Mind Gym Limited v. Divine Logics c/o Gopakumar G.S
Claim Number: FA1302001484449
Complainant is Mind Gym Limited (“Complainant”), represented by Shantanu Sood of Quest IP, Attorneys, India. Respondent is Divine Logics c/o Gopakumar G.S (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mindgymindia.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 11, 2013; the National Arbitration Forum received payment on February 11, 2013.
On February 12, 2013, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the National Arbitration Forum that the <mindgymindia.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com registration agreement 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 February 12, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 4, 2013 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@mindgymindia.com. Also on February 12, 2013, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 20, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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 name be transferred from Respondent to Complainant.
A. Complainant
1. Complainant was formerly known as “Primemount Limited” and has since changed its name to “The Mind Gym Limited” in March of 2000, and then again in March of 2012 to “Mind Gym Limited.”
2. Complainant has rights in THE MIND GYM mark through its registration with the Government of India Trade Marks Registry (Reg. No. 1,299,900 registered August 2, 2004).
3. Complainant also holds registrations for THE MIND GYM mark in countries around the world, including:
a. IP Australia (Reg. No. 939,361 registered April 2, 2007)
b. Canadian Intellectual Property Office (“CIPO”) (Reg. No. TMA706414 registered February 4, 2008)
c. European Union’s Office for Harmonization in the Internal Market (“OHIM”) (Reg. No. 1,959,683 registered February 2, 2002)
d. Intellectual Property Office of New Zealand (Reg. No. 715,565 registered April 5, 2007)
e. United Kingdom Intellectual Property Office (“UKIPO”) (Reg. No. 2,224,675 registered March 9, 2001)
f. United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,436,504 registered May 27, 2008)
4. Complainant has used its mark continuously and exclusively since 1999.
5. Complainant also owns a number of top-level domain names incorporating its THE MIND GYM mark.
6. Respondent’s <mindgymindia.com> domain name is confusingly similar to Complainant’s THE MIND GYM mark, as the disputed domain name merely adds the geographical term “India” to Complainant’s mark.
7. Respondent is an entity that maintains domain names on behalf of its clients and suggests and provides website design services.
8. Respondent’s disputed domain name resolves to a page offering identical services to those of Complainant’s.
9. Respondent’s previous attempt to apply for registration of the MIND GYM mark was successfully opposed by Complainant and subsequently denied by the Indian Trade Marks Registry.
10. Respondent registered the disputed domain name on September 20, 2006.
11. Respondent registered and is using the <mindgymindia.com> domain name in bad faith.
12. As of December 2012, Respondent attempted to change the image of Complainant’s mark displayed on Respondent’s website from MIND GYM to MIND GYMKHANA, which is the conversational term for “gym” in India.
13. Respondent is attempting to pass itself off as Complainant.
14. Respondent registered the <mindgymindia.com> domain name knowing that it was going to infringe on the rights of Complainant.
15. Respondent is using an email address that suggests its affiliation with Complainant.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the THE MIND GYM mark. Respondent’s domain name is confusingly similar to Complainant’s THE MIND GYM mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <mindgymindia.com> domain name, and that Respondent registered and uses the domain name in bad faith.
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(e), 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant argues that Complainant has rights in the THE MIND GYM mark under Policy ¶ 4(a)(i). Complainant provides the Panel with evidence of its registrations for the THE MIND GYM mark in countries all over the world, including India and the United Kingdom.
a. Government of India Trade Marks Registry (Reg. No. 1,299,900 registered August 2, 2004)
b. IP Australia (Reg. No. 939,361 registered April 2, 2007)
c. CIPO (Reg. No. TMA706414 registered February 4, 2008)
d. OHIM (Reg. No. 1,959,683 registered February 2, 2002)
e. Intellectual Property Office of New Zealand (Reg. No. 715,565 registered April 5, 2007)
f. UKIPO (Reg. No. 2,224,675 registered March 9, 2001)
g. USPTO (Reg. No. 3,436,504 registered May 27, 2008)
Evidence of a registration with a national trademark authority confers rights in a given mark under Policy ¶ 4(a)(i). See Am. Int’l Group, Inc. v. Morris, FA 569033 (Nat. Arb. Forum Dec. 6, 2005) (“Complainant has established rights in the AIG mark through registration of the mark with several trademark authorities throughout the world, including the United States Patent and Trademark Office (‘USPTO’)”); see also Royal Bank of Scot. Grp. plc v. Soloviov, FA 787983 (Nat. Arb. Forum Nov. 3, 2006) (“Complainant’s trademark registrations for the NATWEST mark with the United Kingdom Patent Office . . . establish Complainant’s rights in the mark pursuant to Policy ¶4(a)(i).”). Thus, Complainant has rights in the THE MIND GYM mark pursuant to Policy ¶ 4(a)(i).
Complainant claims that Respondent’s <mindgymindia.com> domain name is confusingly similar to Complainant’s THE MIND GYM mark under Policy ¶ 4(a)(i). Complainant argues that Respondent simply adds the geographical term “India” to Complainant’s registered mark. Respondent also removes the word “the” from Complainant’s mark, deletes the spaces between words in Complainant’s mark, and adds the generic top-level domain (“gTLD”) “.com.” These variations are insufficient to differentiate a disputed domain name from a given mark. See U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i).”); see also Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (holding that “the Domain Name is confusingly similar to Complainant’s ‘TESCO PERSONAL FINANCE’ mark in that it merely omits the descriptive term ‘personal.’”); Skype Ltd. v. Sacramento, FA 747948 (Nat. Arb. Forum Aug. 30, 2006) (“The addition of the geographic term [“Brasil”] does not avoid confusing similarity pursuant to Policy ¶ 4(a)(i).”). The Panel therefore finds that Respondent’s <mindgymindia.com> domain name is confusingly similar to Complainant’s THE MIND GYM mark pursuant to Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the disputed domain names. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c). See also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant claims that Respondent has no rights or legitimate interests in the <mindgymindia.com> domain name because it is not commonly known by it. Complainant claims that the WHOIS information for the disputed domain name lists “Divine Logics” as the Registrant.[1] Based on these contentions, as well as the lack of evidence on the record indicating that Respondent is commonly known by the disputed domain name, the Panel finds that Respondent is not commonly known by the <mindgymindia.com> domain name under Policy ¶ 4(c)(ii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding that a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
Complainant argues that Respondent has no rights or legitimate interests in the <mindgymindia.com> disputed domain name, as it does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain. Complainant claims that Respondent’s disputed domain name resolves to a website offering identical services as those that Complainant offers. The website resolving from the <mindgymindia.com> domain name features the heading “Mind Gym Empower Your Mind for Success.” The resolving website provides information regarding Complainant’s services and features topic headings such as “Mind Gym,” “Unique Workshops to Transform and Touch,” “Provides a venue to,” “Team Building,” “Trainer Boney Kannoth,” and “How he Influences.” The resolving website also features false contact information for Complainant.
Complainant claims that through these representations, Respondent is attempting to pass itself off as Complainant. Complainant also notes that the email address listed for Respondent, mindgym_coach@xxx.xxx, indicates Respondent’s attempt to confuse Internet users as to Respondent’s association with Complainant’s business. These types of actions and use by a respondent are not bona fide offerings of goods or services or legitimate noncommercial fair uses. See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”); Mortgage Research Ctr. LLC v. Miranda, FA 993017 (Nat. Arb. Forum July 9, 2007) (“Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for 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).”). The Panel therefore finds that Respondent has no rights or legitimate interests in the <mindgymindia.com> domain name, because Respondent is not making a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial fair use of the domain name pursuant to Policy ¶ 4(c)(iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that the <mindgymindia.com> domain name is being used to disrupt Complainant’s business and as a result is unfairly competing with Complainant. Bad faith use and registration in accordance with Policy ¶ 4(b)(iii) occurs when a respondent uses a confusingly similar domain name to divert Internet users to a site featuring content aimed at disrupting a complainant’s business. See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”). Accordingly, the Panel finds that Respondent registered and uses the <mindgymindia.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii).
Complainant claims that Respondent has registered and is using the <mindgymindia.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv). Complainant claims that Respondent is attempting to attract potential customers of Complainant to Respondent’s resolving website, for commercial gain, by using a confusingly similar domain name in order to create a likelihood of confusion with Complainant’s THE MIND GYM mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. Complainant argues that Respondent’s attempt to associate itself with Complainant is further accentuated by Respondent’s use of the mindgym_coach@xxx.xxx email address. Such use is evidence of bad faith use and registration under Policy ¶ 4(b)(iv). See Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where the respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site). The Panel therefore finds that Respondent registered and is using the <mindgymindia.com> domain name in bad faith under Policy ¶ 4(b)(iv).
Complainant argues that the content featured on Respondent’s resolving website, which offers the same types of services offered by Complainant, indicates that Respondent had actual knowledge of Complainant and its rights. The Panel agrees with Complainant regarding Respondent's actual knowledge, and concludes that Respondent registered the <mindgymindia.com> domain name in bad faith according to Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
The Panel finds Complainant has satisfied 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 <mindgymindia.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: March 28, 2013
[1] Complainant further notes that in addition to Respondent “Divine Logics,” a second Respondent should be included--“Mr. Goney Kannoth,” a customer of Divine Logics. Complainant contends that Goney Kannoth is the individual actually running the disputed domain name. The Panel finds there is insufficient evidence to add this individual as a party to this proceeding.
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