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PHE, Inc. v. Bill McCall

WIPO Case No. D2003-0516

Outcome
Transfer
Domain names
adamevecom.com
Complainant
PHE, Inc. (United States of America)
Complainant's counsel
Foley Hoag, LLP
Respondent
Bill McCall (United States of America)
Panelist
Sandra Franklin
Registrar
Go Daddy Software
Decided
14 Aug 2003
Response
The respondent did not reply
Language
English

Source: WIPO Arbitration and Mediation Center. Official copy: https://www.wipo.int/amc/en/domains/decisions/html/2003/d2003-0516.html

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

PHE, Inc. v. Bill McCall

Case No. D2003-0516

1. The Parties

The Complainant is PHE, Inc., C/O John L. Myers, Hillsborough, North Carolina, United States of America, represented by Foley Hoag, LLP, United States of America.

The Respondent is Bill McCall, Crofton, Maryland, United States of America.

2. The Domain Name and Registrar

The disputed domain name, <adamevecom.com>, is registered with Go Daddy Software.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 28, 2003. On July 2, 2003, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name at issue. On July 2, 2003, Go Daddy Software 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 July 8, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was July 28, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 31, 2003.

The Center appointed Sandra Franklin as the sole panelist in this matter on August 7, 2003. 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

Complainant is the owner of numerous registered trademarks for ADAMEVE.COM and ADAM & EVE and variants thereof, as well as numerous related domain names, with first use dating back to 1971. The registrations are in several classes but generally cover the sale of goods of a sexual nature.

5. Parties’ Contentions

A. Complainant

Complainant makes the following assertions:

1. Respondent’s <adamevecom.com> domain name is confusingly similar to Complainant’s marks.

2. Respondent does not have any rights or legitimate interests in the <adamevecom.com> domain name.

3. Respondent registered and used the <adamevecom.com> domain name in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."

In view of Respondent’s failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2) Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

Complainant

has clearly

established

rights in

the marks

ADAMEVE.COM

and ADAM&EVE

via evidence

of many

long-standing

registered

trademarks

and domain

names. Complainant

also states

that it

has spent

millions

in marketing

worldwide,

and has

multi-millions

in worldwide

sales under

its marks.

Respondent’s

domain name

<adamevecom.com>

is virtually

identical

to Complainant’s

mark but

for the

repetition

of the top-level

domain name

".com".

This is

classic

"typo-squatting",

capitalizing

on user

error when

seeking

a well-known

site. This

type of

cybersquatting

has been

declared

confusingly

similar

many times

in previous

National

Arbitration

Forum cases,

as well

as previous

WIPO cases.

Indeed,

this precedent

has already

been cited

against

the Respondent

herein in

another

case, Bank

of America

Corporation

v. Bill

McCall,

National

Arbitration

Forum Case

No. FA0211000135012,

wherein

Respondent

had registered

the domain

<www.bankofamericacom.com>.

See also

Microsoft

Corporation

v. Global

Net 2000,

Inc,

WIPO

Case No.

D2000-0554,

declaring

<hotmailcom.com>

to be identical

to Complainant’s

HOTMAIL

mark.

Accordingly, the Panel finds that the domain name <adamevecom.com> is confusingly similar to Complainant’s marks and Policy paragraph 4(a)(i) has been satisfied.

B. Rights or Legitimate Interests

Respondent

did not

submit a

Response

to the Panel

in this

proceeding.

Since Respondent

has not

provided

any circumstances

showing

that it

had rights

or legitimate

interests

in the disputed

domain names,

the Panel

will accept

as true

all allegations

and inferences

as set forth

by Complainant

in the Complaint.

See G.D.

Searle v.

Martin Mktg,

National

Arbitration

Forum Case

No. FA 118277,

holding

that where

Complainant

has asserted

that Respondent

has no rights

or legitimate

interests

with respect

to the domain

name it

is incumbent

on Respondent

to come

forward

with concrete

evidence

rebutting

this assertion

because

this information

is "uniquely

within the

knowledge

and control

of the respondent".

See also

America

Online,

Inc. v.

AOL International,

WIPO

Case No.

D2000-0654,

finding

no rights

or legitimate

interests

where Respondents

failed to

respond.

The WHOIS contact information does not indicate that Respondent is commonly known by <adamevecom.com>; therefore Policy ¶ 4(c)(ii) does not apply to Respondent.

Respondent

has used

the domain

name <adamevecom.com>

to redirect

traffic

to a "www.deepthroatsex.com"

site. Numerous

UDRP Panels

have held

that such

use of a

domain to

redirect

traffic

as a result

of typographical

error does

not create

legitimate

rights to

a domain.

See, for

example,

e-Duction,

Inc. v.

John Zuccarini,

d/b/a The

Cupcake

Party &

Cupcake

Movies,

WIPO

Case No.

D2000-1369.

Respondent

is not using

the disputed

domain name

in connection

with a bona

fide offering

of goods

or services

or for a

legitimate

noncommercial

or fair

use. In

fact, Respondent

was purposely

capitalizing

on the trade

value of

Complainant’s

well-established

and heavily

marketed

trademarks

to sell

competing

goods. See

Peter

Frampton

v. Frampton

Enterprises,

Inc.,

WIPO

Case No.

D2002-0141,

which held

that the

use of a

domain name

which incorporates

a registered

mark in

order to

sell products

in the same

class as

mark holder

inherently

and intentionally

seeks to

exploit

user confusion,

and therefore

cannot constitute

bona fide

use. Respondent

may not

be offering

goods of

any kind

at present,

as Complainant

states that

after it

sent a cease

and desist

letter,

only a "Forbidden"

notice was

posted at

"www.adamevecom.com".

The Panel finds that Policy ¶ 4(c)(i) and Policy ¶ (4)(c)(iii) do not apply to Respondent, and that Policy ¶ 4(a)(ii) has been satisfied.

C. Registered and Used in Bad Faith

The Panel

again notes

Bank

of America

Corporation

v. Bill

McCall,

National

Arbitration

Forum Case

No. FA0211000135012,

wherein

this same

Respondent

had registered

the domain

name <bankofamericacom.com>.

Respondent’s

demonstrated

propensity

to engage

in deliberate

typo-squatting

is an indication

of bad faith.

See Policy

paragraph

4(b)(ii)

and A.B.C.

Carpet Co.,

Inc. v.

Tom Boltz

and abccarpetandhome.org,

WIPO

Case No.

D2001-0531.

When Complainant sent a cease and desist letter, Respondent replied:

"I will cease and desist from redirecting adamevecom.com to deepthroatsex.com. If you want the domain name compensate me for it or bring it to arbitration."

Subsequent

offers to

compensate

Respondent

for its

out-of-pocket

costs went

unanswered.

In Respondent’s

reply above,

he acknowledges

illegitimate

use and

appears

quite aware

that he

is using

someone

else’s mark,

intending

to profit

from it

one way

or another.

Many Panels

have held

that demanding

compensation

greater

than registrant’s

out-of-pocket

costs associated

with registering

the domain

name is

prima

facie

evidence

of bad faith.

See Policy

paragraph

(4)(c),

and Trygg-Hansa

AB v. Arild

Rosenberg,

WIPO

Case No.

D2003-0171,

where the

Panel inferred

bad faith

"from

the Respondent’s

overall

behavior

and from

the fact

that he

turned down

without

further

negotiation

an offer

for compensation

of the costs

in exchange

for transfer

of the domain

name, which

he himself

originally

invited

to be made".

Further,

this Panel

infers that

Respondent,

being in

the same

business

as Complainant,

was well

aware of

Complainant’s

long-standing

well-known

marks in

that business

when it

selected

the infringing

and purposely

misleading

domain name

<adamevecom.com>.

See

Pfizer

Inc. v.

United Pharmacy

Ltd,

WIPO

Case No.

D2001-0446,

finding

constructive

knowledge

of Complainant’s

marks "as

a trademark

search on

the date

of registration

of the Domain

Names would

have revealed

Complainant’s

trademark

registrations

in the United

States".

See also

Young

Genius Software

AB v. MWD,

James Vargas,

WIPO

Case No.

D2000-0591,

holding

that the

representation

of lack

of infringement

in the registration

agreement

imposes

a concomitant

duty to

verify.

Accordingly, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <adamevecom.com> be transferred to the Complainant.

Sandra Franklin

Sole Panelist

Date: August 14, 2003

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