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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Speedo Holdings B.V. v. Speedo Boyz
Case No. D2003-0439
1. The Parties
The Complainant is Speedo Holdings B.V., of Amsterdam, the Netherlands, represented by Willoughby & Partners of London, the United Kingdom of Great Britain and Northern Ireland.
The Respondent is Speedo Boyz, an entity in Kenmore, Queensland, Australia. The Respondent is represented by Mr. Tom Grindlay, Focal Trade Limited, Hong Kong, SAR of China.
2. The Domain Name and Registrar
The disputed domain name is <speedoboyz.com>. It is registered with Melbourne IT trading as Internet Name Worldwide.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 6, 2003. On June 10, 2003, the Center transmitted by email to Melbourne IT trading as Internet Name Worldwide a request for registrar verification of the disputed domain name. On June 11, 2003, Internet Name Worldwide transmitted by email to the Center its verification response stating that the Respondent, Speedo Boyz, is listed as the registrant and providing the contact details for the administrative, billing, and technical contact.
The Center noticed from the registrar’s verification response that the Complainant had filed the Complaint against the administrative contact for the disputed domain name, Mr. Peter Burns, as opposed to the registrant, the entity Speedo Boyz. Therefore, on June 16, 2003, the Center issued a Complaint Deficiency Notification and on June 17, 2003, the Complainant corrected its oversight with a Complaint Amendment.
The Center verified that the Complaint and Amendment satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), 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 this proceeding began, on June 23, 2003. In accordance with the Rules, paragraph 5(a), the due date for the Response was set at July 13, 2003. The Response was filed with the Center on July 8, 2003.
The Center appointed Dennis A. Foster as the sole panelist in this matter on July 17, 2003. 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 (Speedo) was founded in 1914, by Alexander MacRae in Sydney, Australia. In 1927, Mr. MacRae introduced his first line of swimwear called the "racer-back costume" and changed the name of his company to Speedo Knitting Mills. Speedo swimwear enjoyed worldwide exposure in 1956 when the Melbourne Olympics promoted Australia as a great sporting nation, particularly in swimming. Winning Australians also wore Speedo swimwear in 1960, at the Rome Olympics.
During the 1970’s, Speedo diversified into other sport clothing and accessories. The Complainant opened new offices in Amsterdam and Montreal, and was appointed the official swimwear licensee for the 1976 Montreal Olympic games. Speedo have introduced such lines as Fast Skin ™ and continue to sponsor athletes and teams around the world.
The Respondent registered the disputed domain name, <speedoboyz.com>, on May 25, 2001. The Complainant sent a cease and desist letter to the Respondent on July 16, 2001, (Complaint Annex 17), but the Respondent never answered.
5. Parties’ Contentions
- Since first use of the "Speedo" name in 1928, the Complainant has continually used the SPEEDO trademark and Speedo Arrow on clothing and accessories that it produces (Complaint Annex 5).
- At Annex 3 are printouts from the Complainant’s Internet site illustrating the Complainant’s present use of its SPEEDO trademarks. These printouts also demonstrate the wide range of products that the Complainant currently has on the market under the SPEEDO trademark.
- The Complainant is the proprietor of the "SPEEDO" trademark in Australia and is also the owner of many different trademark variants of the SPEEDO name (Complaint Annex 7).
- The Complainant is the proprietor of many other trademark registrations for "SPEEDO" in various countries. (Complaint Annex 9).
- Attached at Complaint Annex 3 are examples of the SPEEDO trademark the Complainant has used in Australia and worldwide between 1996 and 2002.
- Around July, 2001, while conducting a routine investigation the Complainant discovered that a domain name using the Complainant’s trademark, namely <speedoboyz.com>, had been registered and was connected to a website featuring material of a sexual nature.
- The disputed domain name, <speedoboyz.com>, incorporates the Complainant’s SPEEDO registered trademark. The use of the non-distinctive term "boyz" in the disputed domain name does not prevent it being confusingly similar to the Complainant’s trademark. The disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.
- The Respondent is not authorized in any way whatsoever to use the Complainant’s SPEEDO trademarks. Furthermore, the Complainant believes the Respondent has no right or legitimate interest in respect of the <speedoboyz.com> domain name as it does not appear to hold any registered trademarks identical or similar to the domain name, is not commonly known by this name, and has no legitimate intention to use the name.
- The Respondent has not engaged in any demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services.
- The website attached to the disputed domain name is far from a bona fide offering of goods or services as it is primarily a means to extort a sum of money from the Complainant in excess of the Respondent’s out of pocket expenses.
- Previous decisions under the Policy have held that the use of a domain name to direct Internet users to other websites which may offer goods or services does not constitute use of the domain name in bona fide.
- There is no prospect of the Respondent arguing that it is making a legitimate, non-commercial or fair use of the domain name because there is the clear intent for commercial gain to misleadingly divert consumers and tarnish the Complainant’s SPEEDO trademarks.
- Given the widespread use and renown of the Complainant’s SPEEDO trademark, there can be no doubt that the Respondent knew or should have known of the Complainant’s trademarks and business at the time of registration of the disputed <speedoboyz.com> domain name.
- It is extremely likely that the Respondent intended to commercially capitalize on the SPEEDO trademark by registering the disputed domain name and that this is evidence of the Respondent’s bad faith.
- The SPEEDO trademark has a strong reputation and is very well known worldwide. The Respondent can make no good faith use of the disputed domain name.
- The Complainant refers to the decision in Arizona Mail Order, Inc. v. INSS, National Arbitration Forum Case No. 99757 (Annex 23) where the Panel decided that if the "Respondent has registered and used the domain name to divert Internet users to websites offering pornographic material, such conduct is considered evidence of bad faith".
- The domain name <speedoboyz.com> was registered or acquired with a view to selling it to the Complainant, who is the owner of the SPEEDO trademarks, for valuable consideration well in excess of the Respondent’s out of pocket costs.
- Further, or in the alternative, the Complainant submits that the domain name <speedoboyz.com> was chosen intentionally to attempt to attract for financial gain Internet users to the registrant’s website and/or further online locations by creating a likelihood of confusion with the Complainant’s SPEEDO trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.
- The disputed domain name, <speedoboyz.com>, should be transferred to the Complainant.
- A search under the disputed domain name clearly shows a legitimate business interest in the name and absolutely no pattern of cybersquatting, no pattern of trademark infringement or dilution of another’s trademark, and no evidence of use in bad faith.
- The Respondent acknowledges the similarity between the Complainant’s SPEEDO trademark and the disputed domain name, <speedoboyz.com>. However, this similarity is only applicable in a particular context.
- The Complainant contends, in paragraph 16 of the Complaint, that the SPEEDO brand is ‘synonymous with swimwear’. To the contrary, the Respondent asserts that the use of Speedo in a word or name could make an Internet user think of ‘speedometer’, which also contains the word speedo.
- In the right context, the term "Speedoboyz" could allow the browser to search for swimwear, but in a different context it could allow the browser to search for young hoons driving souped up motor vehicles or scooters.
- The claim that the website/business <speedoboyz.com> is not known by this name is proven false by a simple search on Google.com for speedoboyz for which there are 208 responses. Understandably, the Complainant isn’t looking for gay men in skimpy swimwear and could be excused for not knowing that <speedoboyz.com> is relatively well-known in that section of the Internet community.
- Despite the "stigma" attached to erotic websites, and even worse to erotic gay websites, <speedoboyz.com> is a legitimate business.
- <speedoboyz.com> offers a service: the possibility to download erotic pictures, movies and stories. This is very clearly stated on the website.
- The Complainant’s assertion that a lack of response by the Respondent constitutes a tactic to "extort" the Complainant is flatly denied.
- The Respondent feels that the Complainant has filed this Complaint with improper intentions to harass or potentially scare "smaller" guys like the Respondent.
6. Discussion and Findings
In order for the Complainant to prevail and have the disputed domain name, <speedoboyz.com>, transferred to it, the Complainant must prove the following (Policy, paragraph 4(a)(i-iii)):
the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
the Respondent has no rights or legitimate interests in respect of the domain name; and
the domain name was registered and is being used in bad faith.
Identical or Confusingly Similar
The Complainant has exhibited various "SPEEDO" trademark registrations in Australia and the Netherlands (Complaint Annex 7). At Complaint Annex 9, the Complainant also lists countries all over the world where it contends it has registered trademarks. At Complaint Annexes 3 and 4, the Complainant has exhibited a substantial sampling of its swimwear and other sportswear and accessories produced under the "SPEEDO" trademark and used at such world famous sports events as the 1960 Rome Olympic Games.
The disputed domain name, <speedoboyz.com>, is confusingly similar to the Complainant’s "SPEEDO" trademark, which the Panel also notes is a famous one owing to the number of years it has been in use and the ubiquity of its use in competitive swimming.
As the Complainant argues, it makes little difference that the Respondent has added "boyz" to the Complainant’s trademark, for this is just a logical, generic add-on with a quirky spelling. Similarly, it would have made little difference if the Respondent had added "girls" or "girlz" or "swimmer" or "swimmerz". All these words or variations, added to the Complainant’s "SPEEDO" trademark, only denote a person or persons using the Complainant’s products. Ineluctably, the result is confusingly similar to the Complainant’s famous trademark.
The Respondent argues that "speedo" in the disputed domain name could
also mean "speedometer," and thus refer to cars that go fast and the
boys who drive them. The Panel is incredulous: the Respondent provides no substantiating
evidence for this remarkable meaning for "Speedo" in conjunction with
"boyz". The Panel believes the Respondent conjured up this meaning
for the sake of argument in this proceeding. (cf. "Nokiagirls" found
confusingly similar to "Nokia" in Nokia Corporation v. Nokiagirls.com
a.k.a. IBCC, WIPO Case No. D2000-0102,
(April 18, 2000)).
Certainly, the meaning the Respondent’s website attributes to "speedo" is identical to the meaning embedded in the Complainant’s trademark, i.e., swim gear that helps people go fast. The Respondent elaborates on this theme by having its male models take off their swim gear on its website, but the point of departure meshes with the Complainant’s trademark. The Panel finds the Complainant has carried its burden of proof under the Policy at paragraph 4(a)(i).
Rights or Legitimate Interests
The Complainant contends it has given no right or permission to the Respondent to use the disputed domain name.
However, the Policy at paragraphs 4(c)(i-iii) gives the Respondent the possibility to demonstrate to the Panel that it has legitimate rights and interests in the disputed domain name. In this regard, the Respondent has elected to put forth an argument under Policy paragraph 4(c)(i): "before any notice to you of the dispute, your 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;"
The Respondent has provided excellent evidence that it is offering adult homosexual entertainment on the website of the disputed domain name (Response Appendices III-V). For that matter, the Complainant itself has offered corroborating evidence on this point (Complaint Annexes 15 and 16). As the Respondent argues, the Panel appreciates that there now is considerable demand for the Respondent’s adult entertainment services at the disputed domain name website.
Nonetheless, the Panel surmises that the Respondent’s business is based on leading the public to its all-male pornography services by enticing them first to the Complainant’s famous "SPEEDO" swimwear and associated products trademark.
Previous panels have found it is not a bona fide service to use a website not
previously associated with pornography to market pornography. But that is what
the Respondent is doing in this case, and the Panel finds this is not a legitimate
right or interest contemplated under the Policy at paragraph 4(c)(i). The Panel
thus finds the Complainant has made its case to show the Respondent has no legitimate
rights or interests in the disputed domain name. (See National Football League
Properties Inc. and Chargers Footbal v. One Sex Entertainment Company aka chargersgirls.net,
WIPO Case No. D2000-0118, April 17, 2000).
Registered and Used in Bad Faith
The Complainant makes a number of alternative arguments that the Respondent has registered and is using the disputed domain name in bad faith. Two of these arguments appear to the Panel to fit snugly within the non-exhaustive criteria of the Policy at 4(b)(i) and (iv).
First, as the Complainant points out at Complaint Annex 1, the Respondent or its predecessor in interest has at times solicited offers for the disputed domain name with the pitch: "Make an Anonymous Offer on this Domain Name." The Panel believes it fair to infer the Respondent intended to make a tidy profit from any eventual sale, particularly in view of the Respondent’s contentions that the disputed domain name website rapidly has become a popular one.
Perhaps even more on point, the Complainant has shown that the Respondent is
in violation of the Policy at 4(b)(iv) because it is using the disputed domain
name to attract Internet users "for commercial gain." The Respondent’s
website at the disputed domain name explicitly requires payment to view its
male erotica. (For a comparable result, see MatchNet plc v. MAC Trading,
WIPO Case No. D2000-0205, (May 11, 2000)).
The Respondent merely restates several times that it is not in bad faith but
provides no objective indicia to support this contention, and the Panel does
not see any either. The Panel thus finds the Respondent has registered and is
using the disputed domain name in bad faith.
Reverse Domain Name Hijacking
The Respondent contends that the Complaint was brought in bad faith to harass the Respondent in violation of paragraph 15(e) of the Rules. However, the Panel rejects this contention in view of the fact that the Panel has found the disputed domain name is confusingly similar to the Complainant’s trademark, the Respondent has no legitimate rights or interests in the domain name, and registered and was using it in bad faith.
For the reasons above, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name, <speedoboyz.com>, be transferred to the Complainant, Speedo Holdings B.V.
Dennis A. Foster
Dated: July 30, 2003