WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Speedo Holdings B.V. v. Dave Evans
Case No. D2007-0911
1. The Parties
Complainant is Speedo Holdings B.V., Amsterdam, Netherlands, represented by Mishcon de Reya, Solicitors, United Kingdom of Great Britain and Northern Ireland.
Respondent is Dave Evans, Brisbane, Queensland, Australia.
2. The Domain Name and Registrar
The disputed domain name is registered with Melbourne IT trading as Internet Names Worldwide.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 20, 2007. On June 22, 2007, the Center transmitted by email to Melbourne IT trading as Internet Names Worldwide a request for registrar verification in connection with the domain name at issue. On June 25, 2007, Melbourne IT trading as Internet Names Worldwide transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 13, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was August 2, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 3, 2007.
The Center appointed Richard G. Lyon as the sole panelist in this matter on August 20, 2007. The Panel finds that it was properly constituted. The Panel has submitted his Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
All of the facts set forth in this section are supported by competent evidence annexed to the Complaint.
Complainant, a Dutch corporation, is one of the world’s largest and best-known makers of swimwear, particularly swimsuits used in competition swimming. Complainant has sold swimwear, other clothing, and accessories under its SPEEDO mark continuously since 1928. Complainant owns more than 1300 trademarks that incorporate the word “speedo” that are registered in scores of countries, including Australia, the country in which Respondent resides. Complainant has promoted its products actively and extensively in Australia since the Melbourne Olympic Games of 1956. Complainant also owns many Internet domain names incorporating its SPEEDO trademark.
Respondent registered the disputed domain name in March 2005. Complainant became aware of this when one of its customers notified it the site was linked to a website featuring “hardcore pornographic material.” A printout of pages from this website accessed in April 2007, annexed to the Complaint, includes sexually explicit and pornographic text and images aimed at homosexual males. It also includes Respondent’s description of a swimsuit of his own design, which he named a “perfect speedo,” and a link to an Australian online retailer where that suit can be purchased.
Shortly thereafter Complainant sent a cease and desist email to Respondent and followed up with a formal hard copy letter from its solicitors. Respondent responded to neither of these communications.
5. Parties’ Contentions
A. Complainant:
The Complainant contends that the disputed domain name consists of its registered mark and the common word “guy”. When the dominant feature of a domain name is the mark of another, confusion is not obviated by adding a common word.1
Complainant has never authorized Respondent to use Complainant’s SPEEDO marks. Respondent has never been known by this name. His use of the disputed domain name is clearly commercial and in fact Respondent uses the website to sell swimwear carrying Complainant’s brand without authorization. Such use is not legitimate under the Policy.
Respondent was clearly aware of Complainant’s famous SPEEDO mark at the time he registered the disputed domain name, by reason of those marks’ reknown and long use by Complainant. The incorporation of the SPEEDO mark in the disputed domain name is itself evidence of registration and use in bad faith. By selecting a domain name that incorporates Complainant’s marks, Complainant is attempting to attract Internet users to his site by creating a likelihood of confusion with Complainant’s marks, as proscribed by paragraph 4(b)(iv) of the Policy.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Procedural Matters
Jurisdiction
As in any default proceeding, the Panel first examines whether Respondent has been “given a fair opportunity to present its case,” Rules, paragraph 10(b). Following its customary practice2 the Center sent an electronic copy of the Complaint, without attachments, to Respondent by electronic mail to the address listed on the Whois database for the disputed domain name, and a hard copy, with attachments, by post-courier to the street address listed in the data base. While the hard copy was returned undelivered there is no indication that the electronic mail was not received.
Both as a general rule and in the circumstances of this case the Center discharges its responsibility under the Rules, paragraph 2(a), to employ “reasonably available means calculated to achieve actual notice to Respondent” by using the data base addresses. More may be required only in exceptional circumstances which are not in evidence in the present case. Nor is there anything before the Panel to show that additional action (either by the Center or as may be ordered by the Panel) is likely to provide actual notice where strict compliance with the Rules may not. Respondent may blame no one but himself if he has not received actual notice of these proceedings, since that is the natural consequence of his failing to provide accurate or current contact information to the Registrar. Go Daddy Software, Inc. v. Daniel Hadani, WIPO Case No. D2002-0568. The Panel finds that it has jurisdiction to decide this matter.
Effect of Default
Respondent’s default does not automatically result in a decision for Complainant and does not amount to an admission of matters pleaded in the Complaint. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 4.6; Traditional Tuscany v. Maria Concetta de Concini, WIPO Case No. D2006-0997.
7. Discussion and Findings
In this proceeding Complainant has supported its charging factual allegations with competent evidence that clearly establishes each essential element of the Policy.
Confusingly Similar to a Mark in which Complainant Has Rights
The addition of a common word does not remove or lessen any confusing similarity between the disputed domain name, whose dominant feature is Speedo, and Complainant’s registered marks. See, e.g., Prada S.A. v. Ms. Loredana Salvatori, WIPO Case No. D2007-0064 (); Speedo Holdings B.V. v. Speedo Boyz, WIPO Case No. D2003-0439 ().
No Right or Legitimate Interest.
Complainant has made out a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name. Respondent’s use includes commercial activities (and what appears to be a flagrant trademark infringement at that), he has not been authorized by Complainant to use Complainant’s marks, and the primary use to which he has put the disputed domain name – pornography - bears no relationship with Complainant’s business or marks.
Two possible arguments might establish a legitimate interest of Respondent. On his website Respondent constantly refers to himself as a “speedo guy.” The safe harbor in paragraph 4(c)(ii) of the Policy, however, requires that Respondent be “commonly known” by the disputed domain name, not merely that it is or may be descriptive of him. See Julie & Jason, Inc. d/b/a The Mah Jongg Maven v. Faye Scher d/b/a Where the Winds Blow, WIPO Case No. D2005-0073.
Based upon the materials from Respondent’s website submitted with the Complaint and by the Center, Respondent’s accessible commercial activity appears quite sparse amid a large volume of non-commercial web content. The site apparently does not charge for pornography and does not include the usual commercial links indicative of click-through revenues. While a genuine fan site3 or criticism site4 with some limited commercial activity might in certain circumstances still be deemed non-commercial under paragraph 4(c)(iii) of the Policy, in this proceeding the defense in that paragraph is not available. First, Respondent’s commercial activity involves use of Complainant’s mark, without authority, for Respondent’s competing product. Second, the content of Respondent’s site will in all likelihood “tarnish the trademark or service mark at issue.” Nothing in trademark law or Policy precedent allows unauthorized use of another’s famous mark frequently and flagrantly on a pornography site. The SPEEDO trademark at issue is undeniably famous (in the trademark sense) and is (at the very least from the perspective of a customer or prospective customer of Complainant) being tarnished by the Respondent’s unauthorized use. This is more than the Panel’s inference; the evidence shows Complainant initiated action against Respondent after a customer’s indignation at finding pornography at a website bearing Complainant’s mark.
Bad Faith.
The content of Respondent’s website establishes that Respondent knew of Complainant, Complainant’s marks, and the goods Complainant sold under those marks when he registered the disputed domain name.5 In the absence of any evidence to the contrary the Panel may presume that he selected the disputed domain name to take advantage of the goodwill associated with Complainant’s marks. As Complainant argues, Respondent’s conduct falls squarely within the example of bad faith included in paragraph 4(b)(iv) of the Policy.
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name, , be transferred to the Complainant.
Richard G. Lyon
Sole Panelist
Dated: August 24, 2007
1 Complainant cites one case, Nokia Corporation v. N a.k.a. IBCC, WIPO Case No. D2000-0102, in which a panel found “Nokia Girls” to be confusingly similar to the NOKIA mark, as closely analogous.
2 In addition to Whois addresses the Center will ordinarily also send copies to any other addresses indicated in the record (such as in the Complaint, on the respondent’s website, or in email correspondence received from a party or his authorized representative). The record in this proceeding had no such other such address.
3 Chivas USA Enterprises, LLC, et al. v. Cesar Carbajal, WIPO Case No. D2006-0551.
4 Justice for Children v. R neetso / Robert W. O’Steen, WIPO Case No. D2004-0175.
5 For example, “I love speedos (hence the creation of this speedo blog).”
Full & Egal Universal Law Academy