The Napoleon Hill Foundation v. Dan Klatt
Claim Number: FA0510000581920
PARTIES
Complainant is The Napoleon Hill
Foundation (“Complainant”), represented by Sana Hakim, of Bell Boyd & Lloyd LLC, 70 West Madison, Suite 3100,
Chicago, IL 60602. Respondent is Dan Klatt (“Respondent”), 10795 E.
Quail Run Rd., Cornville, AZ 86325.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <thinkandgrowrichseminars.com>,
registered with Schlund+Partner Ag.
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.
James A. Carmody, Esq., as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on October 20, 2005; the National Arbitration Forum received a
hard copy of the Complaint on October 25, 2005.
On October 24, 2005, Schlund+Partner Ag confirmed by e-mail to the
National Arbitration Forum that the <thinkandgrowrichseminars.com>
domain name is registered with Schlund+Partner Ag and that the Respondent is
the current registrant of the name. Schlund+Partner
Ag has verified that Respondent is bound by the Schlund+Partner Ag 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 October 25, 2005, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of November 14, 2005 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@thinkandgrowrichseminars.com
by e-mail.
A timely Response was received and determined to be complete on November
14, 2005.
Each party submitted a timely Supplemental Submission in accordance
with the Rules of the National Arbitration Forum and each such submission was
considered by the Panel in this proceeding.
On November 21, 2005, pursuant o Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed James A. Carmody, Esq., as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant makes the following assertions:
1. Respondent’s <thinkandgrowrichseminars.com> domain name is confusingly similar to Complainant’s THINK AND GROW RICH mark.
2. Respondent does not have any rights or legitimate interests in the <thinkandgrowrichseminars.com> domain name.
3. Respondent registered and used the domain name <thinkandgrowrichseminars.com> in bad faith.
B. Respondent makes the following assertions:
1. Respondent asserts that THINK AND GROW RICH is in the public domain and is not a mark in which the Complainant has exclusive rights.
2. Respondent further asserts that he and all members of the public have the right to use THINK AND GROW RICH.
3. Respondent denies that he registered the domain name at issue in bad faith because he
believes that THINK AND GROW RICH is in the public domain.
FINDINGS
Complainant has used the trademark THINK AND GROW RICH since at least as early as 1946 and owns five U.S. registrations for the mark for a variety of goods and services, including seminars: (1) U.S. Reg. No. 1,973,581 for programs and seminars relating to personal achievement; (2) U.S. Reg. No. 1,938,630 for calendars, diaries and memorandum books; (3) U.S. Reg. No. 2,092,144 for computer software for educational use, including cd-roms, in the fields of self-development, self-improvement, and personal achievement; (4) U.S. Reg. No. 1,534,048 for prerecorded audio and video cassette tapes; and (5) U.S. Reg. No. 1,533,049 for newsletters and study guides relating to personal achievement. These registrations are incontestable under U.S. trademark law.
Except for the additions of the generic element “.com” and the generic term “seminars,” the domain name at issue is identical and confusingly similar to Complainant’s THINK AND GROW RICH trademark.
Respondent has no legitimate rights in the domain name <thinkandgrowrichseminars.com>. Respondent was not commonly known as “Think and Grow Rich Seminars” prior to obtaining the domain name in dispute and, apart from the domain name registration, is not currently known as “Think And Grow Rich Seminars.” Respondent is not a licensee of Complainant’s THINK AND GROW RICH marks and is not otherwise authorized to use Complainant’s marks. Consequently, Respondent has no legitimate business purpose, pursuant to which it might use the domain name and is not in fact using the domain name for a legitimate business purpose.
Complainant’s
THINK AND GROW RICH marks have all been registered for at least five years
prior to Respondent’s registration of the domain name, constituting
constructive knowledge of Complainant’s rights in the marks. Because Respondent had knowledge of
another’s trademark rights prior to the registration of an identical or
confusingly similar domain name, bad faith may be presumed. Respondent also has
actual knowledge of Complainant’s rights in the marks, having been sent
Complainant’s April 21, 2005 cease and desist letter setting forth those
rights. Further, Respondent has
relied on Complainant’s THINK AND GROW RICH marks to direct traffic to its
commercial website, <thinkandgrowrichseminars.com>,
where it offers and advertises goods and services directly competitive to the
seminars and other goods and services provided by Complainant under its THINK
AND GROW RICH marks. This site demonstrates that Respondent registered the
domain name in bad faith by intending to attract, for financial gain, Internet
users to Respondent’s website by creating a likelihood of confusion with the
Complainant’s mark as to the source, sponsorship, affiliation, or endorsement
of the website or of a product or service promoted via that website.
Respondent’s
entire argument in defense is based on the theory that his use of the domain
name at issue is justified by his claimed belief that THINK AND GROW RICH is in
the public domain. The multiple
U.S.P.T.O. registrations of this mark seem to disagree.
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.
Complainant has established rights in the THINK AND GROW RICH mark through registration of the mark with the United States Patent and Trademark office (“USPTO”) (Reg. No. 1,534, 048, issued April 11, 1989). See U.S. Office of Pers. Mgmt. v. MS Tech. Inc., FA 198898 (Nat. Arb. Forum Dec. 9, 2003) (“[O]nce the USPTO has made a determination that a mark is registrable, by so issuing a registration, as indeed was the case here, an ICANN panel is not empowered to nor should it disturb that determination.”); see also Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”).
The <thinkandgrowrichseminars.com> domain name is confusingly similar to Complainant’s THINK AND GROW RICH mark because the domain name fully incorporates Complainant’s mark with the addition of the generic or descriptive term “seminar” and the generic top-level domain “.com.” These generic additions are insufficient to distinguish the domain name from Complainant’s mark. See Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003) (finding that the addition of the term “assurance,” to the complainant’s AIG mark failed to sufficiently differentiate the name from the mark under Policy ¶ 4(a)(i) because the appended term related directly to the complainant’s business); see also Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant).
Complainant has satisfied Policy ¶ 4(a)(i).
Respondent lacks rights and
legitimate interests in the domain name because the domain name is confusingly
similar to Complainant’s mark and is used to redirect Internet users to a
website which sells and advertises goods and services, including seminars which
directly compete with those offered by Complainant. Respondent’s use of the disputed domain name for commercial
purposes is 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). See MSNBC Cable, LLC v. Tysys.com,
D2000-1204 (WIPO Dec. 8, 2000) (finding no rights or legitimate interests in
the famous MSNBC mark where the respondent attempted to profit using the
complainant’s mark by redirecting Internet traffic to its own website); see
also Toronto-Dominion Bank v. Karpachev, 188
F.Supp.2d 110, 114 (D. Mass. 2002) (finding
that, because the respondent's sole purpose in selecting the domain names was
to cause confusion with the complainant's website and marks, its use of the
names was not in connection with the offering of goods or services or any other
fair use).
Respondent was not authorized or
licensed to register or use domain names incorporating Complainant’s THINK AND
GROW RICH mark. Respondent is not commonly known by the domain name, and
Respondent lacks rights and legitimate interests in the domain name pursuant to
Policy ¶ 4(c)(ii). See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no
rights or legitimate interests where (1) the respondent is not a licensee of
the complainant; (2) the complainant’s prior rights in the domain name precede
the respondent’s registration; (3) the respondent is not commonly known by the
domain name in question); see also Hartford
Fire Ins. Co. v. Webdeal.com, Inc., FA 95162 (Nat. Arb. Forum Aug. 29,
2000) (finding that the respondent has no rights or legitimate interests in
domain names because it is not commonly known by the complainant’s marks and
the respondent has not used the domain names in connection with a bona fide
offering of goods and services or for a legitimate noncommercial or fair use).
Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent registered and used the disputed domain name in bad faith under Policy ¶ 4(b)(iv), as Respondent is using the domain name to intentionally attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant as to the source, sponsorship, affiliation or endorsement of the website. Respondent was commercially benefiting from use of the <thinkandgrowrichseminars.com> domain name by offering services in competition with Complainant. Respondent registered and used the domain names in bad faith pursuant to Policy ¶ 4(b)(iv). See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using the confusingly similar domain name to attract Internet users to its commercial website); see also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where the respondent directed Internet users seeking the complainant’s site to its own website for commercial gain).
Additionally, Respondent had actual
or constructive knowledge of Complainant’s mark because the mark is registered
with the USPTO’s Principal Register. See
Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“[T]here
is a legal presumption of bad faith, when Respondent reasonably should have
been aware of Complainant’s trademarks, actually or constructively.”); see
also Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002)
(“Complainant’s OXICLEAN mark is listed on the Principal Register of the USPTO,
a status that confers constructive notice on those seeking to register or use
the mark or any confusingly similar variation thereof.”); see also Victoria’s Cyber Secret Ltd. v. V Secret Catalogue, Inc., 161 F.Supp.2d 1339, 1349 (S.D.Fla. 2001) (noting that “a
Principal Register registration [of a trademark or service mark] is
constructive notice of a claim of ownership so as to eliminate any defense of
good faith adoption” pursuant to 15 U.S.C. § 1072).
Complainant has satisfied Policy ¶ 4(a)(iii).
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 <thinkandgrowrichseminars.com>
domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: December 4, 2005
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