WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Winchester Consultancy Limited v. Pony Taylor
Case No. D2019-1637
1. The Parties
Complainant is Winchester Consultancy Limited, United Kingdom, represented by Adlex Solicitors, United Kingdom.
Respondent is Pony Taylor, India.
2. The Domain Name and Registrar
The disputed domain name <fabswingers.online> (the “Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 11, 2019. On July 11, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 12, 2019, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on July 18, 2019. In accordance with the Rules, paragraph 5, the due date for Response was August 7, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 13, 2019.
The Center appointed Harrie R. Samaras as the sole panelist in this matter on August 19, 2019. 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 September 4, 2019, the Center issued Administrative Panel Procedural Order No. 1. In that Order, the Panel requested clarification regarding certain background information Complainant provided in its Complaint. Complainant responded in a timely fashion on the same day. Respondent was provided an opportunity to respond but the Center did not receive any response from Respondent.
4. Factual Background
Complainant was incorporated on July 12, 2002. On November 24, 2008, Complainant acquired the assets of a “swingers” business (described as “a web-based introduction agency and advertising business”) which traded under the name “Fabswingers” since 2006. Complainant continues to trade under that name, using a website at “www.fabswingers.com”. That domain name was registered on September 1, 2006. The website was launched on September 23, 2006. The website offers “swinging” services for adults. Between June 2007 and July 2013 there were over 337 million visits by over 73 million unique visitors to Complainant’s site. In June 2013 alone there were over 12.5 million visits to the Complainant’s website.
Complainant owns the following registered trademarks for FABSWINGERS (the “Mark”): United Kingdom Trademark No. 2582868 (registered on December 25, 2009); United States of America Trademark Registration No 4033771 (registered October 4, 2011); European Union Trademark No. 13640271 (registered May 11, 2015); and Australian Trademark No. 1385021 (registered June 23, 2011).
Respondent registered the Domain Name on March 8, 2019. As of July 11, 2019, there was a website associated with the Domain Name offering “swinging” services.
Complainant’s solicitor sent a cease and desist communication by email to Respondent on June 6, 2019 to which no response was received.
5. Parties’ Contentions
The services that Respondent offers compete with those of Complainant. Respondent’s website is seeking to impersonate Complainant. The content of the home page has been designed to give the impression that it is operated by Complainant. The word “Fabswingers” (using a capital “F” at the beginning of the word “Fabswingers”) appears prominently, in numerous places, as a trading/brand name on the homepage. For example: “Fabswingers is the one-stop shop destination…”, “Pros of FabSwingers”. Complainant’s own website, “www.fabswingers.com”, is referred to twice on the home page as if it were Respondent’s site, including a section of the home page devoted to Complainant’s website under the heading “A brief history about fabswingers.com”. The text that appears underneath this heading describes Complainant’s website as “this famous website for swingers” and provides statistics for Complainant’s website and details how to use Complainant’s site.
The “FabSwingers” link that appears in the “…history of fabswingers.com” section takes the user back to Respondent’s website. Furthermore, the “Register Now” and “Get Started Now” buttons that appear on the home page link to competitor online adult dating websites.
Complainant relies on its registered trademarks to establish rights in the Mark. Complainant also relies on common law rights by virtue of its extensive trading and marketing activities. Complainant has acquired substantial reputation and goodwill in the Mark such that it is recognized by the public as distinctive of Complainant’s adult introduction and swinging online business. The Domain Name is identical to the Mark disregarding the domain suffix.
Complainant has no association with Respondent and has never authorized or licensed Respondent to use its Mark. Respondent has used the Domain Name and Complainant’s Mark to attract, confuse and profit from Internet users seeking Complainant. Respondent’s only use of the Domain Name has been to impersonate Complainant and to attract, confuse and profit from Internet users seeking Complainant. It is clear that Respondent was out for commercial gain.
Respondent intended to prevent Complainant from reflecting its Mark in the Domain Name, which corresponds to that Mark. Respondent was clearly aware of Complainant and its business when it registered the Domain Name. Respondent must also have known that Complainant would most likely have wanted to acquire the Domain Name for itself. Respondent registered the Domain Name for the purpose of unfairly disrupting the business of Complainant by diverting business intended for Complainant. Respondent is a competitor as it offers services similar to those of Complainant. Respondent was clearly aware of Complainant and its business when it registered the Domain Name. It is inconceivable that Respondent intended to operate a genuine business with (or had any other genuine reason to use) a domain name which comprised a competitor’s trademark. Respondent’s website is essentially a scheme adopted by Respondent to confuse, attract and profit from Internet users who are searching for Complainant’s business in search engines, web browsers and otherwise on the Internet and to profit by diverting such users to Complainant’s competitors.
It is clear that Respondent had Complainant and its business in mind when registering and using the Domain Name because: Respondent has tried to impersonate Complainant; Respondent has not denied this assertion; the purpose in registering / using a domain name comprising the Mark in relation to adult introduction and swinging services can only have been to target Complainant’s business; Respondent’s website includes references to Complainant’s own website; and Respondent is a competitor of Complainant and was therefore clearly aware of Complainant.
Use of the Domain Name is intended to create a likelihood of confusion in the minds of the public as to an association between Respondent and Complainant. It is obvious that Respondent was intent upon commercial gain as it provides affiliate links to competitors of Complainant.
Respondent has not responded to or denied the assertions of bad faith in the pre-action communications by Complainant. It is reasonable to assume that if Respondent did have legitimate purposes in registering / using the Domain Name it would have said so.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
There is no dispute about Complainant’s rights in the FABSWINGERS Mark. It is registered in various countries including the United States Patent and Trademark Office as Registration No. 4033771 and in the United Kingdom as Registration No. 2582868. Thus, it is entitled to a presumption of validity.
The Domain Name <fabswingers.online> incorporates in its entirety the FABSWINGERS Mark. Where a domain name incorporates a complainant’s mark, this is sufficient to establish that the domain name is identical or confusingly similar for purposes of the Policy. See Kabushiki Kaisha Hitachi Seisakusho (d/b/a Hitachi Ltd) v. Arthur Wrangle, WIPO Case No. D2005-1105. The use of the generic Top-Level (“gTLD”) “online” does not impact the assessment whether a domain name is identical or confusingly similar to a trademark. See, Bradford & Bingley Plc v. Registrant info@fashionID.com 987654321, WIPO Case No. D2002-0499.
For the foregoing reasons, the Panel finds that paragraph 4(a)(i) of the Policy has been satisfied.
B. Rights or Legitimate Interests
Complainant contends that Respondent has no rights or legitimate interests in the Domain Name. It is undisputed that Complainant has not licensed or otherwise permitted Respondent to use the FABSWINGERS Mark in any manner, including as a domain name. The record evidence indicates that Respondent registered the Domain Name earlier this year, well after Complainant had registered rights in the Mark. Respondent has not provided any evidence establishing that it has been commonly known by the Domain Name. Furthermore, there is no evidence that Respondent is making a bona fide offering of goods or services, nor a legitimate noncommercial or fair use of the Domain Name insofar as Respondent is using the Domain Name in connection with a website whereby it is selling services similar to those sold by Complainant.
Complainant has made out a prima facie case of Respondent’s lack of rights or legitimate interests, and Respondent has failed to rebut that case.
For the foregoing reasons, the Panel finds that paragraph 4(a)(ii) of the Policy has been satisfied.
C. Registered and Used in Bad Faith
Complainant began trading under the Mark in 2006 when it acquired the assets of a “swingers” business that was trading under the Mark. The domain name Complainant uses, <fabswingers.com>, was registered on September 1, 2006 and it launched the associated website on September 23, 2006. The Mark was registered with the United States Patent and Trademark Office on October 4, 2011 and in the United Kingdom in 2009. Respondent registered the Domain Name on March 8, 2019 – well after Complainant established its rights in the Mark.
Moreover, Respondent would have had to know about Complainant and the FABSWINGER Mark when registering the Domain Name insofar as on Respondent’s website associated with the Domain Name:
(1) the Mark is used in many places; (2) Respondent sells “swinger” services that are competitive with those Complainant sells; (3) Complainant’s domain name <fabswingers.com> is referred to twice on the home page including a section titled “brief history about fabswingers.com”; and (4) the text that appears underneath this heading describes Complainant’s website as “this famous website for swingers” and provides statistics for Complainant’s website and details how to use Complainant’s site. On the totality of this uncontroverted evidence, the Panel finds that Respondent registered the Domain Name in bad faith.
With regard to bad faith use, Respondent is using a domain name that is identical to Complainant’s Mark to host a site that is selling services that are competitive with Complainant’s services, including the ubiquitous use of the Mark and Complainant’s domain name on the site. The Panel concludes that by using the Domain Name in this manner, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s Mark as to the source, sponsorship, affiliation or endorsement of such site or the products or services advertised on such site, within the meaning of paragraph 4(b)(iv) of the Policy. Advance Magazine Publishers Inc. v. Red Wagon Films, WIPO Case No. D2006-0893.
For the foregoing reasons, the Panel finds that paragraph 4(a)(iii) of the Policy has been satisfied.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <fabswingers.online> be transferred to Complainant.
Harrie R. Samaras
Date: September 16, 2019