DECISION

Warner Health Care, Inc. v. Peter Carrington a/k/a Party Night Inc.

Claim Number: FA0307000169084

PARTIES

Complainant is Warner Health Care, Inc., Cincinnati, OH, USA (“Complainant”) represented by Sean F. Heneghan. Respondent is Peter Carrington a/k/a Party Night Inc., Amsterdam, NETHERLANDS (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <avlimill.com>, <avlmil.com>, <avimil.com>, <avilimil.com> and <avlomil.com>, registered with Key-Systems Gmbh.

PANEL

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.

P. Jay Hines as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on July 16, 2003; the Forum received a hard copy of the Complaint on July 21, 2003.

On July 24, 2003, Key-Systems Gmbh confirmed by e-mail to the Forum that the domain names <avlimill.com>, <avlmil.com>, <avimil.com>, <avilimil.com> and <avlomil.com> are registered with Key-Systems Gmbh and that the Respondent is the current registrant of the name. Key-Systems Gmbh has verified that Respondent is bound by the Key-Systems Gmbh registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

On July 25, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of August 14, 2003 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@avlimill.com, postmaster@avlmil.com, postmaster@avimil.com, postmaster@avilimil.com and postmaster@avlomil.com by e-mail.

A timely Response was received and determined to be complete on August 14, 2003.

Complainant’s Additional Submission was received and determined to be in accordance with Forum Supplemental Rule #7 on August 19, 2003.

Respondent submitted an informal Additional Submission that did not comply with Forum Supplemental Rule #7 on August 20, 2003. The Panel has chosen to consider this deficient submission in reaching its decision in this dispute.

On September 3, 2003, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed P. Jay Hines as Panelist.

On September 11, 2003, the Panelist, after determining that the submissions from both parties were inadequate for a proper decision to be rendered in this matter, issued a procedural order which the Forum forwarded to the parties, requesting further submissions by September 18, 2003, specifically:

1. Evidence and documents supporting Complainant’s first use of the trademark in which it asserts it has rights; and

2. Evidence and documents concerning Respondent’s legitimate interest in the disputed domain names, including plans/consultations to prepare to sell goods over the Internet under the contested domain names.

In response to the procedural order, Complainant provided a further submission on September 18, 2003.  Respondent did not provide any additional submissions. 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

Complainant claims ownership and use of the trademark AVLIMIL in connection with non-hormonal, non-synthetic tablets for female sexual dysfunction.  Complainant is the owner of pending U.S. Application Serial No. 78/218,506, filed February 25, 2003, for the mark AVLIMIL for “herbal formulation” and which claims use in commerce since as early as December 15, 2002. 

Complainant asserts that the subject domain names were intentionally registered as slight misspellings of Complainant’s AVLIMIL mark and that Respondent is a serial  “typosquatter” in that he has registered domain names comprised of misspellings of the trademarks of others, including Sallie Mae, Yahoo!, Boston Herald, Banana Republic, Pottery Barn, Bank of America, and Embassy Suites, and has been a party to 20 some recent UDRP decisions. 

Complainant contends that since December 2002 it has invested over $5 million in advertising and promoting its goods under the AVLIMIL mark in popular magazines such as “Biography,” “Better Homes and Gardens”, “Cosmopolitan” and “Working Mother.”  It has also invested in television ad campaigns on cable television stations, on targeted television shows and on local network channels.  Complainant operates an interactive website through which orders may be placed for the products.

Complainant contends that Respondent is using the subject domain names to misdirect Internet users to a web site that features a “pay-per-click” search engine, pop-up ads and links to commercial services including <MP3Messenger.com> and <worldonlinegames.tv>.  Complainant contends that such usage does not constitute a bona fide offering of goods or services as contemplated by Paragraph 4(c)(i) of the Policy.

Complainant asserts that Respondent’s registration and use of the subject domain names amounts to bad faith because its sole purpose is to defer Internet traffic away from Complainant’s <avlimil.com> domain name for Respondent’s own commercial gain. 

On April 2, 2003, Complainant’s counsel sent a cease and desist letter to Respondent both via registered mail and e-mail.  The registered mail letter was returned.  

B. Respondent

Respondent contends that Complainant stole his idea to market a similar product with the name AVLIMILL and that Complainant is engaging in reverse domain name hijacking.  Respondent contends that Internet users that access the subject web sites are not inundated with pop-up ads.  Respondent argues that each domain name case must be considered in its own right and that any prior decisions to which he is a party have no bearing on this matter. 

Respondent contends that he created the <avlimill.com> domain name from the terms “avlim” and “ill,” bearing a constructive meaning of “compounds to cure illness.”  Respondent contends that he registered the additional four domains as a defense to having similar domain names registered by others.  He contends that these four additional domain names were not available with the double “l” ending. 

Respondent claims that the most important fact is that all of his domain name registrations occurred before the filing of Complainant’s U.S. trademark application.  Respondent further contends that Complainant did not demonstrate established rights by showing use of the AVLIMIL mark as early as December 15, 2002.  Respondent concludes with the statement that he had no knowledge of the existence of Complainant when the domain names were registered on January 24, 2003. 

A. Complainant’s Additional Submissions

Initially, Complainant points out that Respondent’s filing is neither signed nor certified according to the rules.  Complainant also notes that the hard copy of the Complaint mailed to Respondent was returned with addressee designated unknown.  Complainant argues that this is additional evidence of bad faith domain name registration because of the provision of false information. 

Complainant notes that it registered the <avlimil.com> domain name on September 16, 2002 in preparation for its use in connection with its product.  Complainant also notes that its proprietary blend was the subject of a three-month clinical trial that was published on November 12, 2002 and that its design firm was working on the AVLIMIL branding package throughout the fall of 2002.  Complainant contends that this supports its senior rights in the AVLIMIL mark. 

Complainant notes that Respondent updated its websites corresponding to the subject domain names by creating a webpage featuring the term AVLIMILL, together with photos and statements alleging corresponding television and magazine ads.  However, the links on the page revert to browsers featuring competitive third party products.  Complainant further states that Respondent has supplied no evidence of trademark use on packaging or in advertising. 

With respect to Respondent’s claimed creation of the term “AVLIMILL,” Complainant argues that Respondent has not provided evidence of the development of the term prior to the dispute. 

Complainant points to four recent panel decisions and additional domain names registered by Respondent to establish a long history of registering multiple domain names  that are slight misspellings of third party trademarks. 

In response to the procedural order of September 11, 2003, Complainant submitted a photocopy of an ad that ran in the January 6, 2003 edition of “Forbes” magazine, together with evidence that the issue went on sale on December 23, 2002.  In addition, Complainant submits an order form for the ad placed by a sister company for all 2003 issues of “Forbes.”  Finally, Complainant submits a shipping order dated December 2, 2002 from the company Complainant uses to manufacture the AVLIMIL product.

FINDINGS AND DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2) the 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.

Identical and/or Confusingly Similar

Complainant, in its submission in response to the procedural order, provided dated evidence of its use of the mark AVLIMIL prior to the registration of the subject domain names.  The mark AVLIMIL differs from the domain name <avlimill.com> by a single letter.  It is otherwise identical in sound, appearance and commercial impression.  It is accordingly confusingly similar to a trademark in which the Complainant has rights.

Similarly, the domain names <avlmil.com>, <avimil.com>, <avilimil.com> and <avlomil.com> are highly similar in sound, appearance and commercial impression to Complainant’s mark.  Accordingly, the Panelist finds that these domain names registered by Respondent are likewise confusingly similar to a trademark in which Complainant has rights.  See Victoria’s Secret v. Zuccaini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000).

Rights or Legitimate Interests

The only circumstance that Respondent could rely on to demonstrate his rights or legitimate interests in any of the domains is Paragraph 4(c)(i) of the Policy.  However, it is well-established that when a domain name Registrant is using a domain to misdirect traffic to a website by employing a domain name that is a slight misspelling of a mark in which a trademark owner has rights, the use is not a bona fide offering of goods or services regardless of whether the goods or services are competing or the offering of those goods and services in and of itself is bona fide.  See Wells Fargo & Co. v. Party Night Inc., FA 144647 (Nat. Arb. Forum Mar. 18, 2003).

In light of the fact that Respondent has registered numerous misspellings of well-known marks and as a result has been the target of no less than 28 UDRP proceedings, the Panelist gives little weight to Respondent’s story regarding the creation of the word “AVLIMILL,” particularly given the considerable promotional activities of Complainant in advance of registration of the subject domain names. 

Respondent has not been commonly known by any of the subject domain names.  Nor is Respondent making a legitimate non-commercial or fair use of any of the domain names.  Accordingly, the Panelist finds that the Respondent has no rights or legitimate interests in respect of any of the subject domain names. 

Registration and Use in Bad Faith

It does not appear that Respondent registered the subject domain names primarily for the purpose of selling, renting or otherwise transferring the domain names to the Complainant or to a competitor of the Complainant.  Registration of the domain names does not prevent the Complainant from reflecting its mark in a corresponding domain as Complainant registered <avlimil.com> long before Respondent registered the subject domain names.  It does not appear that the domain names were registered primarily for the purpose of disrupting the business of Complainant. 

However, it is clear that Respondent has engaged in a pattern of conduct, in registering and using the subject domains, to intentionally attract Internet users to his web site by creating a likelihood of confusion with Complainant’s mark for commercial gain pursuant to Paragraph 4(b)(iv) of the Policy.  The misdirection was initially to a link to unrelated and non-competitive websites.  However, the inference from Respondent’s later activity in creating an initial web site page, both featuring a seemingly competing product and linking to actual competing products, is a further indication of bad faith use.  See TM Acquisition Corp. v. Carroll, FA 97073 (Nat. Arb. Forum May 14, 2001). 

The Panelist makes no finding with respect to the returned Complaint.

Because Complainant has satisfied all three elements of the Policy, Respondent’s allegation of reverse domain name hijacking must fail.  See World Wrestling Fed’n Entm’t, Inc. v. Ringside Collectibles, D2000-1306 (WIPO Jan. 24, 2001).

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <avlimill.com>; < avlmil.com>; < avimil.com>;

<avilimil.com>; and <avlomil.com> domain names be TRANSFERRED from Respondent to Complainant.

P. Jay Hines, Panelist
Dated: September 30, 2003

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