The Complainants are EIS GmbH, Triple A Finance GmbH & Co. KG, and André Geske, Germany, represented by Eisenführ, Speiser & Partner, Germany.
The Respondent is Monique Costa, Brazil, represented by TAG Advogados, Brazil.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 17, 2021. On June 17, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On June 22, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 23, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on June 25, 2021.
The Center verified that the Complaint, together with the amendment to 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 June 29, 2021. In accordance with the Rules, paragraph 5, the due date for Response was July 19, 2021. The Respondent sent an email to the Center on July 19, 2021, urging a settlement. The Complainant sent an email requesting the suspension of the proceeding on July 26, 2021.
The proceeding was suspended on July 27, 2021, and the Complainant requested several extensions of the suspension period until requesting the reinstitution of the proceeding on November 23, 2021. The proceeding was reinstituted on December 9, 2021, and, considering the Response period had passed, the Center informed the Parties that it would proceed with the Panel appointment.
The Center appointed Ian Lowe as the sole panelist in this matter on December 20, 2021. 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 BackgroundThe First, Second, and Third Complainants (together referred to as the “Complainant”) are variously inter-connected and engaged together in business conduct involving the sale of sex toys, erotic lingerie, and contraceptives, including in particular devices sold under the SATISFYER mark through websites at “www.eis.de” and “www.satisfyer.com”.
The Complainant has sold products under the SATISFYER mark since 2016. It offers around 50 products under the SATISFYER brand with related annual turnover of more than EUR 50 million.
The Complainant is the proprietor of a number of trademark registrations comprising the SATISFYER mark, including Brazil trademark number 911011927 SATISFYER registered on April 24, 2018; United Kingdom trademark number 3444974 SATISFYER registered on December 21, 2017; and, United States of America trademark number 5156217 SATISFYER registered on March 7, 2017. The Complainant operates under a substantial number of generic Top-Level Domains (“gTLDs”) and country code Top-Level Domains (“ccTLDs”) comprising “satisfyer”, to promote its products, all of which divert traffic to the website at “www.satisfyer.com”. The website at “www.satisfyer.com.br” is also directed to “www.satisfyer.com” and enables customers from Brazil to purchase SATISFYER branded products.
The Domain Name was registered on April 27, 2020. It resolves to a website headed “SATISFYER BRASIL” (the “Website”) in the Portuguese language offering for sale a range of erotic products priced in Brazilian Real currency, including both what purport to be the Complainant’s products and the products of third parties.
5. Parties’ Contentions A. ComplainantThe Complainant contends that the Domain Name is confusingly similar to its SATISFYER trademark, that the Respondent has no rights or legitimate interests in respect of the Domain Name, and that the Respondent registered and is using the Domain Name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
B. RespondentThe Respondent did not reply to the Complainant’s contentions, save for the email to the Center dated July 19, 2021, urging the suspension of the dispute for settlement.
6. Discussion and FindingsAs indicated above, the First, Second, and Third Complainants are variously inter-connected and engaged together in business conduct involving the sale of sex toys, erotic lingerie, and contraceptives, including in particular devices sold under the SATISFYER mark through websites at “www.eis.de” and “www.satisfyer.com”. In the circumstances, the Panel is satisfied that the Complainants have a common grievance against the Respondent and that it would be equitable and procedurally efficient to permit the Complaint, filed by multiple complainants to be brought against the single Respondent in this case.
For this Complaint to succeed in relation to the Domain Name the Complainant must prove that:
(i) the Domain Name 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 in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly SimilarThe Complainant has uncontested rights in the SATISFYER trademark (the “Mark”), both by virtue of its trademark registrations and as a result of the goodwill and reputation acquired through its use of the Mark over a number of years. Ignoring the gTLD “.com”, the Domain Name comprises the entirety of the Mark, together with the geographic term “brasil”. In the view of the Panel, this addition does not prevent a finding of confusing similarity between the Domain Name and the Mark. Accordingly, the Panel finds that the Domain Name is confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate InterestsThe Respondent is using the Domain Name for a website offering for sale both what purport to be the SATISFYER products of the Complainant and other similar products of third parties. The Website features unauthorized copies of images of the Complainant’s products. The Respondent is not an authorized sales agent of the Complainant and has not been authorized by the Complainant to use the Mark.
Although there has been no Response by the Respondent, the Panel has in mind that previous UDRP panels have recognized that resellers using a domain name containing the complainant’s trademark to undertake sales of the complainant’s goods may be making a bona fide offering of goods and thus have a legitimate interest in such domain name. The Oki Data test as set out in section 2.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) outlines the following cumulative requirements for such a finding:
(i) the respondent must actually be offering the goods at issue;
(ii) the respondent must use the site only to sell the trademarked goods;
(iii) the site must accurately and prominently disclose the registrant’s relationship with the trademark holder; and
(iv) the respondent must not try to “corner the market” in domain names that reflect the trademark.
The Website offers what purport to be the Complainant’s goods, but is also offering for sale the related products of third parties. The second requirement is not therefore met. Turning to the third requirement, the Website gives no information whatsoever as to the identity of the operator of the Website or seller of the products on offer and fails to make clear in an accurate and prominent way, or at all, the Respondent’s relationship (or absence of relationship) with the Complainant. The third requirement is not therefore met.
Accordingly, the Panel does not consider that the Respondent has met the Oki Data test, and finds that there is a prima facie case that the Respondent does not have any rights or legitimate interests in respect of the Domain Name. Notwithstanding the content found at the Domain Name, the construction of the Domain Name itself is such to carry a risk of implied affiliation and thus cannot constitute fair use. The Respondent has chosen not to respond to the Complaint or to take any steps to counter the prima facie case established by the evidence available to the Panel. In the circumstances, the Panel finds that the Complainant has established that the Respondent does not have any rights or legitimate interests in respect of the Domain Name.
C. Registered and Used in Bad FaithSince the Respondent has used the Domain Name for a website prominently featuring the Complainant’s Mark, and has operated an online shop purporting to offer the Complainant’s products for sale, the Panel is in no doubt that the Respondent had the Complainant and its rights in the Mark in mind when it registered the Domain Name. In light of the nature of the Domain Name, comprising the Mark and the geographic term “Brasil”, and the Respondent’s use of the Mark and copies of the Complainant’s images of its products, the Panel considers that the Respondent has registered and used the Domain Name with a view to confusing Internet users into believing that the Website was associated with or authorized by the Complainant, and in particular that it was an authorized reseller of the Complainant’s products in Brazil.
In the Panel’s view, the use of the Domain Name for such activity, taking unfair advantage of the Complainant’s rights in the Mark, clearly with a view to commercial gain, amounts to paradigm bad faith registration and use for the purposes of the Policy, paragraph 4(b)(iv).
Accordingly, the Panel finds that the Domain Name has been registered and is being used in bad faith.
7. DecisionFor the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name
Ian Lowe
Sole Panelist
Date: December 23, 2021
1 Oki Data Americas, Inc v. ASD, Inc.,WIPO Case No. D2001-0903