Luxotic.com

The timeline behind luxotic.com

Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.

Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.

ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Juslink Home Aust Pty Ltd v. Craig Walker, C.Walker Case No. D2025-1101 1. The Parties The Complainant is Juslink Home Aust Pty Ltd, Australia, internally represented. The Respondent is Craig Walker, C.Walker, Australia, self-represented. 2. The Domain Name and Registrar The disputed domain name <luxotic.com> is registered with GoDaddy.com, LLC (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 18, 2025. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, 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. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 20, 2025. In accordance with the Rules, paragraph 5, the due date for Response was April 9, 2025. The Respondent did not submit any response by the due date. Accordingly, the Center notified the Respondent’s default on April 10, 2025. The Respondent filed a Response later, on April 15, 2025. The Center appointed Matthew Kennedy as the sole panelist in this matter on April 16, 2025. 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. On April 17, 2025, the Complainant made an unsolicited supplemental filing. page 2 4. Factual Background The Parties are both shareholders in a company named Luxotic Pty Ltd (Administrator Appointed). The Respondent is a former director of the company. A voluntary administrator of the company was appointed on November 4, 2024. The Complainant is the current holder of Australian trademark registration number 1833748 for LUXOTIC, registered on February 22, 2021 (application filed on March 23, 2017), specifying cushions in class 20 and bed linen and other goods in class 24. The Complainant acquired the trademark registration by assignment from Luxotic Pty Ltd (Administrator Appointed) and was registered as the subsequent owner of the trademark on February 13, 2025. The Complainant filed Australian trademark application number 2524397 for LUXOTIC on February 21, 2025, specifying wallpaper and other goods in class 27. That application is pending. According to the Parties, the Complainant holds the domain name <luxoticaustralia.com.au> but it does not yet resolve to an active website. The Respondent is a director and shareholder of Luxotic Living Pty Ltd, incorporated on April 7, 2024. Luxotic Living Pty Ltd registered the Australian business names “Luxotic Living” and “Luxotic Wallpaper” on January 20, 2025. Luxotic Living Pty Ltd also filed New Zealand trademark application number 1283851 for LUXOTIC on January 27, 2025, specifying cushions, bed linen, wallpaper, and other goods in classes 20, 24, and 27. That application is pending. The disputed domain name was created on December 17, 2014. According to the evidence on record, there was an exchange of emails in October 2017 between the Complainant’s director and the Respondent. The Complainant’s signature block showed three business names, including “Juslink Australia” and “Luxotic Australia”. The Respondent’s signature block showed the name “Luxotic” and his email address used the domain name <luxotic.com.au>. The Respondent advised that the LUXOTIC trademark registration had been “granted” in Australia but that the disputed domain name had not been obtained, because it was registered at the time by a third party who had been offering to transfer it since March 2016 for between USD 5,000 and 10,000. The disputed domain name currently resolves to a website that offers home textiles for bedrooms and living rooms, and wallpaper. At some point prior to the filing of the Complaint, the website was titled “Luxotic Living”. At the time of this Decision, the title shows “Premiersuite” above the disputed domain name. On February 12, 2025, the Complainant sent a cease-and-desist letter to the Respondent. 5. Parties’ Contentions A. Complainant The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name. Notably, the Complainant contends that: The disputed domain name is identical to the LUXOTIC trademark. - Besides holding Australian trademark registrations, the Complainant has also been assigned the LUXOTIC trademark in the United States, Europe, and China through a Deed of Assignment signed by the liquidator of Luxotic Pty Ltd. The transfer process is currently underway. - The disputed domain name incorporates the LUXOTIC mark in its entirety, which creates an overwhelming likelihood of confusion among consumers. - LUXOTIC has been widely used in the home textiles industry in Australia and had been used in retail channels in the United States, establishing strong consumer recognition. Consumers are likely to assume that the disputed domain name is associated with the Complainant, when it is not. page 3 The Respondent has no rights or legitimate interests in respect of the disputed domain name. - The Respondent does not own any registered trademarks for LUXOTIC. - The Respondent registered the company Luxotic Living Pty Ltd in bad faith while Luxotic Pty Ltd was still operating. After Luxotic Pty Ltd was placed into voluntary administration, the Respondent continued trading with the LUXOTIC brand as “Luxotic Living Pty Ltd”, without written authorization from Luxotic Pty Ltd (In Liquidation). A recently-formed company does not create retroactive rights to the trademark or the disputed domain name. - The Respondent is making a misleading commercial use of the disputed domain name to sell home textile products that directly overlap with the Complainant’s trademarked products. - There is no evidence that the Respondent had any independent brand recognition. - The disputed domain name was originally associated with Luxotic Pty Ltd before it entered liquidation. However, the Respondent claims to have personally owned the disputed domain name, contradicting prior statements. - The WhoIs records show that the disputed domain name registration was updated in December 2024 during the liquidation of Luxotic Pty Ltd, strongly suggesting an improper transfer to the Respondent. The disputed domain name has been registered and is being used in bad faith. - The Respondent had insider knowledge that the trademark could potentially be transferred out of Luxotic Pty Ltd after it entered voluntary administration in December 2024. The disputed domain name registration was updated in the WhoIs database on December 9, 2024, which could indicate that it was transferred to the Respondent in anticipation of trademark changes. The Respondent told the Complainant that the disputed domain name was registered by Luxotic Pty Ltd but he told the liquidators of that company that the disputed domain name was registered by him personally. - The disputed domain name is actively being used to sell LUXOTIC-branded home textile products, which the Respondent has absolutely no right to use. It is causing significant confusion among customers when trying to find the LUXOTIC trademark owner’s website associated with the domain name <luxoticaustralia.com.au>. By using the disputed domain name, the Respondent intentionally attempted to attract for commercial gain, Internet users to the Respondent’s 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 or of a product on the Respondent’s website. - The majority of the products sold on the website associated with the disputed domain name actually belong to Luxotic Pty Ltd, as the Respondent and his co-director both worked for that company and many of the designs were created prior to 2024, before Luxotic Living Pty Ltd was registered. B. Respondent The Respondent contends that the Complainant has not satisfied the elements required under the Policy for a transfer of the disputed domain name. As regards the first element: - The Complainant only acquired the LUXOTIC trademark on February 14, 2025 and did so in full knowledge that the Respondent owned the disputed domain name. The Respondent has allowed several Australian companies that he partially owned to use the disputed domain name since it was acquired, including Luxotic Pty Ltd (In Liquidation), LPL Online Pty Limited (In Liquidation) and Luxotic Living Pty Ltd, which has been using the disputed domain name since prior to the Complainant’s acquisition of the trademark for goods in classes 20 and 24. The majority of the product lines listed on the website associated with the disputed domain name is wallpaper, which falls under class 27, and is not covered by the Complainant’s trademark registration. Luxotic Living Pty Ltd registered the business name “Luxotic Wallpaper” prior to the Complainant’s acquisition of the trademark. - Luxotic Living Pty Ltd’s website sells to customers in Australia and New Zealand only. The Complainant’s trademark does not cover New Zealand. Luxotic Living Pty Ltd has a trademark application pending in New Zealand. This trademark application was filed before the Complainant acquired its page 4 trademark in other markets. - To avoid association with LUXOTIC goods in classes 20 and 24, the brand name LUXOTIC does not appear on the website for even wallpaper products which are not covered by the trademark. - Under Australian law, the use of a domain name that includes a trademark name does not constitute trademark use, as discussed by the High Court of Australia in Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd [2023] HCA 8 at [23]. As regards the second element: - The Respondent is a shareholder of Luxotic Living Pty Ltd. That company was given consent by the director of Luxotic Pty Ltd, the prior owner of the trademark, to use the word “Luxotic” in its company name, which was registered with consent and not in bad faith. - Luxotic Living Pty Ltd. was assigned to run the website associated with the domain name <luxotic.com.au> (the “.au” domain name). Luxotic Pty Ltd had not operated the website in connection with that .au domain name since April 2020. To further distance the business from the website associated with the “.au” domain name, Luxotic Living Pty Ltd utilised the disputed domain name, which had never been used by either LPL Online Pty Ltd or Luxotic Pty Ltd (apart from a redirection to the “.au” domain name). - The “.au” domain name was registered by the Respondent personally and purchased through his personal domain name account. The “.au” domain name has remained registered in the Respondent’s personal domain name account and has never been purchased by Luxotic Pty Ltd (In Liquidation). The Respondent used his personal credit card to purchase this domain name; the transaction predated the establishment of any bank account for the company and the company did not reimburse the Respondent for the purchase price later. - The disputed domain name was similarly acquired personally by the Respondent and has been in his personal domain name account since it was acquired several years ago. It has not been purchased from the Respondent by any company. As regards the third element, - The Complainant keeps conflating other domain names with the disputed domain name. The Complainant’s own evidence shows that the disputed domain name was held by a third party who offered it for resale from March 2016 in the range of USD 5,000 to 10,000. - The Complainant’s website associated with <luxoticaustralia.com.au> is not operational and has never been captured in the Internet Archive, so in effect it does not exist. The Complainant’s claim that customers will confuse the disputed domain name with that domain name is simply false. The Complainant itself has never produced any products under the trademark LUXOTIC. All products sold on the Respondent’s website associated with the disputed domain name have been created by its designers. Luxotic Living Pty Ltd asserts ownership of these designs and holds the worldwide rights to all photographic images of products on its website. 6. Discussion and Findings 6.1. Late Filing of the Response and Complainant’s Unsolicited Supplemental Filing The Respondent filed its Response after the due date on the day before the Panel was appointed. He gave no reason for the delay. The Complainant made an unsolicited supplemental filing on the day after the Panel was appointed, opposing the admission of the late Response. The Complainant noted that the Response was submitted 5 days late and 2 working days prior to public holidays in Australia. In the interim, the Respondent had made changes to the website associated with the disputed domain name. The Complainant made a supplemental filing only in the event the Panel chose to admit the Response. page 5 The Panel has a discretion to admit the late Response and the Complainant’s unsolicited supplemental filing as part of its general powers under paragraphs 10 and 12 of the Rules (a) to conduct the administrative proceeding in such a manner as it considers appropriate in accordance with the Policy and Rules; (b) to ensure that each Party is given a fair opportunity to present its case; and (c) to ensure that the administrative proceeding takes place with due expedition. In the present case, the Panel notes that the late Response contains multiple factual assertions regarding issues in dispute. The Respondent is self-represented. Admission of the late Response will not be unfair to either Party. The Panel has already taken note of changes to the Respondent’s website as compared to the screenshot annexed to the Complaint. Admission of the late Response will not substantially delay the proceedings either. The Complainant’s unsolicited supplemental filing was made to address new factual assertions and arguments raised in the Response. The filing annexes a chronology of events and contains a claim-by-claim rebuttal of the Response. While many of the arguments are self-evident from the documents already on the record, the filing provides additional information regarding the ownership, management, and external administration of Luxotic Pty Ltd, which is useful. Given the findings below, admission of this filing by the Complainant will not be unfair to either Party. Accordingly, the Panel decides to admit both the late Response and the Complainant’s unsolicited supplemental filing and will take them into consideration according to their relevance, materiality, and weight. 6.2. Substantive Issues Paragraph 4(a) of the Policy provides that the complainant must prove each of the following elements: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) the respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0 ”), section 1.7. The Complainant has shown registered rights in respect of the LUXOTIC trademark. The jurisdiction in which the trademark is registered, and the goods and services with respect to which it is registered, are not considered relevant to the first element of the Policy. See WIPO Overview 3.0 , section 1.2.1. The entirety of the mark is reproduced within the disputed domain name. The only additional element is a generic Top-Level Domain (“gTLD”) extension (“.com”) which, as a standard requirement of domain name registration may be disregarded in the assessment of identity for the purposes of the Policy. Accordingly, the disputed domain name is identical to the mark for the purposes of the Policy. See WIPO Overview 3.0 , sections 1.7 and 1.11.1. Therefore, the Panel finds the first element of the Policy has been established. B. Rights or Legitimate Interests, Bad Faith, and the Scope of the Policy The disputed domain name is used in connection with a website that offers home textiles for bedrooms and living rooms, and wallpaper, and was formerly titled “Luxotic Living”. The Respondent is a director and page 6 shareholder of a company named “Luxotic Living Pty Ltd”, which holds Australian business name registrations for “Luxotic Living” and “Luxotic Wallpaper”. None of those company and business names corresponds to the disputed domain name, which is simply composed of “Luxotic” and a gTLD extension. The Respondent holds no current trademark registrations; its pending trademark application, without more, confers no rights or legitimate interests for the purposes of the second element of the Policy. Further, on January 31, 2025, the administrator of Luxotic Pty Ltd (Administrator Appointed) sent a letter to the Respondent instructing him that all licenses with respect to use of the LUXOTIC trademark were to be immediately terminated. As regards bad faith, the third element of the UDRP contains conjunctive requirements that require a complainant to show both that a domain name has been registered in bad faith and also that it has been subsequently used in bad faith. Panels assess bad faith registration as at the time when the current registrant acquired the disputed domain name. In the present case, it is unclear when the Respondent acquired the disputed domain name and whether he did so before or after the registration of the LUXOTIC trademark. The trademark was registered in February 2021. The Registrar’s public WhoIs database does not show when the Respondent acquired the disputed domain name and there is no historical WhoIs data on the record of this proceeding. 1 The Complainant queries whether the Respondent acquired the disputed domain name on December 9, 2024, when the WhoIs registration was updated. The Respondent replies that he acquired the disputed domain name “several years ago”. The Panel has consulted the Internet archive, which is publicly available, and notes that the disputed domain name still resolved to a landing page advertising it for sale as recently as November 14, 2020, but that its use had changed to a website for Luxotic bedroom, living, and outdoor products by January 27, 2022. 2 It may be assumed that this change in use was the result of a transfer of the disputed domain name to someone within the orbit of the Luxotic home textile business. This transfer did not necessarily occur prior to the registration of the LUXOTIC trademark in February 2021. Nevertheless, the Panel recalls that, even where a disputed domain name is registered before a trademark, bad faith registration may be found where a respondent’s intent in registering the domain name was to unfairly capitalize on nascent, as yet unregistered, trademark rights. See WIPO Overview, section 3.8.2. In the present case, even if the trademark LUXOTIC was not yet registered when the Respondent acquired the disputed domain name, it is very likely that the Respondent was aware of the pending trademark application because he had been instrumental in filing it, as confirmed by his October 19, 2017-dated email. Further, it makes no difference that the Complainant was not registered as the subsequent owner of the trademark registration until 2025 because that trademark registration had been in force since 2021. Bad faith domain name registration is assessed as at the time that the current registrant acquired the disputed domain name. The difficulty for the Complainant is that the Respondent was a director of the trademark applicant and owner, i.e., Luxotic Pty Ltd. If the Respondent obtained the disputed domain name in his personal name rather than in the company’s name while he was its director, that raises questions regarding the company’s internal management and the legal duties of a company director. The Parties’ correspondence from October 2017 did not specifically address ownership of the trademark or the disputed domain name. On the other hand, if the disputed domain name was first registered in the name of Luxotic Pty Ltd, and later transferred to the Respondent after he ceased to be a director of that company in 2024, it is not clear whether and how he was still participating in the management of the company at that time. 1 The Complainant requested historical WhoIs records and referred to an update in December 2024. 2 The Panel notes its general powers articulated inter alia in paragraphs 10 and 12 of the Rules and has searched for archived Web pages in the Internet Archive (“www.archive.org”), which is a matter of public record, to clarify the date range when the Respondent acquired the disputed domain name. See WIPO Overview 3.0, section 4.8. page 7 Clearly, this is not a typical cybersquatting dispute. The Panel recalls that it is not a court of general jurisdiction, and that the Policy is not designed to adjudicate all disputes of any kind that relate in any way to domain names. Rather, the Policy establishes a streamlined, inexpensive administrative dispute resolution procedure intended only for the relatively narrow class of cases of “abusive cybersquatting”. The UDRP is not an appropriate procedure to adjudicate a trademark and business dispute such as this one between two former joint venture partners, where the Panel does not have the benefit of witness testimony, disclosure of documents, or the other appropriate instruments that are typically available to assist a court to resolve a dispute between the Parties. Therefore, the Panel has decided to deny the Complaint, not on the merits, but on the broader ground that the case regarding the disputed domain name is part of a wider, more complex trademark and business dispute between the Parties that exceeds the scope of the UDRP. The wider dispute can be addressed by a court of competent jurisdiction. See WIPO Overview 3.0 , section 4.14.6. 7. Decision For the foregoing reasons, the Complaint is denied. /Matthew Kennedy/ Matthew Kennedy Sole Panelist Date: April 29, 2025

Source of record: WIPO . Reproduced for research; WIPO is the authoritative source.