The Complainant is Steven Allen Shubin of Dripping Springs, Texas, United States of America ("United States"), represented by Grau & Angulo, Spain.
The Respondent is Chidera Egerue, Purelife of London, United Kingdom of Great Britain and Northern Ireland ("United Kingdom"). 2. The Domain Name and Registrar
The disputed domain name is registered with 1&1 Internet AG (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on January 23, 2018. On the same date, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 24, 2018, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the Respondent's 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 30, 2018. In accordance with the Rules, paragraph 5, the due date for Response was February 19, 2018. On February 19, 2018, the Center received an email communication from the Respondent. At the Complainant's request, the administrative proceeding was suspended on February 23, 2018, and reinstituted on March 26, 2018. The due date for Response was March 29, 2018. On April 3, 2018, the Center received an email communication from the Respondent.
The Center appointed Alistair Payne as the sole panelist in this matter on April 12, 2018. 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. 4. Factual Background
The Complainant, together with his wife, owns and operates a United States company called Interactive Life Forms, LLC ("the company") that manufactures and distributes sex toys. The company sells products under the "Fleshlight" brand. It sells more than 150 versions of its flagship male sex toy under this brand including under sub-brands such as "Fleshlight Girls" and operates from facilities in Austin Texas and Seville in Spain. The Complainant owns various trade mark registrations in Europe and the United States for its FLESHLIGHT mark, including European Union Trade Mark ("EUTM") No. 003948445 filed on July 23, 2004 and registered on October 14, 2005. It operates a main website for its product at "" and a corresponding website from which European customers can buy the product in euros at "".
The disputed domain name was registered on May 5, 2017 and resolves to an adult online store, which appears to sell counterfeit FLESHLIGHT products and other related products. 5. Parties' Contentions A. Complainant
The Complainant submits that it owns registered trade mark rights for its FLESHLIGHT mark as noted above and that its mark is wholly contained within the disputed domain name. It says further that the addition of the descriptive terms "4guys" is merely indicative that the product is aimed at men. In circumstances that the Complainant's FLESHLIGHT products are solely targeted at men the Complainant says that the addition of this term is descriptive and does not distinguish the disputed domain name.
The Complainant submits that it has not licensed or authorised the sale or distribution of its products by the Respondent. It further says that the Respondent is not commonly known by the disputed domain name and that based on its searches of the European Union Intellectual Property Office, United Kingdom Intellectual Property Office, United States Patent and Trademark Office and global TMView databases does not appear to own any trade mark registration based on the "Fleshlight" denomination.
According to the Complainant, the Respondent is offering counterfeit FLESHLIGHT products from the website to which the disputed domain name resolves. The Complainant notes that it has ordered two of these products and upon receipt and inspection confirms that they are counterfeit and has provided evidence on the record that the products are not genuine FLESHLIGHT products. It notes that whereas its products are made either in the United States or Spain, these products appear to have been made in China and sent from Singapore, are of poor quality and are in packaging which differs from the Complainant's original packaging in various respects. The Complainant also notes that the counterfeit products on the Respondent's website are offered at below market value prices, that it has found evidence of customer complaints that the products are counterfeit and of poor quality and that various images have been copied from the Complainant's website including of various adult industry stars. Further, other products from third party manufacturers are advertised on the Respondent's website. None of this says the Complainant, is consistent with legitimate or bona fide use of the disputed domain name.
The Complainant submits that its FLESHLIGHT products are very well-known in the adult industry and amongst consumers. It has provided evidence that it has won various awards for its product since 2010, that its products have been advertised widely in the most reputed adult industry magazines and that they have attracted considerable coverage in social media.
Based on this degree of renown, the fact as described above that the Respondent is selling counterfeit FLESHLIGHT products from the website to which the disputed domain name resolves and is using images that are copied from the Complainant's site, the Complainant says that it can only be concluded that the Respondent was well aware of the Complainant's business and FLESHLIGHT brand and products when it registered the disputed domain name. In addition, it says that the Respondent's conduct in promoting the sale of counterfeit products from the website to which the disputed domain name resolves is an abusive and illicit use of the Complainant's trade marks under the Policy and amounts to bad faith in terms of paragraph 4(b)(iv) of the Policy. B. Respondent
On February 19, 2018 the Respondent corresponded by email with the Center to the effect that it had chosen the disputed domain name unintentionally but that it was now in the process of changing the disputed domain name and its marketing materials and company correspondence and requested some time in which to do so. 6. Discussion and Findings
Upon receiving the Respondent's email from the Center, on February 23, 2018, the Complainant requested suspension of the proceedings for 30 days in order to explore settlement and the proceedings were suspended until March 25, 2018. In the event no settlement transpired and the proceedings were recommenced on April 3, 2018. A. Identical or Confusingly Similar
The Complainant has demonstrated that it owns registered trade mark rights in its FLESHLIGHT word mark, in particular EUTM 003948445 filed on July 23, 2004 and registered on October 14, 2005. The disputed domain name incorporates the Complainant's mark and then adds to it the term "4guys". The Panel finds that the "fleshlight" element, which it notes is an unusual coined term, is the distinctive element of the disputed domain name and that the addition of the term "4 guys", meaning "for men", is purely descriptive. As a result, the Panel finds that the disputed domain name is confusingly similar to the Complainant's FLESHLIGHT mark and the Complaint succeeds under this element of the Policy. B. Rights or Legitimate Interests
The Complainant says that it has not licensed or authorised the sale or distribution of its products by the Respondent and that the Respondent is not commonly known by the disputed domain name and based on searches of the EUIPO, UKIPO, USPTO and global TMView databases, the Respondent does not appear to own any trade mark registration based on the "Fleshlight" denomination.
The Complainant has provided evidence that the Respondent is offering for sale counterfeit FLESHLIGHT products from the website to which the disputed domain name resolves. This includes evidence that the products are not from its factories in either in the United States or in Spain, but appear to have been made in China and sent from Singapore, are of poor quality and are in packaging which differs from the Complainant's original packaging in various respects. The Complainant also notes that the counterfeit products on the Respondent's website are offered at below market value prices, that there is evidence of customer complaints that the products are counterfeit and of poor quality and that various images have been copied from the Complainant's website including of various adult industry stars. The Panel also notes that the Complainant's logo appears to have been reproduced on the Respondent's website in an effort to make it look like the Complainant's website. In addition, other products from third party manufacturers are advertised on the Respondent's website.
This is not bona fide or legitimate conduct and the Panel finds that the Complainant has made out a prima facie case under this element of the Policy that has not been rebutted by the Respondent. On this basis and for the reasons set out below the Panel finds that the Complaint also succeeds under this element of the Policy. C. Registered and Used in Bad Faith
The disputed domain name was registered on May 5, 2017, many years after the Complainant filed its FLESHLIGHT trade mark and commenced its business. By this time and based on the evidence provided, the Complainant's mark and product appears to have attracted a considerable degree of repute in the adult industry and amongst customers in various jurisdictions, including in the United Kingdom. Considering also the degree to which the products being sold by the Respondent emulate the Complainant's FLESHLIGHT products and the degree to which the Respondent has sought to make the website at the disputed domain name look as if it was the Complainant's, or at least had been authorised by the Complainant, the Panel considers that the Respondent must have been aware of the Complainant's FLESHLIGHT mark and products when it registered the disputed domain name.
Under paragraph 4(b)(iv) of the Policy, there is deemed evidence of registration and use of a domain name in bad faith where it is found that the Respondent has intentionally attempted to attract Internet users for commercial gain to its website by creating a likelihood of confusion as to source, sponsorship, affiliation or endorsement. The Respondent in this case has used the disputed domain name with a view to confusing Internet users into thinking that that the Respondent's website is the Complainant's, or has some affiliation or connection with the Complainant, when this is not the case. Upon arriving at the Respondent's website, Internet users seeing images of very similar products to the Complainant's FLESHLIGHT products and who also see representations of the Complainant's logo mark and similar content and images, are likely to think that the products or services being promoted have been authorised or approved by the Complainant. Clearly the Respondent has set out to use the disputed domain name in order to divert Internet users to its website so as to sell them cheaper counterfeit versions of the Complainant's product as well as complementary or similar third-party products. Accordingly, the Panel finds that the Respondent's conduct in this regard fulfills the requirements of paragraph 4(b)(iv) of the Policy.
As a result, the Panel finds that the Respondent has both registered and used the disputed domain name in bad faith and the Complaint succeeds under this element of the Policy. 7. Decision
For 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.
Alistair Payne
Sole Panelist
Date: April 22, 2018
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