WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
PHE, Inc. v. Namesecure Inc. / eOnLineBuying / James King
Case No. D2012-0109
1. The Parties
Complainant is PHE, Inc. of Hillsborough, North Carolina, United States of America, represented internally.
Respondents are Namesecure Inc. of Herndon, Virginia, United States of America, and eOnLineBuying / James King of Golden, Colorado, United States of America, respectively.
2. The Domain Name and Registrar
The disputed domain name <adamandeve.us.com> (“Domain Name”) is registered with CentralNic.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 20, 2012. On January 23, 2012, the Center transmitted by email to CentralNic and Namesecure a request for registrar verification in connection with the Domain Name. On January 23, 2012 and February 1, 2012, NameSecure LLC and CentralNic transmitted by email to the Center verification responses disclosing registrant and contact details which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on February 2, 2012, providing the registrant and contact information disclosed by CentralNic and NameSecure LLC and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on February 7, 2012.
The Center verified that the Complaint and amended Complaint satisfied the formal requirements of the CentralNic Dispute Resolution Policy (the “Policy”) and the Rules for CentralNic Dispute Resolution Policy (the “Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondents of the Complaint, and the proceedings commenced on February 7, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was February 27, 2012. Respondents did not submit any response. Accordingly, the Center notified Respondents’ default on March 7, 2012.
The Center appointed John R. Keys, Jr. as the sole panelist in this matter on March 19, 2012. 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 parent company of Adam & Eve, the United States’ largest marketer of adult products.
Complainant has been using the trademark ADAM & EVE since 1972, and has obtained a number of registrations from the United States Patent and Trademark Office (USPTO) for trademarks using the designation ADAM & EVE, or formatives of that mark, including the following:
ADAM & EVE, Registration No. 1,123,685, registered August 7, 1979;
ADAMEVE.COM, Registration No. 2,415,898, registered December 26, 2000; and
ADAM & EVE, Registration No. 2,608,920, registered August 20, 2002.
Each of Complainant’s trademark registrations pertains to catalogs or ordering services for purchase of various adult-oriented products relating to human sexuality.
Complainant conducts business through a website using the domain names <adameve.com> and <adamandeve.com>, which attract some one million visitors per month. Complainant registered both domain names in 1996.
The Domain Name, <adamandeve.us.com>, was registered on December 16, 2010. The Domain Name directs to a website advertising various adult sex products.
5. Parties’ Contentions
Complainant contends that the Domain Name is identical or confusingly similar to trademarks in which Complainant has rights by reason of its several trademark registrations on the Principal Register of the USPTO.
Complainant contends that for purposes of comparison, the extension “.us.com” of the Domain Name must be ignored and that, in this case, the third-level portion of the Domain Name is identical to one or more of Complainant’s trademarks.
Complainant contends that Respondents have no rights or legitimate interests in the Domain Name for the following reasons:
Respondents have not been commonly known by the Domain Name;
Respondents, by their own admission, are not sponsored by or affiliated with Complainant in any way;
Complainant has not authorized Respondents to use Complainant’s trademark in a domain name; and
Respondents are using the Domain Name to redirect Internet users to a website featuring adult products sold by a website, “www.funlove.com”, that competes with Complainant, which is not a bona fide offering of goods or services under section 4(c)(i) of the Policy.
Complainant contends that the Domain Name was registered and is being used in bad faith in that:
Respondents, in registering the Domain Name, clearly must have been aware of Complainant’s well-known brand name and products, which suggests opportunistic bad faith;
Respondents [eOnlineBuying and James King] used a privacy service to hide their identity; and
Respondents are using the Domain Name to redirect Internet users seeking Complainant’s website to a competing website in order to profit wrongfully from Complainant’s well-established trademark, which constitutes bad faith use and registration under paragraph 4(b)(iv) of the Policy.
Respondents did not reply to Complainant’s contentions.
6. Discussion and Findings
Respondents, having failed to respond to the Complaint, the Panel considers whether Respondents have been properly notified of the pendency of the administrative proceeding against them. Based on the case record, the Panel finds that the Center has discharged its responsibility to notify Respondents of the Complaint and administrative proceeding and has in fact achieved actual notice to Respondents. See Rules, paragraphs 2 and 4.
Where Respondent does not respond to the Complaint, “in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint.” Rules, paragraph 5(e). No exceptional circumstances are shown to exist, and the Panel therefore proceeds based upon the Complaint and the annexes to the Complaint.
Under Paragraph 4(a) of the Policy, Complainant must prove that each of the following three elements is present in order to obtain the relief requested:
The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
[Respondent has] no rights or legitimate interests in respect of the Domain Name; and
The Domain Name has been registered or is being used in bad faith.
The Panel considers each of the three elements.
A. Identical or Confusingly Similar
The Panel finds that Complainant possesses legal rights in its ADAM & EVE trademark by reason of some 40 years of use in commerce in the United States of America and registration of the trademark on the Principal Register of the USPTO. United Way of America v. Alex Zingaus, NAF Claim No. 1036202; Janus International Holding Co. v. Scott Rademacher, WIPO Case No. D2002-0201; and Allstate Insurance Company v. Domain Supermarket, WIPO Case No. D2009-1175.
The Domain Name is further identical or confusingly similar to Complainant’s ADAM & EVE and ADAMEVE.COM trademarks. The domain name extension “.us.com” is disregarded for purposes of comparison, because it is a required element of a domain name and does not sufficiently distinguish the domain name from a trademark. Club Monaco Corp. v. clubmonacoonline, WIPO Case No. D2011-1186 (<clubmonacoonline.com> confusingly similar to CLUB MONACO); Gardine Surveys, Ltd. v. Domain Finance, Ltd.NAF Claim No. 0153545; and Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429.
The third-level portion of the Domain Name, “adamandeve,” which provides the sole basis for comparison with Complainant’s trademarks, is confusingly similar to Complainant’s ADAM & EVE trademark. The two differ only in the Domain Name’s use of the word “and” instead of the ampersand symbol in Complainant’s trademark. As a general principle, the addition of a generic term to a trademark is not sufficient to avoid confusing similarity between the two. See Hoffmann-La Roche Inc. v. Wei-Chun Hsia, WIPO Case No. D2008-0923; Revlon Consumer Products Corporation v. Brandy Farris, WIPO Case No. D2003-0291; Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 (“[T]he fact that a domain name wholly incorporates a complainant’s registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy despite the addition of other words to such marks.”); Nokia Corporation v. Nokiagirls.com a.k.a. IBCC, WIPO Case No. D2000-0102. Here, the Domain Name incorporates Complainant’s trademark in its entirety. It adds the word “and,” but that word is generic and nondistinctive and has the same conjunctive meaning as the ampersand for which it substitutes. The Domain Name therefore is essentially indistinguishable from Complainant’s ADAM & EVE trademark and thus, in the view of the Panel, likely confusing to the Internet user. Similarly, the use of the common generic word “and” in the Domain Name does not significantly distinguish the Domain Name from Complainant’s ADAMEVE.COM trademark and is confusingly similar to that trademark as well.
Complainant has established that the Domain Name is confusingly similar to trademarks in which Complainant has rights, satisfying the first element of its case.
B.Rights or Legitimate Interests
The allegations of the Complaint and the supporting exhibits to the Complaint are sufficient to establish a prima facie case that Respondents do not have rights or legitimate interests in respect of the Domain Name. Complainant denies that it is in any way affiliated with Respondents, that it has authorized Respondents to use its trademarks or that, Respondents are commonly known by the name “Adam & Eve.” United Way of America v. Alex Zingaus, NAF Claim No. 1036202.
Complainant further alleges that Respondents are not using the Domain Name in connection with a bona fide offering of goods or services. This too appears to be the case, especially in the absence of any controverting evidence from Respondents. On the basis of the record before the Panel, Respondents are using the Domain Name to divert Internet users from Complainant’s website to a website that sells goods that compete with those of Complainant, either for Respondent’s own benefit or to harm Complainant’s business. In either case, this does not constitute a bona fide offering of goods or services that would create rights or legitimate interests in the Domain Name for Respondents. Stanworth Development Limited v. Domains by Proxy, Inc. / Michael Rand, WIPO Case No. D2009-1104; Robert Bosch GmbH v. Asia Ventures, Inc., WIPO Case No. D2005-0946; see also Abbott Laboratories v. United Worldwide Express Co., Ltd., WIPO Case No. D2004-0088 (ordering transfer of domain name where respondent offered complainant’s goods and those of its competitors); and The Dow Chemical Company and Flexible Products Company v. Domain Discreet/Commercial Thermal Solutions Inc., WIPO Case No. D2008-0910 (and cases cited therein).
Respondents have not come forward with evidence to refute Complainant’s prima facie case that Respondents have no rights or legitimate interests in the Domain Name, and that case is thus established. Complainant has proven the second element of its case.
C. Registered or Used in Bad Faith
The Policy requires that Complainant prove that the Domain Name has been registered or is being used in bad faith. The Panel notes that the Policy varies from the Uniform Dispute Resolution Policy (UDRP), approved and adopted by ICANN, in that the Policy uses the disjunctive “or” rather than the conjunctive “and” so that Complainant may demonstrate the requisite bad faith by proving either bad faith registration or bad faith use of the Domain Name.
Under the Policy, paragraph 4(b)(iv), the following circumstance is one that constitutes evidence of registration and use of the Domain Name in bad faith:
By using the Domain Name, you [Respondent] have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.
Those circumstances exist here. Respondents are using a Domain Name that is clearly based on, and, as the Panel has found, is confusingly similar to one or more of Complainant’s trademarks, as discussed in paragraph 6.A above, as well as to Complainant’s own domain names, to divert Internet users to a website offering for sale goods that plainly compete with the products Complainant offers on its website. See Bell Sports, Inc. v. Neosport, WIPO Case No. D2011-0755. The Panel considers it a fair and reasonable inference, especially in the absence of evidence to the contrary, that Respondents’ conduct in this regard is both intentional and for the purpose of Respondents’ own commercial gain. Respondents are thus creating and exploiting the Internet user’s confusion as to the source, affiliation, sponsorship or endorsement of Respondents’ web site or other on-line location. See Littleford Day Inc. v. NRM Equipment Company, WIPO Case No. D2004-0201 (use of disputed domain name that automatically redirects users to a website that sells goods similar to complainant’s goods evidences bad faith); and Six Continents Hotels, Inc. v. Ramada Inn, WIPO Case No. D2003-0658 (disputed domain name that redirects to competing hotel chain website evidences bad faith).
The Panel concludes that Complainant has sufficiently demonstrated bad faith use of the Domain Name. While Complainant has alleged other grounds in support of its contention that Respondents have acted in bad faith, the Panel need not reach those alternative issues under the circumstances. Complainant has established the third and final element of its case.
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, <adamandeve.us.com>, be transferred to Complainant.
John R. Keys, Jr.
Dated: April 2, 2012