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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Adultshop.com Pty Ltd v. Josh Marsden, Importa Pty Ltd

Case No. DAU2015-0002

1. The Parties

The Complainant is Adultshop.com Pty Ltd of Maylands, Western Australia, Australia, represented by Watermark, Australia.

The Respondent is Josh Marsden, Importa Pty Ltd of Everton Park, Queensland, Australia.

2. The Domain Name and Registrar

The disputed domain name <adultshopwarehouse.com.au> is registered with GoDaddy.com, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 29, 2015. On January 29, 2015, the Center transmitted by email to GoDaddy.com, LLC a request for registrar verification in connection with the disputed domain name. On January 30, 2015, GoDaddy.com, LLC transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on February 4, 2015, 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 February 5, 2015.

The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the .au Dispute Resolution Policy (the “Policy”), the Rules for .au Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .au 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 February 5, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was February 25, 2015. The Response was filed with the Center on February 24, 2015.

The Center appointed Andrew F. Christie as the sole panelist in this matter on February 27, 2015. 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 an Australian company incorporated in 2010 in Western Australia. The Complainant is part of a group of companies (the “Adultshop Group”), the earliest group company of which dates back to 1999. The Adultshop Group is Australia’s leading retailer of adult products, including sex toys, DVDs, lingerie and clothing. It offers its goods both online and through physical outlets throughout Western Australia and Tasmania, and has done so since January 2000. The Complainant has numerous Internet websites, including at “www.adultshop.com.au” and at “www.adultshop.com”, which provide information about the Complainant, blog posts, and the products and services it offers.

The Complainant owns the following Australian registered trade marks: (i) ADULTSHOP.COM (registered in July 1999, in classes 35 and 42 for a range of services some of which relate directly to adult leisure products); (ii) ADULTSHOP (registered in September 2006, in classes 35 and 42 for a range of services some of which relate directly to adult leisure products); and (iii) ADULT SHOP (registered in July 2012, in class 28 for fishing lures). The Complainant has developed a prominent Internet presence for products using its ADULTSHOP and ADULTSHOP.COM trademarks, including in connection with the Complainant’s websites situated at “www.adultshop.com” and “www.adultshop.com.au”, which have received over 30,000 visitors each week. It has established itself as the top Australian adult website and one of Australia’s top ten online retailing websites. The Complainant also uses its ADULTSHOP.COM trademark on its physical stores.

The disputed domain name has been registered to the current registrant, the Respondent, since at least as early as November 3, 2013. The Complainant asserted, and the Respondent did not deny, that between December 5, 2014 and January 19, 2015, the disputed domain name resolved to a website offering online retail of adult and leisure products under the name “Adult Shop Warehouse”. From January 19, 2015, following receipt by the Respondent of a final letter of demand from the Complainant, and continuing to present time, the disputed domain name redirects to a website at “www.sextoysdirect.com.au”, at which a range of goods and services related to the adult sex toys industry are offered for sale under the name “Sex Toys Direct”.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is confusingly similar to its registered ADULTSHOP and ADULTSHOP.COM trademarks because: (i) it incorporates the whole of the Complainant’s trademark ADULTSHOP, and that the addition of the term “warehouse”, which is commonly used to refer to a store for discounted products, would result in consumers thinking the disputed domain name referred to a discount store associated with the Complainant’s business; and (ii) the main and distinctive part of the disputed domain name is the term “adultshop” and the use of the descriptive term “warehouse” does not reduce the risk of confusion between the disputed domain name and the Complainant’s trademark.

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name because: (i) there has been no bona fide use of the disputed domain name by the Respondent; (ii) the Respondent chose the domain name to create a likelihood of confusion with the Complainant’s ADULTSHOP and ADULTSHOP.COM trademarks as to the source, affiliation or endorsement of the website to which it resolves; (iii) between December 5, 2014, and January 19, 2015, the disputed domain name resolved to a website offering the online retail of adult and leisure products under the trademark ADULT SHOP, but that, following receipt of a final demand letter from the Complainant to change the trademark on the website and the domain name, the disputed domain name redirected to “www.sextoysdirect.com.au” at which the ADULT SHOP trademark was changed to “Sex Toys Direct” and adult products in direct competition with the Complainant were offered; (iv) the Respondent is not making a bona fide offering of the goods and services relating to the Complainant’s ADULTSHOP trademark as it is not a reseller of those goods and services; (v) the website to which the disputed domain name resolves does not accurately disclose the Respondent’s true relationship with the trademark owner as the Complainant and Respondent are not affiliated in any way whatsoever; (vi) the Respondent does not have any registered trademarks that contain or comprise the words “Adult Shop”; (vii) to the Complainant’s knowledge the Respondent has not been commonly known by the disputed domain name; and (viii) there is no evidence to suggest that 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 name or trademark at issue.

The Complainant contends that the disputed domain name was registered or is subsequently being used in bad faith because: (i) the Respondent is using it to redirect to the website at “www.sextoysdirect.com.au”, a competitor of the Complainant, thereby demonstrating a clear intention to create a likelihood of confusion with the Complainant’s well-known mark as to the source, sponsorship, affiliation, or endorsement of that website or of a product or service on that website; (ii) the initial use of the disputed domain name and the trademark ADULT SHOP by the Respondent was clearly done to create a likelihood of confusion with the Adultshop Group and thereby to direct traffic away from the Complainant’s business; (iii) the changes made to the website resolving from the disputed domain name following the Complainant’s final demand letter, and the redirection of it to “www.sextoysdirect.com.au” is an attempt to hide the initial bad faith registration and use of the disputed domain name; (iv) the Respondent is using the disputed domain name in an intentional attempt to attract Internet users to the website at “www.sextoysdirect.com.au” for commercial gain, either by attracting Internet users seeking the Complainant’s website or by receiving remuneration every time a customer clicks through from the disputed domain name to the website at “www.sextoysdirect.com.au”.

B. Respondent

The Respondent contends: (i) that the Complainant’s trademark registration for ADULT SHOP has no application in this case as it is registered in class 28 for fishing lures, and that the disputed domain name is not used to sell products that fall within the class 28 category; (ii) that the disputed domain name does not incorporate the use of the trademark ADULTSHOP.COM as it has the addition of the word “warehouse” after the words “adult shop” and is therefore distinguishable from ADULTSHOP.COM; (iii) the inclusion of the term “warehouse” within the trading name “Adult Shop Warehouse” was for the purpose of giving the impression of a large selection of products sold to a mature adult market, including products not related to the erotic industry and not in direct competition with the Complainant; (iv) the logo and branding of “Adult Shop Warehouse” is not identical or confusingly similar to ADULTSHOP.COM; (v) the term “adult shop” is a generic term and the disputed domain name is simply utilizing a well-known and well searched generic term to inform the general public browsing the Internet as to what products can be purchased through the Respondent’s online store; (vi) the inclusion of the term “warehouse” has been used to infer that a large amount of product is readily available to the consumer from a warehouse facility; and (vii) a trademark search conducted by the Respondent found that “there were no current trademark infringements” with the word combination “adult” (exact word) and “shop” (exact word), and that there are other trademarks utilizing the word combination ADULTSHOP and ADULT SHOP rendering the ADULTSHOP and ADULT SHOP trademarks non-exclusive.

The Respondent contends that there has been bona fide use of the disputed domain name because: (i) it does not use the Complainant’s ADULTSHOP or ADULTSHOP.COM trademark to promote its goods; (ii) the disputed domain name merely reflects the trading name of the company; and (iii) the term “Adult Shop” is a generic term used by consumers when searching for adult products to buy from an online shop.

The Respondent contends that the disputed domain name was not registered in bad faith because: (i) it was not purchased with the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant; (ii) it was not registered in an attempt to prevent the Complainant from reflecting the mark in a corresponding domain name, nor to primarily disrupt the Complainant’s business; (iii) the Respondent recently sold its adult products business to Whitton Online Pty Ltd, which chose to rebrand the website resolving from the disputed domain name to “www.sextoysdirect.com.au” based on larger quantity of search phrases containing the generic search terms “sex toys”, and any pages previously located at the disputed domain name would now be moved to “www.sextoysdirect.com.au”; (iv) the disputed domain name is completely independent of “www.sextoysdirect.com.au” and no remuneration is derived every time a customer clicks through from the disputed domain name; (v) the Complainant has brought this complaint in bad faith and constitutes an abuse of administrative proceedings, and appears to have sent identical letters threatening legal action unless its requirements are met to multiple parties; and (vi) the Complainant has a history of being involved in purchasing domain names and attempting to sell them back to their competitors in bad faith.

6. Discussion and Findings

A. Identical or Confusingly Similar

When the country code Top-Level Domain identifier “.au” and the second-level identifier “.com” are ignored, the disputed domain name consists of the Complainant’s ADULTSHOP trademark together with the generic or descriptive word “warehouse”. As paragraph 1.9 of the auDA Overview of Panel Views on Selected auDRP Questions, First Edition (“auDRP Overview 1.0”) explains, the addition in a domain name of a generic or descriptive term to a trademark would normally be insufficient, of itself, to avoid a finding of confusing similarity under the first element of the Policy, at least where the dominant or principal component of the domain name is the trademark.

In the Panel’s opinion, the dominant element of the disputed domain name is the Complainant’s trademark ADULTSHOP. Although the Complainant’s trademark consists of two descriptive words, their juxtaposition is such as to provide an element of distinctiveness. The Panel finds, on the balance of probabilities, that the addition in the disputed domain name of the generic or descriptive word “warehouse” to the Complainant’s trademark does not avoid the inevitable confusion of the disputed domain name with the Complainant’s trademark. In the Panel’s opinion, the additional word acts to draw attention to, rather than away from, the Complainant’s trademark. This is because, in the Panel’s view, the additional word “warehouse” most likely would be interpreted as referring to an offering of goods at discounted prices and/or in bulk quantities. Thus, in the Panel’s opinion, the most likely reading of the disputed domain name is that it is for a “warehouse” offering of goods under the Complainant’s trademark. Accordingly, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

The Respondent is not a licensee of, or otherwise affiliated with, the Complainant, and has not been authorized by the Complainant to use its ADULTSHOP trademark. The Respondent has not provided any evidence that it has been commonly known by the disputed domain name. The Respondent appears to be claiming that it has rights or legitimate interests in the disputed domain name by virtue of the fact that the domain name contains generic or descriptive words and the Respondent is using the domain name for its generic or descriptive nature. However, as paragraph 2.2 of the auDRP Overview 1.0 makes clear, a respondent cannot rely solely on the fact that the domain name is composed of ordinary language words to ground a claim to rights or legitimate interests in it. Factors that are relevant to determining if the respondent has rights or legitimate interests in a descriptive, generic, or dictionary word domain name include the distinctiveness, status and fame of the trademark in which the complainant has rights, the likelihood of customer confusion, and whether the respondent was aware of this likelihood prior to registering the domain name.

The Complainant asserted, and the Respondent did not deny, that the Complainant is Australia’s leading retailer of adult products and that it operates one of Australia’s top ten online retailing websites that attracts more than 30,000 visitors each week. Given those facts, and the fact that the Complainant’s trademarks ADULTSHOP.COM and ADULTSHOP have been registered in Australia since 1999 and 2006, respectively, the Panel is willing to accept that the Complainant and its trademarks have a degree of recognition among adult product customers in Australia, that there is a significant likelihood of customer confusion between the disputed domain name and the Complainant’s trademarks, and that the Respondent was aware of the Complainant, its trademarks and the likelihood of customer confusion at the time it registered the disputed domain name. These facts and findings lead the Panel to conclude, on the balance of probabilities, that the Respondent is using the disputed domain name to take advantage of its confusing similarity to the Complainant’s trademarks, rather than for the purpose of the descriptive nature of the words in the domain name. According to the present record, therefore, the disputed domain name is not being used by the Respondent in connection with a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered or Subsequently Used in Bad Faith

It is clear from the evidence in the case record that the Respondent has used the disputed domain name to attract, for commercial gain, Internet users to a website in competition with the Complainant’s business. Given the Panel’s conclusions, above, that the disputed domain name is confusingly similar to the Complainant’s trademark, and that the Respondent has no rights or legitimate interests in the disputed domain name, it follows that the Respondent is using the disputed domain name to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of that website. According to paragraph 4(b)(iv) of the Policy, this is evidence of bad faith.

D. Complainant’s Eligibility

The Complainant has requested transfer of the disputed domain name. Given that the Complainant is an Australian registered company, the Complainant owns an Australian registered trademark that is incorporated in the disputed domain name, and the disputed domain name incorporates words that are closely and substantially connected to the products and services provided by the Complainant, it appears that the Complainant satisfies the eligibility requirements for registration of the disputed domain name, subject to the discretion of the registry authority.

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 <adultshopwarehouse.com.au> be transferred to the Complainant.

Andrew F. Christie
Sole Panelist
Date: March 13, 2015

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