WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Lovehoney Group Limited v. Kwong Wah Law, Spaltec International Group Ltd
Case No. D2021-3701
1. The Parties
Complainant is Lovehoney Group Limited, United Kingdom, represented by BrandIT GmbH, Switzerland.
Respondent is Kwong Wah Law, Spaltec International Group LTD, Hong Kong, China.
2. The Domain Names and Registrar
The disputed domain names <lovehoneycompany.com> and <lovehoneyofficial.com> (the “Domain names”) are registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 4, 2021. On November 5, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On November 8, 2021, 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 November 11, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 1, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on December 3, 2021.
The Center appointed Robert A. Badgley as the sole panelist in this matter on December 9, 2021. 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, founded in 2002, describes itself as “the largest British company selling sex toys, lingerie and erotic gifts on the Internet.” It sells more than 400 different products in numerous countries under the LOVEHONEY trademark.
Complainant’s main website is at “www.lovehoney.com”. That domain name was created in 1998. Annexed to the Complaint are various documents demonstrating that Complainant has a robust online presence including social media, and that Complainant has received numerous awards for its products and its customer service. In addition, Complainant asserts that it has received more than 80,000 “Excellent” customer reviews on Trustpilot, an independent review website.
Complainant has registered the trademark LOVEHONEY in several jurisdictions. For example, Complainant has registered the LOVEHONEY mark with the United States Patent and Trademark Office (“USPTO”) under USPTO Registration No. 3,352,209 (registered on December 11, 2007 in connection with, among other things, “lubricant substances […] for arousing or enhancing sexual desire or improving sexual performance, […] massage devices, […] erotic lingerie […]”). Complainant also holds trademark Registration No. 29693111 in China (registered on January 28, 2020).
The Domain Name <lovehoneyofficial.com> was registered on May 12, 2021. The Domain Name <lovehoneycompany.com> was registered on June 1, 2021. The Domain Name <lovehoneycompany.com> resolves to a parking page with various hyperlinks unrelated to anything Complainant sells.
The Domain Name <lovehoneyofficial.com> currently resolves to a commercial website where a product called “Love Honey” is sold. This product purports to be some natural consumable that one ingests after a meal. Respondent’s website states that its “Love Honey” product “increases testosterone levels,” “increases sexual desire,” and provides additional benefits. There are no details at Respondent’s website about Respondent, or the origins of its apparent “Love Honey” product, or whether Respondent has operated a business with the name “Love Honey” or acquired any trademark rights including the words “Love Honey,” or how long Respondent has been selling its “Love Honey” product.
On June 29, 2021, Complainant’s counsel sent a cease-and-desist letter to Respondent, asserting Complainant’s trademark rights and demanding a transfer of the Domain Names to Complainant. At that time, neither of the Domain Names resolved to an active commercial website offering any products in the realm of the erotic. Respondent did not respond to Complainant’s cease-and-desist letter.
5. Parties’ Contentions
Complainant contends that it has proven all three elements required under the Policy for a transfer of the Domain Names.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to each of the Domain Names:
(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.
A. Identical or Confusingly Similar
The Panel concludes that Complainant has rights in the trademark LOVEHONEY through registration and use demonstrated in the record.
The Panel also concludes that the Domain Names are confusingly similar to the LOVEHONEY mark. Each Domain Name entirely incorporates the LOVEHONEY trademark, and the additional words “company” and “official” do little or nothing to overcome the fact that the LOVEHONEY mark is clearly recognizable within each of the Domain Names.
Complainant has established Policy, paragraph 4(a)(i).
B. Rights or Legitimate Interests
For each of the Domain Names, pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] 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 [Respondent] (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 [Respondent] 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.
The Panel concludes that Respondent lacks rights or legitimate interests in respect of the Domain Names. Respondent has declined to explain its bona fides, if any, in connection with the Domain Names, either in response to the Complaint in this proceeding or to the June 29, 2021 cease-and-desist letter sent by Complainant. The undisputed record here demonstrates that Respondent has used the Domain Name <lovehoneyofficial.com> for a commercial website to sell a product that bears virtually the same trademark as Complainant’s mark (Respondent uses the words “Love Honey” with a space between them, whereas Complainant combines the words into a single trademarked term, LOVEHONEY). Further, Respondent’s product, with its sexual and erotic features, may be said to be in direct competition with Complainant’s offerings of a similar nature. On the other hand, the Domain Name <lovehoneycompany.com> resolves to a parking page with various hyperlinks which redirect Internet users to third party websites offering a range of services, such as Marketing analysis tool, Shopify, Trading Platforms, which are not related to the terms “love” or “honey”. Such use of the Domain Names is clearly illegitimate.
Moreover, there is no evidence on record showing that Respondent has been commonly known by the Domain Names.
The Panel concludes that Complainant has established Policy, paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
For each of the Domain Names, paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use of the Domain Name in “bad faith”:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or
(ii) that Respondent has 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 Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
The Panel concludes that Respondent has registered and used the Domain Names in bad faith. The Panel incorporates its discussion above in the “rights or legitimate interests” section. On the undisputed record here, the Panel finds it more likely than not that Respondent had Complainant’s LOVEHONEY trademark in mind when registering the Domain Names. Complainant has used that trademark for more than 20 years in numerous jurisdictions, and the mark appears to enjoy a measure of renown. Further, Respondent appears to be selling an erotic supplement called “Love Honey,” which consumers could easily (though mistakenly) believe to be part of Complainant’s LOVEHONEY product line. It seems highly unlikely that Respondent would have been unaware of the LOVEHONEY trademark when it apparently decided to launch a product in the same sphere of commerce as Complainant’s offerings.
With respect to bad faith use, the Panel concludes that Respondent has committed bad faith within the meaning of the above-quoted Policy, paragraph 4(b)(iv).
Complainant has established Policy, paragraph 4(a)(iii).
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names <lovehoneycompany.com> and <lovehoneyofficial.com> be transferred to Complainant.
Robert A. Badgley
Date: December 16, 2021