convenience of potential registrants of the many thousands of Domain Names registered each day, Nominet operates an automated "first come first served" policy in the registration of domain names. Names are deemed available if nobody else has previously registered them. The Respondent registered an available name on this "first come first served" basis.

The Dispute Resolution Service, Policy and procedure

7.2. Nominet through its Dispute Resolution Service [DRS] provides a simple and accessible administrative procedure for dealing with the majority of straightforward mistakes or abuses which can occasionally arise (as explained in Nominet's DRS Policy and Procedures). It is worthy of note that this occurs in only about 0.05% of the total registrations. This administrative procedure is limited in its scope by the defined Policy and Procedure and is not (for example) a suitable forum for arguing the finer points of the law as to "passing off".

7.3. The Respondent undertook the condition of complying with the DRS when he registered the Domain Name. The Complainant undertook to comply with the policy when submitting his complaint.

7.4. The Nominet web site contains extensive help for complainants and respondents which explains clearly how to submit a complaint or response. It gives clear reminders of what appropriate evidence should be submitted. It is also makes clear that it is a complainant's responsibility to prove his case.

7.5. I must make it clear that it is not specifically against the Policy to register domain names and either not to make use of them, or "park" them with a specialist provider and gain "click through" revenue. It is not specifically against the Policy to register domain names and seek to sell them on for a profit. Each case is examined on the basis of the case presented and the supporting evidence supplied.

Burden of Proof

7.6. In order for a Complainant to succeed he must (under Paragraph 2 of the DRS Policy) prove to the Expert, on the balance of probabilities, both:

i that he has Rights in respect of a name or mark which is identical or similar to the Domain Name; and

ii that the Domain Name, in the hands of the Respondent, is an Abusive Registration as defined in Paragraph 1 of the Policy.

7.7. Rights are defined in the Policy as:

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;

Complainant's Rights

7.8. The Complainant has supplied details of two trademarks which it holds – a US mark which predates the Respondent's registration of the Domain Name, and a Community mark which is subsequent to that date. Both marks for "EHARMONY" are identical to the Domain Name, remembering that domain names are usually rendered in lower case letters and disregarding the generic ".co.uk".

7.9. The Complainant says it has been in business since 2000, but provides no evidence to support that assertion – for example copies of incorporation certificates. The Complainant makes extensive claims about its business and the territory which it covers, but it produces no evidence to sustain its claims. For example, it claims extensive marketing in the UK but produces no evidence of its scope or value. It says that it has advertised on web sites in the UK, but provides no details. The supporting evidence for the assertions as to rights is scant.

7.10. The rights test is deliberately a low hurdle, and in normal circumstances (despite the deficiencies in the presented case) I would have accepted that there was sufficient to establish rights for the Claimant. It should be remembered that the rights may not be exclusive. However this particular case is not simple and straightforward. Here the Respondent contests the claimed rights and specifically asserts that the Domain Name is generic and a common dictionary word prefixed with the letter "e", which he contends is a common way of making domain names, presumably representing "electronic" as in "e-mail". The Respondent relies upon the Policy §4aii as a defence:

The Domain Name is generic or descriptive and the Respondent is making fair use of it

7.11. I am minded to accept that "eharmony" is a generic dictionary word with the "e" prefixed. However it is essential for this defence that there is also fair use. I therefore intend to proceed on the basis that the Complainant has established rights and to examine the use of the Domain Name.

Abusive Registration

7.12. Having found that the Complainant has established to my satisfaction that it has Rights in respect of a name or mark which is identical or similar to the Domain Names, I must now examine its allegations of an Abusive Registration by the Respondent.

7.13. An Abusive Registration is defined in the Policy as follows:

Abusive Registration means 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;

7.14. The Complainant has helpfully addressed his Complaint to paragraphs in the Policy which cover some potential factors which may be evidence of an Abusive Registration.

7.15. Paragraph 3ai: The Complainant sets out his belief that the Respondent has deliberately registered the Domain Name in order to sell it to the Complainant or to a rival, to block the Domain Name or to use it to disrupt the Complainant's business.

7.16. The Respondent denies any knowledge at the time of registration of the Domain Name eharmony.com or its business. He claims that he intends to develop a music service of some kind using this Domain Name, but that he has not done so yet.

7.17. It is important for this head of complaint to clearly demonstrate how or why the Respondent had or ought to have had knowledge of the Complainant and/or its business. In this case the Complainant relies on a claim that it and its brand is so well known that the Respondent must have known of it at the time of the registration. In the face of the Respondent's denial and his offering of the alternative reasons for registering the Domain Name, I would need some clear evidence which demonstrated that he must have known of the Claimant. The Complainant had an opportunity with its Reply to address this issue: it did not. The Claimant's case consists of assertions not backed by evidence. I have no personal knowledge of eharmony.com and I have never seen any publicity for it. The fact that press releases were made (for example) does not prove that the stories appeared in the UK press with such prominence that the man in the street would have been aware of eharmony.com. The claim that advertising took place on the Internet does not include evidence of that advertising in context.

7.18. I note the Claimant's complaint that the Domain Name was continually offered for sale – but that is of itself not objectionable under the policy. The Respondent did not actively seek to sell it to the Complainant for an inflated price, and there is no evidence that he sought to sell it to rivals of the Complainant. There is a growing and entirely legitimate commerce in generic web site names, and prices can be substantial.

7.19. The Respondent's reason for registration: that he intended to create a music based website might appear convenient as a response, but I have no reason at all to disbelieve it. On the face of it, music is at least as good a use for the Domain Name as human relationships. Indeed one can think of many alternative uses, including mediation and conciliation.

7.20. Whilst the Respondent's use of the Domain Name may indeed block the Complainant's acquisition of the name, I am not persuaded that it was a deliberate and conscious act in the knowledge of the existence of eharmony.com.

7.21. On the whole I am not satisfied that any of the points in Policy §3ai are sufficiently supported by evidence to be accepted as proven. I dismiss this part of the Complaint.

7.22. Paragraph 3aii: The Complainant alleges that the use of the Domain Name is confusing its potential customers in that the Domain Name is being used to direct traffic to competing sites, losing them business and is in the process generating income for the Respondent by misuse of the Claimant's rights.

7.23. The Complainant produces 3 web pages which appeared on the site pointed to by the Domain Name. They all appear to be "parking" pages of one form or another. The Internet Archive shows that the Respondent used Sedo initially on pages dated 2nd August 2004 and 24th September 2004 (of which a copy has been produced by the Claimant). The provider seems to have been changed on 10th December 2004 when the Respondent changed the redirection, however the identity of the provider is not clear – but all the links are provided by Mirago. The site changed again on 12^th February 2005, but remained basically similar to the December site.

7.24. The Sedo page produced by the Claimant for 24^th September 2004 covers many more subjects than just "dating" – which is the 9th group of links on the page. I note however that there is a separate and persistent menu of 10 items on the top right of the page which includes the items: Dating, Find love, Online dating and Relationship advice. Each menu item when selected brings up 10 links – on the 4 I have noted, eharmony.com appears (in order) second in the generated links, not at all, 5th and 4th respectively.

7.25. The second page produced by the Claimant for 13th June 2006 (immediately before the complaint letters to the Respondent) is I think critical. If I am to follow the process accepted by my colleagues, a key point is the content of the website pointed to by the Domain Name at the time at which the Complaint was made.

7.26. The Respondent protests that when making use of parking services [the user] often has little or no control over the content of these pages to which the complainant refers.

7.27. In its Reply the Complainant claims that the users of domain parking facilities do have control over the appearance and content of the pages generated on their behalf, and describes how Sedo (the company allegedly providing the parking facility) permits such control.

7.28. I have no knowledge as to how NameDrive create parking web pages, and the description of how Sedo do so is of no assistance. The fact that the much of the page, and most of the links from it, are in French does not change the fact that, as pointed out by the Complainant, the majority of the click-through links shown on the website hosted at the Domain Name appeared to be operating in broadly the same field as that of the Complainant. As can be seen, there were some however which referred to themselves as "Marriage Agencies" and yet others which were more "adult" in nature.

7.29. The final page produced by he Complainant shows that after receipt of the solicitor's letters complaining about the website, the Respondent changed the website to his registrar's holding page.

7.30. Was the Respondent's immediate action (to remove the allegedly offending "parking" web page and replace it with a his ISPs introductory web page) a recognition that he was in the wrong or merely the act of a sensible man when he has received a threatening solicitor's letter? The Claimant takes the former view, that the action is evidence of knowledge of wrongdoing, the Respondent has not commented. It is perhaps pertinent to point out that the situation has changed again, and the current web page automatically redirects to a web site owned by the Respondent: www.moneyclinic.co.uk. This site has absolutely nothing to do with relationship services or "dating" it all its contexts, nor does it have anything to do with music.

7.31. Looking at the Respondent's use of the Domain Name, it is clear that, whether intentionally or not, and however much control he had over the situation, the NameDrive website (13^th June 2006) was infringing. It is perhaps arguable that the early Sedo websites were not. That these pages were produced automatically or with little or no input from the Respondent is immaterial – it is their effect which is important.

7.32. I find that in the words of the Complainant, circumstances indicate that use of the Domain Name [was likely] to confuse people into believing that the Domain Name was registered to, or otherwise associated with, the Complainant.

7.33. I therefore dismiss the Respondent's defence quoting the Policy §4aii since in my judgement this is not fair use of the Domain Name.

7.34. In this regard I should make it clear to the Respondent that the mischief was not in the Domain Name itself, but the use to which is was put. This case is not dissimilar from the Appeal in DRS 03733 mercer.co.uk. Had there been no use of the Domain Name, or had the website at eharmony.co.uk generated links which echoed his alleged plans for a music site, or had the Domain Name been at the material time as it is now (linked to another site owned by the Respondent which had no reference to dating or relationships) then this Complaint would have failed.

7.35. Paragraph 3aiii: The Complainant claims that this registration is part of a pattern of abusive registrations using the trade marks of others, and cites the domains aston-martin.co.uk, cahoots.co.uk, astonmartin.org.uk, astonmart.co.uk which are owned by the Respondent. None of the domains mentioned have been the subject of Complaints under the DRS, and whilst there is a possibility that the registrations mentioned may be infringing, they are not the subject of this Complaint and I cannot arbitrarily decide that they are infringing without complaints from the alleged trade mark owners and giving the Respondent the opportunity to deal with each of them in detail.

7.36. It is not against the Policy to own Domain Names and seek to gain revenue from them – even by the "click through" method.

7.37. I dismiss this part of the Complaint.

8. Decision:

8.1. For the reasons set out above I find that the Complainant has established that he has Rights in respect of a name or mark which is identical or similar to the Domain Name, and I find that the Domain Name, in the hands of the Respondent, is an Abusive Registration as set out in the Policy.

8.2. I therefore determine that the Domain Name should be transferred to the Complainant.

Date: 12^th February 2007

Iain M. Tolmie ("the Expert")