1. The Parties

The Complainants are Mamas & Papas (Holdings) Limited, Mamas & Papas (Retail) Limited, Huddersfield, United Kingdom of Great Britain and Northern Ireland, represented by Martineau Johnson, United Kingdom of Great Britain and Northern Ireland.

The Respondent is QTK Internet/Name Proxy, London, United Kingdom of Great Britain and Northern Ireland.

2. The Domain Name and Registrar

The disputed domain name <mamasandpapas.com> is registered with BulkRegister.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 6, 2004. On July 7, 2004, the Center transmitted by email to BulkRegister.com a request for registrar verification in connection with the domain name at issue. On July 7, 2004, BulkRegister.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. 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 9, 2004. In accordance with the Rules, Paragraph 5(a), the due date for Response was July 29, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 30, 2004.

The Center appointed Anthony R. Connerty as the sole panelist in this matter on August 4, 2004. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, Paragraph 7.

4. Factual Background

Mamas & Papas (Holdings) Limited, Mamas & Papas (Retail) Limited (the Complainants), rely upon the matters which are set out in the Complaint and which are supported by the documentation contained in the various Annexes. These matters have not been disputed by the Respondent and the Panel finds those matters to be proved. Those matters are:

The Complainants

(1) By virtue of an assignment dated March 29, 2004, various trademarks listed in a Schedule to the assignment were assigned from Mamas & Papas Limited (since renamed Mamas & Papas (Retail) Limited) to Meaujo (650) Limited (since renamed Mamas & Papas (Holdings) Limited. Whilst Mamas & Papas (Holdings) Limited is presently the legal owner of those trademarks, pending the recordal of the assignment at requisite trademark registries, Mamas & Papas (Retail) Limited remains the registered proprietor of the requisite trademarks. The documents annexed to the Complaint show registrations for the trademark MAMAS & PAPAS in over 20 countries worldwide: in Britain, Europe, the Middle East and the Far East. These registrations date back to 1981, and deal with various goods such as pushchairs, baby carriages, food and beverages for babies and infants, baby alarms, baby monitoring systems, nursery furniture and numerous other products related to babies and infants.

(2) The Complainants are an English company and one of its subsidiaries. Those companies are members of a group of companies specializing in the design, supply and retail of a wide range of products for babies and young children. The group represents one of the leading designers and suppliers of baby products in the United Kingdom and currently has 19 retail stores in the UK and Ireland. Details of the group’s product range are shown in the Annexes in the Complaint and are also shown on the Complainants’ website: “www.mamasandpapas.co.uk”.

(3) Since its incorporation in 1980, the Second Complainant has previously owned, extensively used and promoted the MAMAS & PAPAS trademark continuously for in excess of 20 years with extensive UK sales, currently exceeding £75 million per annum for the Mamas & Papas group, together with marketing, advertising and publicity throughout the United Kingdom and overseas. In doing so, it has carved out a distinctive niche in the UK nursery market and created the most respected range of nursery products in the UK with a brand name that consumers rely on and trust. The Mamas & Papas range of products is promoted, amongst other means, by a well-known bi-annual brochure featuring the entire range which is photographed on location in Italy. A copy of the brochure accompanies the Complaint: it is a high-quality publication running to some 180 pages. In addition to the Mamas & Papas range being sold through approved independent stockists, Mamas & Papas products are sold through the group’s dedicated retail outlets which are administered by the Second Complainant and situated in the UK and Ireland. As such, “Mamas & Papas” has become a household name with over 60% general awareness by the UK public and has won many awards for its products from leading UK consumer publications.

(4) The Complainants have a website “www.mamasandpapas.co.uk” which prominently features the MAMAS & PAPAS trademark and which provides information with regard to the Complainants’ activities and products. The website shows, for example, that the Complainant’s organisation was founded over 20 years ago by David Scacchetti and his wife Luisa who “first came to the nursery industry when we were looking for the products we needed for our first baby. “The website also shows that the Scacchettis have pledged their support with a donation of £1/4 million to Cancer Research UK”.

The Respondent

(1) The disputed domain name <mamasandpapas.com> was registered on August 9, 2000. The Complainants’ earliest trademark registrations predate that registration.

(2) The Respondent is QTK Internet/Name Proxy with an address in, London.

5. Parties’ Contentions

A. Complainants

(1) The Complainants, as stated above, say that the MAMAS & PAPAS trademark has been continuously used for in excess of 20 years in relation to a Nursery Products business before.

(2) The disputed domain name was registered after the Complainants registered their trademarks.

(3) The domain name <mamasandpapas.com> had originally been created on May 8, 1998, and operated in relation to a tribute website for the music group “The Mamas and Papas” by Phoenix Productions Inc. The website dedicated to the group used the domain name in issue prior to August 9, 2000.

(4) The domain name <mamasandpapas.com> was subsequently registered by Damian Macafee of Charlotte St, London. This is the same Damian Macafee, say the Complainants, who has been the Respondent to at least ten previous domain name disputes (which are referred to below). During the course of those disputes it has been found on several occasions that the contact details provided by Mr. Macafee have been fictitious.

(5) Subsequent to this change, the identity of the Registrant was changed from Mr. Macafee to QTK Internet/Name Proxy.

(6) The contact information provided by the Respondent is misleading. The Respondent QTK Internet is not listed as an incorporated company. There are no telephone listings for QTK Internet. Other than references to previous proceedings involving QTK Internet (referred to later), there are no links or available websites in the name of QTK Internet. All contact information relates to a remote post box and telephone answering service administered by British Monomarks Limited. In light of the searches carried out, it is not possible to identify the legal entity conducting business under the Respondent’s name, the Respondent having taken steps to conceal its true identity.

(7) Further, say the Complainants, the contact information mirrors that for the named administrative and technical contact, Damian Macafee, who does not appear to have any telephone or electoral roll listings for London and appears to be the same Damian Macafee involved in a number of previous UDRP proceedings.

(8) The Complainants say that the only information known to them for the purposes of contacting the Respondent is a BCM Box address and telephone/fax/email contacts of Damian Macafee as the administrative & technical contact.

Enquiries regarding the Respondent have been conducted as follows:

1. England & Wales Company Search - No companies registered under the name “QTK Internet” or otherwise comprising the prefix “QTK” .

2. British Telecommunications directory enquiry - No entry in London for “QTK Internet” or for any entity with the prefix “QTK”.

3. Google search - No website entry for “QTK Internet.”

4. Royal Mail - Post code search - the Respondent’s post code is listed for British Monomarks Ltd a company providing PO box hire and phone answering services.

5. British Monomarks Ltd telephone enquiry - Respondent’s BCM Box is listed as one of their private boxes. No details as to the hirer of the box were made available.

6. Telephone call to administrative & technical contact number - Response from answering/fax service without any information as to the identity of the entity for whom messages taken/faxes received.

7. DialogSelect WhoWas search for <mamasandpapas.com> shows Damian Macafee, an address Charlotte Street in London, and the Respondent’s BCM Box.

8. Directory enquiry - No entry for Damian Macafee in the London area.

9. 2002 Electoral Roll search - No entry for Damian Macafee in the London area.

(9) Since the registration on August 9, 2000, the domain name complained of has directed to a website whose contents have varied. Some of the Annexes to the Complaint contain a selection of archived pages, obtained from “www.archive.org”, relating to the “www.mamasandpapas.com” site . These illustrate the changes which have occurred. As at the date of preparation of the Complaint the domain name directs to a site which is split into three parts.

The header has the following message:

“New to the Internet, and a little scared about:

- Viruses ? - - Hackers ?

- Privacy ? - - Spam ? -

Solve all these worries, right now, online! Click Here!”

The link in turn directs to the site “www.atomictime.net/antivirus”

The main body of the page states:

“The domain name <mamasandpapas.com> has been reserved.

IMPORTANT NOTE: This address is used for INBOUND e-mail, ONLY!

If you believe that you have received spam that includes this domain name,

it was NOT done from here, and done WITHOUT authorization.

Please report this to us. Remember to include the e-mail header!

A website may be COMING SOON !

Underneath this statement are advertisements for:

WOMEN Seeking SEX (Meet Local Singles & Swingers - FOTOS ! )

Top 10 Web Hosting (Independent Reviews of Best Web Hosting)

Spyware Removal (Free software to remove spyware from PC)

Buy a Link Here Now

HAVE A FLING TODAY (Discreet Singles near You -- take a Look)

Road Runner (High Speed Online from $29.95/month)

Divorce Secrets (How to financially prepare for divorce)”

The foot of the page carries an advertisement for tax free cigarettes.

(10) From what is set out above it will be seen that the Respondent did not register the domain name in issue directly with the Registrar, but acquired that domain name from Damian Macafee. It is the Complainants’ submission:

(i) that there is no reason to differentiate between a direct registration and registration after a transfer, and they rely upon Dixons Group Plc v. Mr. Abu Abdullaah, WIPO Case No. D2000-1406 and Société Air France v. Vladimir Federov, WIPO Case No. D2003-0639.

(ii) that given the general awareness of the “Mamas & Papas” brand amongst consumers in the United Kingdom, it is inconceivable that the original registrant, Mr. Macafee and in turn the Respondent, were not aware of the Complainants’ trademark rights upon original registration and following the transfer. The Complainants say that the disputed domain name was in fact “registered” within the meaning of the Policy after it had been acquired by the Respondent. They rely on Ideenhaus Kommunikationsagentur GmbH v. Ideenhaus GmbH, WIPO Case No. D2004-0016.

(11) It is the Complainants’ submission that the disputed domain name was registered by Damian Macafee in bad faith. It is also submitted that the acquisition and subsequent “registration” of the disputed domain name by the Respondent was likewise in bad faith. Accordingly the Complainants rely on the clear link and association between Damian Macafee, the original registrant and currently the administrative and technical contact for the domain name in issue, and the Respondent whose existence remains concealed despite conducting pertinent searches:

(i) In relation to bad faith registration on the part of Damian Macafee the Complainants rely upon the fact that Mr. Macafee, the previous registrant and now administrative and technical contact, is in reality likely to be the principal and proprietor of QTK Internet. Mr. Macafee has been engaged in a “pattern of conduct”, and the Complainants rely upon the following decisions UDRP decisions (copies of which the Complainants annexed to their Complaint):

Media West-GSI Inc. and Gannett Satellite Information Network Inc. v. Damian Macafee, WIPO Case No. D2000-1032, JVC Americas Corp v. Damian Macafee, CPR Case No. 007, Polaroid Corporation v. Damian Macafee, FA 0102000096660, The Chancellor, Masters and Scholars of the University of Oxford v. Damian Macafee, WIPO Case No. D2001-0975, Resicom Corporation, Inc. v. Damian Macafee, WIPO Case No. D2001-0988, AT&T Corp. v. Damian Macafee, WIPO Case No. D2001-1159, Frederick’s of Hollywood Inc. v. Damian Macafee, WIPO Case No. D2002-0626, Carrefour S.A. v. Damian Macafee, WIPO Case No. D2002-1060, Archer-Daniels-Midlands Company v. Damian Macafee, WIPO Case No. D2003-0198, Microsoft Corporation v. Damian Macafee, WIPO Case No. D2004-0027.

(ii) In relation to bad faith use in relation to the Respondent the Complainants rely upon a pattern of conduct demonstrated by the following UDRP decisions (copies of which were annexed to the Complaint):

Best Western International Inc v. QTK Internet, FA0209000124994, Hilton Hotels Corporation and Hilton Hospitality Inc. v. QTK Internet, FA0304000154181.

(12) It is submitted by the Complainants that:

(i) “the Respondent’s bad faith registration of the domain name in issue effectively prevents the First Complainant, as the legitimate owner of the MAMAS & PAPAS trademark and/or the Second Complainant, as the registered proprietor of the MAMAS & PAPAS trademark, from effectively reflecting that valuable mark in a corresponding top level domain name, thereby disrupting the business of the First and/or Second Complainant and the Mamas & Papas group companies to their detriment. Further, the Respondent QTK Internet has been engaged in a pattern of such conduct, including the following UDRP decisions...” Reference is then made to Best Western International inc v. QTK Internet, FA0209000124994, Hilton Hotels Corporation and Hilton Hospitality Inc. v. QTK Internet, FA0304000154181.

(ii) “the Respondent’s use in bad faith is further demonstrated by its inaction, that is, its passive holding of the domain name <mamasandpapas.com> to the exclusion of the First Complainant, the owner of the MAMAS & PAPAS mark and/or the Second Complainant, the registered proprietor of the MAMAS & PAPAS trademark per Telstra Corporation Limited v. Nuclear Marshmallows WIPO Case No. D2000-0003.”

(iii) the Respondent knew perfectly well that “the domain name <mamasandpapas.com> was likely to be taken by many people as a reference to the Complainants. The Respondent will have been aware of the potential value of the domain name to the Complainants, and will also have been aware that people accessing a website by reference to the domain name in issue will have been expecting to reach a website of the Complainants. As a result, people accessing the website by reference to the domain name in issue may well be confused as to the source, sponsorship, affiliation or endorsement of the website. It is submitted that knowingly registering and using somebody else’s name as a domain name under circumstances where confusion is likely manifestly constitutes bad faith registration and use of the domain name in issue.”

(13) In summary the Complainants say:

(i) that the Respondent’s domain name is identical or confusingly similar to the Complainant’s trademark; and

(ii) that the Respondent has no rights or legitimate interest in the disputed domain name; and

(iii) (a) that the disputed domain name was registered in bad faith by Damian Macafee and is being used in bad faith by the Respondent, alternatively;

(b) That the disputed domain name should be considered as having been registered and used in bad faith by the Respondent.

The Complainants seek the transfer of the disputed domain name.

B. Respondent

The Respondent did not reply to the Complainants’ contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy requires the Complainants to prove each of the following elements:

(i) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the 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.

A. Identical or Confusingly Similar

The Panel is satisfied that the Complainants have extensive rights in the trademark MAMAS & PAPAS.

The Complainants say that the domain name <mamasandpapas.com> registered by the Respondent is essentially identical and is in any event confusingly similar to the Complainants’ registered trademark MAMAS & PAPAS.

The use of the word “and” in place of an ampersand (which is not a valid character in a domain name) and the use of the generic suffix “com” are the only differences between the domain name <mamasandpapas.com> and the registered trademark MAMAS & PAPAS. Such differences are irrelevant distinctions which would not change the likelihood of confusion arising. The domain name complained of is likely to be taken by most people in the United Kingdom as a reference to the Complainants’ online website. In consequence most people using the domain name complained of to access a website will be expecting to reach the website of the Complainants.

The Panel agrees with this view.

The Complainants’ trademarks are MAMAS & PAPAS. The disputed domain name is <mamasandpapas.com>. The Complainants’ website is “www.mamasandpapas.co.uk”.

The disputed domain name is phonetically identical and visually similar to the marks in which the Complainants have rights . Otherwise, the differences are the “.com”, and the “&”.

First, the .com gTLD is incapable of amounting to a distinguishing feature: the addition of the gTLD “.com” is without legal significance from the standpoint of comparing the disputed domain name and the Complainants’ marks, since use of a gTLD is required for domain name registrants.

Second, the ampersand may not be represented in domain names for technological reasons. The Complainants have themselves therefore eliminated the ampersand in their own website “www.mamasandpapas.co.uk”. Internet users are familiar with the fact that ampersands are not used in Internet addresses, and expect that a mark such as Complainants’ will be used without the ampersand in a domain name and web address: see example PG& E Corporation v. Samuel Anderson, WIPO Case No. D2000-1264.

The Panel finds that the disputed domain name is, at the very least, confusingly similar to a trademark in which the Complainants have rights.

In the absence of any response from the Respondent, the Panel notes the Complainant’s contentions and finds that the Complainants have satisfied the requirements of Paragraph 4(a)(i) of the Policy.

B. Rights or legitimate interests

As set out above, the Complaint and the supporting documents in the various Annexes contain significant evidence showing the Complainants’ use of the Mamas & Papas name over a period of some 20 years in connection with their Nursery Products business.

Paragraph 4(c) of the Policy lists (without limitation) three circumstances which, if proved, can demonstrate a Respondent’s rights or legitimate interest in a disputed domain name.

The Respondent in this case has not taken the opportunity given by the Rules to submit a Response. In the circumstances, the Panel finds that the Complainants have met the requirements of Paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

(1) Examples of registration and use in bad faith

Paragraph 4(b) of the Policy lists examples of circumstances which, if proved, shall be evidence of registration and use of a domain name in bad faith for the purposes of the Paragraph 4(a)(iii).

Paragraph 4(b)(i) gives an example of bad faith registration or acquisition (emphasis added): the selling, renting or otherwise transferring of a domain name for valuable consideration in excess of out-of-pocket costs.

An example of bad faith registration is set out in Paragraph 4(b)(ii): the Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name. There is a requirement that the Respondent has engaged in a pattern of such conduct.

Another example of registration in bad faith is set out in Paragraph 4(b)(iii): the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor.

An example of use in bad faith is set out in Paragraph 4(b)(iv): the use of a domain name by a Respondent who has intentionally attempted to attract, for commercial gain, Internet users to a website by creating a likelihood of confusion with a Complainant’s mark.

The circumstances listed in Paragraph 4(b) are but examples of evidence of bad faith “but without limitation”: other factors may be evidence of registration and use in bad faith for the purposes of Article 4 (a) (iii). In addition to the non- exhaustive list of examples the Panel may therefore also consider the “totality of circumstances” surrounding a case.

(2) Transfer of the domain name: the Complainants’ alternative contentions

The first matter to be considered is the apparent problem facing the Complainants in relation to the need for them to prove the Paragraph 4 (a) (iii) element that the domain name was both registered and is being used in bad faith. The domain name in issue was registered by Damian Macafee but was subsequently transferred to the Respondent.

Is it a requirement of Paragraph 4(a)(iii) that a Complainant must prove bad faith registration and use by the same person, i.e. the person who registered the domain name?

Or is Paragraph 4(a)(iii) satisfied:

either (1) where the registration was in bad faith by one person but bad faith use is by a different person,

or (2) where the original registrant transfers to a transferee and that transferee (a) acquired in bad faith and (b) is using in bad faith?

The Complainants’ lawyer meets the problem head-on.

His first contention is that the domain name should be considered as having been registered and used in bad faith by the Respondent, there being no reason to differentiate between a direct registration and a registration after transfer. As stated earlier, reliance is placed upon the decisions in Dixons Group Plc v. Mr.Abu Abdullaah, WIPO Case No. D2000-1406 and Société Air France v. Vladimir Federov, WIPO Case No. D2003-0639.

The Société Air France case seems to be a decision on its own particular facts

In the Dixons Group case the Panel stated that “In the present proceeding, the Respondent did not himself register the disputed domain name, and is only the transferee. However, there is some basis for saying that the term “registration” extends beyond the original act of registration and covers subsequent acquisitions of the domain name. Thus, para 4(b)(i) specifically refers to circumstances in which the Respondent has registered or has acquired a domain name, and there are several prior Panel decisions in which it has been held more generally that “registration” extends to subsequent acts of acquisition: see BWR Resources Ltd v Waitomo Adventures Ltd WIPO Case No. D2000-0861 and Motorola Inc v. NewGate Internet, Inc WIPO Case No. D2000-0079.”

The Complainants’ lawyer contends that the disputed domain name was in fact “registered” within the meaning of the Policy after it had been acquired by the Respondent, and he relies upon decision in Ideenhaus Kommunikationsagentur GmbH v. Ideenhaus GmbH, WIPO Case No. D2004-0016.

The Panel in that case stated that “the Respondent did not register the Domain Name directly with the registrar but became the new owner by way of a transfer after acquiring the Domain Name from its managing director. It is the Panel’s view that this does not mean that the Respondent has not “registered” the Domain Name within the meaning of the Policy, indeed, there is no reason to differentiate between a direct registration and registration after a transfer (see also Dixons Group Plc v. Mr. Abu Abdullaah WIPO Case No. D2000-1406, and Société Air France v. Vladimir Federov, WIPO Case No. D2003-0639 ). The Domain Name was in fact “registered” within the meaning of the Policy after it had been acquired by the Respondent between June 6, 2001, and January 17, 2002.”

The Complainant’s second contention is a reliance on a bad faith registration by Mr. Macafee.

The Complainants are therefore submitting claims in the alternative based upon the alternative scenarios set out above, namely:

(i) where the “registration” constituted the subsequent acquisition of the domain name by the Respondent, and that Respondent’s acquisition and use were both in bad faith.

(ii) where the registration was in bad faith by Mr. Macafee and the use in bad faith is by the Respondent.

(3) Interpretation of Paragraph 4(a)(iiii) and Paragraph 4(b) of the Policy

The wording of Paragraph 4(b)(i) of the policy is disjunctive. The circumstances illustrated relate both to registration and to acquisition. Such acquisition must be from a third party who has previously registered the domain name in question. The acquisition may be by transfer, assignment, purchase or some similar method.

It would clearly be an odd situation if the Paragraph 4(b)(i) “circumstance” covered both registration and the subsequent acquisition of the domain name by transfer, etc., but the circumstances given in Paragraphs 4(b)(ii) and (iii) covered registration only, and not subsequent acquisition. The Policy must be construed as a whole, and so as to produce a sensible interpretation.

In any event, an interpretation of the Policy which resulted in the whole purpose of the Policy being negated by the simple expedient of a registrant transferring the domain name to, say, an associate, is unattractive. Such an interpretation cannot have been the intention of those who drafted the Policy.

The Policy should be interpreted in such a way as to give effect to the aims and purposes of that Policy.

The Panel is therefore satisfied that the registration and use requirements of Paragraph 4(a)(iii) are complied with in circumstances where the registration of the domain name was by one person, but the use of that domain name is by another person who subsequently acquired the domain name by transfer or other means. The Panel leaves open the question whether in such circumstances it is necessary to show some link between the original registrant/transferor and the transferee. On the undisputed evidence in this case such link exists.

The Panel is also satisfied that there is an alternative interpretation which is equally valid, namely that the subsequent acquisition by transfer (or by some other means of acquisition) constitutes the “registration”, so that both bad faith “ registration” and bad faith use by the transferee will satisfy the requirements of Paragraph 4(a)(iii).

(4) Registration and Use in Bad Faith: the alternative scenarios and alternative interpretations

In relation to the bad faith requirement of Paragraph 4(a)(iii), the next questions on the alternative factual scenarios and the alternative interpretations of the Policy are:

(i) whether Mr. Macafee registered the Domain Name in bad faith,

(ii) whether the Respondent is using that domain name in bad faith,

(iii) whether the Respondent “registered”(and is using) the domain name in bad faith.

(iv) Bad Faith Registration by Mr Macafee

There is no allegation by the Complainants that the selling/renting, etc., circumstance of Paragraph 4(b)(i) applies in this case.

The Complainants rely on the Paragraph 4(b)(ii) example of registration in order to prevent the owner of the trademark or service mark from “reflecting the mark in a corresponding domain name”. That circumstance requires proof that the registrant has “engaged in a pattern of such conduct.”

By virtue of the registration of the domain name in issue, the Complainants are prevented from reflecting their trademark in a corresponding domain name.

The Panel is satisfied that the evidence relied upon by Complainants is sufficient to prove bad faith registration of that domain name: Mr. Macafee’s efforts to conceal his identity and his previous “pattern” of conduct as shown by the earlier decisions referred to in the Complaint. For example:

(a) Media West-GSI, Inc., and Gannett Satellite Information Network, Inc. (collectively “Complainant”) v. Damian Macafee (Respondent), WIPO Case No. D2000-1032

In that case the Complaint stated that Damian Mcafee’s domain name, <baseballweekly.com>, was identical to Complainant’s BASEBALL WEEKLY mark and confusingly similar to Complainant’s registered USA TODAY BASEBALL WEEKLY mark.

The Panel stated that “It is clear from the above that the domain name <baseballweekly.com> has been registered for the sole purpose of selling it, and not for the purpose of using it in connection with an offering of goods or services, other than the domain name itself. Although the above statements do not constitute an offer to sell the domain name, they are an invitation to make offers to purchase it, for a sum to be negotiated which would obviously be greater than the cost of registration, that is, for a profit.”

(b) In JVC Americas Corp. v. Damian Macafee, CPR Case NO.007, the Respondent was Damian Macafee. Respondent filed no response and therefore was not represented. The domain name at issue was <jvc-america.com>.

The Panel stated that the “Complainant has provided documentary evidence that Respondent offered to relinquish the domain name for money, other URLs or JVC merchandise and thus violated prohibition under Paragraph 4(b)(i) against selling domain names for profit”.

The Panel also stated that the “Respondent’s bad faith use of the domain name is clearly demonstrated by his inaction, that is, his passive holding of the domain name

<jvc-america.com> to the exclusion of Complainant, the owner of the JVC mark. In the now famous Telstra case, it was firmly established that inaction and passive holding of a domain name satisfies the bad faith requirements of the Policy. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, at 10-11; see also, Ingersoll-Rand Co. v. Frank Gully, d/b/a Advocomren, WIPO Case No. D2000-0021; Symplicity Corporation v. Bob Gately, WIPO Case No. D2000-0425”.

(c) In The Chancellor, Masters and Scholars of the University of Oxford v. Damian Macafee, WIPO Case No. D2001-0975.

The Panel stated that “The subparagraphs of Paragraph 4(b) of the Policy only provide examples of bad faith use and registration, and the Panel is satisfied in this case that there are a number of factors which, taken in combination, are sufficient to constitute bad faith registration and use.

The first of these relates to the address and contact details which the Respondent provided to the Registrar.

The contact telephone number provided was the number of a public telephone box outside a public house in London, and the Respondent is not known at the Charlotte Street address. He is not listed on the United Kingdom electoral roll, and neither the Complainant nor the courier companies attempting to deliver documents to him in this case have been able to find him. The email address provided to the Registrar has proved equally ineffective as a means of communicating with the Respondent.

The provision of fictitious contact details to a Registrar has been held to be indicative of bad faith registration in a number of WIPO cases ....”

In relation to the Paragraph 4(b)(iii) example of registration for the purpose of disrupting the business of a competitor, it has been held in a number of previous Panel decisions that “competitor” has a wide meaning and is not confined to those who are actually selling or providing competing products.

For example, in one case the Panel stated that “ The Policy does not define who is a “competitor” for the purpose of the paragraph, i.e. is it a competitor of the domain name owner or a competitor of the Complainant? Neither does the paragraph define what is encompassed by the expression “business of a competitor”. There is no reference to the business being one where trade is conducted for commercial gain. For this reason and because of the context of paragraph 4(b)(iii) as an example within the general heading of “bad faith”, the Panel holds that the expression “business” must be liberally construed to cover activities concerning the supply of some goods or services and in respect of which a reputation may be gained. The activities of the Complainant are held to come within the ambit of this term. Regarding the word “competitor” similarly, the Panel holds that this term naturally should be read as relating to the “competitor” of the domain name owner. The natural meaning of the word “competitor” is one who acts in opposition to another and the context does not imply or demand any restricted meaning such as a commercial or business competitor...”: Mission KwaSizabantu v. Benjamin Rost, WIPO Case No. D2000-0279

The Panel is satisfied on the evidence put forward by the Complainants, in particular the evidence relating to Mr. Macafee’s previous conduct as demonstrated by the Decisions referred to above, that the Complainants have brought themselves within the Paragraph 4(b)(iii) example and that they have therefore satisfied the bad faith registration requirement of Paragraph 4(a)(iii).

In any event, the Panel is satisfied that, in addition to bringing themselves within the Paragraphs 4(b)(ii) and (iii) examples of bad faith registration, the Complainants’ evidence is sufficient to prove bad faith registration on the “combination of factors” approach adopted by the Panel in The Chancellor, Masters and Scholars of the University of Oxford v. Damian Macafee, WIPO Case No. D2001-0975: including the efforts to conceal identity, the previous pattern of behaviour in relation to the registration of domain names, and the nature of the material on the website.

(ii) Use in bad faith by the Respondent

Paragraph 4(b)(iv) gives an example of use in bad faith: “ by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location”.

The Complainants’ evidence shows that the domain name complained of directs to a site which includes advertisements for “Women Seeking Sex” and “Having A Fling Today”. The Complainants contend that the Respondent is not commonly known by the name Mamas & Papas and say that “people accessing the website may well be confused as to the source, sponsorship, affiliation or endorsement of the website”.

As mentioned earlier, the Complainants rely on Best Western International Inc. v. QTK Internet, FA0209000124994, Hilton Hotels Corporation and Hilton Hospitality Inc. v. QTK Internet, FA0304000154181 as evidence of bad faith by the Respondent. Both cases relate to domain name registrations by QTK Internet of Turtle Creek, PA, and in both cases the National Arbitration Forum Panels ordered the transfer of the disputed domain names. In the Best Western case the Respondent offered services closely similar to those offered on Best Western’s hotel website. In the Hilton Hotels case the National Arbitration Forum Panel held that the Respondent had made unauthorised use of the Hilton mark in order to usurp the Hilton’s consumers.

The Complainants rely upon the link between Mr. Macafee and the Respondent: “the identity of the registrant was changed from Mr. Macafee to QTK Internet/Name Proxy”. Prior to that Mr. Macafee had changed his contact details to the address of the Respondent.

The Complainants also rely upon the decision in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, where the Panel stated that “In light of these particular circumstances, the Administrative Panel concludes that the Respondent’s passive holding of the domain name in this particular case satisfies the requirement of paragraph 4(a)(iii) that the domain name “is being used in bad faith” by Respondent.”

The Respondent has not sought to challenge the evidence or the submissions of the Complainants. The Panel is satisfied that, on the basis of the matters set out in the Complaint and on the basis of the evidence submitted in support, the Complainants have satisfied the requirement of Paragraph 4 (a) (iii) of the Policy as to use in bad faith by the Respondent.

(iii) “Registration” in bad faith and use in bad faith by the Respondent

The Complainants’ alternative claim is that the Respondent’s subsequent acquisition of the disputed domain name from Mr. Macafee constitutes registration, and that such registration by acquisition was in bad faith.

The alternative scenario is therefore that both “registration” and use by the Respondent were in bad faith.

On the alternative construction of Paragraph 4(a)(iii) that subsequent acquisition constitutes “registration”, the Panel is satisfied on the evidence that the Respondent both registered and used the domain name in bad faith. The Panel again notes the evidence of the link between Mr. Macafee and QTK notes the failure of the Respondent to submit a Response.

(5) Conclusions on Paragraph 4(a)(iii)

For the reasons given above, the Panel finds that the Complainants have satisfied the requirements of Paragraph 4(a)(iii) of the Policy on both of the following alternatives, namely:

(i) that the domain name in issue was registered in bad faith by Mr. Macafee and is being used in bad faith by the Respondent, alternatively

(ii) that the domain name in issue was registered in bad faith by the Respondent and is being used in bad faith by the Respondent.

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 <mamasandpapas.com> be transferred to the Complainants.

Anthony R. Connerty
Sole Panelist

Date: August 14, 2004