The Complainant is Steven Allen Shubin, United States of America (“United States”), represented by Philip Lee Solicitors, Ireland.
The Registrant is Malachi Smyth, Ireland.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 22, 2021, via email. On July 23, 2021, the Center transmitted by email to IEDR a request for registrar verification in connection with the disputed domain name. On July 26, 2021, and August 10, 2021, IEDR transmitted by email to the Center its verification response confirming that the Registrant is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the .IE Dispute Resolution Policy (the “IEDR Policy”), the WIPO Dispute Resolution Rules of Procedure for .IE Domain Name Registrations (the “Rules”), and the WIPO Supplemental Rules for .IE Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2.1 and 4.1, the Center formally notified the Registrant of the Complaint, and the proceeding commenced on August 17, 2021. In accordance with the Rules, paragraph 5.1, the due date for Response was September 14, 2021. The Registrant did not submit any response. Accordingly, the Center notified the Registrant’s default on October 6, 2021.
The Center appointed Adam Taylor as the sole panelist in this matter on December 3, 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 Complainant owns a Spanish company, Fleshlight International S.L., and a United States company, Interactive Life Forms LLC, which have supplied sex toys under the name “Fleshlight” in Europe and the United States for some 23 years. References below to “the Complainant” should be treated as including those two companies unless otherwise stated.
The Complainant operates websites at “www.fleshlight.eu” and “www.fleshlight.com”.
The Complainant owns, inter alia, European Union Trade Mark no. 003948445 for FLESHLIGHT, filed on July 23, 2004, registered on October 14, 2005, in class 10.
On March 7, 2012, the Registrant registered “FLESHLIGHT” as a business name with the Companies Registration Office in Ireland.
The disputed domain name was registered on March 9, 2012.
According to a Wayback Machine screenshot1 dated June 17, 2012, the disputed domain name was used for a website branded “Fleshlight.ie”, offering male sex toys for sale.
On February 8, 2021, the Complainant made a test purchase on the Registrant’s website and received an invoice that was prominently branded with the disputed domain name.
The disputed domain name does not currently resolve to an active website.
5. Parties’ Contentions A. ComplainantThe following is a summary of the Complainant’s contentions.
The Complainant’s brand is well known. Its products have featured on prominent websites and TV networks.
The Complainant has acquired a significant reputation, and registered trade mark rights, in Europe and the United States.
The disputed domain name is confusingly similar to the Complainant’s registered trade mark and to the Complainant’s own domain names.
The Registrant lacks rights or legitimate interests in respect of the disputed domain name, which was registered or subsequently used in bad faith.
The Complainant has never authorised the Registrant to use its trade marks.
The Registrant has not acquired any trade mark rights in the term “fleshlight” and is not commonly known by the disputed domain name.
The Registrant’s registration of the disputed domain name will erode the Complainant’s exclusive goodwill in its mark.
The Registrant was clearly aware of the Complainant’s mark at the time of registration of the disputed domain name, which long post-dates the Complainant’s rights.
The disputed domain name is an instrument of fraud as any use of it would result in passing off and infringement of the Complainant’s trade mark rights.
The Registrant has unlawfully used the term “Fleshlight” in the disputed domain name and on its website and invoices, thereby giving potential customers the false impression that they are purchasing from a retailer officially authorised by the Complainant. The Registrant has intentionally set out to confuse users seeking the Complainant’s website and products.
The Registrant’s activities are designed to disrupt and harm the Complainant’s business.
B. RegistrantThe Registrant did not reply to the Complainant’s contentions.
6. Discussion and FindingsUnder paragraph 1.1 of the IEDR Policy, the Complainant is required to prove that:
- the disputed domain name is identical or misleadingly similar to a protected identifier in which the Complainant has rights;
- the Registrant has no rights in law or legitimate interests in respect of the disputed domain name; and
- the disputed domain name has been registered or is being used in bad faith.
Under paragraph 1.3.1 of the IEDR Policy, “protected identifiers” include “trade and service marks protected in the island of Ireland”.
The Complainant owns a European Union trade mark for FLESHLIGHT. This has effect within Ireland and therefore constitutes a protected identifier.
The disputed domain name is identical to this protected identifier excluding the country code Top-Level Domain “.ie”, which is disregarded for the purpose of this comparison.
The Panel therefore finds that the Complainant has established the first element of paragraph 1.1 of the IEDR Policy.
B. Rights in Law or Legitimate InterestsAs explained in section 2.1 of WIPO Overview 3.0 2, the consensus view is that, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If not, the complainant is deemed to have satisfied the second element.
Here, the Complainant has not licensed or otherwise authorised the Registrant to use its trade mark.
Paragraph 3.1 of the IEDR Policy gives examples of circumstances which, if proved, suffice to demonstrate that a registrant possesses rights or legitimate interests in the disputed domain name.
As to paragraph 3.1.1 of the IEDR Policy, the Panel considers that the Registrant’s use of the disputed domain name cannot be said to constitute “good faith” use under paragraph 3.1.1 of the IEDR Policy in light of the Panel’s conclusion in section 6.C below that the Registrant has used the disputed domain name to intentionally attempt to attract, confuse and profit from Internet users seeking the Complainant’s products and services.
Nor is there any evidence that paragraphs 3.1.2 or 3.1.3 of the IEDR Policy apply in the circumstances of this case.
The Panel does not consider that registration of the name “Fleshlight” as a business name constitutes rights or legitimate interests as it was applied for at around the time that the disputed domain name was registered and was plainly designed to support use of the disputed domain name for the above-mentioned illicit purpose. There is no evidence that the business name was registered, let alone used, for any independent legitimate business purpose.
For the above reasons, the Panel finds that the Complainant has established that the Registrant lacks rights or legitimate interests in the disputed domain name and the Complainant has established the second element of paragraph 1.1 of the IEDR Policy.
C. Registered or Used in Bad FaithIn the Panel’s view, it is obvious that the Registrant was aware of the Complainant when registering the disputed domain name, which reflects the Complainant’s highly distinctive name and trade mark.
Not only was the Complainant’s business well-established by the date of registration of the disputed domain name, but the Registrant thereafter used the Complainant’s mark, within the disputed domain name and otherwise, to offer exactly the same kind of products as the Complainant.
Furthermore, the Registrant has not come forward to deny the Complainant’s assertions of bad faith. It is difficult to conceive of any legitimate reason why the Registrant would wish to register the disputed domain name and the Registrant has offered no explanation.
The Panel concludes from the foregoing that the Registrant has registered and used the disputed domain name in bad faith in accordance with paragraph 2.1.4 of the IEDR Policy. The Registrant has intentionally attempted to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant’s protected identifier. The fact that the disputed domain name does not currently resolve to an active website does not prevent a finding of bad faith.
For the above reasons, the Panel concludes that the Complainant has established the third element of paragraph 1.1 of the IEDR Policy.
7. DecisionFor all the foregoing reasons, in accordance with paragraphs 5 of the IEDR Policy and 14 of the Rules, the Panel orders that the disputed domain name
Adam Taylor
Sole Panelist
Dated: December 23, 2021
1 Section 4.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) notes that UDRP panels may undertake limited factual research into matters of public record if they consider such information useful in assessing the merits of the case and reaching a decision. This includes visiting the website linked to the disputed domain name and consulting historical resources to see how the disputed domain name may have been used in the relevant past. Although WIPO Overview 3.0 is directed to the Uniform Domain Name Dispute Resolution Policy (“UDRP”), given the similarity between the UDRP and the IEDR Policy, it is appropriate to have regard to these principles except to the extent that the IEDR Policy diverges from the UDRP.
2 See footnote 1 above, explaining that the Panel considers it appropriate to have regard to WIPO Overview 3.0 except to the extent that the IEDR Policy diverges from the UDRP.