Napoleon Hill Foundation v. Steve Mays / 1937thinkandgrowrich
Claim Number: FA1504001613050
Complainant is Napoleon Hill Foundation (“Complainant”), represented by Sana Hakim, Illinois, USA. Respondent is Steve Mays / 1937thinkandgrowrich (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <1937thinkandgrowrich.com>, registered with Melbourne IT Ltd.
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 Forum electronically on April 6, 2015; the Forum received payment on April 6, 2015.
On April 7, 2015, Melbourne IT Ltd confirmed by e-mail to the Forum that the <1937thinkandgrowrich.com> domain name is registered with Melbourne IT Ltd and that Respondent is the current registrant of the name. Melbourne IT Ltd has verified that Respondent is bound by the Melbourne IT Ltd 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 April 8, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 28, 2015 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@1937thinkandgrowrich.com. Also on April 8, 2015, 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 May 8, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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 name be cancelled.
A. Complainant
1. Complainant has registered the THINK AND GROW RICH mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,534,048, registered Apr. 11, 1989). The mark is used on or in connection with the sale of pre-recorded audio and video cassette tapes, calendars, diaries, memorandum books, newsletters, study guides relating to personal achievement, and computer software for educational use.
2. The <1937thinkandgrowrich.com> domain name which was registered on September 4, 2011, is confusingly similar to the mark because the domain name contains the entire mark and differs only by the addition of the generic phrase “1937” and the generic top-level domain (“gTLD”) “.com.”
3. Respondent has no rights or legitimate interests. Respondent is not commonly known as the disputed domain name, nor is Respondent a licensee of Complainant. Further, the domain name resolves to a webpage wherein Respondent is attempting to pass itself off as Complainant, and selling Complainant’s goods in the process.
4. Respondent has engaged in bad faith registration and use. By offering Complainant’s products for sale, Respondent is disrupting Complainant’s business. By trying to pass itself off as Complainant, and by selling Complainant’s goods on the resolving webpage, Respondent has created a likelihood of confusion for commercial gain. Lastly, Respondent had actual and/or constructive knowledge of Complainant’s trademark rights when it registered the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the THINK AND GROW RICH mark. Respondent’s domain name is confusingly similar to Complainant’s THINK AND GROW RICH mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <1937thinkandgrowrich.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 has registered the THINK AND GROW RICH mark with the USPTO (e.g., Reg. No. 1,534,048, registered Apr. 11, 1989). The mark is used on or in connection with the sale of prerecorded audio and video cassette tapes, calendars, diaries, memorandum books, newsletters, study guides relating to personal achievement, and computer software for educational use. Registration with the USPTO is sufficient to establish rights in a trademark. See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.”).
Complainant argues that the <1937thinkandgrowrich.com> domain name is confusingly similar to the mark because the domain name contains the entire mark and differs only by the addition of the number “1937” and gTLD “.com.” The number “1937” is actually descriptive of one of Complainant’s products, which may make the disputed domain name more likely to be found as confusingly similar under Policy ¶ 4(a)(i). Moreover, a gTLD, such as “.com,” does not distinguish a domain name from the mark at issue. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). The addition of a number to a domain name that is otherwise identical to the mark at issue creates a confusing similarity. See Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that adding the suffixes "502" and "520" to the ICQ trademark does little to reduce the potential for confusion). As such, the Panel finds that the <1937thinkandgrowrich.com> domain name is confusingly similar to Complainant’s THINK AND GROW RICH mark under 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 asserts that Respondent is not commonly known by the disputed domain name, nor is Respondent in possession of licensing rights that would allow him to use the THINK AND GROW RICH mark in domain names. The Panel notes that “steve mays” is listed as the registrant for the disputed domain name. The record is void of any evidence to indicate that Respondent is either commonly known by the disputed domain name or in possession of licensing rights. Thus, Respondent cannot have rights or legitimate interests under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Complainant argues that Respondent’s use of the disputed domain name fails to consist of a bona fide offering of goods or services or a legitimate noncommercial or fair use. Specifically, Complainant claims that the resolving webpage shows that Respondent is selling Complainant’s goods, and attempting to pass itself off as Complainant in the process. Complainant notes that the resolving webpage offers a number of books and audio/video materials for sale, all of which are Complainant’s copyrighted works. Complainant further notes that because Respondent is trying to sell Complainant’s goods, it is attempting to give Internet users the impression that the resolving webpage is sponsored by Complainant. The use of a domain name to sell a complainant’s goods without a license agreement or attempting to pass off as a complainant does not amount to a bona fide offering or a legitimate noncommercial or fair use. See G.D. Searle & Co. v. Mahony, FA 112559 (Nat. Arb. Forum June 12, 2002) (finding the respondent’s use of the disputed domain name to solicit pharmaceutical orders without a license or authorization from the complainant does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i)); see also Kmart of Mich., Inc. v. Cone, FA 655014 (Nat. Arb. Forum April 25, 2006) (The panel found the respondent’s attempt to pass itself of as the complainant was not 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)). Thus, the Panel finds that Respondent does not have rights under Policy ¶¶ 4(c)(i) or (iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent has engaged in bad faith registration and use. First, Complainant claims that Respondent has displayed bad faith under Policy ¶ 4(b)(iii) by offering Complainant’s own goods for sale. The resolving webpage displays Complainant’s mark and offers a number of books and audio/video materials for sale, all of which are Complainant’s copyrighted works. Use of a complainant’s mark to offer a complainant’s own goods for sale disrupts that complainant’s business in bad faith. See G.D. Searle & Co. v. Celebrex Cox-2 Vioxx.com, FA 124508 (Nat. Arb. Forum Oct. 16, 2002) (“Unauthorized use of Complainant’s CELEBREX mark to sell Complainant’s products represents bad faith use under Policy ¶ 4(b)(iii).”). Thus, because the Panel finds that Respondent is using Complainant’s THINK AND GROW RICH mark in order to sell Complainant’s own goods, the Panel finds bad faith pursuant to Policy ¶ 4(b)(iii).
Second, Complainant claims that Respondent has displayed bad faith under Policy ¶ 4(b)(iv) by attempting to pass itself off as Complainant and selling Complainant’s goods in the process. Complainant argues that Internet users who view the resolving webpage will see Complainant’s products being offered for sale, accompanied by the THINK AND GROW RICH mark, and assume that the website is sponsored by or affiliated with Complainant. Because Respondent is offering Complainant’s goods for sale, Respondent’s apparent intent is to commercially profit from this likelihood of confusion. Use of a domain name to sell a complainant’s goods amounts to bad faith under Policy ¶ 4(b)(iv). See Hewlett-Packard Co. v. Ali, FA 353151 (Nat. Arb. Forum Dec. 13, 2004) (“Respondent [used “HP” in its domain name] to benefit from the goodwill associated with Complainant’s HP marks and us[ed] the <hpdubai.com> domain name, in part, to provide products similar to those of Complainant. Respondent’s practice of diversion, motivated by commercial gain, constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”). Thus, the Panel finds that Respondent has engaged in bad faith under Policy ¶ 4(b)(iv).
Lastly, Complainant argues that Respondent had actual knowledge of Complainant's rights in the THINK AND GROW RICH mark. Complainant argues that Respondent's offering of Complainant's own products and competing products at the resolving website indicates that Respondent had actual knowledge of Complainant's mark and rights. The Panel agrees and therefore determines that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's 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 <1937thinkandgrowrich.com> domain name be CANCELLED..
Bruce E. Meyerson, Panelist
Dated: May 18, 2015
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