ADMINISTRATIVE PANEL DECISION
Under the ICANN Uniform Domain Name Dispute Resolution
Under the ICANN Uniform Domain Name Dispute Resolution Policy
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
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 firstname.lastname@example.org 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
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.
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.
The Respondent's case is as
"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:
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!
Internet AdministratorBODYROTIC - 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
or Confusingly Similar
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.
or Legitimate Interests
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.
and Used 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.
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.