WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons Case No. D2010-0281 1 The Parties
The Complainant is Speedo Holdings B.V. of London, United Kingdom of Great Britain and Northern Ireland, represented by Mishcon de Reya, Solicitors, United Kingdom.
The Respondents are Programmer of Brisbane, Queensland, Australia; Miss Kathy Beckerson of Bondi, New South Wales, Australia; John Smitt of Essex, United Kingdom; and Matthew Simmons of Brisbane, Queensland, Australia. 2. The Domain Names and Registrars
The disputed domain names , , and are registered with Intercosmos Media Group d/b/a directNIC.com. The disputed domain names and are registered with Melbourne IT Ltd. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 23, 2010. On February 24, 2010, the Center transmitted by email to Intercosmos Media Group d/b/a directNIC.com and Melbourne IT Ltd a request for registrar verification in connection with the disputed domain names. On February 24, 2010, Intercosmos Media Group d/b/a directNIC.com transmitted by email to the Center its verification response confirming that the Respondents Programmer and Matthew Simmons are listed as the registrants and providing the contact details. On March 4, 2010, Melbourne IT Ltd transmitted by email to the Center its verification response confirming that the Respondents Miss Kathy Beckerson and John Smitt are listed as the registrants 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” or “UDRP”), 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 March 8, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was March 28, 2010. The Respondents did not submit any response. Accordingly, the Center notified the Respondents' default on March 29, 2010.
The Center appointed William R. Towns as the sole panelist in this matter on April 9, 2010. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. Due to the relative complexity of this matter, it has been necessary for the Panel to extend the submission date for this decision to the date indicated under paragraph 8 below. 4. Factual Background
The Complainant is an internationally known maker of swimwear, most notably swimsuits used in competition swimming. The Complainant has sold swimwear, other clothing, and accessories under its SPEEDO mark continuously since 1928. Further, the Complainant owns registrations for SPEEDO or SPEEDO-formative marks in numerous countries around the world, including Australia and the United Kingdom (“U.K.”), the countries in which, according to relevant WhoIs records, one or more of the Respondents reside. The SPEEDO mark has become a well-known and internationally recognized swimwear brand, and the Complainant's rights in the SPEEDO mark have been recognized in decisions under the Policy.1 The Complainant also owns a large number of domain names incorporating its SPEEDO trademark.
A table providing pertinent WhoIs registrant and contact information for the disputed domain names is provided as Exhibit A to this decision. The record in this case reflects without contradiction that the disputed domain names resolve to various websites apparently operated by Dave Evans, including “www.SwimmerB” and “www.SwimmerS”, two websites “100% owned and operated” by Evans. Evans is shown as the administrative and technical contact in the WhoIs records for the disputed domain names and (WhoIs registrant: Programmer).2 On the website to which resolves, Evans also claims ownership among others of the disputed domain name (WhoIs registrant: Matthew Simmons).3 All of Evans' websites are sexually oriented and several display hardcore pornographic materials.
While the relevant WhoIs records identify the registrants of the disputed domain names , , and to be Matthew Simmons, Miss Kathy Beckerson and John Smitt, respectively, a common email address, , was provided for each. This is the same email address that Dave Evans provided when registering the domain name , which a UDRP Panel previously ordered transferred to the Complainant in Speedo Holdings B.V. v. Dave Evans,WIPO Case No. D2007-0911.4 Insofar as reflected in the relevant WhoIs records, all of the disputed domain names appear to be hosted at IP addresses or name servers common to other websites operated by Evans.5 The domain names registered in the names of John Smitt and Miss Kathy Beckerson also list a common administrative contact in the registrant information provided to the registrar.
On or about July 17, 2009, the Complainant through its legal counsel sent a cease and desist letter to all of the Respondents, to which, according to the Complainant, no response was ever received. 5. Parties' Contentions A. Complainant
The Complainant asserts that all of the disputed domain names are operated or controlled by Dave Evans, and on that basis invites the Panel in the exercise of its discretion under paragraph 10(e) of the Rules to consolidate the multiple domain name disputes presented by the Complainant in this proceeding. According to the Complainant, the Respondent Programmer is an alter ego for Evans6, and Respondents Beckerson, Smitt, and Simmons are simply friends or contacts engaged by Evans to act as a “beard” for his underlying ownership of all of the disputed domain names.
According to the Complainant, Evans is a recidivist infringer of the SPEEDO mark, intent on using the mark for his hardcore homosexual pornographic websites. The Complainant notes that Evans previously had registered and used the domain name in connection with a website displaying pornographic material, which was the subject of a prior proceeding under the Policy in Speedo Holdings B.V. v. Dave Evans, supra. The panel in that matter ordered the transfer of the domain name to the complainant based on a determination that the domain name had been registered and was being used in bad faith.
The Complainant asserts that the disputed domain names are confusingly similar to the Complainant's well-known and famous SPEEDO mark, as each of the disputed domain names incorporates the Complainant's mark in its entirety. According to the Complainant, the addition of common or descriptive words such as “aussie”, “white”, “guy”, “pics”, and “sexuality” does not dispel such confusing similarity.
The Complainant maintains that the Respondents have no rights or legitimate interests in the disputed domain names. According to the Complainant, the Respondents are in no manner authorized to use the Complainant's SPEEDO mark, and none of the Respondents are commonly known by the disputed domain names. The Complainant asserts that the sole purpose of the Respondents in registering the disputed domain names is to attract Internet visitors to the Respondents' hardcore pornographic websites through the creation of initial interest confusion respecting the Complainant's mark. Further, the Complainant contends that the use of the disputed domain names with the content of the Respondent's website tarnishes the Complainant's mark.
The Complainant contends that the Respondents registered and are using the disputed domain names in bad faith. The Complainant asserts there can be no doubt that the Respondents knew or should have known of the Complainant and its rights in the SPEEDO mark when registering the disputed domain names, and that Evans clearly was aware that the registration of such domain names would infringe the Complainant's mark, following the complaint filed against him in June 2007 in Speedo Holdings B.V. v. Dave Evans, supra. Given the strong reputation and fame of the SPEEDO mark, the Complainant maintains that it is not possible to conceive of any plausible actual or contemplated active use of the disputed domain names by the Respondents that would not be illegitimate, and that the registration and use of the disputed domain names to divert Internet users to websites offering pornographic material constitutes bad faith. The Complainant further asserts that the lack of any response to its cease and desist letter of July 17, 2009 is evidence of bad faith. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Preliminary Procedural Issue: Consolidation of Multiple Domain Names and Respondents A. Consolidation of Multiple Domain Names and Respondents under the Policy and Rules
Although paragraph 10(e) of the Rules generally empowers panels to consolidate multiple domain name disputes in accordance with the Policy and the Rules, neither the Policy nor the Rules expressly provide for the consolidation of multiple respondents per se in a single administrative proceeding. See General Electric Company v. Marketing Total S.A,WIPO Case No. D2007-1834. This situation is not dissimilar from that involving the consolidation of multiple complainants with disputes with a single domain name registrant, which are also subject to paragraph 10(e) of the Rules. Neither the Policy nor the Rules expressly provide for the consolidation of multiple complainants, and generally speak in singular terms of a “complainant” when referring to proceedings under the Policy. See MLB Advanced Media, The Phillies, Padres LP v. OreNet, Inc.,WIPO Case No. D2009-0985.
A number of panels nonetheless have concluded that the Policy and Rules do not preclude multiple complainants in appropriate circumstances from jointly seeking relief in a single administrative proceeding. See National Dial A Word Registry Pty Ltd and others v. 1300 Directory Pty Ltd,WIPO Case No. DAU2008-0021; Alabama One Call, Louisiana One Call System, Tennessee One-Call System, Inc. v. Windward Marketing Group, Inc.,WIPO Case No. D2009-1243; MLB Advanced Media, The Phillies, Padres LP v. OreNet, Inc., supra; Fulham Football Club (1987) Limited, Tottenham Hostpur Public Limited, West Ham United Football Club PLC, Manchester United Limited, The Liverpool Football Club And Athletic Grounds Limited v. Domains by Proxy, Inc./ Official Tickets Ltd,WIPO Case No. D2009-0331.
In National Dial A Word Registry Pty Ltd, supra, the panelist undertook to distill from the body of relevant administrative decisions principles to apply in determining when consolidation of multiple complainants should be permitted, having regard to all of the relevant circumstances. The overriding principles articulated in National Dial A Word Registry Pty Ltd can be stated in general terms as follows: The consolidation of multiple complainants in a single complaint is permissible if the complainants have a truly common grievance against a respondent, and it would be equitable and procedurally efficient to do so. See, e.g., Alabama One Call, Louisiana One Call System, Tennessee One-Call System, Inc. v. Windward Marketing Group, Inc., supra; MLB Advanced Media, The Phillies, Padres LP v. OreNet, Inc., supra.
While the consolidation of multiple complainants and that of multiple respondents are both subject to paragraph 10(e) of the Rules, the Panel nonetheless notes that the decision criteria for these two types of consolidations, while not dissimilar, do not constitute mirror images. Significantly, paragraph 3(c) of the Rules provides that a complaint may relate to more than one domain name only when the domain names are registered by the same domain-name holder. Further, the definition of “Respondent” in paragraph 1 of the Rules – “the holder of a domain-name registration against which a complaint is initiated” – seems to contemplate the inclusion of at least the person or entity identified as the holder of the domain name in the concerned registrar's WhoIs records at the time the complaint is initiated. See ISL Marketing AG, and The Federation Internationale de Football Association v. J.Y. Chung, W, W Co., and Worldcup 2002,WIPO Case No. D2000-0034. Thus, the Policy would seem to require a complainant to initiate separate proceedings against each domain name registrant, absent a either a showing that the relevant domain name registrants are in fact one singular domain name holder under paragraph 3(c) of the Rules or a successful request for consolidation of the multiple domain name disputes under paragraph 10(e) of the Rules. See General Electric Company v. Marketing Total S.A, supra. B. Consolidation of Multiple Respondents in Relevant UDRP Decisions
It seems to this Panel probable that paragraph 3(c) of the Rules was adopted prophylactically with consideration to the efficiency of the summary administrative proceeding provided for under the Policy. Consolidation of disputes involving multiple domain names belonging to a single domain name holder would seem more likely to involve common questions of fact and law, be less complex, and thus in general be better suited for the expedited dispute resolution process contemplated by the Policy. At the same time, however, panels are empowered under paragraph 10(e) of the Rules to consolidate multiple domain name disputes, and consolidation under paragraph 10(e) may be appropriate when doing so promotes the shared interests of the parties in avoiding unnecessary duplication of time, effort and expense, reduces the potential for conflicting or inconsistent results arising from multiple proceedings, and generally furthers the fundamental objectives of the Policy. See MLB Advanced Media, The Phillies, Padres LP v. OreNet, Inc., supra. It is of course axiomatic that a panel should not permit consolidation of multiple domain name disputes under any circumstances if doing so would unfairly favor or prejudice any party.
In this Panel's assessment, while paragraphs 3(c) and 10(e) of the Rules may seem to address different circumstances, both provisions in effect address consolidation of multiple domain name disputes with the presumed common goal of furthering the fundamental objectives of the Policy. With this in mind, the Panel does not believe that paragraphs 3(c) and 10(e) are mutually exclusive, or that the drafters of the Policy necessarily intended for paragraph 3(c) to abrogate the authority of panels to order the consolidation of multiple domain name disputes under paragraph 10(e) in all circumstances involving differently named domain name holders. See General Electric Company v. Marketing Total S.A, supra. See also Archipelago Holdings LLC, v. Creative Genius Domain Sales and Robert Aragon d/b/a/ Creative Genius Domain Name Sales,WIPO Case No. D2001-0729 (it is within the general powers of the panel under paragraph 10(e) to consolidate multiple domain name disputes even where there technically are different registrants); Backstreet Productions, Inc. v. John Zuccarini, CupcakeParty, Cupcake Real Video, Cupcake-Show and Cupcakes-First Patrol,WIPO Case No. D2001-0654 (consolidation of multiple domain names under paragraph 10(e) permissible where technically different registrants treated as alter egos). See also ISL Marketing AG, and The Federation Internationale de Football Association v. J.Y. Chung, W, W Co., and Worldcup 2002, supra (proceeding against multiple respondents with common administrative contact).
This recognition, whether explicit or implicit, seems to be borne out in a number of panel decisions. Multiple domain name registrants controlled by a single person or entity may be treated as a single respondent for purposes of the Policy and Rules. See Archipelago Holdings LLC, v. Creative Genius Domain Sales and Robert Aragon d/b/a/ Creative Genius Domain Name Sales, supra. Common control has been found where the respondents were related businesses. Asset Marketing Systems, LLC v. SmartBuy Corporation, Chan Organization, Mitchell de la Cruz, Gongju Jung et. al.,WIPO Case No. D2004-0492. Common control or ownership also has been found in circumstances indicating that a single person or entity has registered multiple domain names using fictitious names. See Yahoo!, Inc v. Somsak Sooksripanich and Others,WIPO Case No. D2000-1461; Yahoo! Inc. v. Y, Y, Y, Y and Benjamin Benhamou,WIPO Case No. D2001-1188; Nintendo of America Inc v. Marco Beijen, Beijen Consulting, Pokemon Fan Clubs Org., and Pokemon Fans Unite,WIPO Case No. D2001-1070. See also General Electric Company v. Marketing Total S.A, supra.
Similarly, decisions have been rendered against multiple respondents in single proceedings based on the presence of a common administrative or technical contact, or other instances of commonality in the registration information, such as the same postal address or email address. See, e.g., ISL Marketing AG, and The Federation Internationale de Football Association v. J.Y. Chung, W, W Co., and Worldcup 2002, supra; Caesars World, Inc. v. Starnet Communications and Atlantic West Gaming Entertainment, Ltd.,WIPO Case No. D2002-0066; Adobe Systems Incorporated v. Domain OZ,WIPO Case No. D2000-0057; Yahoo! Inc. and GeoCities v. Data Art Corp., DataArt Enterprises, Inc., Stonybrook Investments, Global Net 2000, Inc., Powerclick, Inc., and Yahoo Search, Inc.,WIPO Case No. D2000-0587. See also General Electric Company v. Marketing Total S.A, supra. Panels have found multiple respondents to be commonly controlled where the content of their websites were substantially identical and referred Internet visitors to a common “homepage”. CSA International (a.k.a. Canadian Standards Association) v. John O. Shannon and Care Tech Industries, Inc.,WIPO Case No. D2000-0071. See also Sharman License Holdings, Limited v. Dustin Dorrance/Dave Shullick/Euclid Investments,WIPO Case No. D2004-0659 (consolidation of multiple respondents and multiple domain names appropriate where domain names were registered with same registrar and resolved to essentially identical websites). C. General Principles of Consolidation in Multiple Respondent Cases
The Panel concludes from its review of the relevant UDRP panel decisions discussed above that the consolidation of multiple domain name disputes under paragraph 3(c) or 10(e) of the Rules may be appropriate, even where differently named domain name registrants are involved, where the particular circumstances of a given case indicate that common control is being exercised over the disputed domain names or the websites to which the domain names resolve. As noted above, indicia of common control have been found based on commonalities in registrant information, such as shared administrative or technical contacts and shared postal or email addresses, as well as other circumstances in the record indicating that the respondents are related or that a sufficient unity of interests otherwise exists that they may be essentially treated as a single domain name holder for purposes of paragraph 3(c) of the Rules.
The Panel also finds it appropriate to look in certain respects for guidance to panel decisions under paragraph 10(e) regarding the consolidation of multiple complainants and multiple domain names against a single domain name registrant. With a view to the general principles articulated in these decisions, even where common control of the disputed domain names is established, in this Panel's view the disputes must still be appropriate for consolidation in the context of the summary administrative proceeding provided for under the Policy. Thus, it is incumbent upon panels to determine that any consolidation of multiple respondents under paragraph 10(e) will be both procedurally efficient and fair and equitable to all parties. See, e.g., National Dial A Word Registry Pty Ltd and others v. 1300 Directory Pty Ltd, supra.
In a manner similar to situations involving requests for the consolidation of multiple complainants, this Panel also finds it appropriate for the administrative service provider to act in a preliminary gatekeeper capacity and to decline to accept complainants requesting consolidation of multiple respondents which do not prima facie satisfy the requisite criteria. As the panel in Fulham Football Club (1987) Limited, supra, observed in connection with requests for consolidation of multiple complainants:
“The role of the administrative service provider is to act as a gatekeeper by clearly rejecting complaints which do not fulfill the requisite criteria. Once a complaint is admitted on a prima facie basis the respondent will have its opportunity to make submissions as to validity of the complaint together with its substantive response. The panel will then be in a position to determine the procedural issues based on both parties' submissions and the panel may of course request further statements or materials from either party if found to be necessary. There seems to this Panel to be no compelling reason to impose an additional step into the process which would require a provider to seek comments from the respondent, or to place the onus of review and determination of competing submissions upon the administrative service provider.”
These observations are in the Panel's view as equally applicable to cases involving requests for consolidation of multiple respondents. Similarly, where in such cases a filing complainant does not satisfy the requisite criteria set out above, they should not be prevented from subsequently filing complaints against the individual named respondents and in these circumstances such individual complaints should not constitute re-filed complaints.
In view of the foregoing, the Panel concludes that the consolidation of multiple registrants as respondents in a single administrative proceeding may in certain circumstances be appropriate under paragraph 3(c) or 10(e) of the Rules provided the complainant can demonstrate that the disputed domain names or the websites to which they resolve are subject to common control, and the panel, having regard to all of the relevant circumstances, determines that consolidation would be procedurally efficient and fair and equitable to all parties. D. Application of Consolidation Principles in this Case
In this instance, the Panel finds that the Complainant has established more likely than not that the disputed domain names are subject to the common ownership or control of Dave Evans. The Panel finds such common control sufficient to justify consolidation of the Complainant's claims against the Respondents in this proceeding. The Panel further concludes in the circumstances of this case that consolidation would be equitable to all the parties and procedurally efficient, and therefore will allow the consolidation as requested by the Complainant pursuant to paragraph 10(e) of the Rules.
The uncontroverted facts in the record strongly indicate that the disputed domain names are under common control. It is readily apparent from the record that the Respondent identified as Programmer is merely an alter ego for Evans, given that Evans is listed as the administrative contact for the two domain names registered to Programmer. See ISL Marketing AG, and The Federation Internationale de Football Association v. J.Y. Chung, W, W Co., and Worldcup 2002, supra. Evans also has publicly stated that he runs the website to which the disputed domain name registered in the name of Matthew Simmons resolves. The registrant information provided for the disputed domain names registered to Matthew Simmons, Kathy Beckerson and John Smitt give the same email address that was previously given by Dave Evans in 2007 in connection with his registration of . See Adobe Systems Incorporated v. Domain OZ, supra. In addition, a common administrative contact is listed for the domain names registered in the names of Miss Kathy Beckerson and John Smitt, at the same respective postal addresses provided for Beckerson and Smitt, even though Beckerson purportedly resides in Australia and Smitt purportedly resides in the U.K.
In addition, each of the disputed domain names incorporates the Complainant's well-known SPEEDO mark in its entirety, and the disputed domain names have been used in an identical manner to attract Internet visitors to websites operated by Dave Evans containing pornographic materials. The record fairly reflects that the Complainant has been the target of common conduct based on the registration and use of the disputed domain names and that such conduct clearly affects the Complainant's rights in the SPEEDO mark. See MLB Advanced Media, The Phillies, Padres LP v. OreNet, Inc., supra. The Panel further notes that the Complainant's claims respecting each of the disputed domain names involve common questions of law and fact.
In light of such considerations, the Panel finds that consolidation of the multiple domain name disputes involving the multiple Respondents listed on the first page of this Decision pursuant to paragraph 10(e) of the Rules would be procedurally efficient. Consolidation will permit multiple domain name disputes arising from a common nucleus of facts and involving common legal issues to be heard and resolved in a single administrative proceeding. Doing so promotes the shared interests of the parties in avoiding unnecessary duplication of time, effort and expense, and generally furthers the fundamental objectives of the Policy. Doing so under the circumstances present here, in the Panel's opinion, will not unfairly favor or prejudice any party. See id.
Accordingly, this Panel, having regard to all relevant circumstances, concludes that the consolidation of the multiple domain name disputes asserted by the Complainant against the Respondents is consistent with the Policy and Rules, and comports with prior relevant UDRP decisions in this area. The Panel will proceed to a decision on the merits of these domain name disputes. 7. Discussion and Findings A. Scope of the Policy
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store,WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware,WIPO Case No. D2000-0187. See Final Report of the WIPO Internet Domain Name Process, paragraphs 169 and 170.
Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.
Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) The domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) The respondent has no rights or legitimate interests with respect to the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
Cancellation or transfer of the domain name is the sole remedy provided to the Complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in the domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the often impossible task of proving negative, requiring information that is primarily if not exclusively within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) shifts the burden to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270. B. Identical or Confusingly Similar
The Panel finds for purposes of paragraph 4(a)(i) of the Policy that the disputed domain names are confusingly similar to the SPEEDO mark, in which the Complainant beyond question has established rights. The critical inquiry under the first element of the Policy is whether the mark and domain name, when directly compared, are identical or confusingly similar. See Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale,WIPO Case No. D2000-0662.
Each of the disputed domain names incorporates the Complainant's SPEEDO mark in its entirety and as such is confusingly similar. “Speedo” is the dominant feature of each of the disputed domain names, and the confusing similarity is not diminished by the addition of the common or descriptive words. See, e.g., Speedo Holdings B.V. v. Dave Evans, supra (); Prada S.A. v. Ms. Loredana Salvatori,WIPO Case No. D2007-0064 (); Speedo Holdings B.V. v. Speedo Boyz,WIPO Case No. D2003-0439 ().
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests
As noted above, once a complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of proof to the respondent to come forward with evidence of rights or legitimate interests in a disputed domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) has been made. It is undisputed that the Complainant has not authorized the Respondents to use the Complainant's SPEEDO mark, and there is no indication that any of the Respondents have been commonly known by the disputed domain names. The Complainant's SPEEDO mark has a strong reputation and is internationally known. The record reflects that the Respondents are using the disputed domain names to attract Internet traffic to websites containing pornographic materials, and the content of the websites leaves little doubt as to the association sought to be drawn by the Respondents.
Pursuant to paragraph 4(c) of the Policy, the respondent may establish rights to or legitimate interests in the disputed domain names by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent's 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; or
(ii) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondents have not submitted a formal Response to the Complaint, and in the absence of any such submission this Panel may accept all reasonable inferences and allegations included in the Complaint as true. See Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009.7 In any event, the Panel has carefully reviewed the record in this case, and finds nothing therein that would bring the Respondents' registration and use of the disputed domain names within any of the “safe harbors” of paragraph 4(c) of the Policy.
There is no indication in the record that any of the Respondents have ever been commonly known by the disputed domain names, and it is undisputed that the Complainant has not authorized the Respondents to use the Complainant's SPEEDO mark. Nor does the record reflect the Respondents' use or demonstrable preparations to use the disputed domain names in connection with a bona fide offering of goods or services prior to any notice of the dispute. To the contrary, the record in this case reflects the intentional use of the disputed domain names to exploit and profit from the Complainant's marks through the creation of initial interest confusion. See Speedo Holdings B.V. v. Dave Evans, supra. See also Aubert International SAS and Aubert France SA v. T Co.,WIPO Case No. D2008-1986 (and decisions cited at paragraph 6.18 therein).
Such use of the disputed domain names to trade on the Complainant's goodwill and reputation precludes any bona fide offering of goods or services under paragraph 4(c)(iii) of the Policy. See, e.g., First American Funds, Inc. v. Ult.Search, Inc,WIPO Case No. D2000-1840 (for offering under paragraph 4(c)(i) to be considered bona fide, domain name use must be in good faith under paragraph 4(a)(iii)). See also Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “M”,WIPO Case No. D2000-0847; Trade Me Limited v. Vertical Axis Inc,WIPO Case No. D2009-0093. Nor, in the circumstances of this case, where the well-known mark of another is used to divert Internet users to websites containing pornographic materials, does the record reflect any legitimate noncommercial or fair use of the disputed domain names within the contemplation of paragraph 4(c)(iii) of the Policy. See Speedo Holdings B.V. v. Dave Evans, supra. See also C.S. Lewis (PTE.) Ltd. v. Richard Saville-Smith,WIPO Case No. D2008-0821 (no rights or legitimate interests are established under paragraph 4(c) of the Policy by a respondent's deliberate registration of a domain name appropriating the complainant's mark for use as an email address).
Accordingly, the Panel concludes that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of respondent's documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent's website or location or of a product or service on its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. The overriding objective of the Policy is “to curb the abusive registration of domain names in the circumstances where the registrant is seeking to profit from and exploit the trademark of another”. M, LP v. Bill Zag and NWLAWS.ORG,WIPO Case No. D2004-0230.
The Panel considers it an inescapable conclusion from the undisputed facts and circumstances reflected in the record that the Respondents knew of and had in mind the Complainant's SPEEDO mark when registering the disputed domain names. See Speedo Holdings B.V. v. Dave Evans, supra. See generally Ticketmaster Corporation v. Spider Web Design, Inc.,WIPO Case No. D2000-1551. As noted in Research In Motion Limited v. Dustin Picov,WIPO Case No. D2001-0492, when a domain name is so obviously connected with a complainant, the very use of the domain name by a registrant with no connection to the Complainant suggests “opportunistic bad faith”. See also Paule Ka v. Paula Korenek,WIPO Case No. D2003-0453. In view of the foregoing, and for reasons discussed as well under the preceding heading, the Panel can ascribe no motive for the Respondents' registration and use of the disputed domain names as reflected in the record except to trade on the goodwill associated with the Complainant's mark. See Aubert International SAS and Aubert France SA v. T Co., supra.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy. 8. 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 names, , , , , and be transferred to the Complainant.
William R. Towns
Sole Panelist
Dated: May 18, 2010
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