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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

PHE, Inc. v. Chris Calnek

Case No. D2006-1612

 

1. The Parties

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

The Respondent is Chris Calnek, Brooklyn, New York, United States of America, represented by Stephen H. Sturgeon, Esquire, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name <adamandeve.mobi> is registered with Moniker Online Services, LLC.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 20, 2006. On December 21, 2006, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the domain name at issue. On December 22, 2006, Moniker Online Services, LLC 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 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 December 29, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was January 19, 2007. The Response was filed with the Center on January 19, 2007.

The Center appointed Ian Blackshaw, John Swinson and David E. Sorkin as panelists in this matter on March 20, 2007. The Panel finds that it was properly constituted. Each member of 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 a company known as PHE, Inc., and is based in Hillsborough, North Carolina, United States. In 1969, PHE’s founder, Phil Harvey, was studying at the University of North Carolina on a Ford Foundation fellowship, when he and a colleague developed a plan to use “social marketing” to promote family planning. They began by establishing the first mail-order condom service, and met with immediate success. Impressed by the success of this initial idea, Mr. Harvey and his business partner had the idea of using the profits their mail-order company was generating to fund family planning initiatives in third-world countries. As the business grew, PHE expanded beyond mail-order contraceptives and established Adam & Eve to tap into the huge market for adult-oriented products in order to expand Mr. Harvey’s charitable projects overseas. Originally, Mr. Harvey and his business partner established a non-profit organization known as Population Services International (“PSI”), which distributed condoms in countries such as Kenya and Bangladesh. PSI is now the world’s largest social marketing organization, and receives funding from various United States government agencies, and sells contraceptives in more than 60 countries. Later, Mr. Harvey founded another non-profit, DKT International, also to promote family planning initiatives in third-world countries. DKT International currently has an annual budget of approximately $25 million, a good portion of which is funded directly by Mr. Harvey’s contributions of his profits (approximately $40 million so far) from the Adam & Eve business. In the year 2001 alone, DKT International distributed more than 300 million condoms and 23 million cycles of birth control pills, in addition to other contraceptives, to third-world countries.

Today, Adam & Eve is the nation’s largest adult-oriented mail order company. It operates a 40,000 square foot warehouse in North Carolina, distributes more than 30 million catalogs each year to more than 4 million customers in the United States and abroad, and has revenues exceeding $90 million.

The impact that Adam & Eve has made in international family planning efforts has been the subject of numerous stories in the media, and PHE was the successful defendant in a widely-publicized landmark battle with the United States Justice Department in the 1980’s. That battle is chronicled in a book, The Government v. Erotica: The Siege of Adam & Eve, which is available in bookstores nationwide and online at, among other places, Amazon.com. In addition, Mr. Harvey published Let Every Child Be Wanted: How Social Marketing is Revolutionizing Contraceptive Use Around the World, discussing how to meet the family-planning needs of third-world populations.

On November 3, 2006, Complainant’s Counsel sent a letter to Respondent demanding that Respondent cease and desist from infringing Complainant’s trademarks. On or about December 4, 2006, Complainant’s Counsel received a responsive letter from an attorney on behalf of Respondent. In that letter, Respondent refused to transfer the domain name to Complainant.

 

5. Parties’ Contentions

A. Complainant

The Complainant makes the following contentions:

A1. The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(Policy, paragraph 4(a)(i), Rules, paragraphs 3(b)(viii), (b)(ix)(1))

Complainant is the owner of, inter alia, the following registered trademarks (collectively, the “ADAM & EVE Marks”) (copies of the corresponding registrations have been provided to the Panel):

1. ADAMEVE.COM, filed with the United States Patent and Trademark Office (“PTO”) on January 31, 2000, published on October 3, 2000, and registered on December 26, 2000, with a first-use date of December 6, 1996. This trademark is registered in International Class 35, covering the following goods and services: “Computerized on-line ordering services and catalog 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.”

2. ADAM & EVE, filed with the PTO on August 9, 1974, and registered on September 16, 1975, with a first-use date of November 17, 1971. This trademark is registered in International Class 42, covering the following goods and services: “Contraceptive products, and sex and birth control literature; and pregnancy testing services.”

3. ADAM & EVE (and design), filed with the PTO on August 9, 1974, and registered on September 16, 1975, with a first-use date of June 14, 1972. This trademark is registered in International Class 10 covering the following goods and services: “Prophylactics.”

4. ADAM & EVE (and design), filed with the PTO on August 9, 1974, and registered on September 16, 1975, with a first-use date of November 17, 1971. This trademark is registered in International Class 42, covering the following goods and services: “Retail mail order services specializing in contraceptive products, and sex and birth control literature.”

5. ADAM & EVE, filed with the PTO on August 9, 1974, and registered on September 16, 1975, with a first-use date of July 28, 1972. This trademark is registered in International Class 10, covering the following goods and services: “Prophylactics.”

6. ADAM & EVE (and design), filed with the PTO on June 20, 1977, and registered on September 2, 1980, with a first-use date of November 1971. This trademark is registered in International Class 10, covering the following goods and services: “Kit comprised of vibratory and sexual stimulating massage apparatus, condoms and massage oils and lubricants.”

7. ADAM & EVE (and design), filed with the PTO on June 20, 1977, and registered on August 7, 1979, with a first-use date of November 1971. This trademark is registered in International Class 16, covering the following goods and services: “Shopping catalogs.”

8. ADAM & EVE (and design), filed with the PTO on June 21, 1971, published on March 31, 1981, and registered on June 23, 1981. This trademark is registered in International Class 42, covering the following goods and services: “Retail mail order service in the field of books.”

9. ADAM & EVE CHANNEL, filed with the PTO on May 23, 1994, published on September 5, 1995, and registered on November 28, 1995, with a first-use date of February 1, 1994. This trademark is registered in International Class 41, covering the following goods and services: “Television programming.”

10. ADAM & EVE, filed with the PTO on February 5, 1998, published on December 15, 1998, and registered on June 19, 2001, with a first-use date of October 27, 1997. This trademark is registered in International Class 35, covering the following goods and services: “Video club services.”

11. ADAM & EVE (and design), filed with the PTO on October 24, 2000, published on May 28, 2002, and registered on August 20, 2002, with a first-use date of October 1994 (in Classes 25 and 35) and July 1995 (in Classes 3 and 5). This trademark is registered in International Classes 3, 5, 25, and 35, covering the following goods and services:

Class 3: “Massage oils, body lotions, body gels for cosmetic use and colognes”

Class 5: “Topical gels for use as body lubricants and anesthetics for non-surgical use”

Class 25: Clothing namely, lingerie and underwear”

Class 35: “Mail order, catalog and on-line retail services on the field of adult entertainment and human sexuality products, namely products of primarily an erotic, sensual or sexual nature.”

12. ADAM & EVE, filed with the PTO on October 24, 2000, published on September 25, 2001 and registered on December 18, 2001, with a first-use date of February 1998 (in International Class 3) and September 25, 1998 (in International Class 38). This trademark is registered in Classes 3 and 38, covering the following goods and services: “Massage oils, lotions and colognes; providing on-line chat rooms for transmission of messages among computer users in the fields of adult entertainment and human sexuality.”

13. & EVE VIDEO CLUB, filed with the PTO on October 24, 2000, published on September 11, 2001, and registered on December 4, 2001, with a first-use date of October 27, 1997, in International Class 35. This trademark is registered in International Class 35, and covers the following goods and services: “Mail order video club services and on-line ordering services featuring videos.”

14. & EVE PRODUCTIONS, filed with the PTO on October 24, 2000, published on January 29, 2002, and registered on April 23, 2002, with a first-use date of May 1996. This trademark is registered in International Class 9, covering the following goods and services: “Video recordings featuring adult entertainment.”

15. TATIONS PARTIES…FROM ADAM & EVE, filed with the PTO on July 31, 2000, published on May 22, 2001, and registered on April 9, 2002, with a first-use date of July 25, 2000. This trademark is registered in International Class 35, covering the following goods and services: “Wholesale distributorship services, catalog services, on line retail services, and shop-at-home party services featuring items for adult entertainment, clothing, books, audiovisual works, scents, computer products, and other products dealing with human sexuality or that are of primarily an erotic, sensual, or sexual nature.”

16. ADAM & EVE INTERACTIVE, filed with the PTO on January 7, 2000, published on March 13, 2001, and registered on March 12, 2002. This trademark is registered in International Classes 9 (first-use date September 14, 2001), 41 (first-use date October 10, 2001), and 38 (first-use date October 10, 2001), covering the following goods and services:

Class 9: “Pre-recorded disks, DVD’s, and CD-ROM’s, featuring adult entertainment and information in the field of human sexuality, and computer programs featuring video and computer game software in the fields of adult entertainment and human sexuality, and instructional materials provided with the aforesaid goods.”

Class 41: “Providing a website on a global computer network featuring computer games, stories, information, and discussion, all for entertainment, in the field of adult entertainment and human sexuality.”

Class 38: “Providing on-line chat rooms for transmission of messages among computer users concerning human sexuality and adult entertainment.”

Complainant submits that it also has common law trademarks in the ADAM & EVE Marks, as a result of its use of the marks in commerce to identify the source or origin of its goods and services.

Complainant is the registered owner of the Internet domain names < adameve.com> and < adamandeve.com>, both registered on May 19, 1996. In addition, Complainant has registered many variations on its ADAM & EVE Marks, including common typographical errors, as domain names. These domain names include:

<adameve.net>, registered on May 22, 1997;

<adameve.org>, registered on December 9, 1999;

<adamev.com>, registered on June 3, 2002;

<adamandev.com>, registered on June 3, 2002;

<adam-eve.com>, registered on December 9, 1999;

<adam-eve.net>, registered on December 9, 1999;

<adamevelingerie.com>, registered on June 6, 2000;

<adamevelotions.com>, registered on June 6, 2000;

<adameveprivatelabel.com>, registered on June 6, 2000;

<adamevevibrators.com>, registered on June 6, 2000;

<adameve.ca>, registered on April 16, 2002 (Canadian website);

<adameve.cc>, registered on February 1, 2002;

<adameve.bz>, registered on February 1, 2002;

<adam-eve.org>, registered on December 9, 1999;

<adam-eve.us>, registered on April 24, 2002;

<adamece.com>, registered on April 4, 2003;

<adamevr.com>, registered on April 4, 2003;

<adamevw.com>, registered on April 4, 2003;

<adamrve.com>, registered on April 4, 2003.

<admaeve.com>, registered on February 10, 2003;

<adamwve.com>, registered on April 3, 2003.

A listing of Complainant’s various domain names containing variations on its ADAM & EVE Marks has been provided to the Panel. Printouts from Network Solutions’ WHOIS database documenting the foregoing domain name registrations have also been provided to the Panel.

Complainant has obtained its trademarks and related Internet domain names in connection with Complainant’s business as a leading provider of adult entertainment and adult-oriented and erotic products. Complainant offers its goods and services at retail to the general public worldwide through mail-order catalogs and its websites, primarily located at “www.adameve.com”. A copy of the initial web page located at “www.adameve.com” has been provided to the Panel. Complainant’s other domain names also primarily resolve to the webpage located at “www.adameve.com”.

Complainant contends it has invested significant time, money, and effort developing and promoting the ADAM & EVE Marks and the retail and online adult entertainment business associated with those marks. Complainant has developed strict and very high standards for the types of materials that it will sell — 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. As a result of its substantial investments and extremely high quality standards, the ADAM & EVE marks are recognized throughout the industry as signifying the high quality of Complainant’s goods and services.

Complainant’s Marks and domain names are in Complainant’s view arbitrary and fanciful, and are entitled to the highest level of protection.

A2. The Respondent has no rights or legitimate interests in respect of the domain name;

(Policy, paragraph 4(a)(ii), Rules, paragraph 3(b)(ix)(2))

Complainant submits that Respondent should be deemed to have no legitimate rights in the domain name <adamandeve.mobi> for the following reasons:

1. Complainant has exclusive rights to the use of ADAMEVE or ADAMANDEVE in an Internet 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. See, e.g., Empresa Brasliera de Telecommunicaciones S.A. – Embratel v. Kevin McCarthy, WIPO Case No. D2000-0164, (Brazilian registration of EMBRATEL sufficient to entitle complainant to use of domain name <embratel.com>); AT&T Corp. v. Tala Alamuddin, WIPO Case No. D2000-0249 (registration of AT&T marks in some countries sufficient to entitle complainant to use of domain name <att2000.com> worldwide).

2. Respondent is neither an agent nor a licensee of Complainant, and therefore has no right to the use of the ADAM & EVE Marks in its domain name.

3. Respondent registered <adamandeve.mobi> more than a decade after Complainant registered <adameve.com> and <adamandeve.com>, and approximately thirty years after Complainant began using the Adam & Eve name in commerce.

4. Respondent’s domain name is identical or confusingly similar to Complainant’s registered trademarks.

5. Prior to November 3, 2006, Respondent used the “www.adamandeve.mobi” to automatically redirect Internet traffic to a pay-per-click search portal that advertised, among other things, adult-oriented goods and services. That is, Internet users who typed “www.adamandeve.mobi” into their Internet browsers would be invisibly redirected to the pay-per-click search portal. If the user clicked on any of the links on that page, Respondent would receive a payment from the advertiser. An explanation of how the pay-per-click search portal Respondent was using converts clicks into payments is available at “www.trafficclub.com”.

6. At least as of December 19, 2006, after Respondent had received and responded to the cease and desist letter from Complainant’s counsel, “www.adamandeve.mobi” redirected traffic to a similar pay-per-click search portal, but the advertisements displayed there contains a number of links, including the first and therefore most prominent link for “Adam and Eve,” as well as references to Biblical figures. (A copy of this new pay-per-click search portal page as of December 19, 2006, has been provided to the Panel). Clicking on the “Adam and Eve” link on Respondent’s search portal home page in turn leads to a second pay-per-click portal page that features links to a number of companies that Complainant submits directly compete with Complainant’s adult-oriented goods and services. (A copy of this second pay-per-click search portal page as of December 19, 2006, has been proved to the Panel).

7. Indeed, even an Internet user who arrives at Respondent’s pay-per-click search portal and who decides to use the search box at the bottom of the page to search for Complainant’s website will, upon entering a search for “adameve.com” be redirected right back to Respondent’s pay-per-click search portal’s main page. (This cannot be shown through a print-out of the web page but, Complainant submits assuming that Respondent does not change the behavior of the website upon receipt of the complaint, may be verified by the Panelist.) Moreover, an Internet user using the search portal page to search for “adam and eve” will be directed to the very same secondary pay-per-click webpage. And an Internet user who searches for “adameve” will be taken to the very same web page, but this time purporting to show the search results for “adameve.”

8. Complainant contends that Respondent cannot demonstrate any legitimate rights to the domain name. First, 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. See paragraph 4(c)(i) of the Policy. Respondent’s use of a domain name that is identical or confusingly similar to Complainant’s registered trademarks is not a bona fide use that could establish that Respondent has any rights in the domain name: “[t]he offering of goods and services in association with an infringing trademark use does not constitute a ‘bona fide’ offering of goods and services within the meaning of Policy paragraph 4(c)(i).” Cable News Network LP, LLLP v. Ahmed Latif, FA 100709 (Nat. Arb. Forum December 31, 2001) (quoting Two Systems Enterprises Co., Ltd. v. Sonies’ Creations, Case No. AF0911 (eResolution Sept. 7, 2001)); See also, Chip Merchant, Inc. v. Blue Star Elec., WIPO Case No. D2000-0474 (finding that the disputed domain names were confusingly similar to Complainant’s mark and that Respondent’s use of the domain names to sell competing goods was illegitimate and not a bona fide offering of goods); Ticketmaster Corp. v. DiscoverNet, Inc., WIPO Case No. D2001-0252 (finding no rights or legitimate interests where Respondent generated commercial gain by intentionally and misleadingly diverting users away from Complainant’s site to a competing website); Oly Holigan, L.P. v. Private, FA 95940 (Nat. Arb. Forum December 4, 2000); America Online, Inc. v. John Deep Buddy U.S.A., Inc., FA 96795 (Nat. Arb. Forum May 14, 2001).

9. The fact that, after Respondent was notified of the dispute through the cease and desist letter, Respondent changed the advertisements displayed on his pay-per-click search portal to also feature advertisements referring to Biblical figures does not confer any greater legitimacy to Respondent’s use of the domain name: “Respondent’s registration and use of the Domain Name for a commercial pay-per-click website advertising links to directly competing websites does not constitute a bona fide offering of goods or services under the Policy.” SAFE Credit Union v. Mike Morgan, WIPO Case No. D2006-0588. Moreover, Complainant contends that the very first link on Respondent’s search portal home page is a link for “Adam and Eve” that leads to a second search portal page that features advertisements to a number of Complainant’s direct competitors.

10. As in Medimmune, Inc. v. Jason Tate, WIPO Case No. D2006-0159, the Respondents strategy appears to be for Internet users who are searching for information on Complainants’ goods and services (specifically, Complainants’ goods and services for mobile devices) will arrive at Respondents’ unrelated web page, where they will click on one of the paid advertising links. As the Panel in Medimmune held: “Such a strategy cannot be considered a right or legitimate interest in the domain names.” See also RX America, LLC. v. Matthew Smith, WIPO Case No. D2005-0540 (pay-per-click websites do not establish legitimate right or interest); Sociйtй Air France v. Virtual Dates, Inc., WIPO Case No. D2005-0168 (same).

11. Essentially, a pay-per-click search portal is nothing more than a monetized domain name parking page, and it has long been held that parking a domain name is not evidence of a bona fide use of the domain name. See, e.g., Chanel, Inc. v. Buybeauty.com, WIPO Case No. D2000-1126 (failure to use domain name supports finding of no legitimate interest) (citing Mary-Lynne Mondich v. Shane Brown, WIPO Case No. D2000-0004 (. February 16, 2000) (same)); Ticketmaster Corporation v. Spider Web Design, Inc., WIPO Case No. D2000-1551 (same).

12. Respondent is not commonly known by the domain name. <www.adamandeve.mobi>. See paragraph 4(c)(ii) of the Policy.

13. Respondent has never been licensed or otherwise authorized by Complainant to use Complainants’ ADAM & EVE Marks.

14. Finally Complainant contends that Respondent cannot demonstrate legitimate rights in the domain name because Respondent is not making a legitimate, non-commercial use of the domain name. See paragraph 4(c)(iii) of the Policy.

A3. The domain name was registered and is being used in bad faith.

(Policy, paragraphs 4(a)(iii), 4(b); Rules, paragraph 3(b)(ix)(3))

Complainant argues that Respondent should be considered as having registered and used the <adamandeve.mobi> domain name in bad faith for the following reasons:

1. As noted above, Complainant’s various registered and common law trademarks entitle Complainant to exclusive use of ADAMEVE or ADAMANDEVE as a domain name.

2. Respondent’s domain name is identical or confusingly similar to the aforementioned trademarks in which the Complainant has exclusive rights. See Policy, paragraph 4(a)(i).

3. Respondent is using the domain name to intentionally attract, for commercial gain, users to its pay-per-click website by creating a likelihood of confusion with Complainant’s ADAM & EVE Marks and domain names. See SAFE Credit Union v. Mike Morgan, WIPO Case No. D2006-0588; RX America, LLC. v. Matthew Smith, WIPO Case No. D2005-0540; Lilly ICOS LLC v. Andrew Riegel, WIPO Case No. D2006-1088; BellSouth Intellectual Property Corporation v. Barbara Kayne, WIPO Case No. D2005-0875; see also Vancouver City Savings Credit Union v. LaPorte Holdings c/o Admin FA 608227) (holding respondent’s use of the domain name for a website featuring links to various commercial websites for respondent’s own commercial gain constitutes bad faith pursuant to paragraph 4(b)(iv) of the Policy); IndyMac Bank F.S.B. v. Unasi Inc. FA 514785 (Nat. Arb. Forum) (holding respondent’s use of the disputed domain names for various commercial websites using a series of hyperlinks for which respondent presumably receives referral fees, i.e. a pay-per-click website, constitutes bad faith).

4. Respondent’s web page operates as an illegal roadblock or detour that improperly intercepts customers who are seeking Complainant’s goods and services and diverts them to Respondent’s website, thereby undercutting the good will associated with Complainant’s marks and services. See Cable News Network LP, LLLP v. Ahmed Latif, FA 100709 (Nat. Arb. Forum December 31, 2001) (“When a website will ultimately result in consumer confusion . . . then the problem is presented which Paragraph 4(b)(iv) is calculated to avoid.”); Hewlett-Packard Co. v. Wieland, Case. No. FA 95852 (Nat. Arb. Forum Dec. 6, 2000); CBS Broadcasting Inc. v. LA-Twilight-Zone, WIPO Case No. D2000-0397; Cf. Anticybersquatting Consumer Protection Act, 15 U.S.C. § 1125(d)(1)(B) (intention to divert consumers in a manner that could harm the goodwill associated with the mark by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the site, constitutes bad faith).

5. This roadblock effect is vividly demonstrated by the fact, noted above, that an Internet user who uses the search box at the bottom of Respondent’s pay-per-click search portal to specifically search for Complainant’s “www.adameve.com” home page is instantly redirected right back to Respondent’s own search portal. It is further demonstrated by the fact, also noted above, that an Internet user who types either “adameve” or “adam and eve” into Respondent’s search box is redirected to a webpage on Respondent’s search portal that prominently displays advertisements and links to Complainant’s direct competitors.

6. For the same reason, there can be no question in Complainant’s view but that there is a high likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of Respondent’s website with Complainant’s trademarks. Respondent’s pay-per-click search portal features advertisements for adult-oriented goods and services similar to those offered by Complainant sold by direct competitors of Complainant, and redirects users who try to use the supposed “search portal” to find Complainant’s website right back to the search portal and its links to competitors.

7. The fact that, after receiving Complainant’s cease and desist letter, Respondent reconfigured his pay-per-click advertisements to also feature Biblically-oriented advertisers is of no consequence. To begin with, the fact remains that the very first link on Respondent’s search portal, for “Adam and Eve,” links to a second pay-per-click search portal that offers links to other companies that sell adult-oriented goods and services in direct competition with Complainant. Second, Respondent’s bad faith is to be demonstrated by reference to what Respondent was doing before receiving the cease and desist letter, not after. Third, the change to feature Biblically-related links is nothing more than a transparent attempt to avoid the implication of Respondent’s actions and to set up a post hoc rationalization for Respondent’s registration of the domain name in an effort to sway the decision of the Panel.

8. Complainant contends that it is inconceivable that Respondent was unaware of Complainant and the nature of Complainant’s business when Respondent registered the <adamandeve.mobi> domain name in October 2006. Complainant’s Adam & Eve business was established in 1970, and 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 domain name. By the time Respondent registered the <adamandeve.mobi> domain name in October 2006, Complainant’s Adam & Eve business and website had become one of the largest retailers of adult-oriented goods and services in the world. As Respondent was in a similar business targeting the adult erotic market, Complainant submits that the Panel may infer that Respondent knew of Complainant. See, e.g., Trip.com, Inc. v. Daniel Deamone, WIPO Case No. D2001-1066 (“Actual or constructive knowledge of the Complainant’s rights in the Trademarks is a factor supporting bad faith.”); Expedia, Inc. v. European Travel Network, WIPO Case No. D2000-0137; Document Technologies v. International Electronic Communications, Inc., WIPO Case No. D2000-0270) (Respondent’s knowledge of complainant’s mark at the time of registration of the domain name suggests bad faith).

9. Even if Respondent did not have actual knowledge of Complainant’s trademarks and domain names (which is highly doubtful in Complainant’s view), in registering the <adamandeve.mobi> domain name with registrar Moniker.com, Respondent agreed to the following provision:

“to the best of your knowledge and belief neither the registration of your domain name nor the manner in which you intend to use such domain name will directly or indirectly infringe the legal rights of a third party;”

Complainant contends that because Complainant’s trademarks are available online at “www.uspto.gov”, Respondent’s bad faith registration may be inferred from that representation in the registration agreement. See Young Genius Software AB .v. MWD, James Vargas, WIPO Case No. D2000-0591 (representation of lack of infringement in registration agreement imposes concomitant duty to verify); Familymeds Inc . v. Mohammad Tariq, WIPO Case No. D2003-0056 (“Furthermore, the fact that the Respondent was obliged by his registration agreement to give an undertaking to his registrar regarding non-infringement of third party rights satisfies the Panel that the Respondent was doubly ‘on notice’ to conduct reasonable investigations for the existence of such rights.”).

10. Respondent’s constructive knowledge of Complainant’s Adam & Eve Marks is further established by the fact that Complainant’s trademarks are publicly available online through the U.S. Patent and Trademark Office, at “www.uspto.gov”, and a simple trademark search would have revealed those Marks. Even assuming that Respondent did not have actual knowledge of Complainant’s Marks (a fanciful assumption), Respondent’s constructive knowledge is sufficient evidence of bad faith registration. See, e.g., Familymeds Inc . v. Mohammad Tariq, WIPO Case No. D2003-0056 (“As the Complainant points out, even if the Respondent was unaware of the existence of the Complainant a simple web search would either have located the “familymeds.com” website or the Complainant’s trademarks at the USPTO.”); Pfizer Inc. v. United Pharmacy Ltd., WIPO Case No. D2001-0446 (Bermudan respondent had constructive knowledge of complainant’s U.S. trademarks, “as a trademark search on the date of the registration of the Domain Names would have revealed Complainant’s trademark registrations in the United States.”); Ticketmaster Corporation v. Spider Web Design, WIPO Case No. D2000-1551 (“Respondent had substantial constructive notice of the TICKETMASTER mark, as a trademark search on the date of the registration of the Domain Name would have revealed Ticketmaster’s registration of the TICKETMASTER mark in the United States”); Young Genius Software AB .v. MWD, James Vargas, WIPO Case No. D2000-0591 (Texas respondent had constructive knowledge of Swedish trademark registration domain name registration, where such information was readily available through a rudimentary Internet search, and therefore registration was in bad faith); A.B.C. Carpet Co., Inc. v. Helen Gladstone, WIPO Case No. D2001-0521 (“Respondent had constructive notice of the Service Marks, as a trademark search on the date of the registration of the Domain Names would have revealed Complainant’s registrations in the United States. Actual or constructive knowledge of the Complainant’s rights in the Trademarks is a factor supporting bad faith.”).

11. In addition, in Complainant’s view the arbitrary and fanciful qualities of the ADAM & EVE Marks, strongly suggest that Respondent did not independently arrive at the conclusion that <adamandeve.mobi> would form a strong foundation for a domain name for an online provider of adult entertainment, because the domain name is not an obvious choice of name, apart from its obvious association with Complainant’s long-established and famous business.

12. Further, a search for “adamandeve” at the top Internet search engine, Google!, returns Complainant’s website as the top result, enabling Respondent to determine that that domain name was associated with Complainant. See, e.g., Familymeds Inc . v. Mohammad Tariq, WIPO Case No. D2003-0056) (“Searches for ‘family meds’ at the top two Internet search engines, Google and Yahoo!, each return the ‘familymeds.com’ website as the first choice. The Respondent easily could have determined that ‘family meds’ was already associated with the Complainant, even assuming that he did not know previously.”). Copies of the Google search results for “adamandeve” have been provided to the Panel.

13. In light of the foregoing, Respondent registered the <adamandeve.mobi> 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. Therefore, the domain name was registered and is being used in bad faith. E.g., Trip.com v. Deamone, WIPO Case No. D2001-1066 (“Actual or constructive knowledge of the Complainant’s rights in the Trademarks is a factor supporting bad faith.”) (citing Expedia, Inc. v. European Travel Network, WIPO Case No. D2000-0137 and Document Technologies v. International Electronic Communications, Inc., WIPO Case No. D2000-0270).

14. Respondent cannot demonstrate lack of bad faith under paragraph 4(c) of the Policy. First, 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. See paragraph 4(c)(i) of the Policy. Respondent’s use of a domain name that is identical or confusingly similar to Complainant’s registered trademarks is not a bona fide use that could establish that Respondent has any rights in the domain name: “[t]he offering of goods and services in association with an infringing trademark use does not constitute a ‘bona fide’ offering of goods and services within the meaning of paragraph 4(c)(i) of the Policy.” Cable News Network LP, LLLP v. Ahmed Latif, FA 100709 (Nat. Arb. Forum December 31, 2001) (quoting Two Systems Enterprises Co., Ltd. v. Sonies’ Creations, Case No. AF0911 (eResolution September 7, 2001)); See also, Chip Merchant, Inc. v. Blue Star Elec., WIPO Case No. D2000-0474 (finding that the disputed domain names were confusingly similar to complainant’s mark and that respondent’s use of the domain names to sell competing goods was illegitimate and not a bona fide offering of goods); Ticketmaster Corp. v. DiscoverNet, Inc., WIPO Case No. D2001-0252 (finding no rights or legitimate interests where respondent generated commercial gain by intentionally and misleadingly diverting users away from complainant’s site to a competing website); Oly Holigan, L.P. v. Private, FA 95940 (Nat. Arb. Forum Dec. 4, 2000); America Online, Inc. v. John Deep Buddy U.S.A., IncFA 96795 (Nat. Arb. Forum May 14, 2001). Moreover, Respondent is not making a legitimate, non-commercial use of the domain name. See paragraph 4(c)(iii) of the Policy.

For all the foregoing reasons, the domain name should be considered as having been registered and used in bad faith, in violation of the Policy.

B. Respondent

Respondent replies to the Complainant’s contention as follows:

B1. Introduction

Respondent points out that the UDRP was established to permit the expedited disposition of clear abuses and that a clear abuse is certainly not present in the instant case. In confirming the purpose of the UDRP process, numerous decisions have confirmed that the UDRP process is limited in scope and is to deal with simple, clear, abusive registrations of domain names, and not complex trademark disputes. For example, the decision in the case of SBC Communications Inc. v. eWorldWideWeb, Inc., WIPO Case No. D2002-0608 states as follows:

Whether a court would reach the same conclusion in a trademark infringement action, after more complete discovery and analysis under trademark law, is not our concern. See J. Crew v. Crew.com, WIPO Case No. D2000-0054 (“The ICANN policy is very narrow in scope, covers only clear cases of ‘cybersquatting’ and ‘cyber piracy,’ and does not cover every dispute that might arise over domain names.”); Second Staff Report on Implementation Documents for the Uniform Dispute Resolution Policy (October 24th, 1999), “http://www.icann.org/udrp/ udrp-second-staff-report-24oct99.htm 4.1(c)” (“Except in cases involving ‘abusive registrations’ made with bad-faith intent to profit commercially from others’ trademarks (e.g., cybersquatting and cyberpiracy), the adopted policy leaves the resolution of disputes to the courts. . . . [The Policy] does not extend to cases where a registered domain name is subject to a legitimate dispute (and may ultimately be found to violate the challenger’s trademark).”).

Respondent submits that this principle is supported and confirmed by a number of other cases including Action Software, Inc. v. Alphacom Distribution, Inc., FA 105734, (Nat. Arb. Forum April 15, 2002), EMoney Group, Inc. v. Eom San Sik, FA 96337 (Nat Arb. Forum March 26, 2001); J.L. Wilson Co., Inc. v. Ultraviolet Resources Int’l., FA 97148 (Nat Arb. Forum June 18, 2001), Judy Larson v. Judy Larson Club FA 096488, (Nat Arb. Forum March 13, 2001); Arche Nova Marvin Entholt Filmproduktion v. Beanmills, Inc. FA 112508, (Nat Arb. Forum August 20, 2002); Shirmax Retail Ltd. v. CES Marketing, Inc., AF-0104 (eResolution March 20, 2000), Gen. Mach. Prods Co. v. Prime Domains, FA 92531 (Nat. Arb. Forum January 26, 2000); Car Toys, Inc. v. Informa Unlimited, Inc., FA 93682 (Nat. Arb. Forum March 20, 2000); CRS Tech. Corp. v. Condenet, Inc. FA 93547 (Nat. Arb. Forum Mar. 28, 2000); Perriocone v. Hirst, FA 95104 (Nat. Arb. Forum Sept. 1, 2000); Zero Int’l Holding GmbH v. Beyonet Servs., WIPO Case No. D2000-0161; Primedia Special Interest Pubs., Inc. v. Treadway, WIPO Case No. D2000-0752; First Am. Funds, Inc. v. Ult.Search, Inc., WIPO Case No. D2000-1840, The PNC Financial Services Group, Inc. and PNC Bank, N.A. v. James Wilkerson d/b/a Iclicks Network, FA 104111, (Nat Arb. Forum March 13, 2002); Shirmax Retail Ltd./Dйtaillants Shirmax Ltйe v Ces Marketing Group Inc., AF-0104; (eResolution March 20, 2000); Commonwealth Hotels Inc. v CCD Internet, AF-00771; (eResolution May 17, 2001); Educational Testing Service v. TOEFL, WIPO Case No. D2000-0044; Quarterview v. Quarterview Co., AF-0209 (eResolution March 16, 2000); Libro AG v. NA Global Link Limited, WIPO Case No. D2000-0186; Lowestfare.Com LLC v. Us Tours & Travel, Inc, AF-0284, (eResolution September 9), 2000A; LIBRO AG v. NA Global Link Limited, WIPO Case No. D2000-0186.

Respondent suggests that, similarly, the instant case is not a clear case of “cybersquatting” and “cyber piracy”. Accordingly, Respondent requests that the Panel would not grant the Complainant’s request to have the Respondent’s domain name taken away.

Respondent points out that paragraph 4(a) of Policy directs that Complainant must prove each of the following: “(i) that the domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (ii) that the Respondent has no rights or legitimate interests in respect of the domain name; and (iii) that the domain name has been registered and is being used in bad faith.” In the case at hand, Respondent says it has a legitimate interest in respect of the domain name, and Respondent has not registered and used the domain name at issue in bad faith. Therefore, Respondent requests that the Panel would deny the remedy requested by Complainant.

Respondent notes that he is certainly not a malicious cyber squatter. Evidence is provided in appendices A., B., C., D and E to show that “the Respondent is a devout Christian who has intended to create a religious oriented website on the domain name in question”. Respondent submits that considerable planning and preparation has been undertaken to achieve this goal and objective. Appendix A describes in detail the Respondent’s history of developing businesses in accordance with his values. Respondent’s intent was certainly not to create a website that competes with the Complainant’s business activities which Respondent refers to as “smut.” Respondent contends that the appendices provide substantial evidence that the development of a Christian oriented website was a logical next step in the business career of the Respondent.

B2. Complainant Has Not Established Trademark Rights In The Mark As Required By paragraph 4(a)(i) of the Policy

Although the Complainant alleges that trademarks are owned with respect to the term Adam and Eve, Respondent suggests that all domain names containing the term should not be seized from innocent registrants and given to Complainant. The term Adam and Eve is widely recognized as a biblical term. Searches on search engines for the term yield innumerable references to the biblical term. It is important for UDRP decisions to limit the extent to which Complainant can acquire domain names containing the term from innocent registrants who may intend and plan to utilize the term for much different purposes than the purpose for which Complainant is using the term.

B3. Respondent Should Be Considered As Having Rights And Legitimate Interests In Respect Of The Domain Name.

Complainant must prove that Respondent has no rights or legitimate interests in the name. Respondent submits the Complaint fails to prove this important element.

Respondent notes that a complainant’s burden of proof on this issue is made clear in the case of Marbil Co. Incorporated “DBA” Insol v. Sangjun Choi, WIPO Case No. D2000-1275, in which the complainant attempted to prove that respondent did not have any legitimate interest in the domain name. The complainant did not provide adequate proof. The panel decided that the domain name should not be transferred to the Complainant and states that:

“The Panel, therefore, finds that the complainant has failed to satisfy the test of Paragraph 4a(ii) of the Uniform Domain Names policy, and that its complaint, therefore, must fail”.

Other cases espousing this view include General Machine Products Co. v Prime Domains, File No. FA 092531(Nat Arb. Forum); Dorset Police v. Gerry Coulter, FA 00942 (Nat Arb. Forum October 20, 2001), BLC, Inc. v. Worldwide Media Inc. a/k/a Michael Berkens FA 099675 (Nat Arb. Forum October 31, 2001). Similarly, in the instant case, Respondent contends Complainant has also failed to satisfy the “test of Paragraph 4(a)(ii)” since Complainant has failed to prove that Respondent has no rights or legitimate interests in respect of the domain name.

Paragraph 4(c) of the Policy lists three circumstances that can demonstrate a registrant’s rights or legitimate interest in the disputed domain name. Section (i) provides that:

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a offering of goods or services;

Respondent submits that he has, in fact, engaged in demonstrable preparations to utilize the domain name for the marketing of products and services that are unrelated to any product or service for which Complainant alleges to have trademark rights.

UDRP decisions have emphasized that an important point in determining legitimate interest is that respondent’s plan for, or use of, the domain name is more than “mere passive holding.” Ultrafem, Inc. supra. Accordingly, Respondent notes that the Panel should find that Respondent has a legitimate interest in the disputed domain name.

Furthermore, Respondent submits Complainant has not offered any proof that the Respondent is trying to attract consumers who may have any interest or intent in finding Complainant’s organization. The domain name was registered for a legitimate and fair purpose. It was not registered to create any user confusion for Respondent’s own commercial gain.

Respondent also points out that the threshold is very low for the determination of whether a respondent has a legitimate right to a domain name. Panelists have determined that there is a right and legitimate interest in respect of a domain name when the preparation to utilize a domain name is much less extensive than the preparation by Respondent in the instant case. Under the UDRP procedures, a legitimate interest is established under paragraph 4(c)(ii) where the domain name is registered in connection with “demonstrable preparations to use” it in connection with a “bona fide offering of goods or services”. This is sufficient to establish its legitimate interest in the disputed domain name under the Policy. American Greetings Corporation & Those Characters From Cleveland, Inc. v. Richard Mackessy, FA 109374 (Nat Arb. Forum May 22, 2002). In American Greetings, the respondent had provided handwritten notebook entries and screen shots of its proposed website. The panel held that this established the respondent’s interest. Relying on precedent established under the UDRP, the panel explained that “[e]ven perfunctory preparations have been held to suffice” to establish a legitimate interest.” citing Shirmax Retail Ltd. v. CES Marketing, Inc., AF-0104 (e-Resolution March 20, 2000); Lumena s-ka so.o. v. Express Ventures Ltd., Case No. 94375 (Nat Arb. Forum May 11, 2000); Royal Bank of Canada v. Xross, Case No. AF-0133 (eResolution May 19, 2000); Goldline International, Inc. v. Gold Line, WIPO Case No. D2000-1151; Primedia Special Interest Publications, Inc. v. John L. Treadway, WIPO Case No. D2000-0752. Furthermore, a respondent’s legitimate interest is not diminished because the website is not yet activated with the complete website at the URLs in question. “A domain name holder is under no obligation to immediately begin operating a website upon registering the domain name.” PROM Software, Inc. v. Reflex Publishing, Inc., WIPO Case No. D2001-1154. Respondent submits it is well established that the mere intent to use a descriptive domain name for a related website constitutes use in connection with a bona fide offering of goods or services, pursuant to paragraph 4(c)(i) of the Policy. CHF Industries, Inc. v. Domain Deluxe, FA 97532 (Nat Arb. Forum July 26, 2001)(“Respondent intends to use the domain name in connection with a legitimate business. Thus, Respondent has a legitimate interest in the domain name”). Asphalt Research Technology, Inc. v. Anything.com, WIPO Case No. D2000-0967 (intent to use domain name for financial site establishes legitimate interest). Respondent contends that the burden on Respondent is very small. All that is required from the Respondent is “is a plausible explanation.” IG Index PLC v. Index Trade, WIPO Case No. D2000-1124. Casual Corner Group, Inc. v. Young, Case No. 95112 (Nat Arb. Forum August 7, 2000)(Respondent has rights and legitimate interests in the domain name even though he has made no use of the website at the time of the Complaint). As the Panel in Penguin Books Ltd. v. The Katz Family and Anthony Katz, WIPO Case No. D2000–0204 explained, “Any attempt to apply any objective minimum standards for development could well impose a significant economic burden on innocent registrants as a precondition of holding their domain names.”

Respondent submits that in the instant case he has, in fact, undertaken considerable preparatory activity in order to begin utilizing the domain name for a legitimate business activity. This fact is proven by the following:

1. Commencing prior to the registration of the domain name he began developing, discussing and planning the development of a website on the domain name.

2. He prepared a business plan for the implementation of his ideas for the website.

3. He engaged in planning discussions as early as November of 2006, appendix B. paragraph 3.

4. He planned and took steps to obtain financing for the development of the website.

5. A lawyer has signed an affidavit under oath confirming that he has provided legal advice with respect to the development of the website.

6. He planned to the development of the website with his associate Mr. Phillips.

Furthermore, Respondent notes that an important consideration in the instant case is the very short time period between Respondent’s registration of the domain name and the initiation of this complaint. The domain name was registered by Respondent and the initial letter from Complainant was sent very soon thereafter. It is virtually impossible for a substantive, legitimate business to be established on the domain name in this timeframe.

As described above, Respondent submits that Complainant has the burden of proving that Respondent has no rights or legitimate interests in respect of the domain name. Complainant has failed in sustaining its burden of proof. Furthermore, although the Respondent does not have the burden of proving that it does have legitimate rights in the domain name, Respondent contends he has provided substantial evidence, legal rationale, and case law support to prove that Respondent does, in fact, have legitimate rights in the domain name.

B4. Respondent Has Not Registered And Used The Domain Name In Bad Faith Policy Paragraph 4(a)(iii) of the Policy.

An additional element that Complainant must prove is that the domain name was registered and is being used in bad faith. These requirements are conjunctive: registration in bad faith is insufficient if one does not use the domain name in bad faith, and use in bad faith is insufficient unless the domain name was originally registered in bad faith. Viz Communications, Inc. v. Redsun, WIPO Case No. D2000-0905; Shirmax Retail Ltd. v. CES Marketing Group, AF0104 (eResolution March 20, 2000). Respondent submits that in the case at hand, Complainant has neither proven bad faith registration nor bad faith use.

UDRP decisions have consistently held that complainants have the burden of proving that a respondent has registered and has used the domain name in bad faith. For example, this principle is espoused in the case of Diamond Shamrock Refining and Marketing Company v. CES Marketing Group Inc, FA 096766 (Nat Arb. Forum). The decision states as follows:

“The bad faith element is actually two elements, requiring the Complainant to show both bad faith registration and bad faith use. World Wrestling Federation Entertainment, Inc. v. Brosman, WIPO Case No. D99-0001(“the name must not only be registered in bad faith, but it must also be used in bad faith”).

Respondent emphasizes that the Policy requires that Complainant must prove bad faith both at the time of registration and in the current use of the domain name.

Respondent registered the domain name without any awareness of any claim of Complainant regarding the terms because (1) the Complainant’s alleged trademark rights were not in existence at the time of the registration of the domain name and (2) consumers did not and do not associate the terms with Complainant. A demonstration of this is the fact that a search on search engines for the terms results in innumerable instances of the usage of the terms that are completely unrelated to Complainant or Complainant’s alleged trademarks.

Respondent contends there is absolutely no probative evidence that Respondent registered or used the domain name in bad faith.

Although Complainant makes certain allegations with respect to the links and products sold on a “parking page” that the domain name was directed to display by the registrar, there is not any proof of this allegation. There is merely a vague reference to competitors being named on a second page of the website.

Furthermore, when Respondent read the letter of Complainant, he made numerous telephone calls to the registrar in order to demand that any possible linkages not be made.

It is also important to note that if there might have been some linkages that may, conceivably, been directed to advertisements of Complainant’s competitors, the linkages were not subject to the control of Respondent. The content of the website of the parked domain name was definitely not under the control of Respondent as described very clearly in the contract and policies of the registrar, as follows:

“27. LANDING PAGES & PARKING PAGES

All domain names registered through Moniker and/or DomainSystems that are pointed to a “Coming Soon,” For Sale, Search, or special Idle Web page which informs visitors that the registrant has recently registered their domain name at Moniker and/or DomainSystems. These Web pages may be modified at any time by Moniker and/or DomainSystems without prior notice to you and may include such things as, without limitation (i) links to additional products and services offered by Moniker and/or DomainSystems, (ii) advertisements for products and services offered by third-parties, and (iii) an internet search engine interface. You agree that DomainSystems and/or Moniker has the right to point names as set forth herein without compensation or remuneration to you. If for any reason you do not wish to have the domain name you have registered pointed to a Coming Soon, For Sale, Search, or special Idle Web page, please notify our Customer Support team at support@moniker.com and/or DomainSystems, or use Moniker and/or DomainSystems’s Domain Manager utility to forward your domain to another location.”

Furthermore, if there were any linkages of the alleged nature, Respondent did not make any money from the linkages or the advertisements as clearly explained in the above quotation. The use of the parking page was totally within the control of the registrar.

Accordingly, for all the above reasons, Respondent submits that Complainant has failed to meet its burden of proving bad faith registration and use and, the Complaint must, therefore, be dismissed.

 

6. Discussion and Findings

To qualify for cancellation or transfer of the domain name at issue, the Complainant must prove each of the following elements of paragraph 4(a) of the Policy, namely:

(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

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

(iii) The disputed domain name has been registered and is being used in bad faith.

In accordance with paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.

In accordance with paragraph 10(d) of the Rules, the Panel shall determine the admissibility, relevance, materiality and weight of the evidence.

A. Identical or Confusingly Similar

It is well established in previous WIPO UDRP cases that, where a domain name incorporates a complainant’s registered mark, this may be sufficient to establish that the domain name is identical or confusingly similar for the purposes of the Policy. See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525.

The disputed domain name incorporates essentially the registered trademark ADAM & EVE, which is owned by the Complainant in and for the purposes of its well-established and well-known adult entertainment and services business. The replacement of the ampersand “&” by the conjunction “and” is irrelevant and immaterial for trademark distinguishing purposes.

Likewise, the addition of the suffix “.mobi” is for registration purposes only and does not provide any distinguishing feature to avoid any confusion for trademark purposes. See on this general principle, Pomellato S.p.A v. Tonetti, WIPO Case No. D2000-0493, in which the panel found that the domain name <pomellato.com> is identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO, is not relevant. And also Blue Sky Software Corp. v. Digital Sierra Inc., WIPO Case No. D2000-0165, in which the panel held that the domain name <robohelp.com> is identical to the complainant’s registered ROBOHELP trademark, and that the “addition of the suffix .com is not a distinguishing difference”.

The contention made by the Respondent that the Complainant has not established trademark rights in the name ‘Adam and Eve’ is wrong in law because, even if the name, as the Respondent contends, may be “widely recognized as a biblical term”, the Complainant has been granted trademark registrations in respect of its mark ADAM & EVE because the US Patent and Trademark Office has recognized the distinctivenes of the mark as identifying the source or origin of the Complainant’s goods and services.

In view of all this, the Panel finds that the disputed domain name registered by the Respondent is identical or confusingly similar to the trademark ADAM & EVE, in which the Complainant has demonstrated, to the satisfaction of the Panel, that it has trademark rights through registration and also through prior use in commerce for many years.

B. Rights or Legitimate Interests

In order to determine whether the Respondent has any rights or legitimate interests in respect of the disputed domain name (paragraphs 3(b)(ix)(2) of the Rules and 4(c) of the Policy), attention must be paid to any of the following circumstances in particular but without limitation:

- Whether before any notice to the Respondent of the dispute, there is any evidence of the Respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services;

- whether the Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights;

- whether the Respondent is making a legitimate non commercial or fair use of the domain name, without intent for commercial gain misleadingly to divert consumers or to tarnish the trademark or service mark at issue.

There is no evidence to show that the Respondent was acting in pursuance of any rights or legitimate interests when registering the disputed domain names. Nor has the Respondent been authorized or licensed by the Complainant to use the Complainant’s trademark ADAM & EVE in the disputed domain name. Also, the Panel finds no evidence that the Respondent has used, or undertaken any demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. Although the Respondent has filed evidence in support of its contention that it had undertaken “considerable preparatory activity in order to begin utilizing the domain name for a legitimate business activity”, whether or not such vague intentions are sufficient, and the Panel is not convinced, but the Panel is not required to decide this particular point in the present case, because the fact of the matter remains that, as was held in Cable News Network LP, LLLP v. Ahmed Latif, FA. 100709 (Nat. Arb. Forum December 31, 2001) (quoting Two Systems Enterprises Co., Ltd. v. Sonies’ Creations, Case No. AF0911 (eResolution September 7, 2001): “[t]he offering of goods and services in association with an infringing trademark use does not constitute a ‘bona fide’ offering of goods and services within the meaning of Policy paragraph 4(c)(i).”

Furthermore, the adoption by the Respondent of a domain name identical or confusingly similar to the Complainant’s widely known, well-established and widely used trademark ADAM & EVE will inevitably lead to the diversion of the Complainant’s consumers, wishing to access the Complainant’s website, to the Respondent’s website (see further on this point below) and the links there to competitors of the Complainant, with the consequential tarnishing of the Complainant’s trademark. In other words, the effect thereof is that the Respondent will be taking advantage, for commercial gain, of the good name and reputation of the Complainant and its business, and thereby unfairly attracting to the Respondent’s business the considerable goodwill that the Complainant has established over many years in its business, without any right or legal justification for doing so. Such a situation, namely the incorporation by the Respondent of the Complainant’s trademark ADAM & EVE in the disputed domain name, implies to Internet users or consumers that the Respondent is in some way associated with and endorsed by the Complainant, which is not, in fact, the case. While in general it is difficult for a complainant to demonstrate a respondent’s intent or prove that a respondent is trying to attract Internet users and consumers to its website, the Panel notes that this can and is being inferred by the Panel in the present case from the factual position described above.

Therefore, for all the above reasons, the Panel concludes that the Respondent has neither rights to nor legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

Regarding the bad faith requirement, paragraph 4(b) of the Policy lists four examples of acts, which prima facie constitute evidence of bad faith. However, this list is not exhaustive, but merely illustrative. See Nova Banka v. Iris, WIPO Case No. D2003-0366.

Paragraph 4(b)(iv) of the Policy is particularly relevant to the present case and provides that there is evidence of bad faith in the following circumstances:

“(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website 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 the respondent’s website or location or of a product or service on its website or location.”

Based on the evidence provided in the case file, the Panel agrees with the Complainant’s contention that the Respondent, by registering the disputed domain name, is trading on the Complainant’s valuable goodwill established in its trademark ADAM & EVE.

Again, by registering and using the disputed domain name incorporating the Complainant’s trademark, ADAM & EVE, the effect is to mislead Internet users and consumers into thinking that the Respondent is, in some way or another, connected to, sponsored by or affiliated with the Complainant and its business; or that the Respondent’s activities are approved or endorsed by the Complainant. None of which, according to the case file is, in fact, the situation. Such misleading consequences, in the view of the Panel, constitute bad faith on the part of the Respondent.

The Respondent’s contentions that “he registered the domain names (sic) without any awareness of any claim of Complainant regarding the terms because (1) the Complainant’s alleged trademark rights were not in existence (emphasis added by the Respondent) at the time of the registration of the domain name and (2) consumers did not and do not associate the terms with Complainant” are plainly wrong. In the first place, the Complainant has well established trademark rights in the name ADAM & EVE through prior commercial use and registration for more than thirty years; and, in the second place, as mentioned above by the Complainant, a search for “adamandeve” at the top Internet search engine, Google!, returns Complainant’s website as the top result, evidence of which has been provided to the Panel.

Furthermore, the Respondent’s claims that he was not aware of the Complainant’s trademarks and domain names, which as noted above are hardly credible, is no answer to the Complainant’s claim that the Respondent registered and used the disputed domain name in bad faith, since when registering the disputed domain name with the registrar “Moniker.com”, he agreed to the following provision: “to the best of your knowledge and belief neither the registration of your domain name nor the manner in which you intend to use such domain name will directly or indirectly infringe the legal rights of a third party”. While neither this provision nor the Policy impose upon a domain name registrant an affirmative duty to perform a trademark search or otherwise investigate the rights of third parties, the Respondent in this case has admitted to having “undertaken considerable preparatory activity” including “developing, discussing and planning the development of a website on the domain name,” and having done so “prior to the registration of the domain name” (Response at 5, emphasis added). The Complainant’s business carried on under the name of Adam & Eve was established in 1970, and it first began using the <adameve.com> domain name in May 1996, and subsequently registered many other domain names, including <adamandeve.com>, as well as many others based on variations and misspellings of that domain name. When the Respondent registered the disputed domain name in October 2006, Complainant’s Adam & Eve business and website had become one of the largest retailers of adult-oriented goods and services in the world. If Respondent undertook the preparatory activity that he claims to have done, it is inconceivable to the Panel that he was unaware of Complainant and the nature of its business when he registered the disputed domain name.

On the question of use of the disputed domain name in bad faith by the Respondent, the fact that there was a rather short period of time between the Respondent’s registration of the disputed domain name and the initiation of the present complaint by the Complainant is irrelevant. The fact of the matter is that during such period of time, the Respondent’s website offered products and services in competition with those of the Complainant and this, in the view of the Panel, constitutes bad faith use on the part of the Respondent.

Likewise, the Respondent cannot claim that he was not responsible for the contents of his (emphasis added by the Panel) website, bearing in mind that he took, under the provisions of clause 27 (cited above by the Respondent) the risk of and, in effect, gave ‘carte blanche’ to the Registrar developing the website within the scope of that clause, and only did something about it when the Complainant complained about the competitive contents of the Respondent’s website. As was held in Familymeds Inc. v. Mohammad Tariq, WIPO Case No. D2003-0056: “ ...... the fact that the Respondent was obliged by his registration agreement to give an undertaking to his registrar regarding non-infringement of third party rights satisfies the Panel that the Respondent was doubly ‘on notice’ to conduct reasonable investigations for the existence of such rights.” This he did not do. Again, this, in the view of the Panel, suggests bad faith on the part of the Respondent.

Therefore, for all the above reasons, the Panel concludes that the Respondent has registered and is using the disputed domain name in bad faith.

 

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 <adamandeve.mobi> be transferred to the Complainant.