WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

PHE, Inc. v. Martin Cossette

Case No. D2003-0517

 

1. The Parties

The Complainant is PHE, Inc. of Hillsborough, North Carolina, United States of America ("the Complainant"), represented by Foley Hoag, LLP of United States of America.

The Respondent is Martin Cossette of Quebec, Canada ("the Respondent").

 

2. The Domain Name and Registrar

The disputed domain name <nastyadameve.com> ("the Domain Name") is registered with Network Solutions, Inc. Registrar ("the Registrar").

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 28, 2003. On June 30, 2003, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on July 8, 2003. On July 10, 2003, 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 for the administrative, billing, and technical contact. The Center verified that the Complaint together with the amendment to 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 Paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 11, 2003. In accordance with Paragraph 5(a) of the Rules, the due date for Response was July 31, 2003. The Response was filed with the Center on July 31, 2003.

The Center appointed Tony Willoughby as the sole panelist in this matter on August 12, 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 Paragraph 7 of the Rules.

 

4. Factual Background

The Complainant is a company incorporated and having its principal place of business in North Carolina, USA. For over 30 years, it has traded under the name "Adam & Eve" in the field of "adult-orientated products".

From the material exhibited to the Complaint, it is clearly a business name which is well known in the United States and the Panel has no reason to doubt the Complainantís claim that "Adam & Eve is the nationís largest adult-orientated mail order company."

The Complainant is the proprietor of several US trade mark registrations for the mark ADAM & EVE dating back to the 1970s, and for a wide variety of goods and services in its field of operation. More recently, it has acquired registrations for the mark ADAM & EVE and for the mark ADAMEVE.COM for computer related services. The specification of goods for the ADAMEVE.COM registration (first use claimed since December 1996) reads as follows:

"Computerized online ordering services and catalogue services in the fields of books, audio visual works, computer products, clothing, scents and other products dealing with human sexuality or that are of primarily an erotic, sensual or sexual nature."

The Complainant is the registrant of a large number of domain names, the vast majority of which commence with "adam", "adameve", "adam-eve", etc. Its principal website is located at "www.adameve.com".

The Respondent is identified in the Response as part of A & E Concept Multimedia, "a 2-person company registered in 1999, for the sole purpose of operating an amateur adult website." The website features "hard core adult activities". It is a subscription website, has only 50 members and provides the Respondent with a gross annual revenue of approximately US$8,000.

The Respondent registered the Domain Name on September 19, 2002.

 

5. Partiesí Contentions

A. Complainant

The Complainant contends that the Domain Name is identical or confusingly similar to the Complainantís ADAM & EVE trade mark.

The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. In support of that contention, the Complainant points to what it claims to be its exclusive rights in the name "Adam and Eve" as part of an Internet domain name. It points to its trade mark and domain name registrations and the use that it has made of them over the last thirty years. It states that the Respondent is not a licensee of the Complainant. It points to the fact that the Respondent registered the Domain Name six years after the Complainant registered its own domain name <adameve.com> and thirty years after the Complainant started using the trade mark ADAM & EVE. The Complainant asserts that none of the elements of Paragraph 4(c) of the Policy are applicable here.

Finally, the Complainant contends that the Respondent registered the Domain Name in bad faith and is using it in bad faith. In support, it points to the matters referred to above. It also points to the fact that the Respondentís home page at "www.nastyadameve.com" uses the Complainantís trade mark ADAM & EVE.

The Complainant asserts that the Respondentís website "operates as an illegal road block or detour that improperly intercepts customers who are seeking Complainantís goods and services and diverts them to Respondentís website, thereby undercutting the goodwill associated with Complainantís marks and services."

The Complainant contends that the Respondent must have been aware of the Complainant and the nature of the Complainantís business when it registered the Domain Name. The Complainant then goes on to argue constructive knowledge, but it is not necessary to reproduce that argument here, the Respondent having admitted actual knowledge of the Complainant at the time it registered the Domain Name.

The Complainant goes on to assert that the Domain Name is not an obvious choice of name for the Respondentís website "apart from its obvious association with Complainantís long established and famous business."

The Complainant also draws attention to the fact that the source code of the Respondentís website contains the Complainantís trade mark and constitutes trade mark infringement and demonstrates the Respondentís bad faith.

B. Respondent

The Respondent denies that the Domain Name is identical to any of the Complainantís trade marks and asserts that the "nasty" prefix is sufficient to distinguish the Domain Name from all the Complainantís variations of its ADAM & EVE trade mark. Accordingly, the Domain Name is not confusingly similar to the Complainantís trade marks.

The Respondent states that its founders used the names "Adam" and "Eve" as stage names before they started performing via the Internet. They refer to the biblical history of Adam and Eve as the first couple on earth and say that it was reasonable for them to incorporate their stage names as part of a domain name identifying themselves as the "first amateur couple on the Internet".

The Respondent points to its company name and says that the "A & E" is an abbreviation for "Adam and Eve".

The Respondent claims that it does have legitimate interests in respect of the Domain Name. The Respondent contends that the Complainant is not in a position to stop everyone from using the names "Adam" and "Eve" in all contexts and in all situations simply because the Complainant is the proprietor of its trade mark registrations.

The Respondent denies that its site is a roadblock of the kind described by the Complainant. It asserts that the major search engines such as Google and Yahoo throw up the Complainantís site long before any reference to the Respondentís site appears. Searches for "Adameve" do not refer to the Respondent in the first 200 links whereas the Complainantís site is referred to frequently and at the top end.

The Respondent asserts that there is no cross-over in website linkage between the Respondentís site and the Complainantís site and the various referral sites. The Respondent points out that unlike the Complainantís site, the Respondentís site offers no products or services, simply a monthly subscription to the "Members Area".

The Respondent acknowledges that it was aware of the Complainant when it registered the Domain Name simply because when it sought to register its favoured name, <adameve.com>, it found that it had been taken by the Complainant. It introduced the "nasty" prefix precisely in order to distinguish its website from that of the Complainant.

The Response concludes

"In short Ö

In other words, here we have a multi-billion-dollar company selling adult products and services that doesnít like the fact that a 2-person, 50 members, $8000/year, non-competing Amateur couple calls themselves ĎAdam & Eveí and uses a domain name that describes them. It just doesnít make sense.

In light of this Response, I hope the Center will see the Complaint as abusive, unnecessary and unjustified and will rule in our favour.

Settlement

Even if I think the Complaint is unreasonable, and to show the Complainant as well as the Center that we are not acting in bad faith, on the contrary, we can offer to solve this issue by putting a link to the Complainantís website on our Home/Warning page (http://www.nastyadameve.com/index.htm) to redirect any misguided surfers. This link could have the form: "If you are trying to reach the ĎAdam & Eve Adult Toysí, click here.í, or something to that effect. We could also use a banner of the Complainantís choice to increase visibility."

The Panel interprets the reference to the Complaint being "abusive" as a claim of reverse domain name hijacking.

 

6. Discussion and Findings

According to Paragraph 4(a) of the Policy, the Complainant must prove that

(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;

(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) The Domain Name has been registered in bad faith and is being used in bad faith.

If the Complaint fails, the Panel has to have regard to Paragraph 15(e) of the Rules and in particular the following sentence namely:

"If after considering the submissions the Panel finds that the Complaint was brought in bad faith, for example in an attempt at reverse domain name hijacking or was brought primarily to harass the domain name holder, the Panel shall declare in its Decision that the Complaint was brought in bad faith and constitutes an abuse of the Administrative Proceeding."

Reverse Domain Name Hijacking is defined in Paragraph 1 of the Rules as meaning "using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name."

A. Identical or Confusingly Similar

It is not in dispute that the Complainant has registered trade mark rights in the marks ADAM & EVE and ADAMEVE.COM. The Domain Name is identical to the latter of those two marks, save for the "nasty" prefix. The prefix clearly prevents the Domain Name from being identical to the Complainantís trade marks, but does it stop the Domain Name from being confusingly similar to the Complainantís trade marks?

It is for the Complainant to prove confusing similarity. In the absence of evidence of actual confusion, it is incumbent upon the Complainant to show how confusion is likely to occur. The mere fact that the use of the Domain Name may constitute trade mark infringement under US trade mark law is not of itself enough. Sometimes the similarity is such that the likelihood of confusion is obvious or otherwise easy for the Panel to infer (e.g. mis-spellings of distinctive trade marks or where the respondent has obviously targeted the complainant and intended that confusion should result). But this is not such a case.

The Complaint contains numerous assertions to the effect that the Domain Name is confusingly similar to the Complainantís trade marks and that the Domain Name will operate to divert Internet users away from the Complainant and its website. However, the Complaint contains no suggestion as to how this confusion/diversion will occur.

The Complainant appears to take the view that the likelihood of confusion is obvious. It is not obvious to the Panel. The Domain Name is not a domain name that any of the Complainantís customers or would be customers are likely to enter by mistake. While the Respondent admits to 2000 to 3000 hits per day, from the evidence before the Panel, they are much more likely to have stemmed from someone searching for "nasty" than anyone searching for "adam and eve" or "adameve".

While "nasty" is an epithet eminently suitable for a hard core website such as the Respondentís, it is far from anything that the Complainant claims to stand for. The Complaint contains the following paragraph:

"Complainant has developed strict and very high standards for the types of material it will sell Ė for example, it does not permit the sale of materials depicting forced sexual encounters - and has engaged the services of numerous sex therapists to review its products and ensure that they promote a healthy interest in sexual interaction rather than appeal to the prurient interest."

The Panel regards it as most unlikely that anyone coming across the Domain Name and being aware of the Complainant and its products/services will believe the Domain Name to have anything to do with the Complainant. Certainly, the Complainant has come forward with nothing to show that its customers or would be customers are likely to associate it with anything labeled as "nasty".

In the result, the Complainant has failed to prove to the satisfaction of the Panel that the Domain Name is confusingly similar to a trade mark in which the Complainant has rights.

B. Rights or Legitimate Interests

In light of the foregoing finding, it is unnecessary for the Panel to consider this aspect of the Complaint.

C. Registered and Used in Bad Faith

Again, in light of the foregoing finding, it is unnecessary for the Panel to consider this aspect of the Complaint.

 

7. Decision

The Complaint is dismissed.

While the Complaint has failed, the Panel has not found it an easy case to resolve. The Complaint was a reasonable complaint to file. Therefore, the Panel does not find reverse domain name hijacking. It was not an abusive complaint.

 


 

Tony Willoughby
Sole Panelist

Dated: August 26, 2003