Generic Top Level Domain Name (gTLD) Decisions

The Complainant is E.I. du Pont de Nemours and Company, Wilmington, DE, USA ("Complainant") represented by Giselle Ruiz-Arthur, of E.I du Pont de Nemours and Company. The Respondent is ITC, Nairobi, Kenya ("Respondent") represented by John Berryhill.

The domain name at issue is "lycralovers.com," registered with Network Solutions.

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge, has no known conflict in serving as a panelist in this proceeding.

Bruce Meyerson, Diane Cabell, and Henry W. Blizzard, Jr. as Panelists.

Complainant submitted a Complaint to the National Arbitration Forum ("the Forum") electronically on December 6, 2000; the Forum received a hard copy of the Complaint on December 6, 2000.

On December 13, 2000, Network Solutions confirmed by e-mail to the Forum that the domain name "lycralovers.com" is registered with Network Solutions and that the Respondent is the current registrant of the name. Network Solutions has verified that Respondent is bound by the Network Solutions 5.0 registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the "Policy").

On January 8, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 29, 2001 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@lycralovers.com by e-mail.

A timely response was received and determined to be complete on January 29, 2001.

On February 6, 2001 pursuant to Complainant’s request to have the dispute decided by a Three Member Panel, the Forum appointed Bruce Meyerson, Diane Cabell and Henry W. Blizzard, Jr. as Panelists.

The Complainant requests that the domain name be cancelled.

Respondent claims to operate a website directed to persons having an affinity for the Complainant's product. Respondent claims that it has rights to or a legitimate interest in the domain name because it is engaging in a bona fide offering of goods and services on this website. Respondent claims it is acting in a bona fide manner because it is offering for sale garments that contain the product Lycra, as well as photographic images of persons wearing garments that contain Lycra. Respondent acknowledges that the material it offers is intended to appeal to an erotic interest, however, it disputes the contention that its erotic material tarnishes Complainant's trademark.

Lycra is the trademark of a fabric manufactured by the Complainant. The generic term for the fabric is "spandex" and the Complainant asserts that there are other manufacturers of the generic product. Lycralovers.com resolves to an active website. The publicly accessible portion of the site is essentially a portal to sites that offer principally images of bondage and other erotic acts and to websites that relate to these interests. Almost all of these links take the viewer to websites operating under other domain names and which have no known ownership affiliation with the Respondent. Some of them are image links that are fairly graphic. One of these links is to a site offering for sale products that appear to be Lycra or spandex products.

The bulk of the content that is actually hosted on the lycralovers.com website itself consists of images of people (mostly women) clothed in spandex products. The general viewer can, without a fee, access a limited number of images of women wearing spandex, some of which are in erotic poses, some which are not. For a fee, a user can get access to additional images that are not available to the general viewer. Lycralovers.com designates itself as a "high quality fetish site" and indeed this seems to be the overriding theme. Respondent claims that Lycra fabric is strongly associated with certain fetish activities hence the domain name lycralovers.com is merely descriptive of the content.

Paragraph 15(a) of the Policy instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."

Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(3) the domain name has been registered and is being used in bad faith.

Is the domain name "lycralovers" confusingly similar to the trademark "Lycra"?

Respondent asserts that the title "lovers" has the same distinguishing capability as "sucks" and believes we should follow the rulings of United States courts that have generally found "sucks" domain names as non-infringing. Lucent Technologies, Inc. v. Lucentsucks.com, 95 F.Supp.2d 528, (E.D.Va. 2000); Bally Total Fitness Holding Corp. v. Faber, 29 F.Supp.2d 1161 (C.D.Cal.1998).

We believe, however, that "sucks" is a particularly distinguishing word when added to a trademark and one that uniquely indicates that it is unaffiliated with the mark owner. "Lovers" carries no such warning flag. Further, this is not a parody or product criticism site, nor is it one that can avail itself of other "free speech" doctrines because the site is clearly a commercial enterprise. We find that the domain name is confusingly similar to the trademark.

If the Respondent can prove that it has a right or legitimate interest in the domain name, then the Complaint fails. Section 4(c) of the Policy lists examples of which only (c)(i) is pertinent:

The Respondent here does offer for sale products and services. The question, however, is whether, in the context of the lycralovers.com site, that offering is bona fide. The Black's Law Dictionary, Abridged Fifth Edition definition of "bona fide" is:

The Panel finds that the website does not contain a bona fide offering of Lycra products. Its principal purpose appears to facilitate click-through revenue from the banner ads placed on its site by outside vendors of erotic bondage images. We are not convinced that Respondent’s own "products" (its images of Lycra-clad ladies) are offered with any serious intent to earn revenue, but are in fact merely an attempt to clothe the site in some justification for using the Complainant’s very attractive mark.

If Respondent itself actually sold Lycra products, then it might claim a fair use defense of truthfulness. See Volkswagenwerk Aktiengesellschaft v. Church, [1969] USCA9 340; 411 F.2d 350, 353 (9^th Cir. 1969)(the defendant was able to advertise that he repaired Volkswagen vehicles as long as he did not do so in a way likely to suggest to his prospective customers that he is part of Volkswagen's organization of franchised dealers and repairmen). However, Respondent does not sell Lycra products at all, it only sells images of women in spandex. And it does not seem to matter, at least as to those images, whether the spandex is Lycra brand or Vega® brand or any other brand.

Accordingly, the Panel finds that Respondent’s offering of Lycra goods is not bona fide. We believe that the links to sales of Lycra products were placed on the site solely in an attempt to hide behind a pretense of fair use. We make no judgment on the legitimacy of marketing such images themselves, merely that we do not find the Respondent’s offering of goods to be made in a bona fide manner.

The Complainant must establish that the Respondent acted in bad faith in both registration and use of the domain name. Policy Section 4(a)(iii). The Panel has no evidence that the intent on registration was any different than the actual use. Of the examples of bad faith enumerated by the Policy Section 4(b)(iv) seems applicable in this case:

The Respondent does not contest the commercial nature of the site.

We believe that the use of the phrase "lycra lovers" does reflect an intentional attempt to attract users to the site by creating a likelihood of such confusion. A keyword search of the terms "lycra" and "spandex" verifies that spandex products are highly valued as the objects of erotic fantasy, because the majority of search results link to sites for such uses. It is clear that Respondent knows this quite well and is taking advantage of the value of Lycra’s trademark as an identifier of such products to draw clientele to its site. Respondent’s domain name attracts the knowing fetishist, but misleads the unknowing swimsuit purchaser. The "high quality" of many of the Respondent’s images and the "Buy Your Lycra Clothes Here" links do create the appearance of a legitimate outlet. The swimsuit purchaser could conclude that the Respondent had been authorized by the Complainant to sell such goods.

We find sufficient evidence to conclude that Respondent used the mark to attract commercial traffic to its site by misleading users to believe that Respondent supplies Lycra products. In truth, Respondent only supplies erotic images.

In accordance with the foregoing, the Complainant’s request to cancel the domain name lycralovers.com is granted.