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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

PHE, Inc. v. Aisha Haider

Case No. D2007-0992

 

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 Aisha Haider, Wealthbanc Inc., Ontario, Canada, represented by Stephen H. Sturgeon, Esquire, United States of America.

2. The Domain Name and Registrar

The disputed domain name <adameve.mobi> is registered with Transecute (I) Pvt Ltd.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 6, 2007. On July 9, 2007, the Center transmitted by email to Transecute (I) Pvt Ltd a request for registrar verification in connection with the domain name at issue. On July 10, 2007, Transecute (I) Pvt Ltd transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 18, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was August 7, 2007. The Center issued a Respondent’s Default Notification on August 10, 2007. A late Response was filed with the Center on August 22, 2007. By letter dated August 22, 2007, the Complainant objected to the late Response, on the basis that the Respondent had not requested an extension under paragraph 5(d) of the Rules.

The Center appointed James A. Barker as the sole panelist in this matter on August 29, 2007. 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

The Complainant is a mail-order company which sells pornography and related products, and is based in North Carolina in the United States of America. The Complainant claims to be the largest such company in the United States of America.

The Complaint indicates that its current business developed from a mail-order company offering contraceptives. The Complaint states that the Complainant’s founder, Phil Harvey, established a non-profit “social marketing” organization to sell contraceptives in more than 60 countries. The Complaint also states that the Complainant’s founder established another non-profit organization to promote family planning initiatives in third world countries. (However, for the purpose of this Complaint, only the Complainant’s principal mail-order business appears relevant.).

The Complainant is the owner of a number of trademarks, registered on the principal register of the United States Patent and Trademark Office, as well as in Canada where the Respondent resides. Those trademarks include ADAMEVE.COM, and ADAM & EVE in various classes. Many of those marks were first registered in the early ‘70s, with a number of marks registered more recently in 2001-02.

The Complainant also maintains websites at a number of domains, including “www.adameve.com” and “www.adamandeve.com” which were registered in May 1996. The Complainant also is the registrant of more than 20 similar domain names. The Complainant’s domain names primarily resolve to its website at “www.adameve.com”. The Complainant has invested significant time, money and effort into developing its marks.

The disputed domain name appears to have been created on September 28, 2006 (as indicated by the “creation date” in the Whois record). The Complainant provides evidence that on October 26, 2006 the disputed domain name was registered in the name of Mr. Mustafa Patel. At some later date (which is not identified by either the Complainant or Respondent) the disputed domain name was transferred in the name of the Respondent.

At the date of this decision the disputed domain name does not revert to an active website. The disputed domain name reverts instead to a webpage headed “PARTY CENTRAL” and includes the message “Welcome to the ADAMEVE.MOBI website! We are currently making changes to the site. Please check back for updates.”

The Response does not provide details of the Respondent’s business or occupation.

The Respondent’s representative was also the representative of the respondent in PHE, Inc. v. Chris Calnek, WIPO Case No. D2006-1612, which involved a differently named respondent but a similar domain name: <adamandeve.mobi>. Both the complainant’s and respondent’s arguments in that case were very similar to the arguments put by both in this case.

 

5. Parties’ Contentions

A. Complainant

The following is summarized from the Complaint.

The Complainant argues that the disputed domain name is identical or confusingly similar to the Complainant’s registered trademarks, on the basis of the panel’s findings in PHE, Inc. v. Chris Calnek, WIPO Case No. D2006-1612 in relation to a similar domain name. The Complainant argues that its marks are arbitrary or fanciful and so entitled to the highest level of protection.

The Complainant argues that the Respondent has no rights or legitimate interests for the purpose of paragraph 4(a)(ii) of the Policy. The Complainant has exclusive rights to the use of ADAMEVE and ADAMANDEVE in a domain name by virtue of its well established business and trademarks. The Respondent cannot demonstrate any circumstances that would be evidence of rights or legitimate interests for the purpose of paragraph 4(c) of the Policy. The Respondent’s business appears to be nothing more than the registration, pay per click parking, and sale of domains. In this connection, the Complainant provides evidence of a large number of other domain names registered by the Respondent, particularly in the .mobi domain.

The Complainant claims that the disputed domain name was registered and is being used in bad faith. It is inconceivable that the Respondent was not aware of the Complainant when it registered the disputed domain name. The Complainant appears to equate the respondent in PHE, Inc. v. Chris Calnek, WIPO Case No. D2006-1612 with the Respondent in this case. The Complainant also notes that its rights to recover domain names that infringe on its rights have been upheld by other WIPO panels in See, e.g., PHE, Inc. v. Nadeem Qadir, WIPO Case No. D2005-1315; PHE, Inc. v. Bill McCall, WIPO Case No. D2003-0516. Further, the Respondent cannot show that its use of the dispute domain name is for a bona fide purpose before notice of this dispute, because the disputed domain name is not being used for any purpose – it is simply parked.

The Complainant claims that the disputed domain name was originally registered to an individual by the name of Mustafa Patel, who was using the disputed domain name as a pay-per-click site and who had listed it for sale. Shortly after contacting that person, the Complainant then received a telephone call from the Respondent’s representative in this case. That representative indicated that, before resolving the dispute concerning the domain name <adameve.mobi>, he wished to discuss the resolution of the dispute concerning the domain name <adamandeve.mobi>, which then became the subject of PHE, Inc. v. Chris Calnek, WIPO Case No. D2006-1612. The Respondent’s representative never responded to the Complainant’s follow-up efforts to resolve the disputed concerning the disputed domain name in this case. The Complainant inferred from this that the Respondent would not agree to transfer the disputed domain name without the payment of the tens of thousands of dollars that it previously demanded for the sale of the domain name <adamandeve.mobi>.

The Complainant claims that, at some point after the Complainant’s counsel approached the Respondent’s representative, Mr. Mustafa Patel transferred the disputed domain name to the current registrant, Wealthbanc Inc., in order to shield the disputed domain name from the process under the Policy. Although Mr. Patel is no the named registrant, he is the registrant for the domain name <wealthbanc.com>. Further, the Complainant’s search of the Canadian Government’s business registrations reveals no information for a company known as “Wealthbanc.Inc.” As such, it is clear that “Wealthbanc, Inc.” is a non-existent entity and an alter ego for Mr. Mustafa Patel. Therefore Mr. Patel’s bad faith should be imputed to the Respondent.

B. Respondent

The Response largely refers to previous decisions under the Policy, to the effect that the burden under the Policy is such that the Complainant has not met it.

The Respondent claims that the Policy was established only to dispose of clear abuses, which is not present in this case. The Respondent cites from the decision in the case of SBC Communications Inc. v. eWorldWideWeb, Inc., WIPO Case No. D2002-0608, to this effect, as well as other decisions.

The Respondent claims that the Complainant has not proved that the Respondent lacks a right or legitimate interest in the disputed domain name. The Respondent refers to other cases in which the Complainant has failed to establish its case on this point, including in the case of Marbil Co. Incorporated “DBA” Insol v. Sangjun Choi, WIPO Case No. D2000-1275.

The Respondent claims that it 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 the Complainant alleges to have trademark rights. The Respondent provides evidence of a copy of an invoice from a company that it claims has been contracted and paid to develop software and to manage the non-infringing “Party Central Mobile Business” website at the domain name for a period of one year. The Respondent also provides evidence of a copy of a check that it claims was paid to the software developer.

The Respondent also claims out that the threshold is very low for the determination of whether a Respondent has a legitimate right to a domain name, and cites a number of previous panel decisions to the effect that a respondent must only establish a “plausible explanation” of its legitimate interest.

Furthermore, the Respondent states 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 disputed 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.

The Respondent claims that the Complainant must establish that the disputed domain name was both registered and used in bad faith – which it claims the Complainant has not established in this case. It claims that there is no such evidence in this case.

 

6. Discussion and Findings

For the Complaint to succeed, under paragraph 4(a) of the Policy, the Complainant must prove that:

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

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

(iii) the disputed domain name was registered in bad faith and is being used in bad faith.

The Complainant must prove each of these three elements, which are discussed in turn below.

A. Identical or Confusingly Similar

There is no doubt in this case that the Complainant has extensive registered marks in, among others, ADAMEVE.COM and ADAM & EVE.

The Panel finds that the disputed domain name is at least confusingly similar to the Complainant’s registered marks, for substantially the same reasons as set out by the Panel in PHE, Inc. v. Chris Calnek, WIPO Case No. D2006-1612. In this case, the disputed domain name differs from the Complainant’s marks in only trivial respects. The dominant impression of the disputed domain name is its association with the Complainant’s mark.

As such, the Panel finds that the Complainant has established this first element.

B. Rights or Legitimate Interests

The Respondent argues that it only needs to establish a plausible explanation to establish a right or legitimate interest under this ground. The Respondent’s implication is that it has established such an explanation. The Respondent states that it has made demonstrable preparations to use the disputed domain name in connection with the marketing of goods and services.

The proper respondent

A threshold issue arises as to who is the Respondent in fact. Paragraph 1 of the Rules defines the “Respondent” as the “holder of the domain name registration against which a complaint is initiated”. Neither this definition, nor other provisions of the Policy and Rules, prevent a finding that a person or entity, other than the named registrant in the Whois details for the domain name, may be treated as the holder of the domain name registration in fact. This is particularly the case where it appears to the Panel that the named registrant may not exist in fact and that there may in fact be a beneficial or underlying owner of the disputed domain name. This is also supported by findings of previous panels, in which another person or entity is treated as a respondent in fact, or the beneficial owner of a disputed domain name. (See e.g. British Broadcasting Corporation v. Data Art Corporation / Stoneybrook, WIPO Case No. D2000-0683.)

The Complainant claims that the Respondent in fact is Mr. Mustafa Patel, who has registered a number of other domain names which are parked ‘pay-per-click’ sites, some of which are explicitly listed for sale. The Complainant also provides evidence that Mr. Patel is the registrant of the domain name <wealthbanc.com>, which indicates some connection with the Respondent “Wealthbanc Inc.” in this case.

Although put on notice of this argument, the named Respondent relevantly says nothing. The Respondent also provided no evidence of the actual existence of either “Aisha Haider” (other than the appearance of that name on an invoice) or “Wealthbanc Inc.” as a person or entity respectively, although both appear in the registration details for the disputed domain name. Neither did the Respondent provide any details of the regular business or occupation of either “Wealthbanc Inc.” or “Aisha Haider”.

The closest the Respondent comes to providing such evidence is a copy of an invoice made out to Aisha Haider from Nusoft.Net Technologies. The Respondent provided this invoice as evidence that the Respondent has made demonstrable preparations to use the disputed domain name in connection with a “Party Central Mobile Business” – although the purpose and nature of this intended business is also unexplained in the Response. The invoice is dated October 2, 2006. It indicates that a total amount of $14,545 was owing, out of which $5,000 was already paid as a deposit. The invoice was described as being for a:

“MOBI PORTAL SYSTEM – To manage the ADAMEVE.MOBI Party Central Mobile Business

- Custom Software Programming

- Custom Graphic Interface Designing

- End-User Training

1-YEAR SOFTWARE TECHNICAL SUPPORT”

What is notable about this invoice is that it was made out to the named Respondent (Aisha Haider) on a date (October 2, 2006) before the Respondent was the registrant of the disputed domain name. As noted above in the factual background, the Complainant provided evidence that, at October 26, 2006, the disputed domain name was registered to Mr. Mustafa Patel. There is no evidence that, between the disputed domain name being created on September 28, 2006, and when the invoice was issued on October 2, 2006, the disputed domain name was not also registered in the name of Mr. Mustafa Patel. For this reason, the Panel has accepted that the disputed domain name was, between its creation date and at least October 26, 2006, registered to Mr. Mustafa Patel. The invoice suggests that another person or entity (the Respondent) had spent money apparently in relation to a domain name <adameve.mobi> for which it was not the registrant. The Respondent provides no explanation for this.

From the circumstances set out above, the Panel has therefore inferred that Mr. Mustafa Patel is the beneficial or underlying registrant in fact of the disputed domain name. The Panel makes this finding taking into account that:

- Mr. Mustafa Patel appears to have been the registrant of the disputed domain name before it was transferred to the named Respondent;

- The Respondent’s evidence is that it spent money in connection with the disputed domain name when that domain name was in fact registered by Mr. Mustafa Patel.

- The disputed domain name appears to have been transferred to the named Respondent after the Complainant wrote to Mr. Patel seeking transfer of the disputed domain name;

- There is little evidence that Respondent actually exists, either as a person (Aisha Haider) or as a legal entity (Wealthbanc, Inc.);

- The Respondent provided no explanation of its ordinary business;

- The Respondent provided little explanation of its claimed intended use of the disputed domain name.

- The disputed domain name appears to have been offered for sale (even shortly after the date of the Respondent’s invoice, which it provides of purported evidence of having developed a website in connection with the disputed domain name).

- The named Respondent’s organization name (“Wealthbanc”) appears identical to the name of a domain name registered by Mr. Mustafa Patel (<wealthbanc.com>).

These circumstances, taken together, suggest to the Panel that there is at least a sufficiently close connection between Mr. Mustafa Patel and the named Respondent that they can both be treated as the Respondent in fact for the purpose of this case.

Conduct of the Respondent in fact

The Complainant provides evidence that the Respondent in fact, at least on October 26, 2006, used the disputed domain name to revert to a pay per click website. Among other links appearing on that website were links titled “Discreet Sex Toys & DVD” – which fall within the same type of business of the Complainant. The website also included the statement that “This domain <adameve.mobi> may be for sale by its owner!”.

This conduct is very similar to that in PHE, Inc. v. Chris Calnek, WIPO Case No. D2006-1612, which involved the domain name <adamandeve.mobi> and, as the Complainant claims in this case, was also a domain name registered prior to the proceedings by Mr. Mustafa Patel. In that case, the Panel noted that (citing Cable News Network LP, LLLP v. Ahmed Latif, FA. 100709) “[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).” (Paragraph 4(c)(i) provides that evidence of such a bona fide use may demonstrate rights or legitimate interests for the purpose of paragraph 4(a)(ii) of the Policy.)

Consistent with that case, the Panel also finds that the Respondent has not plausibly shown that it has made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods and services.

Rather it appears that the Respondent’s initial use of the disputed domain name was predatory - being in connection with a pay-per-click website on which the disputed domain name was also offered for sale. Even if the Panel accepted the Respondent’s vague contention that it intended to use the disputed domain name in connection with a “Party Central Mobile Business” (the meaning of which the Respondent did not explain), such a use would not be bona fide in the circumstances of this case. These circumstances are that the Complainant has registered and long-standing rights in its trademarks, which are wholly incorporated in the disputed domain name. It is also likely that the Respondent was aware of the Complainant’s rights when it registered the disputed domain name – both because those rights appear well-established, and because the Respondent’s pay-per-click site included links to services competing with the Complainant’s business.

The Panel notes the Respondent’s argument that, because of the short time between registration of the disputed domain name and the commencement of these proceedings “It is virtually impossible for a substantive legitimate business to be established…”. However paragraph 4(a)(ii) of the Policy does not require a respondent to demonstrate that it has established a business. It only provides that a respondent may provide evidence of “demonstrable preparations” to use the disputed domain name in connection with “a bona fide offering”. However, for the reasons set out above, the Respondent’s evidence of such preparations is vague. There is also contrary evidence, which suggests instead that the Respondent in fact used the disputed domain name in a way that was not bona fide.

There is otherwise no persuasive evidence that the Respondent has a right or legitimate interest in the disputed domain name. For these reasons, the Panel finds that the Complainant has established the second element under paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b)(iv) of the Policy provides that there is evidence of registration and use in bad faith where, by using the domain name, a 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 a 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.

For the reasons set out above (under the heading “Rights or legitimate interests”), the Panel finds that very likely that the Respondent was aware of the Complainant when it registered the disputed domain name. The identical correspondence of the disputed domain name with the Complainant’s mark suggests that the Respondent intended to mislead Internet users into believing that the domain name had some connection with the Complainant, and thereby increase traffic to, or the value of the disputed domain name.

In addition, there is also some evidence of bad faith for the purpose of paragraph 4(b)(i) of the Policy. That paragraph provides that there is evidence of bad faith where the Respondent acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring it to the complainant for valuable consideration in excess of its out-of-pocket costs directly related to the domain name. As noted above, the disputed domain name initially reverted to a website on which it was offered for sale. However, the Panel makes no finding under paragraph 4(b)(i) for two reasons. Firstly, it is not entirely clear that the sale of the disputed domain name was the primary intention of the Respondent. Secondly, the circumstances of this case are sufficient to demonstrate that the Respondent registered and used the disputed domain name in bad faith under paragraph 4(b)(iv) of the Policy.

For these reasons, the Panel finds that the Complainant has established this third element under paragraph 4(a) of the Policy.