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WIPO Arbitration and Mediation Center
PHE, Inc. v. Xiaofeng Wei
Case No. DTV2003-0006
1. The Parties
The Complainant is PHE, Inc. of Hillsborough, NC, United States of America, represented by Foley Hoag, LLP of Boston, MA, United States of America.
The Respondent is Xiaofeng Wei of Brooklyn, NY, United States of America.
2. The Domain Name and Registrar
The disputed domain name <adameve.tv> is registered with .tv Corporation International.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 27, 2003. On November 28, 2003, the Center transmitted by email to .tv Corporation International a request for registrar verification in connection with the domain name at issue. On December 5, 2003, .tv Corporation International 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 for <adameve.tv>. 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 December 8, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was December 28, 2003. No Response was received by the due date and a Notification of Respondent Default was sent by the Center on January 12, 2004. A late Response was filed with the Center on January 13, 2004.
The Center appointed Roderick M. Thompson as the Sole Panelist in this matter on February 5, 2004. 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 registered owner of the domain name <adameve.com>, registered on May 19, 1996, as well as the trademark registrations for ADAMEVE.COM, ADAM & EVE and many related marks for computerized on-line ordering primarily for products dealing with human sexuality. In addition, Complainant owns many domain names incorporating variations on its ADAM & EVE trademarks, including common typographical errors.
Respondent is the registered owner of <adameve.tv>, the domain name in dispute, which is registered with .tv Corporation International.
5. Parties’ Contentions
Complainant alleges it has exclusive rights to the use of ADAMEVE or ADAMANDEVE in a domain name by virtue of the facts that it has been and is doing business under the name ADAM & EVE for more than thirty years, and it has registered many trademarks and domain names incorporating the ADAM & EVE marks.
In contrast, Complainant asserts that Respondent has no rights or legitimate interests in <adameve.tv> because Respondent is (1) neither an agent nor a licensee of Complainant, (2) Respondent registered <adameve.tv> more than four years after Complainant registered <adameve.com>, and approximately thirty years after Complainant began using the Adam & Eve name in commerce, and (3) Respondent’s domain name is identical or confusingly similar to Complainant’s registered trademarks.
Complainant also alleges that Respondent cannot demonstrate any legitimate rights to the domain name. Respondent may not show that, before any notice of the dispute, it used the domain name in connection with a bona fide offering of goods or services. In fact, the domain name has not been used for any bona fide offering of goods or service at all; the domain name is simply parked, and resolves only to a generic notice provided by the domain registrar that "adameve.tv has been registered" and listing other available names.
Respondent claims that the names "Adam & Eve" belong to the world. He explains that he registered <adameve.tv> with the intent to establish an on-line dating service using video communication. But because of the September 11 terrorist attacks and the recent troubles related to on-line companies generally, he was unable to secure funding while living in New York. He has been living in China recently and may use the on- line dating service there in the future.
6. Discussion and Findings
As a threshold issue, the Panel elects to exercise its discretion and to accept
the late-filed response, which was apparently sent one day after the Center
served a notification of default on Respondent. Adhering to the principle that
each party should be "given a fair opportunity to present its case"
(Rule 10(b)), the Panel has considered Respondent’s email of January 13, 2004,
and will treat it as the Response.
The panel is guided by paragraph 4(a) of the Policy, which directs that the Complainant must prove each of the following:
(i) that the domain name registered by Respondent is identical or confusingly similar to a trademark in which the Complainant has rights;
(ii) that the Respondent has no legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
To prevail, Complainant must establish each of the foregoing elements, which are separately addressed below.
A. Identical or Confusingly Similar
Complainant’s Adam & Eve business was established in 1970, and it has many ADAM & EVE related trademark registrations. It first began using the <adameve.com> domain name in May 1996, and subsequently registered many other domain names based on variations and misspellings of that name. Complaint has established that by the time Respondent registered the <adameve.tv> domain name in August 2000, Complainant’s Adam & Eve business and website had become one of the largest retailers of adult-oriented goods and services in the world. Complainant has also shown to the Panel’s satisfaction that there could be a confusing similarity between Respondent’s website and Complainant’s trademarks. The addition of a top-level domain (TLD) such as ".tv" to a trademark does not materially lessen the likelihood of confusion where the domain name is otherwise identical to the trademark, especially where, as here, there is a registered trademark that includes another TLD (i.e., <adameve.com>). Respondent’s non use of <adameve.tv> cannot alleviate the possibility of confusion. While it is possible that in the future Respondent’s planned used as an on-line dating service could eventually lessen the likelihood of confusion, that issue is not before the Panel.
B. Rights or Legitimate Interests
The Response asserts only that Respondent has made preliminary plans for future
use of the domain name for an on-line dating service website. Respondent acknowledges
that he has made no actual use of the site and does not describe any concrete
steps or "demonstrable preparation." He needs more time "for
financial support." Nor does Respondent claim that he is known by the domain
name or is making any fair use of Respondent’s trademarks. Complainant has shown
that Respondent has no legitimate interests in the domain name at this time.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires the Complainant to show that the
domain name has been registered and used in bad faith. A finding of both bad
faith registration and bad faith use is required.
(1) Actual or Constructive Knowledge at Time of Registration
Complainant alleges that Respondent registered the domain name in bad faith
because it is "inconceivable" that Respondent was not aware of Complainant
and the nature of Complainant’s business at the time it registered the domain
name in August of 2000. According to Complainant, because it began
using <adameve.com> in 1996, and has since registered many variants thereof
including misspellings, Respondent most likely knew of Complainant’s mark. But
Complainant, of course, did not coin the names "Adam & Eve." The
Panel therefore disagrees with Complainant that its "ADAM & EVE"
marks are so arbitrary or fanciful (see pp. 7 and 16) that Respondent must have
been inspired by Complainant’s trademarks in selecting his domain name. A reference
to the original biblical couple, "Adam & Eve," in connection with
the selection of a domain name for an on-line dating service is certainly not
implausible. (See "www.adammeeteve.com" (Christian Singles on-line
Alternatively, Complainant argues that Respondent had constructive notice of
Complainant’s mark because it is a registered trademark. Respondent agreed in
his registration for <adameve.tv> that the registration would not violate
the rights of others and that it was his responsibility to determine whether
the registration violated the rights of others. Therefore, Complainant argues
that Respondent could have and should have found the trademark registrations
on-line at "www.uspto.gov." The Panel is not convinced that a general
obligation to conduct trademark searches for use of well- known public domain
names can be so implied from the standard form. In any event, mere knowledge
of a trademark registration does not constitute bad faith where, as here, the
term has another well-known association in the public domain. Complainant cannot
acquire a monopoly on all use of the biblical characters Adam & Eve,
whose names are well-known and thoroughly ingrained in countless ways in our
Complainant has listed at least one hundred domain names it already owns, including
dozens of variations of "Adam & Eve." There can be no
argument, therefore, that Respondent obtained the registration primarily for
the purpose of preventing Complainant from using its trademarks in a corresponding
domain name. Complainant was already doing so and controls dozens of such sites.
In sum, Complainant appears to have strong trademark rights in its field of
use—sexual paraphernalia, sex toys and related on-line products and services.
But there is no evidence that Respondent intended, at the time of registration
or any time since, to make use of <adameve.tv> in that area or otherwise
to trade on the goodwill of Complainant’s marks. The only evidence before the
panel is that Respondent had somewhat vague plans to use the domain name for
a dating service using videoconferencing technology. There has been an insufficient
showing of bad faith registration.
(2) Non-use of the Domain Name, Under the Circumstances, is Not Bad Faith Use
Complainant points out that Respondent has, as yet, made no use of the domain
name, "merely parking" it instead. This situation differs from the
decisions cited by Respondent where the trademark in question (e.g., Yahoo!
or WWF) had no other well-known association in the mind of the public. No matter
how strong Respondent’s rights may be in its fields of use, merely "parking"
<adameve.tv> for possible future use in connection with an on-line dating
service to exploit Adam & Eve’s well-known biblical association does not
by itself support an inference of bad faith.
(3) Conclusion Regarding Showing of Bad Faith Use and Registration
Complainant argues that Respondent must have registered the <adameve.tv>
domain name with actual and/or constructive knowledge that it was identical
to Complainant’s registered Adam & Eve marks and to Complainant’s registered
Internet domain names. Complainant presents no direct evidence to support these
assertions. Instead it asks the Panel to assume based on the strength of Complainant’s
marks that Respondent acted in bad faith when he obtained the registration almost
4 years ago despite the fact that during the intervening time frame, he apparently
has made no use of the domain name whatsoever. Given Respondent’s stated intent
to make another use—in the field of dating services where "Adam & Eve"
may have a descriptive connotation—the Panel finds that Complainant has failed
to carry its burden of proving bad faith use.
For all the foregoing reasons, the Complaint is denied.
Roderick M. Thompson
Dated: February 20, 2004