WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Vertical Leisure Limited v. DomainCA (Whois Protect Service) / Jeongyong Cho

Case No. D2011-0155

1. The Parties

Complainant is Vertical Leisure Limited of Herts, United Kingdom of Great Britain and Northern Ireland, represented by Waterfront Solicitors LLP, United Kingdom of Great Britain and Northern Ireland.

Respondent is DomainCA (Whois Protect Service) of Seoul, Republic of Korea / Jeongyong Cho of Seoul, Republic of Korea.

2. The Domain Name and Registrar

The disputed domain name <xpole.com> (“the Domain Name”) is registered with Korea Information Certificate Authority Inc. d/b/a DomainCa.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 27, 2011. On January 28, 2011, the Center transmitted by email to Korea Information Certificate Authority Inc. d/b/a DomainCa.com a request for registrar verification in connection with the Domain Name. On January 31, 2011, Korea Information Certificate Authority Inc. d/b/a DomainCa.com transmitted by email to the Center its verification response, disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on January 31, 2011, providing the registrant and contact information disclosed by Korea Information Certificate Authority Inc. d/b/a DomainCa.com and inviting Complainant to submit an amendment to the Complaint. Complainant in its email of February 1, 2011 indicated its intention not to amend the Complaint.

On January 31, 2011, the Center issued a Language of Proceedings notification, inviting comment from the parties. Complainant submitted a request that English be the language of the proceedings and Respondent submitted a request that Korean be the language of the proceeding on February 1, 2011 and February 4, 2011 respectively. On February 7, 2011, the Center notified the parties of its preliminary decision to 1) accept the Complaint as filed in English; 2) accept a Response in either Korean or English; and 3) appoint a panel familiar with both languages mentioned above, if available and also advised the parties that the Panel has the authority to determine the language of the proceeding.

The Center verified that the 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 Respondent of the Complaint, and the proceedings commenced on February 7, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was February 27, 2011. Respondent sent an email on February 27, 2011 but did not file a formal Response.

The Center appointed Andrew J. Park as the sole panelist in this matter on March 16, 2011. 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

Complainant is Vertical Leisure Limited, a company incorporated in England and Wales. Since February 2004, Complainant has designed, manufactured, and sold pole exercise and dance equipment under the “X-Pole” name.

Complainant owns several trademark registrations for X-POLE in countries around the world, including the United Kingdom of Great Britain and Northern Ireland, Australia, the People’s Republic of China, the European Union, and the United States of America. (See Annex 12 to the Complaint.)

Complainant also owns several domain names referring to the trademark X-POLE where it conducts sales and marketing of products under the “X-Pole” name. Since July 2004, Complainant has operated a website in the United Kingdom using the domain names <xpole.co.uk> and <x-pole.co.uk>. In addition, Complainant conducts sales from websites operating under the <x-pole.com.au>, <xpole.com.au> and <xpoleus.com> domain names. (See Annex 11 to the Complaint.) According to Complainant, sales under the Xpole and X-pole names in the United Kingdom alone amounted to in excess of GBP 1.1 million by the end of 2009.

Respondent is DomainCA (Whois Protect Service) of Seoul, Republic of Korea / Jeongyong (Gregory) Cho of Seoul, Republic of Korea. Respondent does not own any trademark registrations in the X-POLE or XPOLE names. Further, Respondent does not otherwise trade under the name “Xpole.” Complainant has not authorized or licensed the use of the mark XPOLE to Respondent or any person or entity to which the Domain Name <xpole.com> redirects users.

The Domain Name <xpole.com> was apparently created on July 29, 1999. However, on or about February 8, 2010, the Domain Name appears registered to Respondent. The Domain Name redirects Internet users to an English language website operating from the domain name <dancepolekit.com>. That website advertises and offers for sale various adult and erotic products, including a variety of dance poles that compete with the products of Complainant. (See Annex 9 to the Complaint.)

In September 2010, Respondent offered to sell the Domain Name to Complainant for USD 23,500.00. (See Annex 8 to the Complaint.)

Respondent Mr. Cho has previously been involved in proceedings under the UDRP. Domain names registered to Mr. Cho have been ordered transferred from Mr. Cho in the following cases: Tokyu Corporation v. Jeongyong Cho, WIPO Case No. D2008-1407 for the domain name <capitoltokyu.com> and Laboratoire Nutergia v. Jeongyong Cho, WIPO Case No. D2007-1582 for the domain name <nutergia.com>.

5. Parties’ Contentions

A. Complainant

Complainant’s main arguments are the following.

1. Identical or Confusingly Similar.

Complainant contends that the Domain Name uses completely and exclusively Complainant’s registered mark.

Complainant contends that it owns several trademark registrations for X-POLE in countries around the world, including the United Kingdom, Australia, China, the European Union, and the United States. (See Annex 12 to the Complaint.) Complainant further contends that it is the owner of unregistered trademark rights in the United Kingdom in XPOLE and X-POLE. Complainant alleges that sales under the XPOLE and X-POLE names in the United Kingdom alone amounted to in excess of GBP 1.1 million by the year end 2009. According to Complainant, such rights are recognized as trademark rights for the purposes of the Policy (see, e.g., Julian Barnes v. Old Barn Studios Limited, WIPO Case No. D2001 0121.)

Complainant contends that the Domain Name is identical and/or confusingly similar to trademarks in which Complainant has rights. In particular, Complainant alleges that it is appropriate to discount the top level domain (“TLD”) “.com” such that when the “.com” TLD is discounted, the Domain Name is identical to Complainant’s unregistered XPOLE and X-POLE marks and registered X-POLE trademarks.

2. Rights or Legitimate Interests

Complainant contends that the Domain Name is being used in order to redirect Internet users to the website operating from the domain name <dancepolekit.com> from which various products are sold, including dance poles that compete with Complainant’s X-Pole branded products. (See Annex 9 to the Complaint.) Complainant further contends that Respondent does not own a registered trademark in the term “x-pole” or “xpole” and does not otherwise trade under the name “Xpole.” Finally, Complainant contends that it has not authorized, licensed, or otherwise consented to the use of the marks XPOLE or X-POLE by Respondent or any person operating the website to which the Domain Name redirects Internet users.

3. Registered and Used in Bad Faith

Complainant contends that Respondent knew of and has sought to take unfair advantage of the similarity between the Domain Name and Complainant’s trademark, in order to draw Internet users to a website selling dance pole products that compete with Complainant’s products sold under the “X-Pole” name. Therefore, Complainant alleges that the only credible explanation for the current use of the Domain Name is to re-direct Internet users to the “www.dancepolekit.com” website is that Respondent is seeking to take advantage of the similarity between the Domain Name and Complainant’s website to draw Internet users to that site for commercial advantage.

Complainant further contends that Respondent registered the Domain Name in bad faith. Specifically, Complainant alleges that by the time the Domain Name was registered in Respondent Mr. Cho’s name on or about September 8, 2010, Complainant had already established a worldwide reputation as a market leader in dance and exercise pole products sold under the X-POLE mark and was the owner and was the owner of registered trademarks that incorporated the text “x-pole” in multiple jurisdictions. (See Annexes 4 and 12 to the Complaint.) Complainant additionally points to the fact that Respondent Mr. Cho offered to sell the Domain Name to Complainant in September 2010 for USD 23,500.00. Accordingly, Complainant alleges that the offer constitutes a circumstance indicating that Respondent Mr. Cho registered or acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant or to a competitor of Complainant, for valuable consideration in excess of Respondent Mr. Cho’s documented out-of-pocket costs within the scope of paragraph 4(b)(i) of the Policy. (See Annex 4 to the Complaint.)

Complainant requests that the Administrative Panel transfer the Domain Name to Complainant, pursuant to paragraph 4(i) of the Policy.

B. Respondent

Respondent did not submit a reply to Complainant’s contentions by the deadline of February 27, 2011.

6. Discussion and Findings

6.1. Language of the Proceedings

Although the language of the registration agreement and accordingly the default language of the proceedings is Korean, the circumstances may permit this Panel to determine otherwise having regard to fairness to the parties and procedural cost-efficiency and expedition (e.g., Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical applicance co. ltd., WIPO Case No. D2008-0293).

Complainant submitted that English should be the language of the proceedings for the following reasons:

(1) The Domain Name is being used to redirect Internet users to an English language website “www.dancepolekit.com”, which evidences a familiarity by Respondent with the English language.

(2) The Domain Name intentionally includes and alludes to an English word “pole,” which evidences a familiarity by Respondent with the English language.

(3) Respondent Mr. Cho is familiar with the English language and has previously corresponded with Complainant in English.

The Panel has to balance fairness to the parties against any procedural cost-efficiency and speed that may be gained by departing from the default language of the proceedings. The reasons cited by Complainant are helpful to address the question of whether English should be the language of the proceedings in preference to the default language. However, the Panel is especially persuaded by the following circumstances to justify the adoption of English as the language of the proceedings:

(1) The Complaint is filed in English and Complainant desires that English be the language of the proceedings;

(2) Although Respondent was offered the opportunity to submit a Response in English or Korean, it did not submit any formal Response, which in all likelihood either means that Respondent does not have any valid response, or is simply not interested to resist the Complaint;

(3) Significant disadvantage will be caused to Complainant and the further progress of the proceedings in terms of additional cost and time without any apparent advantage being gained should the proceedings continue in the default language; and

(4) There are no special circumstances which suggest that Complainant’s request should be denied.

It must be borne in mind that the Policy was created, among other reasons, for the effective and expeditious disposition of domain name disputes. In a case where a respondent does not respond to a complaint, the Panel is of the view that the complainant’s request should be respected unless special circumstances suggest otherwise.

Accordingly, the Panel concludes that it will (1) proceed in line with the Center’s preliminary decision to accept the Complaint as filed in English; and (2) issue a decision in English.

6.2. Analysis of the Complaint

Paragraph 4(a) of the Policy sets forth three requirements, which have to be met for the Administrative Panel to order the transfer of the Domain Name to Complainant. Those requirements are that: (i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) the Domain Name has been registered and is being used in bad faith.

The Panel has to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable, pursuant to paragraph 15(a) of said Rules. In accordance with paragraph 14(b) of the Rules, if Respondent does not submit a Response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint.

A. Identical or Confusingly Similar

Complainant has established its rights in the mark X-POLE by virtue of the evidence of its trademarks that are registered in countries around the world. (See Annex 12 to the Complaint.) Complainant also alleges that it is the owner of unregistered trademark rights in the United Kingdom in XPOLE and X-POLE.

A series of UDRP decisions have held and it is now well established that the Policy protects rights in unregistered trademarks (see, e.g., Bennett Coleman & Co. Ltd. v. Steven S Lalwani, WIPO Case No. D2000-0014; SeekAmerica Networks Inc. v. Tariq Masood and Solo Signs, WIPO Case No. D2000-0131; Brisbane City Council v. Warren Bolton Consulting Pty Ltd., WIPO Case No. D2001-0047; and Imperial College v. Christophe Dessimoz, WIPO Case No. D2004-0322).

However, the Panel will not automatically accept an unsupported assertion of unregistered trademark rights, but will examine the evidence which may establish that Complainant holds rights in an unregistered trademark.

In accordance with the WIPO Overview of WIPO Panel Views on Selected UDRP Questions 1, in cases where the complaint is based on unregistered trademark rights, Complainant must show that the name has become a distinctive identifier associated with Complainant or its goods and services. Relevant evidence of such secondary meaning includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition. The fact that the secondary meaning may only exist in a small geographic area does not limit complainant's rights in a common law trademark in regards to the first element of the Policy. Unregistered rights can arise even when the complainant is based in a civil law jurisdiction (See Uitgeverij Crux v. W. Frederic Isler, WIPO Case No. D2000-0575, Skattedirektoratet v. Eivind Nag, WIPO Case No. D2000-1314, and Australian Trade Commission v. Matthew Reader, WIPO Case No. D2002-0786.)

Answering this question is a matter of considering all of the evidence as to whether Complainant has a trademark.

In the present case, the Panel finds that Complainant has established that the name “Xpole” has become a distinctive identifier associated with Complainant or its goods. That is so for the following reasons: Complainant has been selling its products worldwide under the names “Xpole” and “X-Pole” since 2004, it has advertised extensively under that names, its products are recognized by consumers, it has registered domain names using the term “Xpole” and “X-Pole” in various countries including the United Kingdom, and sales under the “Xpole” and “X-Pole” names in the United Kingdom alone amounted to in excess of GBP 1.1 million by the year end 2009.

Additionally, there is no evidence to suggest that there is a company or business other than Complainant that uses the name in the same area of industry as Complainant.

The Panel is therefore satisfied that X-POLE is a registered trademark and X-POLE and XPOLE are unregistered trademark owned by Complainant.

The next question is whether the Domain Name is identical or confusingly similar to the trademark. The answer is that it is.

The Domain Name consists, first of all, of the entirety of the trademark. The Domain Name is identical to Complainant’s XPOLE trademark when the “.com” TLD is discounted.

Secondly, the Domain Name does not have any additional words as part of it that detract from or minimize the effect and dominance of the trademark in the Domain Name.

For the above reasons, the Panel finds that the Domain Name is identical or confusingly similar to Complainant’s trademark.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a non-exclusive list of circumstances, if found by the Panel to be proved based on its evaluation of all evidence submitted, shall demonstrate rights to or legitimate interests in the Domain Name. Those circumstances are described as follows:

(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; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

Respondent, in not responding to the Complaint, has failed to invoke any of the circumstances, which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights to and/or legitimate interests in the Domain Name. This entitles the Panel to draw any such inferences from such default as it considers appropriate pursuant to paragraph 14(b) of the Rules (see e.g., Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009 or Isabelle Adjani .v. Second Orbit Communications, Inc., WIPO Case No. D2000-0867). Complainant should nevertheless make out a prima facie case that Respondent lacks rights or legitimate interests (see Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110).

Complainant owns several trademark registrations for X-POLE in countries around the world. (See Annex 12 to the Complaint.) Complainant also owns several domain names referring to the trademark X-POLE where it conducts sales and marketing of products under the “X-Pole” name. (See Annex 11 to the Complaint.) On the other hand, Respondent does not appear to own a registered trademark in the term “X-Pole” or “Xpole” and does not otherwise appear to trade under the name “Xpole.” Moreover, Complainant has not authorized, licensed, or otherwise consented to the use of the term “Xpole” or “X-Pole” by Respondent or any person operating the website to which the Domain Name redirects Internet users. Finally, it does not appear that Respondent is known by the Domain Name.

Under these circumstances and absent evidence to the contrary, the Panel is unable to find any evidence that would establish that Respondent has rights or legitimate interests in respect of the Domain Name.

Furthermore, as pointed out by Complainant in its Complaint, the Domain Name redirects Internet users to an English language website operating from the domain name <dancepolekit.com>. That website advertises and offers for sale various adult and erotic products, including a variety of dance poles that compete with the products of Complainant (See Annex 9 to the Complaint.), which is not a bona fide offering of goods or services under paragraph 4(c)(i) of the Policy.

For the above reasons, the Panel finds that Respondent does not have rights or legitimate interests with respect to the Domain Name.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides a non-exclusive list of circumstances that evidence registration and use of a domain name in bad faith. Any one of the following conduct is sufficient to support a finding of bad faith:

(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.

As already mentioned, Respondent did not file any Response to the Complaint, failing thereby to invoke any circumstance which could demonstrate its good faith in the registration or use of the Domain Name.

Nevertheless, the Panel still has the responsibility of determining which of Complainant’s assertions are established as facts, and whether the conclusions asserted by Complainant can be drawn from the established facts (see Harvey Norman Retailing Pty Ltd v. Oxford-University, WIPO Case No. D2000-0944).

The evidence, which is not rebutted by Respondent, shows that Respondent knew of and has sought to take unfair advantage of the similarity between the Domain Name and Complainant’s trademark, in order to draw Internet users to a website selling dance pole products that compete with Complainant’s products sold under the “Xpole” name. The Panel finds that Complainant has adduced convincing evidence that Respondent has intentionally attempted to attract for commercial gain Internet users to its website by creating a likelihood of confusion with Complainant’s XPOLE trademark as to the source, sponsorship, affiliation or endorsement of Respondent’s website or a product or service on Respondent’s website. Accordingly, the Panel finds that the only credible explanation for the current use of the Domain Name is to re-direct Internet users to the “www.dancepolekit.com” website is that Respondent is seeking to take advantage of the similarity between the Domain Name and Complainant’s website to draw Internet users to that site for commercial advantage.

No evidence has been presented showing that Respondent has any connection to the name “Xpole” and there is no connection between the name and the goods and services offered on the “www.dancepolekit.com” website to which the Domain Name forwards a user.

Additionally, the Panel finds that Respondent’s behavior constitutes evidence of the registration and use of the Domain Name in bad faith under paragraph 4(b)(iv). As discussed above, by the time the Domain Name was registered in Respondent Mr. Cho’s name (on or about September 8, 2010), Complainant had already established a worldwide reputation as a market leader in dance and exercise pole products sold under the X-POLE mark and was the owner and was the owner of registered trademarks that incorporated the term “X-Pole” in multiple jurisdictions. (See Annexes 4 and 12 to the Complaint.) Accordingly, the evidence shows that Respondent has been using the Domain Name to direct Internet users who believe that the Domain Name is associated with Complainant to the “www.dancepolekit.com” site in an attempt to advertise and sell various adult and erotic products, including a variety of dance poles that compete with the products of Complainant. (See Annex 9 to the Complaint.) This behavior evidences bad faith.

Complainant additionally points to the fact that Respondent Mr. Cho offered to sell the Domain Name to Complainant in September 2010 for USD 23,500.00. The Panel finds that this offer constitutes a circumstance indicating that Respondent registered or acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant or to a competitor of Complainant, for valuable consideration in excess of Respondent’s reasonable out-of-pocket costs within the scope of paragraph 4(b)(i) of the Policy. (See Annex 4 to the Complaint.) In the Panel’s view, this behavior evidences bad faith.

Finally, the evidence shows that Respondent has engaged in a pattern of bad faith registration of domain names under the Policy. Complainant has cited two cases, cited above, showing that Respondent has previously registered and used the relevant domain names in a manner contrary to the Policy and was such that the panel ordered the respective domain names be transferred to the relevant complainants.

For the above reasons, the Panel finds that Complainant has shown that the Domain Name has been registered and is being used in bad faith by Respondent.

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 <xpole.com> be transferred to Complainant.

Andrew J. Park
Sole Panelist
Dated: March 30, 2011