ADMINISTRATIVE PANEL DECISION

Under the ICANN Uniform Domain Name Dispute Resolution Policy


Complainant:

Bodyrotic

Respondent: Adult Service Guide P/L
Case Number: AF-0844
Contested Domain Name:

bodyrotic.com bodyroticmassage.com

Panel Member: David Perkins

1. Parties and Contested Domain Name

The Complainant is Bodyrotic of P O Box 44, North Sydney, New South Wales 2060, Australia. The Respondent is ASG Adult Service Guide of P O Box 896 Crows Nest, New South Wales 2065, Australia. The contested domain names are BODYROTIC.COM and BODYROTICMASSAGE.COM.

2. Procedural history

The electronic version of the Complaint form was filed on-line through eResolution's website on May 287, 20001. The hard copy of the Complaint form was received on June 4, 2001. Payment was received on May 28, 2001.

Upon receiving all the required information, eResolution's clerk proceeded to:

confirm the identity of the Registrar for the contested Domain Names
verify the Registrar's Whois Database and confirm all the required contact information for Respondent
verify if the contested Domain Names resolved to an active web page and

verify if the Complaint was administratively complaint.

This inquiry lead the Clerk of eResolution to the following conclusions: the Registrar Tucows Inc, the Whois Database contains all the required contact information, the contested Domain Name resolves to an active Web page and the Complaint is administratively compliant.

An email was sent to the Registrar by eResolution Clerk's Office to obtain confirmation and a copy of the Registration Agreement on May 28, 2001. The requested information was received June 1, 2001.

The Clerk then proceeded to send a copy of the Complaint Form and the required Cover Sheet in accordance with paragraph 2(a) of the ICANN's Rules for Uniform Domain Name Dispute Resolution Policy. The Clerk's Office fulfilled all its responsibilities under paragraph 2(a) in forwarding the Complaint to the Respondent, notifying the Complainant, the concerned Registrar and ICANN on June 6, 2001. This date is the official commencement date of the administrative proceeding.

Only the emails tot he postmaster@bodyroticmassage.com was returned "undeliverable". All the faxes failed.

The complaint, official notification and all the annexes were sent via registered mail with proof of service, to the Respondent. According tot he |Canada Post tracking system, all were delivered.

On June 20, 2001, the Respondent submitted, via eResolution internet site, his response. The signed version of the response was received on July 5, 2001.

On July 5, 2001, the Clerk's Office contacted Mr David Perkins, and requested that he acts as panellist in this case.

On July 10, 2001, Mr David Perkins, accepted to act as panellist in this case and filed the necessary Declaration of Independent and Impartiality.

On July 10, 2001, the Clerk's Office forwarded a user name and a password to Mr David Perkins, allowing him to access the Complaint Form, the Response Form, and the evidence through eResolution's Automated Docket Management System.

On July 10, 2001, the parties were notified that Mr David Perkins had been appointed and that a decision was to be, save exceptional circumstances, handed down on July 24, 2001.

3. Factual Backgrounds

The contested Domain name BODYROTIC.COM was registered on January 8, 2001 and the contested Domain Name BODYROTICMASSAGE.COM was registered on April 19, 2001.

The Complainant provides an erotic massage service to men, women and couples. Its trading name, BODYROTIC, is a Business Name registered under No. BN97753793 on August 17, 2000 by the Director General of the New South Wales Department of Fair Trading. The principal place of trading is stated on the Certificate of Registration of Business Name to be 2D Garfield Street, Five Dock, New South Wales 2046 and the proprietor to be GIOXLE PTY LTD.

The Complainant uses the Domain Name BODYROTIC.COM.AU.

The Respondent is a web design company that specialises in adult websites in Sydney. The Respondent states that it currently looks after 40 Domain Names, of which at least 10 are in the erotic massage industry. The Respondent has exhibited a Certificate of Registration of Business Name BN97818551 registered on June 12, 2001 by the Director General of the New South Wales Department of Fair Trading for the business name BODYROTIC MASSAGE ONLINE. The principal place of business is the Respondent's said address at P O Box 896, Crows Nest, New South Wales 2065 and the Proprietor is stated to be CRAIG ANTON SCHOTEL, the Respondent's prime representative in this dispute.

4. Parties' Contentions

4.1  Copy or Similarity
The Complainant's case is that:
the Domain Name BODYROTIC.COM registered on January 8, 2001 is an exact copy of the Complainant's BODYROTIC business name registered on August 17, 2000 and
The Domain Name BODYROTICMASSAGE.com registered on April 19, 2001 is also substantively an exact copy of its business name with the addition only of the suffix massage, which is descriptive of the service which the Complainant provides.

The Respondent's case is that it is, as stated in paragraph 3 above, a web design company which specialises in adult websites in Sydney.

4.2  Illegitimacy
The Complainant's case is that:
The Respondent has no interest in ownership, management, operation, partnership or any other form of business relation with the Complainant, Bodyrotic and
The Respondent operates an erotic massage establishment called ESP, which competes directly with the Complainant's business. The Domain Name EROTICMASSAGE.COM.AU resolves to the ESP website.

The Respondent states that the New South Wales government requires it to have the same registered Business Name as the domain name under which it does business. The Respondent's Business Name BODYROTIC MASSAGE ONLINE was registered on June 12, 2001 and the contested Domain Names BODYROTIC.COM and BODYROTICMASSAGE.COM were registered respectively on January 8, 2001 and April 19, 2001.

4.3   Bad Faith
The Complainant states that the two contested Domain Names redirect the user to the Respondent's own website EROTICMASSAGE.COM.AU for its ESP erotic massage establishment, which competes directly with the Complainant's business, BODYROTIC.
 
Annexed to the Complaint are screenshots dated May 26, 2001 which demonstrate that the disputed Domain Names direct the user to www.eroticmassage.com.au, which resolves to the website of ESP, the erotic massage establishment which competes directly with the Complainant's business.

The Respondent's case is as follows:  
It's use of the disputed Domain Names is no more than consistent with use of its BODYROTIC MASSAGE ONLINE Business Name registered on June 12, 2001 and its web design business, which includes massage sites.
The websites to which the disputed Domain Names resolve include disclaimers. [From the Panel's own research, the sites to which BODYROTIC.COM and BODYROTICMASSAGE.COM resolve both contain the following:

"Disclaimer. This site is not associated in any way with Bodyrotic Australia you want  them try bodyrotic.com.au".

The BODYROTIC.COM.AU Domain Name resolves to the Complainant's BODYROTIC website which describes itself as:

"Sydney's premier erotic massage venue"

It is not correct, as the Complainant asserts, that the disputed Domain Names have been hijacked to direct customers to a competing massage parlour which is on the other side of the city called ESP. The Respondent states that ESPMASSAGE.COM directs customers to the Complainant's BODYROTIC website. The Response states:

This is wrong but the owners of ESP understand this company's tactics and have sought legal action banning him from defaming their business and entering their premises as he has done on many occasions causing all this trouble. This seems to be the only way he can try and harm these people, by stirring up a domain name war and unfortunately we have been dragged into defending ourselves for something that he seems to be doing to us.

Finally, the Respondent says the Complainant has approached them asking if the 2 disputed Domain Names can be purchased. When the Respondent offered to sell them for Australian Dollars $1,000.00, the Complainant counter-offered to sell the Respondent the ESPMASSAGE.COM Domain Name for Australian Dollars $10,000.00. The Respondent thereupon withdrew its offer to sell the 2 disputed Domain Names. Annexed to the Response is an email dated April 19, 2001 from Sophie Webb of the Complainant [using the email address BODYROTIC.COM.AU] to the Respondent. This email reads:

"The Management

Craige, Belle,

Aus$1000 - dream on !!!

I checked the site stats for www.bodyrotic.com http://www.bodyrotic.com> not even 50 accesses per day (27 yesterday, 37 the day before, 31 the day before that - 384 visits total) and you are asking $1000 - hahaha - who are you kidding!?!!

You should see the traffic www.espmassage,.com <http://www.espmassage.com> is sending us! hmmm - I wonder whether we should be considering putting it up for AU$10,000+

I bet you are kicking yourself that you missed registering the obvious one! c'est la vie!

Sophie

Sophie Webb

Internet Administrator

                        BODYROTIC - Sydneys premier erotic massage venue.

5. Discussions and Findings

5.1 The Policy, paragraph 4a, requires that to succeed a Complainant must establish each of the following:
the Respondent's domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights and
the Respondent has no rights or legitimate interests in respect of the domain name and  
the Respondent's domain name has been registered and is being used in bad faith.

5.2  Identical or Confusingly Similar  
Does the Complainant have rights in BODYROTIC as a trademark or service mark?
The Complainant does not appear to have any registered trademark or service mark rights in that name.
This is not, however, necessary under paragraph 4a(i) of the Policy. It is sufficient if the Complainant can satisfy the Administrative Panel that it has rights in a common law trademark or sufficient rights to ground an action for passing-off or the like. [Case D2000-0235 Jeanette Winterson .v. Mark Hogarth: Case D2000-0210 Julia Roberts .v. Russell Boyd: and Case D2000-0299 Monty & Pat Roberts .v. Bill Keith
Is the registration on August 17, 2000 of BODYROTIC as a Business Name in New South Wales and use of the domain name BODYROITC.COM.AU sufficient to constitute such unregistered trademark / service mark rights? In the Julia Roberts case the Panel found that the name JULIA ROBERTS had sufficient secondary association with the actress of that name that common law trademark rights did exist under United States trademark law. In the Monty & Pat Roberts case, the Panel held that on the evidence the Complainant, Monty Roberts, had acquired a distinctive name in connection with the service of horse training sufficient to constitute a service mark for the purposes of paragraph 4a(i) of the Policy. 
But, in this case there is simply no evidence that the Complainant has acquired a reputation such that BODYROTIC has become sufficiently distinctive to constitute trademark rights. Registration of Business Name with the New South Wales Department of Fair Trading does not, the Panel believes, constitute equivalent to trademark / service mark rights in the name. In the cases where a Complainant has successfully claimed trademark rights under the Policy in an unregistered mark, this has been supported by significant evidence of distinctiveness and reputation. The Complaint contains no such evidence here. Quite simply, this Complaint must fail for lack of any such evidence in support in this administrative proceeding.

5.3  But, had the Complainant been able to establish trademark rights in BODYROTIC, this Panel would have no hesitation in finding both the disputed Domain Names identical or confusingly similar such that the Complaint would have satisfied the requirement of paragraph 4a(i) of the Policy.

5.4  Rights or Legitimate Interests  
It would appear that the Complainant's use of BODYROTIC predated that of the Respondent. The Complainant's BODYROTIC Business Name was registered in August 2000. By comparison, the Respondent's BODYROTIC MASSAGE ONLINE Business Name was not registered until June 12, 2001 after the Respondent was notified of this Dispute on June 6, 2001.

5.5  Further, there is nothing in the Response which constitutes circumstances demonstrating rights or legitimate interests under paragraph 4c of the Policy. On the contrary, it would seem [see paragraphs 5.7 and 5.8 below] that the disputed Domain Names were registered and are being used to interfere with the Complainant's business. It would, however, seem that such practices are not restricted to the Respondent and that the Complainant is similarly involved in the same sort of business sabotage [see again paragraphs 5.7 and 5.8 below].

5.6  But, had the Complainant been able to satisfy the first hurdle of paragraph 4a(i) of the Policy - which it has not - this Panel considers that the Respondent would have failed to establish rights or legitimate interests in either of the disputed Domain Names. The Complaint would, therefore, have satisfied this requirement of the Policy.

5.7  Registered and Used in Bad Faith  
There is obviously lively competition between the parties to this Administrative Proceeding, who both operate erotic massage services, the Complainant under the BODYROTIC name at premises in Sydney and the Respondent through its ESP studio for men located in another party of Sydney. On the face of it, the evidence would tend to indicate circumstances of the sort in paragraph 4b of the Policy demonstrating registration and use in bad faith by the Respondent. The use of disclaimers is, in the Panel's opinion, insufficient of itself to negative use in bad faith.

5.8  But, it would also appear that this is not all one way. For example, the Complainant has registered the domain name ESPMASSAGE.COM in the knowledge of the Respondent's ESP massage studio business in Sydney. The level of the name war between the parties is graphically illustrated by the Complainant's email of April 19, 2001, the text of which is set out in paragraph 4.3 above.

As to the issue of bad faith, there is it seems to the Panel probably little to chose between the parties. The issue is, however, academic, given the Complainant's failure to establish trademark / service marks as required by paragraph 4a(i) of the Policy. Consequently, the Panel makes no finding with regard to paragraph 4a(iii) of the Policy. The mandatory administrative proceeding requirements of paragraph 4 of the Policy do not prevent either party from submitting this dispute to a court of competent jurisdiction in New South Wales, so that this potential course of action remains available to the Complainant.

6. Conclusion

For the foregoing reasons the Panel concludes that the Complainant has failed to meet the requirements of paragraph 4a(i) of the Policy and, consequently, the Complaint fails.

7. Signature

(s) David Perkins
July 24, 2001.
Presiding Panelist