WIPO Domain Name Decision: D2005-1325

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Speedo Holdings B.V. v. LAKS Cartegena Handels GmbH

Case No. D2005-1325

1. The Parties

The Complainant is Speedo Holdings B.V., London, United Kingdom of Great Britain and Northern Ireland, represented by Addleshaw Goddard, United Kingdom of Great Britain and Northern Ireland.

The Respondent is LAKS Cartegena Handels GmbH, Vienna, Austria.

2. The Domain Names and Registrar

The disputed domain names <speedotime.com>, <speedosport.com>, <speedodata.com>, <speedofun.com>, <speedogame.com>, <speedoplay.com> and <speedosporting.com> are registered with Register.com, Inc., New York, United States of America.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 22, 2005. On December 22, 2005, the Center transmitted by e-mail to Register.com a request for registrar verification in connection with the domain names at issue. Later that same day, Register.com transmitted by e-mail 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”), of 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 administrative proceedings commenced on January 4, 2006. In accordance with the Rules, Paragraph 5(a), the due date for the Response was January 24, 2006. The Response was filed with the Center on January 24, 2006.

The Center appointed Christos A. Theodoulou as the Sole Panelist in this matter on February 1, 2006. 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 a well-known company in the world of sport, especially in swimming, under the trademark SPEEDO.

The Complainant has valid trademark registrations consisting of or incorporating the name Speedo in various countries, including registrations in the Benelux countries and in Austria, where the Respondent is based. The Complainant is also the owner of some international trademarks for SPEEDO filed with WIPO under the Madrid System. Moreover, the Complainant is the owner of a multitude of domain names, incorporating the name Speedo, such as <speedoswim.com>, <speedowatches.com>, <speedoskin.com> and <speedoman.com>.

The Respondent is a company with specialization in the field of watch making/selling.

From the evidence presented by the Complainant and from Register.com’s registrar verification, it appears that the Respondent had registered the contested domain names <speedotime.com> and <speedosport.com> with Register.com on September 15, 2003, whereas the rest of the contested domain names, <speedodata.com>, <speedofun.com>, <speedogame.com>, <speedoplay.com> and <speedosporting.com>, were registered by the Respondent with Register.com two years later, on August 2, 2005.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain names are confusingly similar to its trademarks, that the Respondent has no legitimate interests or rights in the disputed domain names, and that the Respondent has registered and is using the disputed domain names in bad faith, in the sense of Paragraph 4 of the Policy.

B. Respondent

The Respondent asserts, after having explained its alleged collaboration with the Complainant in 2003, for the promotion of Speedo watches in Austria, that the LAKS brand is sufficiently well-known so as not to need to use a brand in the watch making field, such as SPEEDO, in order to “push” its homepage. Moreover, the Respondent denies that it registered the contested domain names in bad faith.

6. Discussion and Findings

The Panel shall now proceed to the evaluation of the evidence in this case, based on the three elements of Paragraph 4(a) of the Policy, the satisfaction of which the Complainant must demonstrate.

A. The contested domain names are identical or confusingly similar to trademarks, in which the Complainant has rights

The Complainant has presented evidence of valid trademark registrations for SPEEDO in various countries, as well as evidence of International Trademarks. Some of the contested domain names are not only confusingly similar, but identical to some of the Complainant’s Trademarks. Any contrary argumentation based on the addition of common words, such as “time”, “sport”, “data”, “fun”, “game”, “play” and “sporting” to the word Speedo is rejected, since the contested domain names wholly incorporate the trademark SPEEDO which is registered and owned by the Complainant, a fact which is by itself sufficient to establish the criterion of similarity for the purposes of the Policy (see e.g. Eauto, L.L.C. v. Eauto Parts, WIPO Case No. D2000-0096; Speedo Holdings B.V. v. SpeedoBoyz, WIPO Case No. D2003-0439; FNAC v. Gauthier Raymond, WIPO Case No. D2004-0881).

This Panel therefore finds that the Complainant has satisfied its burden of proof on this point and holds that the disputed domain names are confusingly similar to the Complainant’s trademarks.

B. The Respondent has no rights or legitimate interests in the contested domain names

Under Paragraph 4(c) of the Policy, any of the following circumstances, if found by the Panel to be proved based on its evaluation of the evidence presented, shall demonstrate a respondent’s rights to and legitimate interest in a domain name:

I. Demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services prior to the dispute.

In this case, the Complainant claims that the Respondent has made no attempt to make a bona fide offering of goods or services. It bases this on the fact that the Respondent did not offer services sold by reference to the SPEEDO mark, but that the websites were used in order to direct Internet users to other websites. The Respondent, on its part, asserts that both companies had collaborated in the past, namely in 2003, when Speedo had assigned it with the mission to promote their watches in the Austrian market and that, within that process, Laks was allowed by Speedo to use its trademark on the Laks 2003 catalog, where the domain name <speedotime.com> was mentioned, as well.

According to the Oki Data test (see Oki Data Americas, Inc. v. Asdinc.com, WIPO Case No. D2001-0903), to be bona fide the offering must meet several requirements: the Respondent must actually be offering the goods or services at issue; the Respondent must use the site to sell only the trademarked goods; the site must accurately disclose the Respondent’s relationship with the trademark owner; the Respondent must not try to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in a domain name.

The Panel finds that none of these requirements are met. The Respondent has not provided any proof of the alleged agreement between the Complainant and the Respondent to use the domain names. On the contrary, the Complainant has provided screenshots of the websites associated with the disputed domain names showing that the websites were directed to the websites of the competitors of the Complainant.

Consequently, the Panel decides that the Respondent did not use the domain name in connection with a bona fide offering of goods or services prior to the dispute.

II. An indication that the Respondent has been commonly known by the disputed domain name, even if it has acquired no trademark rights.

There is no such indication or claim from the record.

III. Legitimate non-commercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark at issue.

The Complainant alleges that the Respondent is not authorized to use, in any way whatsoever, any of the Complainant’s marks, including the SPEEDO trademarks. It further sustains and provides evidence that the disputed websites directed Internet users to commercial websites of either Speedo’s competitors or of the Respondent itself. Therefore, the Panel cannot decide in favor of the Respondent under this element either.

In view of the above, the Panel holds that the Respondent has no rights or legitimate interests in respect of the disputed domain names.

C. The Respondent registered and used the contested domain names in bad faith

The Panel notes that the Respondent refers to collaboration between the parties in 2003. Such collaboration could serve as a good faith defense for the Respondent’s registration of the two domain names <speedotime.com> and <speedosport.com>. However, as stated above under section 6 C of this decision, the Respondent has not provided any proof of such agreement with the Complainant, let alone any permission to register the domain names.

It is clear from the case file that the Respondent had prior knowledge of the Complainant and its Trademark rights. It is likewise clear that the Respondent did not have a right through agreement with the Complainant to register the said two domain names. The intention behind the registration seemed rather to free ride on the Complainant’s goodwill to whichever product the Respondent would offer (including the Respondent’s own products, Complainant’s products as well as products of the Complainant’s competitors). This at least is evident for the registration of the five domain names <speedodata.com>, <speedofun.com>, <speedogame.com>, speedoplay.com> and <speedosporting.com>, all of which were registered by the Respondent pending transfer negotiations for the two domain names <speedotime.com> and <speedosport.com> with the Complainant.

In view of the domain names <speedotime.com> and <speedosport.com>, the Panel examines more in detail Paragraph 4(b)(iii) of the Policy and the allegation by the Complainant that the registration of the two domain names by the Respondent was done “primarily for the purpose of disrupting the business of a competitor”, the latter allegedly being the Complainant. Concerning the meaning of the vague term “competitor”, the Panel respectfully disagrees with the theory of Mission KwaSizabantu that any form of oppositional interest may transform the Complainant and the Respondent into “competitors”; “to rule otherwise would render so many parties competitors as to dilute the Policy’s bad faith requirement beyond recognition” (compare Mission KwaSizabantu v. Benjamin Rost, WIPO Case No. D2000-0279 with Tribeca Film Center, Inc. v. Lorenzo Brusasco-Mackenzie, WIPO Case No. D2000-1772). Rather, a respondent can disrupt the business of a competitor only if it offers goods or services that can compete with or rival the goods or services offered by the trademark owner. By selling watches, the Respondent seems to fit into that frame, having in mind that the Complainant is also in the watch business. With that in mind and noting both the insistence of the Respondent not to respond to the Complainant’s approaches in a positive way and, most importantly, the fact that the Respondent has maintained the two domain name registrations to present, despite the Complainant’s requests to the contrary, support the Panel’s conclusion, that, paragraph 4(b)(iii) has successfully been proved by the Complainant.

The same analysis stands for the five remaining domain names. However, the Panel’s decision for the Respondent’s bad faith is far easier to take this time: according to the evidence provided by the Complainant, not contested by the Respondent, as also confirmed by Register.com, these five domain names were registered by the Respondent during the negotiations with the Complainant with regard to the transfer of the first two domain names in question. Not having an explanation from the Respondent of circumstances which could justify this behavior by the Respondent, the Panel finds that the Respondent’s bad faith is, in this case, more obvious.

All of the above, together with the absence of substantial evidence in rebuttal, supports the thesis for the Respondent’s bad faith for the totality of the disputed domain name registrations. It is to be noted that although some of the factual elements do not directly fall within the scope of Paragraph 4(b) of the Policy, the Panel has nevertheless evaluated them, since the said paragraph clearly states that the four circumstances provided for do not constitute an exhaustive list of circumstances (“…in particular but without limitation…”).

Accordingly, the Panel finds that the Respondent registered and used the disputed domain names 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 names at issue, <speedotime.com>, <speedosport.com>, <speedodata.com>, <speedofun.com>, <speedogame.com>, <speedoplay.com> and <speedosporting.com>, be transferred to the Complainant.

Christos A. Theodoulou
Sole Panelist

Dated: February 27, 2006