The Complainant is Lovehoney Group Limited of Bath, United Kingdom of Great Britain and Northern Ireland (“UK”), represented by Thrings LLP, UK.
The Respondent is Star Holdings, Sinjin Tiwali of Maharashta, Mumbai, India / Whois Agent, Whois Privacy Protection Service Inc. of Kirkland, Washington, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with eNom (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 21, 2014. On August 21, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 22, 2014, the Registrar transmitted by email to the Center its verification response confirming:
(a) it is the Registrar for the disputed domain name;
(b) the disputed domain name was registered on July 20, 2010;
(c) the language of the registration agreement is English;
(d) disclosing registrant and contact information for the disputed domain name which differed from the named Respondent (Whois Agent, Whois Privacy Protection Service Inc.) and contact information in the Complaint.
As a result, the Center sent an email communication to the Complainant on August 27, 2014, 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 amended Complaint on August 28, 2014.
The Center verified that the Complaint, together with the amended 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 August 29, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was September 18, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 23, 2014.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on October 1, 2014. 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 is apparently an online sex toy retailer. It claims to be the largest online sex toy retailer in the UK and rapidly expanding internationally. It has been the subject of a television documentary series, “Frisky Business”. Amongst other things, the Complainant has a Community Trademark No. EU003400298 for LOVEHONEY, registered for a range of goods and services in International Classes 3, 5, 10, 25, 28 and 35.
When the Complaint was filed, the disputed domain name resolved to a “parking page” website. In addition to displaying the disputed domain name as a banner at the top, it included a number of “related” links such as “Adult Asian DVDS”, “Brazilian Bikini”, “Benefits of Honey”, “Free Toys”, “Love Honey”, “Sex Toys”, “Adult toys”, “Sex Dating site” and “Adult Web Cam Chat”. Another link is in Chinese characters. There was also a notice at the bottom of the screen, “This Domain Name May be Available for Sale. Click here to inquire.” It would appear from the print out included with the Complaint that clicking on the link “Love Honey” took one to a page of “Sponsored Listings” which featured a series of links. One of this appears to be a link to the Complainant’s UK website, but the other four are to other suppliers of sex toys or adult paraphernalia. 5. Discussion and Findings
No response has been filed. The Complaint and the Written Notice have been served, however, on the electronic and physical coordinates, respectively, specified in the WhoIs record (and confirmed as correct by the Registrar) in accordance with paragraphs 2(a) and 4(a) of the Rules. Accordingly, the Panel finds that the Complaint has been properly served on the Respondent.
When a respondent has defaulted, paragraph 14(a) of the Rules requires the Panel to proceed to a decision on the Complaint in the absence of exceptional circumstances. Accordingly, paragraph 15(a) of the Rules requires the Panel to decide the dispute on the basis of the statements and documents that have been submitted and any rules and principles of law deemed applicable.
Paragraph 4(a) of the Policy, therefore, provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:
(i) the disputed 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 disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant’s trademark rights.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.
The Complainant has proven ownership of the registered trademark, LOVEHONEY, identified in section 4 above.
On the question of identity or confusing similarity, what is required is simply a comparison and assessment of the disputed domain name itself to the Complainant’s proved trademarks: see for example, Disney Enterprises, Inc. v. John Zuccarini, Cupcake City and Cupcake Patrol,WIPO Case No. D2001-0489; IKB Deutsche Industriebank AG v. Bob Larkin,WIPO Case No. D2002-0420. This is different to the question under trademark law which can require an assessment of the nature of the goods or services protected and those for which any impugned use is involved, geographical location or timing. Such matters, if relevant, may fall for consideration under the other elements of the Policy.
The disputed domain name differs from the Complainant’s trademark only by the addition of the ccTLD, “.co”. In undertaking the comparison required for this limb of the Policy, however, it is permissible to disregard that suffix as a functional aspect of the domain name system: Telstra Corporation Limited v. Ozurls,WIPO Case No. D2001-0046, Ticketmaster Corporation v. DiscoverNet Inc.,WIPO Case No. D2001-0252 and Chopard International SA v. Feng Wang / Whois Privacy Protection Service, Inc.WIPO Case No. DCO2014-0016.
Accordingly, the Panel finds that the Complainant has established that the disputed domain name is identical with the Complainant’s trademark and the requirement under the first limb of the Policy is satisfied. B. Rights or Legitimate Interests
The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or
(ii) [the Respondent] (as an individual, business, or other organization) has been commonly known by the [disputed] domain name, even if [the Respondent] has acquired no trademark or service mark rights; or
(iii) [the Respondent] is making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the Complainant. UDRP panels have recognized the difficulties inherent in disproving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. See e.g., paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).
The Complainant states that it has not authorised the Respondent to use the disputed domain name, nor is the Respondent affiliated with it.
The disputed domain name is plainly not derived from the Respondent's name. From the available record, the Respondent does not appear to hold any trademarks for the disputed domain name. Nor, given the “parking page” nature of the website the disputed domain name resolves to, does it appear that it is carrying on a particular business by reference to “Love Honey” other than seeking to generate revenues from pay-per-click links.
It is well-established that the use of a domain name to generate revenues from “pay-per-click” advertising can be legitimate under the Policy, but only where it does not seek to take advantage of some other person’s trademark without permission. The words “love” and “honey” are plain English words. They could also arguably have a descriptive sense or meaning in relation to the sweet food made by bees. There may possibly be some other descriptive senses in which the expression could be used. However, that has no application in the present case as the website which the disputed domain name resolves to has nothing to do with bees or that foodstuff or other descriptive uses. It is plain from the number of links on the Respondent’s website relating to sex toys and associated adult services that the combined expression “Lovehoney” has been adopted and used for its association with sex toys and associated products and services. In other words, it is being used for its associations with the Complainant’s trademark and business. That is not a use in connection with a bona fide offering of goods or services under the Policy.
In these circumstances, the Complainant has established a clear prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has not sought to rebut that prima facie case. Accordingly, the Panel finds the Complainant has established the second requirement under the Policy also. C. Registered and Used in Bad Faith
Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and used in bad faith by the Respondent.
Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant.
As the Panel has discussed in section 5.B. above, the strong inference from the record is that the disputed domain name is not being used for any descriptive connotations it may have but rather because of its associations with the Complainant’s trademark and business. As the expression is not a natural combination in English except in limited circumstances such as arguably in relation to the foodstuff produced by bees and in the absence of a compelling explanation by the Respondent, the Panel infers that the disputed domain name was registered to take advantage of that association also. Accordingly, the Panel finds that the disputed domain name has been both registered and used in bad faith under the Policy. 6. 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.
Warwick A. Rothnie
Sole Panelist
Date: October 15, 2014
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