GENEVA — WIPO mediators have decided to strip ownership from the domain name holder of XPole.com, ruling U.K.-based Vertical Leisure Ltd. should be transferred the name because it owns the "XPole" trademark in several countries.
Vertical Leisure has manufactured, marketed and distributed a dance pole kit called XPole since 2004, generating revenue in excess of $1.8 million by the beginning of 2010.
The company also owns several trademark registrations associated with the names XPole and X-Pole in countries around the world, including the U.K., Northern Ireland, Australia, the People’s Republic of China, the E.U. and the U.S. It also owns some domains using the Xpole name including XPole.co.uk and X-Pole.com.au
But the one domain it hadn't acquired was XPole.com.
Vertical Leisure started to look closely at XPole.com after company execs noticed that the site redirected to another domain, DancePoleKit.com, which offers for sale various adult and erotic products, including a variety of dance poles that compete with the company's products.
Herts, U.K.-based Vertical Leisure, as a result, took their case to the Internet's chief arbiter of domain names, the World Intellectual Property Organization, or WIPO, seeking a transfer of the domain name.
The owner of XPole.com, WIPO said in its ruling made public Monday, is Jeongyong (Gregory) Cho of Seoul, who doesn't own any trademark registrations for the XPole names.
WIPO arbitrators in their ruling against Cho said that in September he offered to sell XPole.com to Vertical Leisure for $23,500, a move that represented bad faith because he had apparently purchased it earlier in 2010.
"[WIPO] finds that this offer constitutes a circumstance indicating that [Cho] registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to [Vertical Leisure] or to a competitor ..., the mediators said. "In the panel’s view, this behavior evidences bad faith."
Mediators also said that the "only credible explanation for the current use of the domain name is to redirect Internet users to the DancePoleKit.com website is that [Cho] is seeking to take advantage of the similarity between the domain name and complainant’s website to draw Internet users to that site for commercial advantage."
The panel also asked whether the domain name is identical or confusingly similar to the trademark.
"The answer is that it is," mediators said. "The domain name consists, first of all, of the entirety of the trademark. The domain name is identical to complainant’s XPole trademark when the .com TLD is discounted."
