The Rolf Institute of Structural Integration v. Specked Films
Claim Number: FA1904001840729
Complainant is The Rolf Institute of Structural Integration (“Complainant”), represented by Kathleen S. Ryan of The Ollila Law Group LLC, Colorado, USA. Respondent is Specked Films (“Respondent”), Utah, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <sexyrolfing.com>, registered with TurnCommerce, Inc. DBA NameBright.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.
David A. Einhorn appointed as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 26, 2019; the Forum received payment on April 26, 2019.
On April 29, 2019, TurnCommerce, Inc. DBA NameBright.com confirmed by e-mail to the Forum that the <sexyrolfing.com> domain name is registered with TurnCommerce, Inc. DBA NameBright.com and that Respondent is the current registrant of the name. TurnCommerce, Inc. DBA NameBright.com has verified that Respondent is bound by the TurnCommerce, Inc. DBA NameBright.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 April 30, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 20, 2019 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@sexyrolfing.com. Also on April 30, 2019, 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 22, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David A. Einhorn 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 transferred from Respondent to Complainant.
A. Complainant
Complainant is a world-leading organization providing classes, seminars, and courses as well as licensing in the field of bodywork and structural integration. Complainant has rights in the ROLFING mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,118,481, registered May 15, 1979). Respondent’s <sexyrolfing.com> domain name is confusingly similar to Complainant’s ROLFING mark because it wholly incorporates the ROLFING mark with the additions of the descriptive/generic term “sexy” and the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights or legitimate interests in the <sexyrolfing.com> domain name. Respondent is neither commonly known by the disputed domain name nor is Respondent a licensee authorized to use Complainant’s mark. Furthermore, the disputed domain name resolves to a web page offering competing and unrelated goods for sale.
Respondent registered and uses the <sexyrolfing.com> domain name in bad faith because the disputed domain name is used to disrupt the business of Complainant by confusing consumers and preventing users from visiting legitimate licensees of Complainant.
B. Respondent
Respondent did not submit a Response. The Panel notes that Respondent registered the <sexyrolfing.com> domain name on January 18, 2019.
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(f), 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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant has rights in the ROLFING mark based upon registration with the USPTO (e.g., Reg. No. 1,118,481, registered May 15, 1979). Registration of a mark with the USPTO is sufficient to establish rights in the mark pursuant to Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Therefore, the Panel finds that Complainant has rights in the ROLFING mark per Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <sexyrolfing.com> domain name is confusingly similar to Complainant’s ROLFING mark because it wholly incorporates the ROLFING mark with the additions of the descriptive or generic term “sexy” and the “.com” generic top-level domain (“gTLD”). Whole incorporation of a Complainant’s mark is sufficient to establish confusing similarity for purposes of the Policy despite the addition of other words to such marks. See Oki Data Ams., Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001) (“[T]he fact that a domain name wholly incorporates a Complainant’s registered mark is sufficient to establish identity [sic] or confusing similarity for purposes of the Policy despite the addition of other words to such marks”). Here, the disputed domain name wholly incorporates Complainant’s ROLFING mark, adding the word “sexy”. Thus, the Panel agrees that Respondent’s disputed domain name is confusingly similar to Complainant’s ROLFING mark.
Complainant argues that Respondent lacks rights or legitimate interests in the <sexyrolfing.com> domain name because Respondent is neither commonly known by the disputed domain name nor has Complainant authorized Respondent to use the disputed domain name. Where a response is absent, WHOIS information can support a finding that the respondent is not commonly known by the disputed domain name. See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Here, the relevant WHOIS information indicates that Respondent is known as “Specked Films.” Thus, the Panel finds that Respondent lacks rights or legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii).
Next, Complainant argues Respondent lacks rights or legitimate interests in the <sexyrolfing.com> domain name because Respondents fails to use the disputed domain name in connection with a bona fide offering of goods or services or for a noncommercial or fair use. Complainant contends Respondent instead uses the disputed domain name to resolve to a web page offering competing and unrelated goods for sale to divert Internet users. A respondent’s use of a disputed domain name to divert internet users, causing the belief that some sort of affiliation exists between it and Complainant, is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Ripple Labs Inc. v. NGYEN NGOC PHUONG THAO, FA 1741737 (Forum Aug. 21, 2017) (“Respondent uses the [disputed] domain name to divert Internet users to Respondent’s website… confusing them into believing that some sort of affiliation exists between it and Complainant… [which] is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”). Here, Complainant asserts that Respondent offers competing and unrelated goods for sale to divert internet users. Thus, the Panel finds that Respondent has failed to provide a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
Complainant has therefore also satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent registered and uses the <sexyrolfing.com> domain name in bad faith because the disputed domain name is used to disrupt the business of Complainant by confusing consumers and preventing users from visiting legitimate licensees of Complainant. Behavior that disrupts a complainant’s business has been held to be evidence of bad faith registration and use per Policy ¶ 4(b)(iii)) even if not directly commercially competitive. See PopSockets LLC v. san mao, FA 1740903 (Forum Aug. 27, 2017) (finding disruption of a complainant’s business which was not directly commercial competitive behavior was nonetheless sufficient to establish bad faith registration and use per Policy ¶ 4(b)(iii)). Thus, the Panel finds that Respondent has engaged in disruption of Complaint’s business under Policy ¶¶ 4(b)(iii).
Complainant has therefore also 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 <sexyrolfing.com> domain name be TRANSFERRED from Respondent to Complainant.
David A. Einhorn, Panelist
Dated: June 5, 2019
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