WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Speedo Holdings B.V. v. Tyrone L Glenn-Bus

Case No. D2003-0440

 

1. The Parties

The Complainant is Speedo Holdings B.V., of Amsterdam, Netherlands, represented by Willoughby & Partners of United Kingdom of Great Britain and Northern Ireland.

The Respondent is Tyrone L Glenn-Bus, of Miami Beach, Florida, United States of America, represented by Brian Hubin of United States of America.

 

2. The Domain Name and Registrar

The disputed domain name <speedoman.com> is registered with Tucows.

 

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 Tucows a request for registrar verification in connection with the domain name at issue. On June 10, 2003, Tucows transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint 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 the proceedings commenced on June 19, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was July 9, 2003. The Response was filed with the Center by e-mail on July 1, 2003.

The Center appointed Gerd F. Kunze as the sole panelist in this matter on July 9, 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.

On July 9, 2003, the Center informed the Respondent that it was not in receipt of the hard copy Response with annexes and that it has been able to transmit only the electronic version of the Response to the Panel. The Center received the hard copy Response on July 14, 2003. The Panelist received the hard copy Response with annexes from the Center on July 16, 2003.

 

4. Factual Background

A. Complainant

The Complainant is the holding company of a group of companies that specializes in swimwear, however in the meantime offers a range of other products such as menís business and sports shirts. Since 1928, the swimwear has been sold under the trademark SPEEDO, originally in Australia and since the sixties also in the USA, New Zealand and Great Britain, Japan and South Africa, later on also in other countries such as Germany.

Through promotion at various Olympic games and extensive use over many years the Complainantís SPEEDO trademark has become a well-known swimwear brand which is internationally recognized. This submission of the Complainant is admitted by the Respondent. The Complainant has submitted copies of several registrations for the word mark SPEEDO, and for a combined mark featuring the word SPEEDO in combination with a graphical element referred to as "Arrow", and of several other registrations incorporating the word "speedo" in the United States for swimwear and other products, dating back at least until 1975. The Complainant has also submitted a list of over 50 countries in which the trademark SPEEDO is registered

B. Respondent

The Respondent registered the domain name <speedoman.com> on August 29, 1998, and has been using it since September 1999, for a website featuring adult entertainment.

 

5. Partiesí Contentions

A. Complainant

The Complainant submits that (1) the domain name <speedoman.com> is confusingly similar to a trademark, in which the Complainant has rights; (2) the Respondent has no rights or legitimate interests in respect of the domain name; (3) the domain name was registered and is being used in bad faith.

The Complainant furthermore submits that its sales for SPEEDO products in the USA since 1998, when the domain name <speedoman.com> was registered, exceed US $ 200.000.000 per year. It also submits that its spending on advertising and promotion has totaled some US $ 50.000.000 in the last 10 years. It has annexed some examples for such advertising and promotion.

On December 18, 2000, the Complainant sent a cease and desist letter to the Respondent to which it received no response.

B. Respondent

The Respondent submits that the domain name <speedoman.com> is not confusingly similar to the trademark SPEEDO and that he has rights and legitimate interests in respect of the domain name and that the domain name was not registered and is not being used in bad faith.

He furthermore submits extensive evidence for his offering since September 1999, of gay pornographic products and services on the "www.speedoman.com" website, including a free dating service and advertising by paying advertisers of other adult websites. He admits that he received the cease and desist letter, but believes that he had no reason to reply to it.

 

6. Discussion and Findings

Paragraph 4(a) of the Policy lists three elements that the Complainant must prove to merit a finding that the domain name of the Respondent be transferred to the Complainant:

1) The domain name is identical or confusingly similar to a trademark or service mark ("mark") in which the Complainant has rights; and
2) the Respondent has no rights or legitimate interests in respect of the domain name; and
3) the domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The domain name <speedoman.com> is not identical to the trademark SPEEDO. However, it consists of the Complainantís trademark and the descriptive term "man". Even if "Speedo" is clearly referring to "speed", it is not a common word of English language. In view of the fact that SPEEDO is a well-known trademark for swimwear, the word "speedoman" may therefore be understood by consumers as a man wearing SPEEDO sportswear. Persons typing the domain name <speedoman.com> may therefore expect to be connected to a website of the Complainant and instead they will be confronted with the Respondentís adult entertainment website. The Panel arrives therefore at the conclusion that the domain name <speedoman.com> is confusingly similar to the trademark SPEEDO in which the Complainant has rights in the USA and in other countries. The Panel is aware that the trademark SPEEDO is associated with "speed" and that the term "speedo" is even occasionally used as a synonym for speed, such as in the terms "speedometer" or "speedorama" referred to by the Respondent. Such use of the term "speedo" instead of the term "speed" is not common practice and "speedometer" and "speedorama" do not lend themselves to associations with SPEEDO swim ware. Furthermore, different degrees of similarity between signs are possible and the question in a given case must be whether the present degree of similarity is high enough to justify the conclusion that such similarity may lead to confusion of customers. The confusing similarity between "Nokiagirls" and the in English language meaningless word "Nokia" of which the famous NOKIA trademark consists (Nokia Corporation v. Nokiagirls.com, WIPO Case No. D2000-0102, referred to by the Complainant) is no doubt much higher than that between "speedoman" and "SPEEDO". Nevertheless the Panelist is satisfied that the danger for an Internet user to relate "speedoman" to the trademark SPEEDO of the Complainant, is sufficiently high to arrive at the conclusion that the domain name <speedoman.com> is confusingly similar to the trademark SPEEDO.

B. Rights or Legitimate Interests

The Respondent has no connection or affiliation with the Complainant, who has not consented to the Respondent's use of the domain name. However, the Respondent asserts that before any notice to him of the dispute he already used and continues to use the domain name in connection with a bona fide offering of goods and services. In fact, he received the cease and desist letter of the Complainant not earlier than in December 2000 (according to his submission even 6 months later, however this detail is not decisive), whilst his website has been activated since September 1999 (on the other hand, one would have expected that he replied to that letter). He admits that he offers on the corresponding website adult entertainment, however correctly points out that this is a legitimate business under the United States Constitution. He submits that the website features models, paid by the Respondent, whose photos are offered for sale to magazines and generate sales of Respondentís products and that the website also offers a free matching/dating service, streaming video, and a video for sale and advertising. These submissions are supported by examples of the contents of the Respondentís website at different dates as submitted in annexes to the Response as well as in annexes to the Complaint and by further extensive evidence. The Respondent has also submitted evidence for payments received for advertising by third parties on his website and for considerable investments that he has undertaken for this website. The Respondent therefore denies that he uses the domain name <speedoman.com> in order to redirect customers to porn sites of other website providers. This is in fact an important difference to many of the cases cited in the Complaint, where the only use made by the Respondent of domain names identical or confusing similar to a trademark of the Complainant consisted of redirecting customers to other websites offering adult entertainment or games, a business that cannot be considered to be legitimate. Nevertheless, a business comparable to the Respondentís business has in several cases, depending on the circumstances of the case, been considered as not being legitimate. In WIPO Case No. D2000-0102, referred to above, the Panel considered the registration and use of the domain name <nokiagirls.com> to be non-legitimate and in bad faith. The Respondent refers to the fact that in that case the Respondent had not submitted a Response. However, even if he had submitted a Response and had referred to a use of the domain name <nokiagirls.com> comparable to the Respondentís use of his domain name in the present case, the panelist in that case would, in view of the fame of the meaningless name "Nokia", no doubt have ordered the transfer of the domain name to the Complainant. "Nokiagirls" will indeed be understood by the great majority of the general public (and not only by customers) as a variation of the trademark "Nokia". Also in the, Bunkasha Publishing Co. Ltd v. Xman Productions, WIPO Case No. D2002-0781, the Panel has arrived at the conclusion that the respondent had no legitimate interest in using the domain name <bunkasha.com> for an adult entertainment website, in view of the fact that the domain name was identical to the transliteration of the Japanese trademark of the complainant that the complainant used itself for its e-commerce business in the field of entertainment.

In the present case the Complainantís trademark is derived from a descriptive word and the Respondent submits that he intended to refer to "speed" when he created the domain name speedoman. If that was really his intention he could, however, have chosen the domain name <speedman.com>", in the same manner as, according to his own submission, he created domain names by combining two descriptive words, such as Mansurf, ladiesnite or boyspringbreak, to just mention some. "Speedman" would clearly not have been similar to "speedo". Instead, the Respondent created according to his submission the domain name <speedoman.com> by inserting an "o" between the words "speed" and "man". Even if "speedo" is occasionally, but only in a very restricted context, used in a descriptive sense (the above mentioned examples "speedometer" and "speedorama" are referred to), this does not alter the fact that by "inserting" the "o" the Respondent in reality combined the word "man" with the well-known trademark SPEEDO of the Complainant and created a domain name that the Panel considers to be confusingly similar to that trademark of the Complainant. Under these circumstances the Panel is satisfied that the Respondent does not use the domain name <speedoman.com> for a bona fide offering of goods and services and therefore has no legitimate interest in using the domain name.

C. Registered and Used in Bad Faith

For a Complaint to succeed, the Panel must be satisfied that a domain name has been registered and is being used in bad faith.

The Complainant submits that given the wide-spread use and renown of its SPEEDO trademark the Respondent must have known that trademark, when he registered the domain name <speedoman.com>. The Panelist agrees with the respective arguments of the Complainant, the more so because the Respondent does not really contest this submission of the Complainant. The Respondent submits to believe that references to "speedo" are not illegal because he considers "speedo" to be "accepted vernacular for a menís swimsuit of a bikini style". He furthermore submits that he has attempted to refrain from such references. From this submission the conclusion can be drawn that the Respondent was aware of the trademark of the Complainant as being a protected trademark, at the very latest when he constructed his website, but most likely already when he registered the domain name <speedoman.com>.

Even if knowledge of the Complainantís trademark as such is not sufficient proof of bad faith, it is an important element to be considered together with the other circumstances of the case. In that context, paragraph 4(b) of the Policy lists examples of proof of registration and use in bad faith.

Considering these examples the Complainant has not been able to prove that the Respondent registered the domain name primarily for the purpose of selling it for consideration in excess of his out of pocket expenses (paragraph 4(b)(i) of the Policy). Not only has the Respondent never attempted to sell the domain name, he has submitted proof of continuous use of the domain name for a website, where he offers goods and services, since 1999, before the Complainant objected to the Respondentís use of the domain name for the first time (there was apparently no follow up by the Complainant). In view of the apparently considerable and continuous investments of the Respondent in that website, the Panelist therefore accepts the submission of the Respondent that the domain name is not for sale.

However, the Complainant submits furthermore that by using the domain name <speedoman.com> the Respondent attempts to attract, for commercial gain, Internet users to his website and to further on-line locations on this website, by creating a likelihood of confusion with the mark SPEEDO as to the source, sponsorship, affiliation or endorsement of his website or of a product or service on his website (paragraph 4(b)(iv) of the Policy). This submission is supported by the fact that, as stated before, the domain name <speedoman.com> is confusingly similar to the Complainantís trademark SPEEDO.

The Respondent has put forward arguments and evidence against the Complainantís submission. He argues that the website "www.speedoman.com", to which the domain name <speedoman.com> leads, does not contain any reference to the Complainant or its related products. He furthermore argues that he registered the domain name because he desired to produce a website featuring an athletic male figure and believed that the word "speed" would indicate the athletic quality of a runner. Indeed, the Respondent has created a "Speedoman" logo showing a "muscular man-beast". That logo dominates the home page of the Respondentís website and at first glance one could draw the conclusion that the Respondent really had the intentions just described when choosing the domain name <speedoman.com>. However, a closer look at that "Speedoman" logo rather confirms the bad faith intentions of the Respondent. First of all, the logo as shown on the website "www.speedoman.com" does not give the impression of a "runner", competing with others. The "beast" is expressing an aggressive posture, showing to be ready to fight, but not to run. Therefore, that logo does not confirm any purported intention of the Respondent to refer to "speed". Furthermore, whilst the "athletic beast" is shown in gray color and nearly nude, it is wearing one piece of cloth, brought out by blue color, and that piece of cloth happens to be a manís swim suit of a bikini style. Thus the logo may be seen to incorporate a reference to the Complainantís trademark, which has been well known for such type of swim wear since the Australian participants of the Olympic Games in Melbourne in 1956, and in Rome in 1960, wore SPEEDO swimwear made by the Complainant. This confirms to the satisfaction of the Panel the submission of the Complainant that the Respondent attempts to attract, for commercial gain, Internet users to his website, by creating a likelihood of confusion with the mark SPEEDO as to the source, sponsorship, affiliation or endorsement of his website or of a product or service on his website.

This conclusion cannot be denied by the fact that the website as constructed does not give the impression to be related to the Complainant. Even if customers of the Complainant generally will try to reach the Complainantís website by using a domain name that consists of the trademark SPEEDO (such as <speedo.com>), other users of the domain name <speedoman.com> will over the years have been attracted and continue to be attracted to the Respondentís website in view of the confusing similarity of the domain name with the trademark SPEEDO. As an example, an Internet user who is interested in SPEEDO brand swimwear for men and entertains a search for SPEEDO products, when he discovers a website "speedoman", may believe that this website features specifically menís swimwear of the Complainant and he may therefore visit that website instead of the main website "www.speedo.com". He will of course expect to arrive at a website of the Complainant, when typing the domain name <speedoman.com>. Even if he will soon recognize that the website has no connection whatsoever with the Complainant, he will be confused and disappointed to the detriment of the reputation of the Complainantís trademark. For the Policy to apply it is not necessary that the visitor of the website continues to be confused when he is confronted with its contents. It is sufficient that visitors are attracted to the site by the likelihood of confusion of the domain name <speedoman.com> with the Complainantís trademark.

Even if due to his continued non-legitimate use for a couple of years the Respondent may have established a business with a certain clientele who use the domain name <speedoman.com> in order to visit the Respondentís Website without being confused with the trademark of the Complainant, for the reasons given above the Panelist does not accept the explanation of the Respondent why he chose to register the domain name <speedoman.com>. Quite apparently he had not intended to refer to "speed", because neither the "speedoman" logo nor any other feature of his website refers to speed (such as it is the case of the websites <speedoramashows.com> and <speedoking.com>, cited by the Respondent). On the contrary, the fact that the logo shows a figure wearing a manís bath suit is convincing evidence that the real intention of the Respondent was to refer to SPEEDO (and not to "speed") and thus to profit from the reputation of the Complainantís trademark. Under the circumstances this is sufficient proof that the Respondent has registered and is using the domain name <speedoman.com> in bad faith.

 

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <speedoman.com> be transferred to the Complainant.

 


 

Gerd F. Kunze
Sole Panelist

Dated: July 30, 2003