On-line ADR Center of the Czech Arbitration Court (CAC)

Panel Decision

§ 15 of the UDRP Rules (Rules), § 9 of the CAC’s Supplemental Rules (Supplemental Rules)

Case No.	100101
Time of Filing	2009-09-17 16:59:37
Disputed domain name	CITYDATING.COM

Case Administrator
Name	Tereza Bartošková

Complainant
Name	Jolanta Skevington

Respondent
Organization	Vertical Axis Inc

A summary of this Decision is hereby attached in English as an Annex.

Other Legal Proceedings
The Complainant commenced proceedings with number D2009-0931 in the WIPO Arbitration and Mediation Center (“WIPO”) against the Respondent by way of Complaint under the Uniform Domain Name Dispute Resolution Policy ( “the UDRP”) seeking the transfer of the domain name <citydating.com> from the Respondent to the Complainant (“the first proceeding”). On September 3, 2009 WIPO issued to the parties a notice to the effect that the Complainant had, on August 31, 2009 requested termination of the first proceeding, that, in accordance with the Rules for the UDRP, the first proceeding was terminated as of September 3, 2009 and that the termination was without prejudice to the submission of a new Complaint or the Complainant’s right to commence any other legal proceeding.

Other Legal Proceedings

The Complainant commenced proceedings with number D2009-0931 in the WIPO Arbitration and Mediation Center (“WIPO”) against the Respondent by way of Complaint under the Uniform Domain Name Dispute Resolution Policy ( “the UDRP”) seeking the transfer of the domain name <citydating.com> from the Respondent to the Complainant (“the first proceeding”). On September 3, 2009 WIPO issued to the parties a notice to the effect that the Complainant had, on August 31, 2009 requested termination of the first proceeding, that, in accordance with the Rules for the UDRP, the first proceeding was terminated as of September 3, 2009 and that the termination was without prejudice to the submission of a new Complaint or the Complainant’s right to commence any other legal proceeding.

Factual Background
The Complainant is a United Kingdom resident who trades as an international dating agency in several countries and she has done so since 23 June 2000. To that end, she owns a series of domain names with names similar to the disputed Domain Name such as <citydating.org> and <citydating.co.uk> and which are used to offer international dating services. The Complainant is also the owner of the United Kingdom trademark for CITYDATING.COM, being the trademark registered number 2296236 since 23 August 2002. The Respondent is a company in Barbados that owns a large number of domain names including domain names that have the word “dating” as part of the name, such as <chatdating.com>. The disputed Domain Name was registered by the Respondent with Nameview on June 15, 2006. The Respondent hosts the disputed Domain Name with HitFarm.com, a service that places advertisements on websites for the owners of domain names. The Complainant claims that it was previously the registrant of the disputed Domain Name with the registrar Easyspace. The record shows that the Domain Name was first registered on March 30, 2000 in the name of CityDating.com, that the registration was updated on August 22, 2005 and set to expire on March 30, 2006. It appears that the registration expired and that the Domain Name was sold at auction by eNom and acquired by the Respondent which registered it on June 15, 2006. The Complainant has exhibited a receipt from Easyspace which shows that on June 15, 2006 Easyspace accepted a payment of 117.40 pounds from the Complainant, although the receipt does not specifically say that it was for the acquisition or renewal of the registration.

Factual Background

The Complainant is a United Kingdom resident who trades as an international dating agency in several countries and she has done so since 23 June 2000. To that end, she owns a series of domain names with names similar to the disputed Domain Name such as <citydating.org> and <citydating.co.uk> and which are used to offer international dating services. The Complainant is also the owner of the United Kingdom trademark for CITYDATING.COM, being the trademark registered number 2296236 since 23 August 2002.

The Respondent is a company in Barbados that owns a large number of domain names including domain names that have the word “dating” as part of the name, such as <chatdating.com>. The disputed Domain Name was registered by the Respondent with Nameview on June 15, 2006. The Respondent hosts the disputed Domain Name with HitFarm.com, a service that places advertisements on websites for the owners of domain names.

The Complainant claims that it was previously the registrant of the disputed Domain Name with the registrar Easyspace.

The record shows that the Domain Name was first registered on March 30, 2000 in the name of CityDating.com, that the registration was updated on August 22, 2005 and set to expire on March 30, 2006.

It appears that the registration expired and that the Domain Name was sold at auction by eNom and acquired by the Respondent which registered it on June 15, 2006.

The Complainant has exhibited a receipt from Easyspace which shows that on June 15, 2006 Easyspace accepted a payment of 117.40 pounds from the Complainant, although the receipt does not specifically say that it was for the acquisition or renewal of the registration.

Parties' Contentions
A. Complainant
IDENTITY OR CONFUSING SIMILARITY OF THE DOMAIN NAME <citydating.com> WITH THE TRADEMARK CITYDATING.COM (UDRP 4 (a) (i)): The Complainant submits that the Domain Name is identical or at least confusingly similar to the registered CITYDATING.COM trademark already referred to or the common law trademark CITYDATING.COM that the Complainant also claims. THE RESPONDENT HAS NO RIGHTS OR LEGITIMATE INTERESTS IN RESPECT OF THE DOMAIN NAME <citydating.com> [UDRP 4 (a)(ii)] The Complainant submits that the Respondent does not have a right or legitimate interest in the Domain Name. That is said to be, first, because the Respondent has neither the intention nor the ability to conduct business, or otherwise be associated with the Domain Name. Secondly, the Complainant contends that she has not given any consent to the use of the Domain Name to the Respondent. Thirdly, the Respondent is in the business of cybersquatting and professionally engaged in bulk domain name selling with an interest in highly recognisable domains containing trademarks. Fourthly, the Respondent is not authorized to use in any way the Complainant’s trademark. The Respondent does not hold any registered trademarks containing the mark CITYDATING and does not have any common law rights in the Domain Name. It is not making legitimate use of the name and it is making a confusing use of the Domain Name for the purpose of a link farm page only. As such it is said that the Respondent has no rights or legitimate interests in respect of the Domain Name for the purposes of Paragraph 4 of the Policy. BAD FAITH REGISTRATION AND USE [UDRP 4 (a)(iii)] The Complainant submits that the domain name was registered and has been used in bad faith. In particular it is said that the facts of the case come within Paragraph 4(b)(iv) of the UDRP, i.e. “by using the domain name, you (the Respondent) have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location”. It is then alleged that the Respondent is in the business of cybersquatting with the disputed Domain Name pointing to a parking webpage, which generates revenue to the Respondent confusingly, through a pay-per-click service and based on the Complainant’s work. It is also said that there have been other cases decided under the UDRP where the Respondent has been found to have registered domain names in bad faith and those cases are then cited. It is alleged that the cases in which the Respondent was found to be in bad faith were related to the Respondent registering a domain name containing the trademark of a third party in bad faith. In support of that proposition, it is then said that in the first proceeding, in WIPO, the Respondent said on oath that it owned a number of dating related names, but that searches revealed that some domain names were not registered at all, some of them were not owned by the Respondent and a number of them were registered subsequent to the Respondent’s acquisition of the disputed Domain Name. Moreover, the Respondent put the disputed Domain Name up for sale on Domain Brokers. As such, the Respondent was intending to profit from acquiring the Domain Name and then purposely trying to sell it to the Complainant in excess of its general market value, causing disruption to the Complainants’ business. Additionally, demanding a high price from the Complainant due to the Complainant’s established reputation and goodwill in the name also indicates bad faith. This showed that the Respondent had acquired the Domain Name for the purpose of selling it to the Complainant or a competitor of the Complainant for consideration in excess of the Complainant’s out of pocket costs. Given the pattern of cybersquatting demonstrated by the Respondent’s history the registration and use by the Respondent also falls foul of paragraph 4 (b) (ii) of the Policy as the Respondent registered the Domain Name to prevent the Complainant from reflecting her mark in a domain name and the Respondent has engaged in a pattern of such conduct. Bad faith is also shown by the fact that the Respondent was not using the Domain Name for any legitimate genuine service business, but was merely linking the Domain Name to a links page offering related services, which are not connected to or authorised by the Complainant, thereby disrupting the business of the Complainant and profiting in the meantime by using the Domain Name in a competing and confusing manner on a links site with a view to commercial gain and producing income. The Respondent had therefore intentionally sought to attract Internet users to its web site for commercial gain through confusion as to the source, affiliation or endorsement of its web site amounting to bad faith usage under paragraph 4 (b) (iv) of the Policy. The Respondent was also using a name shield, a further indication of the Respondent’s bad faith. The Respondent had engaged in a pattern of cybersquatting activity and had sought to conceal this by using name shield services. By reason of these actions the Respondent has clearly demonstrated bad faith under the Policy. Finally it was alleged that in view of the Complainant’s right in the Domain Name and its registered trademark for CITYDATING.COM and the well documented history of the Respondent as a cybersquatter as determined in at least thirty other prior UDRP cases, the Respondent could have no basis whatsoever for its allegation in the WIPO proceedings that the Complainant had indulged in reverse domain name hijacking.
B. Respondent
A. The Respondent takes no position regarding the enforceability of Complainant’s trademark rights. Also, the Respondent does not contest that the disputed Domain Name is identical or confusingly similar to a mark in which Complainant has rights. B. The Respondent argues that the Panel should conclude that the Respondent has a legitimate interest in the disputed Domain Name. The Respondent argues that “City dating” is a common descriptive term which describes dating in the city. The mere registration of domain names that contain common terms establishes the Respondent’s legitimate interest, provided that the Domain Name was not registered with a trademark in mind. For the Respondent, there can be no doubt that the Complainant’s mark is descriptive since it is used for a web site related to dating in the City of London. There is no evidence that the disputed Domain Name was registered with the Complainant’s trademark in mind. For the Respondent, it is clear that it registered the Domain Name after it was deleted and offered for registration again through the registrar eNom.com. The Respondent argues that it registered the disputed Domain Name solely because it incorporates the common descriptive term “city dating”, without an intent to target the Complainant’s trademark. The Respondent refers to the numerous other domain names that it has registered and which incorporate the word “dating”, many of which relate to dating in specific cities, such as: chatdating.com; datingsingle.com; ottawadating.net; irishdatingsite.com; datingintoronto.com; dataingcostarica.com; asiandatingonline.com; elpasodatingservice.com; chinesedatingservice.com; clevelanddatingservice.com; stlousionlinedating.com; chicagochristiandating.com; indianadating.org; louisvillespeeddating.com; buffalodatingservices.com; denverdatingservices.com; manhattanspeeddating.com; madisondatingservice.com; lasvegasspeeddating.com; arizonaspeeddating.com; orlandospeeddating.com; and buenosairesdating.com. Nothing in this list provides a basis to infer that the Respondent registers domain names based on trademarks. To the contrary, the clear pattern is one of registering descriptive term domain names. Moreover, many of the domains contain the names of different cities along with the word “dating”, which is consistent with the Respondent’s registration of a domain name containing the term “city dating.” The Respondent also finds support for its legitimate interest in the fact that it uses the disputed Domain Name to post advertising links related to dating and in the fact that the Respondent’s pay-per-click use of domain names is bona fide. For the Respondent, the Complainant, through its correspondence with Domainbrokers.com and its ultimate agreement to purchase the disputed Domain Name for $12,500, has acknowledged the Respondent’s legitimate interest in the disputed Domain Name. C. The Respondent is of the view that the Complainant has not demonstrated that the Domain Name was registered and is being used in bad faith. The Respondent argues that it had no knowledge of the Complainant’s alleged mark when it registered the Domain Name. The Respondent simply registered the Domain Name because it incorporated a common descriptive term and because it became available when it was deleted after the Complainant failed to renew it. This is not a case of a respondent looking to a list of trademarks to prey upon. To the contrary, the Respondent has simply registered domain names that became available due to deletion, taking care to register names that incorporate only common words and descriptive terms. Registration of domain names in this manner not only fails to support a finding of bad faith registration, it negates such a finding. The Respondent has registered over 240 other domain names incorporating the word “dating”, many referencing cities and other geographical areas. There is no pattern of trademark targeting here and, thus, no evidence of bad faith registration. In addition, the expiration of a domain name is a signal that any trademark claim to the domain name was abandoned and that the domain name could be registered in good faith. The Respondent also refers to panels that have recognized the legitimacy of the Respondent’s practice of registering deleted common word domain names, along with the absence of bad faith registration or use. For the Respondent, in the absence of direct proof that a common term domain name was registered solely for the purpose of profiting from the Complainant’s trademark rights, there can be no finding of bad faith registration and use. There is no evidence that the Respondent even had knowledge of the Complainant’s mark when it registered the Domain Name. Absent such evidence, there is no evidence of bad faith. Also, the Respondent argues that it does not constitute bad faith to offer descriptive term domain names for sale and that there is absolutely no evidence that the Respondent targeted the Complainant with respect to the registration and use of the disputed Domain Name. The Complainant has brought up 13 decisions that have been decided against the Respondent in an attempt to prejudice it in this proceeding. But Complainant failed to mention that Respondent has won several cases under the Policy. In fact, Respondent has prevailed in more cases than it has lost, with a total of 21 victories. Finally, the Complainant’s action and its inaction demonstrate that it did not truly believe that Respondent has engaged in bad faith registration. First, the Complainant did not initiate these proceedings until more than three years following the deletion of the Domain Name. The Complainant was obviously aware that the Domain Name was registered to Respondent in June 2006 but failed to do anything for three years. Then, instead of filing a UDRP complaint, Complainant negotiated to purchase the disputed Domain Name and, then, for some unknown reason, backed out of the purchase agreement and initiated the Complaint. While laches is not generally recognized under the Policy, such a long delay in taking action, nevertheless, questions how confident the Complainant has been regarding the success of the Domain Name challenge. D. The Respondent finally argues that the Complainant has abused the Policy by bringing a Complaint wholly without merit and that a finding of reverse domain name hijacking is warranted as the Complainant knew or should have known at the time it filed the Complaint that it could not prove one of the essential elements required by the Policy (bad faith).

Discussion and Findings
To prevail in the proceedings under the Uniform Domain Name Dispute Resolution Policy, the Complaint must show that the three requirements laid down in paragraph 4(a) of the Policy are met. Those requirements are: (a) that the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (b) that the Respondent has no rights or legitimate interests in respect of the domain name; and (c) that the domain name has been registered and is being used in bad faith. A. Domain name is identical or confusingly similar to a mark of the Complainant The Complainant claims to be the proprietor of the trademark n° 2296236 that is registered in the UK since 23 August 2003. The mark is a figurative trademark consisting of a design and of the words CITYDATING.COM. The Respondent does not dispute that the figurative trademark belongs to the Complainant, that it is valid, and that the domain name is confusingly similar to the trademark. Therefore the Panel finds that the first requirement is met. B. Rights or Legitimate Interests For the second requirement, the Complainant must show that the Respondent does not have a right or legitimate interest in the Domain Name. The Complainant states that she did not give her consent to the Respondent to use her trademark. While this may be true, the Respondent may of course have other rights or legitimate interests that do not depend on the consent of the Complainant. The Complainant also states that the Respondent has neither the intention nor the ability to conduct business, or otherwise be associated with the Domain Name. The Panel disagrees with this view. Article 4(c) of the Policy provides that the Respondent can demonstrate his rights to and legitimate interests in the Domain Name by showing evidence of several circumstances, including that the Respondent, before any notice of the dispute, made use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services. The Respondent states that it has a regular business practice of registering domain names that are based on descriptive words and phrases, which is confirmed in several decisions rendered under the UDRP (see: Super Supplements, Inc. v. Vertical Axis, Inc., D2008-0244 (WIPO May 13, 2008); Jet Marques v. Vertical Axis, Inc., D2006-0250 (WIPO May 26, 2006), Nursefinders, Inc. v. Vertical Axis, Inc., No. D2007-0417 (WIPO July 5, 2007)). In this dispute, the Domain Name consists of the terms “CITY DATING” plus the “.com” extension. CITY DATING describes the services for which the Domain Name is used, i.e. services of dating in the City of London or in any other city. A visit to the website operated by the Respondent under the Domain Name shows that the Domain Name is indeed used in relation to dating services. The website offers many links to all kinds of dating sites and allegedly generates advertising revenues for the Respondent. The Respondent, moreover, seems to be the owner of many other domain names consisting, among others, of the word “dating”, such as chatdating.com; datingsingle.com; ottawadating.net; irishdatingsite.com; datingintoronto.com; dataingcostarica.com; asiandatingonline.com; elpasodatingservice.com; chinesedatingservice.com; clevelanddatingservice.com; stlousionlinedating.com; chicagochristiandating.com; indianadating.org; louisvillespeeddating.com; buffalodatingservices.com; denverdatingservices.com; manhattanspeeddating.com; madisondatingservice.com; lasvegasspeeddating.com; arizonaspeeddating.com; orlandospeeddating.com; and buenosairesdating.com. Obviously, other parties also own domain names which incorporate the word DATING and some parties even own domain names consisting of the words CITY and DATING, such as “Citydatingservice.com” and “Citydatingsource.com”. As a result, the Respondent can also claim rights to or legitimate interests in the Domain Name which is descriptive for dating services in a city. The mere fact that the Respondent does not directly offer dating services to the public, but uses the Domain Name for a website to post advertising links to dating sites, does not mean that the Respondent loses its rights or legitimate interests. The Panel refers in this respect to the case law cited by the Respondent which held “[w]here the domain name incorporates a common word, it is beyond debate that the posting of related advertising links constitute use of the domain name for the bona fide offering of goods and services.” (see: HP Hood LLC v. Hood.com, No. 313566 (NAF Oct. 20, 2004, where the Panel also added: “The ICANN Policy is very narrow in scope; it covers only clear cases of “cybersquatting” and “cyberpiracy,” not every dispute that might arise over a domain name.”); Dial-a-Mattress Operating Corp. v. Ultimate Search, No.D2001-0764 (WIPO Sept. 26, 2001); Etam, plc v. Alberta Hot Rods, D2000-1654 (WIPO Jan. 31, 2001); GLB Servicos Interativos S.A. v. Ultimate Search, No. D2002-0189 (WIPO May 29, 2002). Accordingly, the Respondent has demonstrated that it has rights to and a legitimate interest in the Domain and the Complaint must, therefore, be dismissed. C. Registered and Used in Bad Faith Even though the Complaint will be dismissed because the second requirement of the UDRP is not met, as set out under B above, the Panel will briefly address the bad faith requirement. The Complainant alleged that the Respondent lost many domain name disputes, where its bad faith has been established. While it is true that in many decisions the panels found against the Respondent, there are at least as many decisions that were rendered in favour of the Respondent. It is not because the Respondent registered and used in bad faith, for instance, the domain name “Compart.com” (WIPO case n° D2009-0462) or “CARSAD.COM” (WIPO case n° D2009-0793), which are not descriptive at all, that the registration and use of the descriptive Domain Name “citydating.com” also constitutes bad faith. As set out above, given that the Domain Name is descriptive for the dating services for which it is used, its registration and use do not easily qualify as acts of bad faith. There is no indication that when the Respondent registered the Domain Name, it was aware or should have been aware of the trademark of the Complainant and that it nevertheless registered the Domain Name to trade on the reputation and goodwill of the trademark of the Complainant. This is even more so because the trademark is a figurative mark, of which the word CITYDATING is but a part. The same applies to the argument that the Domain Name was registered with a name shield, so that the identity of the Respondent is not immediately revealed when searching in the Who Is database. The Respondent may prefer that its identity is not immediately disclosed and this is not automatically an indication of bad faith. In a similar case against the Respondent, the Panel decided correctly: “The Panel does not regard the use of a privacy service as evidence in itself of bad faith. The Respondent’s record in domain name disputes indicates that he registers a large number of domain names, some in bad faith and some in good faith. In the Panel’s view, this record does not establish that the Domain Name in this case was registered in bad faith.” (WIPO D2007-795) It is true that the Respondent offered the Domain Name for sale, but given the descriptive character of the Domain Name, the Panel is not convinced that the offer for sale is sufficient to constitute bad faith in registration and use. Consequently, in the opinion of the Panel, it has not been shown that there is bad faith in accordance with the Uniform Dispute Resolution Policy in this case. The Complaint must therefore be rejected. As was observed in the decision on WIPO case No. No. D2000-1470: "This Panel is not a general domain name court, and the Policy is not designed to adjudicate all disputes of any kind that relate in any way to domain names. Rather, the Policy is narrowly crafted to apply to a particular type of abusive cybersquatting.” D. Reverse Domain Name Hijacking and Dissenting Opinion on this topic The Respondent requests a finding of reverse domain name hijacking. This is defined in the Definitions section of the Rules as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name”. Paragraph 15(e) of the Rules provides as follows: “If after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.” A majority of the panel ( Messrs Heremans and Petillion) is of the opinion that because the Complainant holds a registered trademark that is similar to the Domain Name and has used the mark for many years, there is no indication that the Complaint was brought to harass the Respondent. Moreover, the Respondent was found to have acted in bad faith in some of the earlier UDRP proceedings in which it was involved. Thus, while the Complainant has failed to establish all of the elements of a Policy complaint, the Panel does not conclude that the Complainant initiated this proceeding in bad faith. The Panel therefore declines to characterize the Complaint as an instance of reverse domain name hijacking. Panelist Brown respectfully disagrees with the opinion of the majority on this issue and would make a finding of Reverse Domain Name Hijacking. His reasons for so finding are as follows. In a regular case the circumstances outlined by the majority may be enough to justify not making a finding of reverse domain name hijacking, but the present case is one where there is an indication that the complaint was brought to harass the Respondent. That is because the dispute was originally settled on July 14, 2009, but the Complainant abandoned the settlement and instituted the first proceeding at WIPO. It has already been explained under OTHER LEGAL PROCEEDINGS that the Complainant started those proceedings, but requested on August 31, 2009 that they be terminated and that they were terminated by WIPO on September 3, 2009. The Complainant then began the present proceeding on September 17, 2009. There has been no explanation given by the Complainant for this sequence of events and the Complainant has not filed a supplementary submission to contribute to the discussion, despite having been criticised for her conduct in the Response in a way that called for a reply. The panel is therefore left in the position where it understands that having launched one proceeding on a dubious basis, the Complainant abandoned the proceeding and started a new proceeding, presumably putting the Respondent to a new round of expense and inconvenience, without any explanation and accusing the Respondent of bad faith. That is a form of harassment of the Respondent as one of the definitions of harassment invokes the notion of persistent attacks or questions which seems to have been the practice engaged in by the Complainant in bringing the present case. Accordingly, it is appropriate to make a finding of Reverse Domain Name Hijacking.

Discussion and Findings

To prevail in the proceedings under the Uniform Domain Name Dispute Resolution Policy, the Complaint must show that the three requirements laid down in paragraph 4(a) of the Policy are met. Those requirements are:

(a) that the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(b) that the Respondent has no rights or legitimate interests in respect of the domain name; and

(c) that the domain name has been registered and is being used in bad faith.

A. Domain name is identical or confusingly similar to a mark of the Complainant

The Complainant claims to be the proprietor of the trademark n° 2296236 that is registered in the UK since 23 August 2003. The mark is a figurative trademark consisting of a design and of the words CITYDATING.COM.

The Respondent does not dispute that the figurative trademark belongs to the Complainant, that it is valid, and that the domain name is confusingly similar to the trademark.

Therefore the Panel finds that the first requirement is met.

B. Rights or Legitimate Interests

For the second requirement, the Complainant must show that the Respondent does not have a right or legitimate interest in the Domain Name.

The Complainant states that she did not give her consent to the Respondent to use her trademark. While this may be true, the Respondent may of course have other rights or legitimate interests that do not depend on the consent of the Complainant.

The Complainant also states that the Respondent has neither the intention nor the ability to conduct business, or otherwise be associated with the Domain Name. The Panel disagrees with this view.

Article 4(c) of the Policy provides that the Respondent can demonstrate his rights to and legitimate interests in the Domain Name by showing evidence of several circumstances, including that the Respondent, before any notice of the dispute, made use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services.

The Respondent states that it has a regular business practice of registering domain names that are based on descriptive words and phrases, which is confirmed in several decisions rendered under the UDRP (see: Super Supplements, Inc. v. Vertical Axis, Inc., D2008-0244 (WIPO May 13, 2008); Jet Marques v. Vertical Axis, Inc., D2006-0250 (WIPO May 26, 2006), Nursefinders, Inc. v. Vertical Axis, Inc., No. D2007-0417 (WIPO July 5, 2007)).

In this dispute, the Domain Name consists of the terms “CITY DATING” plus the “.com” extension. CITY DATING describes the services for which the Domain Name is used, i.e. services of dating in the City of London or in any other city. A visit to the website operated by the Respondent under the Domain Name shows that the Domain Name is indeed used in relation to dating services. The website offers many links to all kinds of dating sites and allegedly generates advertising revenues for the Respondent.

The Respondent, moreover, seems to be the owner of many other domain names consisting, among others, of the word “dating”, such as chatdating.com; datingsingle.com; ottawadating.net; irishdatingsite.com; datingintoronto.com; dataingcostarica.com; asiandatingonline.com; elpasodatingservice.com; chinesedatingservice.com; clevelanddatingservice.com; stlousionlinedating.com; chicagochristiandating.com; indianadating.org; louisvillespeeddating.com; buffalodatingservices.com; denverdatingservices.com; manhattanspeeddating.com; madisondatingservice.com; lasvegasspeeddating.com; arizonaspeeddating.com; orlandospeeddating.com; and buenosairesdating.com.

Obviously, other parties also own domain names which incorporate the word DATING and some parties even own domain names consisting of the words CITY and DATING, such as “Citydatingservice.com” and “Citydatingsource.com”.

As a result, the Respondent can also claim rights to or legitimate interests in the Domain Name which is descriptive for dating services in a city.

The mere fact that the Respondent does not directly offer dating services to the public, but uses the Domain Name for a website to post advertising links to dating sites, does not mean that the Respondent loses its rights or legitimate interests. The Panel refers in this respect to the case law cited by the Respondent which held “[w]here the domain name incorporates a common word, it is beyond debate that the posting of related advertising links constitute use of the domain name for the bona fide offering of goods and services.” (see: HP Hood LLC v. Hood.com, No. 313566 (NAF Oct. 20, 2004, where the Panel also added: “The ICANN Policy is very narrow in scope; it covers only clear cases of “cybersquatting” and “cyberpiracy,” not every dispute that might arise over a domain name.”); Dial-a-Mattress Operating Corp. v. Ultimate Search, No.D2001-0764 (WIPO Sept. 26, 2001); Etam, plc v. Alberta Hot Rods, D2000-1654 (WIPO Jan. 31, 2001); GLB Servicos Interativos S.A. v. Ultimate Search, No. D2002-0189 (WIPO May 29, 2002).

Accordingly, the Respondent has demonstrated that it has rights to and a legitimate interest in the Domain and the Complaint must, therefore, be dismissed.

C. Registered and Used in Bad Faith

Even though the Complaint will be dismissed because the second requirement of the UDRP is not met, as set out under B above, the Panel will briefly address the bad faith requirement.

The Complainant alleged that the Respondent lost many domain name disputes, where its bad faith has been established. While it is true that in many decisions the panels found against the Respondent, there are at least as many decisions that were rendered in favour of the Respondent. It is not because the Respondent registered and used in bad faith, for instance, the domain name “Compart.com” (WIPO case n° D2009-0462) or “CARSAD.COM” (WIPO case n° D2009-0793), which are not descriptive at all, that the registration and use of the descriptive Domain Name “citydating.com” also constitutes bad faith.

As set out above, given that the Domain Name is descriptive for the dating services for which it is used, its registration and use do not easily qualify as acts of bad faith.

There is no indication that when the Respondent registered the Domain Name, it was aware or should have been aware of the trademark of the Complainant and that it nevertheless registered the Domain Name to trade on the reputation and goodwill of the trademark of the Complainant. This is even more so because the trademark is a figurative mark, of which the word CITYDATING is but a part.

The same applies to the argument that the Domain Name was registered with a name shield, so that the identity of the Respondent is not immediately revealed when searching in the Who Is database. The Respondent may prefer that its identity is not immediately disclosed and this is not automatically an indication of bad faith.

In a similar case against the Respondent, the Panel decided correctly: “The Panel does not regard the use of a privacy service as evidence in itself of bad faith. The Respondent’s record in domain name disputes indicates that he registers a large number of domain names, some in bad faith and some in good faith. In the Panel’s view, this record does not establish that the Domain Name in this case was registered in bad faith.” (WIPO D2007-795)

It is true that the Respondent offered the Domain Name for sale, but given the descriptive character of the Domain Name, the Panel is not convinced that the offer for sale is sufficient to constitute bad faith in registration and use.

Consequently, in the opinion of the Panel, it has not been shown that there is bad faith in accordance with the Uniform Dispute Resolution Policy in this case. The Complaint must therefore be rejected. As was observed in the decision on WIPO case No. No. D2000-1470:

"This Panel is not a general domain name court, and the Policy is not designed to adjudicate all disputes of any kind that relate in any way to domain names. Rather, the Policy is narrowly crafted to apply to a particular type of abusive cybersquatting.”

D. Reverse Domain Name Hijacking and Dissenting Opinion on this topic

The Respondent requests a finding of reverse domain name hijacking. This is defined in the Definitions section of the Rules as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name”.
Paragraph 15(e) of the Rules provides as follows:
“If after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.”
A majority of the panel ( Messrs Heremans and Petillion) is of the opinion that because the Complainant holds a registered trademark that is similar to the Domain Name and has used the mark for many years, there is no indication that the Complaint was brought to harass the Respondent. Moreover, the Respondent was found to have acted in bad faith in some of the earlier UDRP proceedings in which it was involved.

Thus, while the Complainant has failed to establish all of the elements of a Policy complaint, the Panel does not conclude that the Complainant initiated this proceeding in bad faith. The Panel therefore declines to characterize the Complaint as an instance of reverse domain name hijacking.

Panelist Brown respectfully disagrees with the opinion of the majority on this issue and would make a finding of Reverse Domain Name Hijacking. His reasons for so finding are as follows. In a regular case the circumstances outlined by the majority may be enough to justify not making a finding of reverse domain name hijacking, but the present case is one where there is an indication that the complaint was brought to harass the Respondent. That is because the dispute was originally settled on July 14, 2009, but the Complainant abandoned the settlement and instituted the first proceeding at WIPO. It has already been explained under OTHER LEGAL PROCEEDINGS that the Complainant started those proceedings, but requested on August 31, 2009 that they be terminated and that they were terminated by WIPO on September 3, 2009. The Complainant then began the present proceeding on September 17, 2009.

There has been no explanation given by the Complainant for this sequence of events and the Complainant has not filed a supplementary submission to contribute to the discussion, despite having been criticised for her conduct in the Response in a way that called for a reply. The panel is therefore left in the position where it understands that having launched one proceeding on a dubious basis, the Complainant abandoned the proceeding and started a new proceeding, presumably putting the Respondent to a new round of expense and inconvenience, without any explanation and accusing the Respondent of bad faith. That is a form of harassment of the Respondent as one of the definitions of harassment invokes the notion of persistent attacks or questions which seems to have been the practice engaged in by the Complainant in bringing the present case.

Accordingly, it is appropriate to make a finding of Reverse Domain Name Hijacking.

Decision
For the reasons set out above, the Complaint is	Rejected
and the disputed domain name(s) is(are) to be
CITYDATING.COM	Complaint rejected

Panellists
Name	The Hon. Neil Brown, QC , Flip Petillion , Tom Joris Heremans
Date of Panel Decision	2009-11-26

Annexes
Annex: English summary of the Panel Decision
It is not disputed that the Domain Name is similar to the trademark of the Complainant. The Domain Name consists of the terms “CITY DATING” plus the “.com” extension. CITY DATING describes the services for which the Domain Name is used, i.e. services of dating in a city, and the Respondent uses the Domain Name for a web site with links to dating sites. The Respondent seems to be the owner of many other domain names consisting of the word “dating.” As a result, the Respondent can claim rights to or legitimate interests in the Domain Name. Given that the Domain Name is descriptive for the dating services for which it is used, its registration and use do not qualify as acts of bad faith. There is no indication that when the Respondent registered the Domain Name, it was aware or should have been aware of the trademark of the Complainant and that it nevertheless registered the Domain Name to trade on the reputation and goodwill of the trademark of the Complainant. While the Respondent offered the Domain Name for sale, this is, given its descriptive character, not sufficient to constitute bad faith. The Complaint is rejected and the claim for a finding of reverse domain name hijacking is also rejected by the majority of the panel. The minority published a dissenting opinion.

Annexes

Annex: English summary of the Panel Decision

It is not disputed that the Domain Name is similar to the trademark of the Complainant.

The Domain Name consists of the terms “CITY DATING” plus the “.com” extension. CITY DATING describes the services for which the Domain Name is used, i.e. services of dating in a city, and the Respondent uses the Domain Name for a web site with links to dating sites. The Respondent seems to be the owner of many other domain names consisting of the word “dating.” As a result, the Respondent can claim rights to or legitimate interests in the Domain Name.

Given that the Domain Name is descriptive for the dating services for which it is used, its registration and use do not qualify as acts of bad faith. There is no indication that when the Respondent registered the Domain Name, it was aware or should have been aware of the trademark of the Complainant and that it nevertheless registered the Domain Name to trade on the reputation and goodwill of the trademark of the Complainant. While the Respondent offered the Domain Name for sale, this is, given its descriptive character, not sufficient to constitute bad faith.

The Complaint is rejected and the claim for a finding of reverse domain name hijacking is also rejected by the majority of the panel. The minority published a dissenting opinion.

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