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 Respondentís 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. Partiesí Contentions
Complainant makes the following assertions:
1. Respondentís <adamevecom.com> domain name is confusingly similar to Complainantís 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.
The Respondent did not reply to the Complainantís 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 Respondentís 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. Respondentís domain name <adamevecom.com> is virtually identical to Complainantís 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 Complainantís HOTMAIL mark.
Accordingly, the Panel finds that the domain name <adamevecom.com> is confusingly similar to Complainantís 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 Complainantís 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>. Respondentís 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 Respondentís reply above, he acknowledges illegitimate use and appears quite aware that he is using someone elseís mark, intending to profit from it one way or another. Many Panels have held that demanding compensation greater than registrantís 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 Respondentís 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 Complainantís 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 Complainantís marks "as a trademark search on the date of registration of the Domain Names would have revealed Complainantís 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.
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.
Date: August 14, 2003