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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Symbios Solutions Ltd v. Infernal Publishing Ltd

Case No. DIE2014-0002

1. The Parties

The Complainant is Symbios Solutions Ltd of Fareham, United Kingdom of Great Britain and Northern Ireland ("UK"), represented by Adlex Solicitors, UK.

The Respondent is Infernal Publishing Ltd of Belfast, UK, represented by Forde Campbell LLC, UK.

2. The Domain Name and Registrar

The disputed domain name <swing4ireland.ie> is registered with IE Domain Registry Limited ("IEDR").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 14, 2014 via email. On the same day, the Center transmitted by email to IEDR a request for registrar verification in connection with the disputed domain name. On May 15, 2014, IEDR transmitted by email to the Center its verification response confirming that the Respondent as the registrant and providing contact details.

The Center verified that the Complaint satisfied the formal requirements of the .IE Dispute Resolution Policy (the "IEDR Policy"), the WIPO Dispute Resolution Rules of Procedure for .IE Domain Name Registrations (the "Rules"), and the WIPO Supplemental Rules for .IE Domain Name Dispute Resolution Policy (the "Supplemental Rules").

In accordance with the Rules, paragraphs 2.1 and 4.1, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 28, 2014. In accordance with the Rules, paragraph 5.1, the due date for Response was June 26, 2014. The Respondent filed its Response on June 26, 2014.

The Center appointed Alistair Payne as the sole panelist in this matter on July 3, 2014. 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.

The Panel issued Panel Order No. 1 on July 8, 2014, as follows:

"In reviewing the case file the Panel has noted that the disputed domain name was first registered, according to the Respondent, by EV Promotions Agency Limited as its predecessor in title to the 'Swingers4Ireland' name and mark on June 12, 2008. All rights to that name and mark including the disputed domain name were, according to the Respondent, subsequently acquired by the Respondent following the liquidation of EV Promotions Agency Limited.

The Panel notes that the Complainant has submitted copies of letters from the liquidator of EV Promotions Agency Limited confirming that EV Promotions Agency Limited ceased trading and went into liquidation on March 5, 2012 and that the disputed domain name should have no further connection with the dissolved entity. The relevant WHOIS record indicates that the disputed domain name was subsequently registered by the Respondent on November 16, 2012.

In these circumstances the Panel requests that the Respondent files on or before July 14, 2014, documentary evidence of the transfer to it by EV Promotions Agency Limited or by the liquidator of that company, of the intellectual property rights and goodwill (including rights to the un-registered trade mark 'Swing4Ireland') and of rights to use the disputed domain name, as referred to in paragraph 7 of the Response. Should the Complainant wish to make a submission in response to the Respondent's further submission, then it should do so on or before July 21, 2014.

The Panel hereby extends the decision due date to July 28, 2014."

Subsequently and in view of the holiday period the Parties both requested an extension of time in which to respond and the Panel issued a further instruction through the Center as follows:

"In light of your request for further extensions, please note the Panel's amended extension as follows:

Respondent: July 18, 2014
Complainant: July 30, 2014
Decision due date: August 6, 2014.

Please be advised that the above deadlines are final, and the Panel will issue no further extension."

On July 10, 2014, the Complainant made a supplemental filing. The Respondent filed its response in relation to Panel Order No. 1 on July 18, 2014 and the Complainant filed a submission in response on July 30, 2014.

4. Factual Background

The Complainant, who is based in the United Kingdom, describes itself as having entered the "swingers" business in that country in 2001. Based on the success of its operations there it decided to expand into both Northern Ireland and the Republic of Ireland and for this purpose registered <swing4ireland.com> on April 7, 2005 and launched a website at that domain name on May 27, 2005. The Complainant also owns Community Trade Mark number 9801705 dating from March 10, 2011 for the word mark SWING4IRELAND.

The Respondent is a company based in Northern Ireland that was incorporated on November 16, 2010. It operates a business distributing adult magazines and operating adult entertainment websites and introduction services, including "swingers" websites.

The disputed domain name was initially registered on June 12, 2008 by EV Promotion Agency Limited and was used by it until it was later liquidated. Following the liquidation, the disputed domain name was cancelled but was subsequently re-registered in the Respondent's name on November 16, 2012.

5. Parties' Contentions

A. Complainant

The Complainant submits that as noted above it owns registered trade mark rights in its SWING4IRELAND mark and that this amounts to a Protected Identifier for the purposes of the Policy. It submits that the substantive elements of the disputed domain name are identical to its mark.

It says that having registered its domain name <swing4ireland.com> in 2005 that it launched a website and has carried on the business of an on-line introduction agency for swingers from that domain name since late May 2005. It says that as a consequence of advertising, search engine use and word of mouth that there were almost three million visitors to the site from February 2011 to March 2014 and that over eighty percent of those visits were from the Republic of Ireland. It submits that from 2005-2013 a total of 116,000 people joined the site and that from when it started charging for access to certain features in June 2008 until February 2014, it has generated revenues of GBP 600,000.

The Complainant submits that it never authorised the Respondent to use its mark or to register the disputed domain name but the Respondent has used the Complainant's Protected Identifiers and the disputed domain name to attract, confuse and profit from Internet users seeking the Complainant's website. It maintains that such use in relation to such similar services to those offered by the Complainant cannot be in good faith and that the substantive part of the disputed domain name does not correspond to any name or mark used by the Respondent.

As far as bad faith registration is concerned, the Complainant says that its SWING4IRELAND mark is a non-obvious coined term or mark which the Complainant started using in 2005 well before the Respondent registered the disputed domain Name and that the Respondent chose the disputed domain name on purpose in order to confuse Internet users using search engines and to divert or attract them to its own website from which it offers very similar services to those offered by the Complainant. The Complainant notes in this regard that an early version of the Respondent's website was a substantial copy of the Complainant's website as set out in its letter of June 2009 to the Respondent and that this website was removed following the Complainant's objection to the IEDR. The Complainant also says that it is inconceivable that the Respondent did not know of its mark and business considering that the Parties are direct competitors and that the Complainant had acquired 43,500 members by 2008 when the disputed domain name was first registered. The Complainant also says that the addition of a disclaimer in 2011 to the website at the disputed domain name was inadequate to dispel initial interest confusion and in any event the current version of the website has no such disclaimer.

The Complainant further notes in its supplemental filing that the Respondent has never denied that it is under the same control as the previous registrant of the disputed domain name. It says that the Respondent's assertion that it ran a magazine under the title "Swing4Ireland" from 2001 to at least 2008 is not supported by the evidence. It says that the only evidence of this is a series of images of alleged front covers of the "magazine" from 2001 to 2003 which the Complainant maintains were concocted from "photo shopped" images copied from other sources (for which the Complainant provides a number of examples by way of evidence in a witness statement) and it notes that the Respondent has not provided evidence of actual content, circulation, distribution, price or ISSN codes. The Complainant notes that the magazine allegedly run by the Respondent does not come up in any Google searches, was never referred to by the Respondent in its Response or in prior correspondence with the Complainant or its legal representatives and is inconsistent with the tenor of the correspondence between the Parties prior to the commencement of the present proceeding.

Overall the Complainant maintains that the Respondent has targeted its mark and business and in registering and using the disputed domain name in the manner in which it has done so has sought to divert custom and to prevent it from registering the disputed domain name itself. It denies the Respondent's claim that the Complainant's registered trade mark is invalid and submits that this is in any event irrelevant to these proceedings.

B. Respondent

The Respondent submitted in its Response that its business, including its goodwill and intellectual property rights, was acquired from EV Promotions Agency Limited, a company formerly registered in the Republic of Ireland, upon liquidation in October 2011. It stated that this transfer included the disputed domain name and the goodwill of the business attaching to the unregistered trade mark "swing4ireland" which EV Promotions Agency Limited had used as a magazine title in the course of its business since 2001. Essentially, the Respondent submitted in its Response that it has prior rights in the SWING4IRELAND mark dating from its predecessor's use and distribution of this magazine through a series of adult shops and that it was as a consequence of the success of this magazine and the reputation of its mark, it launched its website at the disputed domain name in 2008.

The Respondent says that without consent or authorization, the Complainant registered the <swing4ireland.com> domain name in 2005 in bad faith and with the intent of passing off as the EV Promotions Agency Limited and its unregistered mark. As a consequence the Respondent asserts that the Complainant's registered Community Trade Mark is invalid and that it intends to pursue invalidity proceedings. The Respondent says therefore that it is the Complainant that has no legitimate rights in the SWING4IRELAND mark, that it registered and has used the disputed domain name in good faith and that it has prior rights than the Complainant to the mark and the disputed domain name.

In its subsequent filing in response to Panel Order No. 1, the Respondent submitted through its legal representatives that in fact no formal assignment was entered into between the Respondent and EV Promotion Agencies Limited and / or its liquidator in relation to any intellectual property rights and goodwill in the SWING4IRELAND mark or the magazine of the same name arising from EV Promotion Agencies Limited's operation since 2001. It noted however that the liquidator raised no objection to the Respondent's subsequent acquisition of the URL. The Respondent also submitted a witness statement by Mr. Brown, a former director and shareholder of EV Promotion Agencies Limited which essentially states that: he personally published a magazine under the "Swing4 Ireland" name or mark in early 2001 prior to the formation of EV Promotion Agencies Limited; that as from October of that year the company "co-ordinated" the publishing and distribution of the magazine; that he personally registered the disputed domain name in 2008 on behalf of EV Promotion Agencies Limited; that the company was liquidated as a result of financial difficulties in 2010 and that his son set up the Respondent company on November 16, 2010 and subsequently registered the disputed domain name in order to carry on a similar business as previously run by EV Promotion Agencies Limited.

6. Discussion and Findings

In the interests of fairness and in view of the issues raised in both submissions being apposite to the central issue in these proceedings the Panel has decided to allow the Complainant's supplemental filing dated July 12, 2014into the record of these proceedings. In this regard the Panel notes that the Complainant's supplemental filing addresses the Respondent's submission in its Response concerning prior rights based on publication of a magazine that was never referred to by the Respondent previously in its correspondence with the Complainant. This issue is central to the dispute and the Panel discusses it below.

A. Identical or Confusingly Similar

The Panel finds that the Complainant has demonstrated that it owns Community Trade Mark number 9801705 dating from March 10, 2011 for the word mark SWING4IRELAND and that this qualifies as a "Protected Identifier" for the purposes of the Policy. The disputed domain name is identical to this trade mark except for the ".ie" suffix. As a result the Panel finds that the Complaint succeeds under this element of the Policy.

B. Rights in Law or Legitimate Interests

The Policy requires the Complainant to demonstrate that the Respondent has no rights in law or legitimate interests in respect of the disputed domain name. The Complainant is required to make out at least a prima facie case under this element of the Policy, and it is then up to the Respondent to rebut the Complainant's case.

The Complainant has asserted that it owns the SWING4IRELAND mark as set out above and has not authorised the Respondent's use of that mark in the disputed domain name. It says further that it coined the term itself, and that when it started using the mark in its own domain name targeting Internet users in Ireland in 2005, it was not aware of any use by the Respondent or any alleged predecessor to it, whether on the Internet or as a printed magazine. The Complainant further asserts that it acquired 43,500 users of the website at its <swing4ireland.com> domain name by 2008. The Respondent offers extremely similar and directly competing services, and as a consequence, the Respondent could not have been unaware of the Complainant's use of the SWING4IRELAND mark at the point of registration of the disputed domain name. In addition, the Panel notes that an early version of the EV Promotion Agencies Limited's website, as noted in the Complainant's letter of June 2009, was a substantial copy of the Complainant's website which further supports an inference that the related persons behind that company and subsequently the Respondent, had set out to divert and confuse Internet users in bad faith as further discussed below. As a result the Panel finds that the Complainant has discharged its burden of making out a prima facie case.

The Respondent's case is essentially that it or its purported predecessor in title had made prior use of the SWING4IRELAND mark since 2001, and therefore it cannot be said that it has no rights in law or legitimate interests in the disputed domain name under this element of the Policy. In fact it goes further and says that the Complainant has no rights in the mark as a consequence of the Respondent's prior use and that its Community Trade Mark registration should be invalidated.

The evidence submitted in this regard by the Respondent comprises copies of the covers of four magazines entitled "Swing4Ireland" which date back to 2001. It has also provided a declaration made by Mr. Brown, a former director and shareholder of EV Promotion Agencies Limited in which he states that: he personally published a magazine under the "Swing4 Ireland" name or mark in early 2001 prior to the formation of EV Promotion Agencies Limited; that as from October of that year the company "co-ordinated" the publishing and distribution of the magazine and that he personally registered the disputed domain name in 2008 on behalf of EV Promotion Agencies Limited.

In its submission in response to Panel Order No. 1, the Respondent confirmed that no formal assignment had been entered into between the Respondent and EV Promotion Agencies Limited and / or its liquidator in relation to intellectual property rights and goodwill attaching to the SWING4IRELAND mark or the magazine of the same name. Mr. Brown, in his declaration submitted by the Respondent, confirmed that following the liquidation of EV Promotion Agencies Ltd in 2010 that his son had subsequently formed the Respondent, registered the disputed domain name and proceeded to set up to carry on the same business formerly carried on by EV Promotion Agencies Limited.

The Respondent has now confirmed through its legal representatives and contrary to its initial Response, that there was never an assignment of intellectual property rights from EV Promotion Agencies Limited or from the liquidator to the Respondent. It is apparent that the Respondent, a new and separate legal entity formed in 2010, in fact registered the disputed domain name for the first time in 2012. There is also no evidence before the Panel that Mr. Brown personally owned any intellectual property rights arising from prior use of the SWING4IRELAND mark or that he assigned any such rights to the Respondent. The fact that the liquidator made no objection to the subsequent registration of the disputed domain name by the Respondent is irrelevant.

In the Panel's view there is therefore no basis on which the Respondent can assert that any rights or legitimate interests that may have existed in the disputed domain name passed to the Respondent. It appears to the Panel based on the evidence before it that the Respondent made a new domain name registration in order to start a similar business to that formerly carried on by EV Promotion Agencies Limited and Mr. Brown. The position must therefore be that any rights or legitimate interests that the Respondent may have in the disputed domain name can only date from 2012, being the date of registration of the disputed domain name by the Respondent. By this time of course the Complainant had developed a substantial following for its business under its mark and at its website.

The Panel is therefore of the view that at the date of registration of the disputed domain name there is no evidence before it to suggest that the Respondent (as opposed to EV Promotion Agencies Limited or Mr. Brown) had used and had any common law rights in the SWING4IRELAND mark. For the additional reasons set out below in relation to bad faith, the Panel considers that the Respondent's registration in 2012 and subsequent use of the disputed domain name was not bona fide and was made with knowledge of the Complainant's rights for its own advantage.

For completeness, the Panel also notes that the Complainant's Community Trade Mark registration number 9801705 dating from March 10, 2011 for the word mark SWING4IRELAND is prima facie valid unless and until found to be otherwise by a Community Trade Mark Court or the European Union Office for Harmonization in the Internal Market, and accordingly this is not an appropriate or relevant consideration for the Panel.

Therefore the Panel is of the view that on the evidence before it the Respondent has not rebutted the prima facie case made out by the Complainant and that the Complaint succeeds under this element of the Policy.

C. Registered or Used in Bad Faith

The disputed domain name was registered by the Respondent on November 16, 2012. By this date the Complainant had made a substantial use of its SWING4IRELAND mark over many years and had developed a substantial number of subscribers and Internet users. The Panel notes the evidence provided by the Complainant, which was not challenged by the Respondent that between 2005-2013, a total of 116,000 people joined the Complainant's site and that from when it started charging for access to certain features in June 2008 until February 2014, it has generated revenues of GBP 600,000.

Considering that the Respondent's business directly competes with the Complainant, in view of the past involvement of Mr. Brown with EV Promotion Agencies Limited and the fact that the Respondent was set up by his son who registered the disputed domain name some two years later in order to start a new but similar business to that formerly carried on by EV Promotion Agencies Limited and also considering the previous line of correspondence between the Parties concerning the Complainant's rights in the SWING4IRELAND mark, the Panel infers that the Respondent was well aware of the Complainant, its claim to ownership of the mark and of the competing nature of its business when it registered the disputed domain name.

The Respondent appears to have chosen to proceed with registration, knowing of the Complainant's competing business and claim to the SWING4IRELAND mark and in spite of the fact that the Respondent had not taken an assignment of any intellectual property rights which EV Promotion Agencies Limited may have had prior to liquidation based on prior use of the SWING4IRELAND mark up to 2010. In these circumstances the Panel finds that the Respondent had no rights in the SWING4IRELAND mark when it registered the disputed domain name and that the disputed domain name was registered knowingly in bad faith. In the absence of any intellectual property assignment, it is unnecessary for the Panel to make any comment concerning any prior rights that EV Promotions Agencies Limited, or Mr Brown, may have had in the SWING4IRELAND name or mark based on the 2001 magazine cover evidence. However, the Panel has taken note of the issues raised by the Complainant concerning the veracity of this evidence, and in light of the Complainant's witness statement, notes that serious concerns have been raised in this regard. In any event, nothing turns on this particular issue and therefore the Panel need make no determination on this point.

It seems to the Panel that the Respondent registered the disputed domain name in 2012 in order to attract Internet users who might otherwise be looking for the Complainant's website. This inference is only strengthened by the fact that the disputed domain name was registered approximately two years after EV Promotion Agencies Limited's dissolution, while in the intervening period the Complainant had continued its use and promotion of its SWING4IRELAND mark for its well-established business. The Panel notes paragraph 2.1.4 of the Policy which states that there may be evidence of bad faith where the Respondent has, through its use of the disputed domain name, intentionally attempted to attract Internet users to a web site or other on‑line location by creating confusion with a Protected Identifier in which the Complainant has rights. For the reasons outlined, the Panel infers, on the balance of probabilities, that the Respondent sought to register and use the disputed domain name precisely for this purpose and accordingly finds that the Respondent registered and used the disputed domain name in bad faith. As a result the Complaint also succeeds under this element of the Policy.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 5 of the IEDR Policy and 14 of the Rules, the Panel orders that the disputed domain name <swing4ireland.ie> be transferred to the Complainant provided the IEDR is satisfied that the Complainant fulfils the eligibility criteria set out in the IEDR Registrations Policy for ownership of the disputed domain name. Alternatively, the Panel orders that the disputed domain name <swing4ireland.ie> be cancelled.

Alistair Payne
Sole Panelist
Dated: August 6, 2014

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