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The Perfect Potion v. Domain Administrator [2004] GENDND 1502 (6 November 2004)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

The Perfect Potion v. Domain Administrator

Case No. D2004-0743

1. The Parties

The Complainant is The Perfect Potion (Aust.) Pty. Ltd., Zillmere, Queensland, Australia (“the Complainant”) represented by Fisher Adams Kelly Patent and Trademark Attorneys, Brisbane, Queensland, Australia.

The Respondent is Domain Administrator, Estado Amacuro, Tucupita, Venezuela (“the Respondent”).

2. The Domain Name and Registrar

The domain name in dispute is <perfectpotion.com> (“the Domain Name”). The Domain Name is registered with Brandon Gray Internet Services Inc. (“the Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 14, 2004. On September 14, 2004, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 15, 2004, the Registrar transmitted by email 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”), 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 proceedings commenced on September 28, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was October 18, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 20, 2004.

The Center appointed Tony Willoughby as the sole panelist in this matter on November 1, 2004. 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 claims to be “a leading manufacturer of fine aromatherapy products with prestige stores in Brisbane, Sydney and Melbourne, Australia and with product distributors in Taiwan, Province of China, South Korea, New Zealand, Japan, Malaysia and Hong Kong, SAR of China”.

The Complainant claims to have commenced business under the name PERFECT POTION in 1991. The Complainant further claims to be the registered proprietor of Australian, New Zealand, South Korean, Taiwanese and Hong Kong, SAR of China registrations of the trademark PERFECT POTION. The trademark registration certificates annexed to the Complaint indicate that the registrations are not for the word mark PERFECT POTION, but for a device mark, a prominent feature of which is the name “Perfect Potion”.

The Complainant claims gross sales of over AU$5.3 million and a workforce of “about 50 people”. It further claims to have spent AU$2.25 million on advertising and promotion, presumably spread over the 13 year life of the business.

According to the Complainant, the Domain Name was originally registered in July 2002, by a website developer acting on behalf of the Complainant’s Taiwanese distributor. From July 2002 to February 2004, the Domain Name was connected to a site promoting the Complainant’s products. In February 2004 the website developer informed the Complainant that he was in the process of transferring the Domain Name to the Complainant but, for reasons not disclosed in the Complaint, the Domain Name was apparently allowed to lapse.

On March 4, 2004, the Respondent registered the Domain Name.

On August 14, 2004, the Complainant discovered that the Domain Name was connected to a pornographic website.

Almost all the above “facts” are assertions in the Complaint. The only facts supported by extraneous documentation are the device mark registrations and the date the Registrant registered the Domain Name. Nonetheless, the Complainant’s claims as to the factual position seem reasonable to the Panel and in the absence of a Response the Panel is content to accept them as “facts”.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the Domain Name is identical to a trademark in which the Complainant has rights. The Complainant states “the relevant part of the Domain Name “Perfectpotion” is identical to the trade name and trademark that the Complainant has used for over 13 years. Accordingly, the whole of the Domain Name is identical to the Complainant’s trademark”.

The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the Domain Name.

The Complainant recites the paragraphs of paragraph 4(c) of the Policy which indicate what a Respondent may demonstrate by way of rights or legitimate interests and contends that none of them are applicable in this case.

Specifically, the Complainant observes that the Domain Name is being used in connection with a website devoted to pornography and that “there is no apparent connection between the Domain Name and the pornographic business being operated at the site to which the Domain Name resolves”. The Complainant asserts that there is no association between any content on the site and the mark PERFECT POTION.

The Complainant further asserts that the Respondent’s use of the Domain Name, which conflicts with the Complainant’s rights in the PERFECT POTION mark does not give the Respondent any rights or legitimate interests in the Domain Name.

Further, the Complainant asserts that there is nothing to suggest that the Respondent is known by the Domain Name. There is nothing on the Respondent’s website which makes any reference to the mark PERFECT POTION. Whatever may be the Respondent’s true name (the Complainant observes that the use of the term “Domain Administrator” on the Registrar’s Whois database is clearly designed to conceal the identity of the Respondent) the Respondent’s name is not “Perfect Potion”.

The Complainant contends that there is no evidence that the Respondent is making a legitimate non-commercial or fair use of the Domain Name. The Complainant asserts that the Respondent “appears to be using the Domain Name primarily for commercial gain by misleadingly diverting consumers who may be searching for a website of the Complainant, to various pornographic websites”.

Further, the Complainant contends that the Domain Name was registered and is being used in bad faith. In support of this contention the Complainant cites four previous WIPO decisions claiming they support the proposition that use of a domain name to divert Internet users to multiple pornographic websites “is considered to be evidence that the domain name has been registered and used in bad faith according to paragraph 4(a)(iii) of the Policy”.

The Complainant asserts that the Respondent is a classic cybersquatter who registers and uses “lapsed” domain names in an attempt to trade off the goodwill of others. The Complainant goes on to say that the Respondent owns multiple domain names for the purposes of cybersquatting and redirection to pornographic websites. The domain names in question are <rich-gate.com>, <rapsak.com> and <lesinformaticiens.com>. The Complainant demonstrates that all those domain names resolve to pornographic websites and the Complainant asserts that none of them appears “to have any connection with a bona fide offering of goods or services related to the domain names”.

The Complainant claims that it is clear that the Respondent has intentionally attempted to attract for commercial gain Internet users to its pornographic website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website under paragraph 4(b)(iv) of the Policy. The Complainant observes that Internet advertising revenues typically correlate to the amount of traffic experienced by the website on which the advertising is posted. The Complainant contends that the website connected to the Domain Name is being used for the specific purpose of driving Internet traffic to the Respondent’s website and other associated pornographic websites to increase advertising or other revenues.

Finally, in support of the bad faith allegation, the Complainant contends that the Respondent’s use of the website to display “cyber erotica” is offensive and derogatory to the Complainant and its customers who would be confused when accessing the Respondent’s website.

B. Respondent

The Respondent has not responded.

6. Discussion and Findings

According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name the Complainant must prove that

(i) The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) The Respondent has no rights or legitimate interest in respect of the Domain Name; and

(iii) The Domain Name has been registered in bad faith and is being used in bad faith.

A. Identical or Confusingly Similar

Clearly, the Domain Name (absent the generic domain suffix) is identical to PERFECT POTION, the mark in which the Complainant claims rights.

Does the Complainant have rights in the name or mark PERFECT POTION? There is scope for doubt given that:

(a) the registered trademark is a device mark, not the word mark PERFECT POTION. It may well be that the word mark is so descriptive as to be unregistrable for aromatherapy ‘potions’; and

(b) for the Complainant to establish unregistered rights in the mark, it is incumbent upon the Complainant to put before the Panel sufficient material to support such a finding, whereas all that the Panel has is a series of unsupported assertions.

However, the Panel has been referred to the Complainant’s website and it does seem that the Complainant is trading under and by reference to the name, “Perfect Potion”. Moreover, it is generally accepted that this is a relatively low threshold test for a complainant, the object being to establish that there is a bona fide basis for the complaint.

The Panel finds that the Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

If the Panel is satisfied that, since a date prior to the Respondent becoming aware of the Complainant’s cause for complaint, the Respondent has been using the Domain Name in connection with a bona fide offering of goods or services, the Respondent has at the very least a legitimate interest in respect of the Domain Name sufficient to defeat the Complaint. This is the effect of Paragraph 4(c)(i) of the Policy.

Here the Complainant accepts that the Respondent has been using the Domain Name commercially to derive revenue from the linking of the Domain Name directly and indirectly to a variety of pornographic websites. The commercial services provided by the Respondent may be so-called ‘adult services’, on the other hand they may be advertising services. Undoubtedly, however, the Respondent is using the Domain Name in connection with an offering of services.

The issue is whether or not it is a bona fide offering. If the offering is a bona fide offering, the Complaint fails. If it is not, the Complainant has succeeded under this head and we then move on to the question of bad faith.

While the Complainant has raised other issues under this head, the Panel regards this issue as the ‘crunch’ issue. Moreover, it seems to the Panel that whether or not the Respondent’s service offering is bona fide turns heavily on very similar allegations made by the Complainant under the next head, namely ‘bad faith registration and use’. Accordingly, the Panel suspends judgment on this issue for the moment and turns to deal with the bad faith allegations.

C. Registered and Used in Bad Faith

The Complainant’s allegations variously made under this and the previous head, which have a bearing on whether or not the Respondent has been acting in bad faith (i.e. in this case, whether or not the Respondent’s service offering is bona fide), can be categorized as follows:

(a) the Respondent’s use of the Domain Name infringes the Complainant’s trademark rights;

(b) the Respondent has deliberately set out to divert Internet users for commercial gain within the meaning of paragraph 4(b)(iv) of the Policy;

(c) the Respondent has connected the Domain Name directly and/or indirectly to pornographic sites.

Trademark Infringement/Passing Off

Even if trademark infringement/passing off on the part of the Respondent was enough to get the Complainant home under this head, the Complainant has failed. There is not enough before the Panel for the Panel to be able to make any such finding.

In any event, in the view of the Panel, mere infringement/passing off would not have been enough. There must have been a bad faith intention on the part of the Respondent.

Diversion of Internet users (paragraph 4(b)(iv)

Paragraph 4(b)(iv) of the Policy expressly calls for a deliberate intent on the part of the Respondent to divert Internet users to the Respondent’s site on the misapprehension that they are entering a site of or sponsored by the Complainant.

The Complainant asserts that the Respondent is a classic cybersquatter who registers and uses “lapsed” domain names in an attempt to trade off the goodwill of others. This is a bare assertion unsupported by any evidence. The other domain names identified by the Complainant as being domain names used by the Respondent are <rich-gate.com>, <rapsak.com> and <lesinformaticiens.com>. There is no evidence before the Panel to suggest that they feature trademarks of third parties. The only lapsed domain name that the Respondent has acquired appears to be the Domain Name. It does not appear to have been snapped up immediately on lapsing. How is the Panel to know that its acquisition was not purely coincidental?

For this allegation to have succeeded, the Complainant would have had to produce something to suggest that the Respondent knew of the existence of the Complainant or its trademark. There is no evidence of this in the Complaint. The Complainant is an Australian based producer of aromatherapy products with a business restricted to the Far East. The Respondent is a pornographer apparently based in Venezuela. Had the Complainant’s trademark been in the COCA-COLA/KODAK category, inferences could have been drawn, but the Complainant’s mark is not in that category, nor is it anywhere near it. Inferences adverse to the Respondent could also have been drawn if the Domain Name had been more specific to the Complainant or its field of activity (for example, <perfectpotionaromatherapy.com>). In truth, however, the Domain Name, while far from being descriptive of an adult services site, cannot be said to be inappropriate for such a site. Certainly, it is not as inappropriate as <caledonia-motors.com> (see below).

The fact that the Respondent has failed to respond and in so doing has failed to take the opportunity of providing an explanation for his choice of name might have made it possible for the Panel to draw adverse inferences as to the Respondent’s motives. In this case, however, the Panel does not believe that that would be just. The obligation is upon the Complainant to prove its case and the Complainant’s case on this point is, to say the least, weak.

Connection of the Domain Name to pornographic sites

Clearly the Domain Name is connected directly and indirectly to a variety of pornographic sites. The Complainant puts its case on this topic under the heading of bad faith as follows:

“The Respondent is using the disputed domain name at issue in order to divert Internet users to multiple pornographic websites. Such use is considered to be evidence that the domain name has been registered and used in bad faith according to paragraph 4(a)(iii) of the Policy.”

And

“The Respondent’s use of the website ‘www.perfectpotion.com’ to display ‘cyber erotica’ is offensive and derogatory to the Complainant and its customers who would be confused when accessing the Respondent’s website.”

In support of the first of those passages, the Complainant cites four cases namely Club Monaco Corporation v. Charles Gindi WIPO Case No. D2000-0936, Caledonia Motor Group Limited v. Amizon WIPO Case No. D2001-0860, Six Continents Hotels Inc v. Seweryn Nowak WIPO Case No. D2003-0022 and Autosales Incorporated v. Peter Carrington WIPO Case No. D2003-0678. The Complainant illustrates the point by quoting from Six Continents Hotels Inc v. Seweryn Nowak WIPO Case No. D2003-0022, namely:

“It is commonly understood, under WIPO case law, that, whatever the motivation of respondent, the diversion of the domain names to a pornographic site is itself certainly consistent with the finding that the domain name was registered and is being used in bad faith.”

In support of the second, the Complainant cites CCA Industries Inc. v. Dailey WIPO Case No. D2000-0148, Matchnet Plc v. MAC Trading WIPO Case No. D2000-0205 and Sunglass Hut Corporation v. Domain Administrator [not apparently connected with the Respondent] NAF Case No. FA0096691. The Complainant illustrates the point with a passage from Sunglass Hut Corporation v. Domain Administrator NAF Case No. FA0096691, namely:

“Respondent is not prohibited from creating and maintaining such a website, but it cannot be allowed to use the confusingly similar domain name in connection with such an endeavor.”

It will already have become clear from what is said earlier in this decision that the Panel’s basic view is that for a bad faith allegation to succeed under paragraph 4(a)(iii) of the Policy there has to be a bad faith intent on the part of the Respondent directed at the Complainant or its trademark. Since the Panel has already found that the Complainant has failed to prove that the Respondent registered the Domain Name or commenced use of the Domain Name with any knowledge of the existence of the Complainant or its trademark let alone a bad faith intention directed towards the Complainant or its trademark, the Complaint would appear doomed.

However, in light of the Complainant’s citations of the above decisions and in particular the passage quoted from Six Continents Hotels Inc v. Seweryn Nowak WIPO Case No. D2003-0022, which includes the expression “whatever the motivation of respondent”, the Panel has felt it appropriate to conduct a review of decisions covering cases where the domain names in issue are linked through to pornographic sites to see if there is a preponderance of ‘authority’ along these lines. Are panelists taking the view that where a domain name identical or confusingly similar to the complainant’s trademark is connected to a pornographic website, that fact in itself supports a finding of bad faith irrespective of the respondent’s motivation?

The review has thrown up the danger of selective citation. The first formulation quoted above from the Complaint was taken almost word for word from Autosales Incorporated v. Peter Carrington WIPO Case No. D2003-0678. In Autosales Incorporated v. Peter Carrington WIPO Case No. D2003-0678, an earlier passage in the decision (not reproduced in the Complaint) reads “Considering this, it is obvious that the Respondent was aware of the Complainant’s trademark and service mark when registering the mis-spelt domain name at issue. This fact is a clear indication that the domain name at issue has been registered and used in bad faith”. Accordingly, in that case the panelist was certainly not saying that mere connection to a pornographic site was itself evidence of bad faith, but merely that it was consistent with the earlier finding of bad faith.

The quotation from Six Continents Hotels Inc v. Seweryn Nowak WIPO Case No. D2003-0022, appears to suggest that where the linkage is to a pornographic site the respondent’s motivation is irrelevant. However, the passage in question was ‘lifted’ from Caledonia Motor Group Limited v. Amizon WIPO Case No. D2001-0860. In Caledonia Motor Group Limited v. Amizon WIPO Case No. D2001-0860, it formed part of a longer passage which paints a very different picture:

“The Complainant has also submitted that the use of the Domain Name to divert users to a pornographic website is evidence that the Respondent registered and is using the Domain Name in bad faith. The Panel is of the opinion that such conduct of the Respondent, given that the Domain Name itself has no pornographic or erotic connotations, evinces an intention to either attract the attention of the Complainant, disrupt the Complainant’s business or to damage the Complainant’s reputation. The Panel does not have enough evidence before it to determine which of these motivations was held by the Respondent. However, the Panel is satisfied that, whatever the motivation of the Respondent, the diversion of the Domain Name to a pornographic site and the subsequent random diversions to sites unrelated to the Respondent, are certainly consistent with the finding in the previous paragraph that the Domain Name was registered and is being used in bad faith.”

Accordingly, the expression “whatever the motivation of the respondent” has to be construed in a context where there were three possible motives, all of which involved targeting the complainant. Moreover, unlike the present case, that was a case where the domain name, <caledonia-motors.com>, was a singularly inappropriate domain name for use in association with a pornographic website.

The authorities cited in support of the second formulation also need to be looked at very carefully. The quoted passage from Sunglass Hut Corporation v. Domain Administrator NAF Case No. FA0096691, is selective. It immediately follows a passage in which the panelist finds that in selecting the domain name the respondent deliberately intended to trade off the back of the complainant’s goodwill.

In CCA Industries Inc. v. Dailey WIPO Case No. D2000-0148, the decision contains the following passage:

“Finally, the Complainant has placed substantial emphasis on the damage that it will suffer as a result of the linkage of its own trademark BIKINI ZONE …. to a pornographic website and indeed continues to do so despite having been requested otherwise by the Complainant. I am satisfied that this association with a pornographic website can itself constitute a bad faith.”

However, significantly, the panelist in that case had already held that the respondent had registered the domain name with the intention of selling it to the complainant at a profit.

In Matchnet Plc v. MAC Trading WIPO Case No. D2000-0205, the panelist had this to say:

“Finally the Administrative Panel accepts that the Respondent has intentionally attempted to attract for commercial gain Internet users to its website by using the domain name which is likely to cause confusion with the Complainant’s websites. The Respondent has used its website to furnish sexually explicit and pornographic material under the domain name and in the circumstances, given the likelihood of confusion, there is a prima facie case that this could tarnish the Complainant’s goodwill in its common law service mark.”

While on one view that passage arguably leaves open the question as to whether or not the respondent’s intentions in that case were directed at the complainant’s trademark, it is apparent from the rest of the decision that the panelist was in no doubt that the respondent’s intentions were mala fide on any basis.

Similarly, in Motorola, Inc. v. NewGate Internet, Inc. WIPO Case No. D2000-0079 (<talkabout.com>), a majority decision, there is a passage in it in which the majority seems to take the view that the connection of an infringing mark (i.e. the domain name) to an adult site is per se not a bona fide use.

“While (as the respondent correctly points out) many adult sex sites are perfectly legal and constitute bona fide offerings of goods or services, the use of somebody else’s trademark as a domain name (or even as a meta-tag) clearly does not constitute a bona fide offering of goods or services when the website owner has no registered or common law rights to the mark, since the only reason to use the trademark as a domain name or meta-tag is to attract customers who were not looking for an adult sex site, but were instead looking for the products or services associated with the trademark. Such use of a trademark can create customer confusion or dilution of the mark, which is precisely what trademark laws are meant to prevent. And actions that create, or tend to create, violations of the law can hardly be considered to be bona fide.”

However, in most cases where there are such references, it is usually in the context of a case where a bad faith intent on the part of the respondent is pretty clear and/or the fame of the complainant’s trademark is such that the respondent’s selection of it for a domain name cannot have been coincidental.

For example, in America Online Inc. v. Viper WIPO Case No. D2000-1198, a case involving the domain name, <aolgirls.com>, there is a sentence reading “The fact that the site operated by respondent is pornographic in nature has been found in prior decisions to be evidence of bad faith”. The Panelist goes on “The use of AOL as part of a domain name offering pornographic products and services certainly tarnishes complainant’s existing marks, which is also evidence of bad faith”. In America Online Inc. v. East Coast Exotics WIPO Case No. D2001-0661 (<aolwomen.com>) the following passage appears:

“Registration of a domain name incorporating another’s mark and use of that domain name for a pornographic website has been widely held to be registration and use in bad faith. Several decisions under the Policy have held that use of another’s mark in a domain name for a pornographic website reflects bad faith. See, e.g., Arizona Board of Regents for and on behalf of Arizona State University v. Value Holdings, Inc.WIPO Case No. D2001-0445; Nokia Corp. v. Nokiagirls.com aka IBCC WIPO Case No. D2000-0102; National Football League Properties Inc. v. One Sex Entertainment Co.WIPO Case No. D2000-0118.”

As to those citations, in the case Arizona Board of Regents for and on behalf of Arizona State University v. Value Holdings, Inc. WIPO Case No. D2001-0445, the panelists were in no doubt that the respondents’ activities were directly targeted at the complainants’ trademarks; in National Football League the situation is not quite as clear.

Having conducted the review, the Panel is satisfied that the vast majority of decisions in this area are consistent in calling for evidence of a deliberate intention on the part of the respondent to ride on the back of the complainant’s goodwill/trademark and that on this point the linking of the domain name to a pornographic site is no different to the use of the domain name in connection with any other service offering. That is not to say, of course, that, depending upon the circumstances and the particular domain name in question, such a linkage may not be evidence of bad faith (see, for example, Caledonia Motor Group Limited v. Amizon WIPO Case No. D2001-0860).

The Panel was somewhat surprised to see one of his own previous decisions, Club Monaco Corporation v. Charles Gindi WIPO Case No. D2000-0936, cited by the Complainant in support of its argument on this topic. It was with no little relief that the Panel found that the view he holds today is consistent with the view he expressed in that decision:

“The Panel finds that prior to the Respondent’s receipt of any communication from the Complainant, the Domain Name was indeed pointing to a pornographic website, namely his own website at ‘www.twinkshow.com’. Is the linkage of a domain name to a pornographic website bad faith use of that domain name in circumstances where the domain name is the name of somebody else and to which domain name the Respondent has no rights or legitimate interests.

“If the Respondent’s choice of the domain name was wholly random and made without knowledge of the Complainant’s name/trademark, then it would be difficult to make a finding of bad faith.

“In this case, however, as already observed, the Domain Name is complex and specific and the Panel finds it impossible to believe that the Respondent did not have the Complainant in mind when registering the Domain Name.”

In consequence, the Panel is satisfied that the linking of domain names to pornographic websites can constitute bona fide offerings of services for the purposes of paragraph 4(c)(i) of the Policy and can only support a finding of bad faith for the purposes of paragraph 4(b)(iv) of the Policy if it is shown to the satisfaction of the Panel that the Respondent had the Complainant or its trademark in mind when selecting the domain name for that purpose.

There being no evidence before the Panel to suggest that the Respondent had ever heard of the Complainant or its trademark when the Respondent adopted the Domain Name for its website, the Panel finds that the Complainant has failed to prove that the Respondent has no legitimate interests in respect of the Domain Name within the meaning of paragraph 4(a)(ii) of the Policy and has failed to prove that the Domain Name was registered and is being used in bad faith within the meaning of paragraph 4(a)(iii).

7. Decision

For all the foregoing reasons, the Complaint is denied.

Tony Willoughby
Sole Panelist

Dated: November 6, 2004