PHE, Inc. v. yuening liu / jiang yu
Claim Number: FA2208002007378
Complainant is PHE, Inc. (“Complainant”), represented by Susan Freya Olive of Olive & Olive, P.A., North Carolina, USA. Respondent is yuening liu / jiang yu (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <adameveseden.com>, <adameveslove.com>, <adameveusa.com>, <evefuntoys.com> and <adamfuntoys.com>, registered with eNom, LLC and NameCheap, Inc..
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Ho-Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 5, 2022; the Forum received payment on August 5, 2022.
On August 5, 2022, eNom, LLC; NameCheap, Inc. confirmed by e-mail to the Forum that the <adameveseden.com>, <adameveslove.com>, <adameveusa.com>, <evefuntoys.com> and <adamfuntoys.com> domain names are registered with eNom, LLC and NameCheap, Inc. and that Respondent is the current registrant of the names. eNom, LLC and NameCheap, Inc. have verified that Respondent is bound by the eNom, LLC and NameCheap, Inc. registration agreements and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On August 8, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 29, 2022 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@adameveseden.com, postmaster@adameveslove.com, postmaster@adameveusa.com, postmaster@evefuntoys.com, and postmaster@adamfuntoys.com. Also on August 8, 2022, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On September 1, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho-Hyun Nahm, Esq. as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: MULTIPLE RESPONDENTS
Complainant has alleged that the entities which control the disputed domain names are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” Complainant contends that the resolving websites all share a similar design, such as the logo and heading placement. Further, all of the disputed domain names are connected to Shenzhen Baixingshang Trading Co., Ltd. The Panel finds all of the disputed domain names are commonly owned/controlled by a single Respondent who is using multiple aliases.
A. Complainant
i) Complainant engages in the business of selling adult entertainment goods and services. Complainant asserts rights in the ADAM & EVE mark (e.g., Reg. No. 1,020,743, registered on September 16, 1975); ADAMEVE.com mark (e.g., Reg. No. 2,415,898, registered on December 26, 2000); EVE’S TOYS mark (e.g., Reg. No. 5,523,680, registered on July 14, 2018) through its registration of the marks with the United States Patent and Trademark Office (USPTO). The disputed domain names are identical or confusingly similar to Complainant’s ADAM & EVE, ADAMEVE.com, and/or EVE’S TOYS marks, as they incorporate the marks either entirely or partially, and adding generic or geographic terms, along with the “.com” generic top-level domain (gTLD).
ii) Respondent has no rights or legitimate interests in the disputed domain names. Complainant has not authorized or licensed Respondent to use Complainant’s marks, nor is Respondent commonly known by the disputed domain names. Further, Respondent is not using the disputed domain names in connection with a bona fide offering of goods and services or legitimate noncommercial or fair use as the resolving websites attempt to pass off as Complainant, mimicking Complainant’s website and offering competing goods.
iii) Respondent registered and uses the disputed domain names in bad faith. Respondent attempts to attract users for commercial gain, passing off as Complainant. Additionally, Respondent had actual notice of Complainant’s rights in Complainant’s marks.
B. Respondent
Respondent did not submit a Response in this proceeding.
1. The <adamfuntoys.com> domain name was registered on March 29, 2021; <adameveseden.com> and <evefuntoys.com> domain names were registered on April 16, 2021; <adameveusa.com> domain name was registered on September 3, 2021; and <adameveslove.com> domain name was registered on September 12, 2021.
2. Complainant has established rights in the ADAM & EVE mark (e.g., Reg. No. 1,020,743, registered on September 16, 1975); ADAMEVE.com mark (e.g., Reg. No. 2,415,898, registered on December 26, 2000); EVE’S TOYS mark (e.g., Reg. No. 5,523,680, registered on July 14, 2018) through its registration of the marks with the USPTO.
3. All of the disputed domain names resolved to websites where Respondent attempted to pass off as Complainant, mimicking Complainant’s website and offering competing goods and services.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant asserts rights in the ADAM & EVE mark (e.g., Reg. No. 1,020,743, registered on September 16, 1975); ADAMEVE.com mark (e.g., Reg. No. 2,415,898, registered on December 26, 2000); and EVE’S TOYS mark (e.g., Reg. No. 5,523,680, registered on July 14, 2018) through its registration of the marks with the USPTO. When a complainant registers a mark with the USPTO, it is sufficient to establish rights in the mark. Since Complainant provides evidence of Complainant’s registration of the ADAM & EVE, ADAMEVE.com, and EVE’S TOYS marks (Complainant’s marks), the Panel finds Complainant has established rights in Complainant’s marks per Policy ¶ 4(a)(i).
Complainant argues the disputed domain names are identical or confusingly similar to Complainant’s marks, as they incorporate either the mark in its entirety or an abbreviation of the mark, along with generic or geographic terms, and the “.com” gTLD. Adding a generic or geographic term does not distinguish the domain name from the mark under Policy ¶ 4(a)(i). See Dell Inc. v. pushpender chauhan, FA 1784548 (Forum June 11, 2018) (“Respondent merely adds the term ‘supports’ and a ‘.org’ gTLD to the DELL mark. Thus, the Panel finds Respondent’s disputed domain name is confusingly similar to Complainant’s DELL mark per Policy ¶ 4(a)(i).”); see also Cargill, Incorporated v. Sales Office / Cargill Brasil, FA 1737212 (Forum July 21, 2017) (finding the addition of the geographic term “Brasil” does not avoid confusing similarity pursuant to Policy ¶ 4(a)(i).). The Panel notes that the disputed domain names incorporate either one of Complainant’s marks in its entirety or generic or geographic terms e.g., “eden,” “love,” “usa,” or “funtoys,” along with the “.com” gTLD. The Panel therefore finds all of the disputed domain names are confusingly similar to Complainant’s marks.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant contends Respondent lacks rights and legitimate interests in the disputed domain names domain name because Respondent is not authorized to use Complainant’s marks, nor is Respondent commonly known by the disputed domain names. Previously, panels have looked at the available WHOIS information to determine whether a Respondent is commonly known by the disputed domain name. See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same). Further, lack of authorization to use a mark serves as further indication that a respondent is not commonly known by the disputed domain name. See Radio Flyer Inc. v. er nong wu, FA 2011001919893 (Forum Dec. 16, 2020) (“Here, the WHOIS information lists “er nong wu” as the registrant and no information suggests Complainant has authorized Respondent to use the RADIO FLYER mark in any way. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).”). The WHOIS information for <adameveseden.com>, <adameveusa.com>, <evefuntoys.com> and <adamfuntoys.com> domain names show the Respondent is known as “yuening liu”, while the WHOIS information for <adameveslove.com> domain name is known as “jiang yu”. Additionally, there is no evidence to suggest Complainant authorized Respondent to use its marks. Therefore, the Panel finds Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii).
Complainant also argues Respondent does not use the disputed domain names for a bona fide offering of goods and services or legitimate noncommercial or fair use because Respondent attempts to pass off as Complainant, mimicking Complainant’s website and offering competing goods and services. Using a domain name to pass off as a complainant by copying the complainant’s website design and offering similar or competing goods is not a bona fide offering of goods and services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”); see also ShipChain, Inc. v. 谢东东 / 谢东东, FA 1785189 (Forum June 21, 2018) (“The resolving webpages between Complainant’s and Respondent’s websites are virtually the same. Respondent’s use of the disputed domain name does not confer rights and legitimate interests under Policy ¶¶ 4(c)(i) and (iii).”). Complainant provides screenshots of both Complainant’s own website and Respondent’s competing websites. The Panel finds Respondent is not using the disputed domain names per Policy ¶¶ 4(c)(i) or (iii).
The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant first asserts Respondent registered and uses the disputed domain names in bad faith because Respondent attempts to attract users for commercial gain, passing off as Complainant. Under Policy ¶ 4(b)(iv), using a domain name to attract users for commercial gain by mimicking the complainant’s website and offering similar products is indicative of bad faith. See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding bad faith per Policy ¶¶ 4(b)(iii) and (iv) where the respondent used the disputed domain name to resolve to a website upon which the respondent passes off as the complainant and offers online cryptocurrency services in direct competition with the complainant’s business). The Panel references screenshots of the resolving websites. Therefore, the Panel finds Respondent registered and uses the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iv).
Additionally, Complainant contends Respondent had actual notice of Complainant’s rights in the mark, evidenced by the fame of Complainant’s marks, as well as Respondent’s use of the mark to offer competing goods. The Panel infers, due to the notoriety of Complainant’s marks and the manner of use of the disputed domain names that Respondent had actual knowledge of Complainant’s rights in Complainant’s marks at the time of registering the disputed domain names, which supports a bad faith registration per Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <adameveseden.com>, <adameveslove.com>, <adameveusa.com>, <evefuntoys.com> and <adamfuntoys.com> domain names be TRANSFERRED from Respondent to Complainant.
Ho-Hyun Nahm, Esq., Panelist
Dated: September 6, 2022
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